Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined
under the first inventor to file provisions of the AIA .
DETAILED ACTION
2. This Final Office action is in response to the application filed on October 30th, 2023 and in response to Applicant’s Arguments/Remarks field on March 24th, 2026. Claims 14-30 are pending.
Examiner Note
3. Robert Niquette is no longer continuing prosecution on application number
18/385,156. It has been transferred to Examiner Jessica Lemieux.
Priority
4. Application 18/385,156 was filed on October 30th, 2023 which is a continuation of Application 16/258,607 filed on January 27th, 2019, which is a continuation of Application 14/545,345 filed on April 25th, 2015, which claims priority to Provisional Application 61/998,577 filed on June 30th, 2014.
Examiner Request
5. The Applicant is requested to indicate where in the specification there is support for amendments to cl aims should Applicant amend. The purpose of this is to reduce potential 35 U.S.C. §112(a) or §112 1st paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Response to Arguments
6. Applicant’s arguments regarding Ex parte Desjardins have been fully considered but are not persuasive. The Appeals Review Panel in Ex parte Desjardins determined that the claims at issue were directed to a specific improvement in the operation of a machine learning model. In contrast, the presently claimed invention does not recite a machine learning model, training of a model or any other improvement to the operation of machine learning technology. Rather, as discussed in the rejection below, independent claims 14 and 22 recite receiving time-entry information, analyzing the information according to predetermined rules, combining time entries, overwriting database records, generating reports, displaying information and permitting user editing. Although Applicant characterizes combining two time entries into a combined time entry as being analogous to machine learning model producing an output from multiple inputs, the claims merely recite applying predetermined rules to business information to obtain a desired result. The claimed combination of time entries is produced according to predetermined rules rather than through any improved machine learning technique or computer processing mechanism. Accordingly, the claims are not directed to the type of technological improvement considered patent eligible in Ex parte Desjardins.
7. Applicant further argues that the claims reduce system complexity because combining and overwriting time entries allegedly conserves processing resources and reduces the number of servers required at remote locations. This argument is not persuasive. While the specification describes potential benefits associated with centralized processing, the claims do not recite any particular improvement to any technological mechanism that achieves reduced system complexity. As discussed below in Step 2A, Prong Two, any alleged reduction system compleisty results from performing the abstract business process on generic computer components rather than from an improvement in the functioning of those computer components themselves.
8. Applicant’s reliance on Enfish is also not persuasive. Unlike in Enfish, which were directed to a specific improvement in the manner in which a computer stores and retrieves data, the presently claimed invention does not recite an improvement to the operation of a database or other computer technology. Rather, the additional elements are used as generic computing tools for implementing the recited time-entry management process. . The claims merely utilize generic databases and an application server as tools for implementing the recited time-entry management process. Accordingly, the claims do not improve the functioning of the computer itself, but instead use generic computer components to carry out the abstract idea, as discussed below.
9. Accordingly, Applicant’s amendments and arguments have been fully considered but are not persuasive. Therefore, the rejection of claims 14-30 under 35 USC § 101 is maintained.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
10. Claims 14-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 14-30 are directed to a system, method, or product which are/is one of the statutory categories of invention. (Step 1: YES).
Claims 14 and 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a billing data entry system for timekeeping and billing for professionals in the areas of attorneys, certified public accountants or architects. The billing data entry system in which the user inputs data into a data entry summary section, where the data includes client name, matter name, hours worked and a description of the work performed and a billing rate. The description is automatically translated into an additional foreign language. The data entry listing of more than one data entry summary is generated. The user directly edits the data from the data entry listing.
The claim limitations as drafted, the limitations recite a process that, under the broadest reasonable interpretation cover performance of the limitation in the mind but for recitation of generic computer components. The practice of managing and processing time-entry information, including receiving time entries, analyzing the entries according to predetermined rules, combining the entries, updating database records, generating work-in-progress reports, and presenting the results to users is a mental process. That is, other than generic computer components, nothing in the claim element precludes the step from practically being performed as mental process. The steps mimic human thought processes, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See Planet Bingo, 961 F. Supp. 2d at 851 (“The district court correctly concluded that managing the game of bingo “consists solely of mental steps which can be carried out by a human using pen and paper”). Other than the recitation of generic computer components, the examiner finds that the instant case clearly falls within the “mental processes” grouping of abstract ideas. The examiner further finds that this type of activity represents longstanding conduct that existed well before the advent of computers and the Internet. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson").
Similar data gathering and generation cases have been held ineligible under § 101. See Content Extraction and Transmission LLC v. wells Fargo Bank, National Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding the concept of "l) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory" abstract); see also Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) ( "Intellectual Ventures I") (concluding that customizing information and presenting it to users based on particular characteristics is abstract as well); Electric Power Group, LLC v. Alstom S.A, 830 F.3d 1353-1354 (Fed. Cir. 2016) (explaining that an invention directed to the collection, manipulation, and display of data is an abstract process). Accordingly, Claims 14 and 22 recite an abstract idea. (Step 2A- Prong 1: YES. The claims recite an abstract idea).
This judicial exception is not integrated into a practical application. Taking the claim elements separately, the function performed by the computer at each step of the process is purely functional. The limitations recite generic computer processing expressed in functional terms to be performed by any and all possible means and so present no more than abstract conceptual advice. All purported inventive aspects reside in how the data are interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Applicants' claims simply recite managing and processing time-entry information, including receiving time entries, analyzing the entries according to predetermined rules, combining the entries, updating database records, generating work-in-progress reports, and presenting the results to users as performed by generic hardware. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. They do not describe any particular improvement in the manner in which a computer functions. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea. Under precedent, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26. None of the limitations reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The examiner therefore concludes that the claims are directed to a mental process as distinguished from a technological improvement for achieving or applying that result. Claims 14 and 22 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO: the additional claimed elements are not integrated into a practical application).
Claims 14 and 22 do not include additional elements that are sufficient to amount to significantly more (also known as an “inventive concept”) than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements recited above to perform the noted steps amounts to no more than mere instructions to apply the exception using a generic computer components. Using a computer to generate reports, and receive, analyze, and store data amounts to one of the most basic functions of a computer. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept (“significantly more”). Accordingly, even when considered separately and as an ordered combination, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. That Figures 3-8 and paragraph 99 the published Specification suggests that standard, off-the-shelf computer technology is usable to implement the claimed invention only bolsters the notion that the claimed invention does not focus on an improvement in computers as tools, but rather certain independently abstract ideas that use computers as tools. (Elec. Power, 830 F.3d at 1354).
Dependent claims 15-21, and 23-30 are similarly rejected because they merely further narrow the same abstract idea of independent claims 14 and 22 and/or do not further limit the claim to a practical application or provide as inventive concept such that the claims are subject matter eligible even when considered individually or as an ordered combination.
Dependent claims 15 and 24 merely describes analyzing the time-entry for errors and generating a flag.
Dependent claims 16 and 23 merely describes what the time-entry data includes.
Dependent claims 17 and 25 merely describes what the error corresponds to.
Dependent claims 18 and 26 merely describes what excessive billing corresponds to.
Dependent claims 19 and 27 merely describes tracking the number of changes and generating an audit trail.
Dependent claim 28 merely describes generating a value field, associating taxes to a value field what taxes are included.
Dependent claims 20, 21, 29 and 30 merely describes accessing exchange rates, calculating billable values and displaying a ‘WIP’ report.
Therefore claims 15-21, and 23-30 are patent ineligible because they merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. In other words, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limitations that, in an ordered combination provide “significantly more” or providing any integration into a practical application. Rather, the dependent claims are merely further reciting features that are just as abstract as independent Claims 14 and 22. Therefore, Claims 14-30 are directed to non-statutory subject matter and are rejected as ineligible subject matter under 35 U.S.C. § 101.
Conclusion
11. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA LEMIEUX whose telephone number is (571)270-3445. The examiner can normally be reached Monday-Friday 7AM-3PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TARIQ HAFIZ can be reached at (571) 272-5350. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA LEMIEUX/Supervisory Patent Examiner, Art Unit 3626
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