Notice of Pre-AIA or AIA Status
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
Status of Claims
This action is in reply to the response filed on 9-3-2025. Claims 14-30 are currently pending and have been examined. Claims 1 -13 have been cancelled. Claims 14 and 22 have been amended.
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9-3-2025 has been entered.
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.”
Note: Examiner invites Applicants’ attention to the Federal Register notice titled 2019 Revised Patent Subject Matter Eligibility Guidance (Vol. 84, No. 4) which is found at: https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf.
In analyzing patent-eligibility questions under the judicial exception to 35 U.S.C. § 101, we "first determine whether the claims at issue are directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355. If the claims are determined to be directed to an ineligible concept, then we "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 97 (2012)).
On January 7, 2019, the Director issued "2019 Revised Patent Subject Matter Eligibility Guidance," which explains how we must analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed. Reg. 50-57 ("Revised Guidance").
Per the Revised Guidance, the first step of Alice (i.e., Office Step 2A) consists of two prongs. In Prong One, we must determine whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim is patent eligible. Id. With respect to the abstract idea category of judicial exceptions, an abstract idea must fall within one of the enumerated grouping of abstract ideas in the Revised Guidance or be a "tentative abstract idea, "with the latter situation predicted to be rare. Id. at 51-52 (Section I, enumerating three groupings of abstract ideas), 54 (Section III.A. I., describing Step 2A Prong One), 56-57 (Section III.D., explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, we proceed to Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a practical application, we then proceed to the second step of Alice (i.e., Office Step 2B). In that step, we then evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Analysis:
Step 1.
Is the claim(s) directed to a process, machine, manufacture or composition of matter?
Claims 14-30 are all directed to a statutory category (e.g., a process, machine, manufacture, or composition of matter). The answer is YES.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, "[w]hat else is there in the claims before us? To answer that question, . . . consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application. [The Court] described step two of this analysis as a search for an "'inventive concept "' i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014) (citations omitted) (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea). Then, if claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception. If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception.
STEP 2A, Prong 1
Claim 14-30 are directed to 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.
From this we see that the claims do not recite the judicial exceptions of either natural phenomena or laws of nature. The next issue is whether it recites the judicial exception of an abstract idea. To answer this, we next determine whether it recites one of the concepts the Courts have held to be lacking practical application, viz. mathematical concepts1, certain methods of organizing human interactions2, including fundamental economic practices and business activities, or mental processes3.
The practice of report generation and receiving, storing and analyzing data 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).
STEP 2A, Prong 2
The next issue is whether the claims not only recite, but are more precisely directed to this concept itself or whether they are instead directed to some technological implementation or application of, or improvement to, this concept i.e. integrated into a practical application.4
At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, "all inventions ... embody, use, reflect, rest upon, or apply
PNG
media_image1.png
1
1
media_image1.png
Greyscale
laws of nature, natural phenomena, or abstract ideas." Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. "[A]pplication[s]" of such concepts " 'to a new and useful end, ' " we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the " 'buildin[g] block[s]' " of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not alter the analysis at Mayo step two.
“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it"' is not enough for patent eligibility. Nor is limiting the use of an abstract idea "'to a particular technological environment. "' Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implement[t]" an abstract idea "on . . . a computer," that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional feature[e]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself." Alice, 573 U.S. at 223-24 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
PNG
media_image2.png
1
1
media_image2.png
Greyscale
instruct the practitioner to implement the abstract idea [ ] on a generic computer." Alice, 573 U.S. at 225. They do not.
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 report generation, and data reception, storage and analysis 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. The claim does not integrate the judicial exception into a practical application.
Step 2B
The next issue is whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to generate reports, and receive, analyze, and store data amounts to one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses.5
None of these activities are used in some unconventional manner nor do any produce some unexpected result. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161
PNG
media_image3.png
13
6
media_image3.png
Greyscale
1 168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of Applicants' claims add nothing that is not already present when the steps are considered separately. 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 and 24 add the additional limitation of analyzing the time-entry for errors. This additional step is a mental process because other than generic computer components, nothing in the claim element precludes the step from practically being performed as in the human mind or with paper and pencil. See Planet Bingo, 961 F. Supp. 2d at 851. See also Guidance, 84 Fed. Reg. at 52.
Dependent claims 16 and 23 add the additional limitation of what the time-entry data includes. This is nonfunctional descriptive material because it is a mere arrangement of data. Descriptive material is nonstatutory when claimed as descriptive material per se, 33 F. 3d at 1360, 31 USPQ2d at 1759. See MPEP §2011.05(II).
Dependent claims 17 and 25 add the additional limitation of what the error corresponds to. This is also nonfunctional descriptive material.
Dependent claims 18 and 26 add the additional limitation of what excessive billing corresponds to. This is also nonfunctional descriptive material.
Dependent claims 19 and 27 add the additional limitations of tracking the number of changes and generating an audit trail. This is also a mental process.
Dependent claim 28 adds the additional limitations of generating a value field, associating taxes to a value field what taxes are included. These additional steps are also mental processes.
Dependent claims 20, 21, 29 and 30 add the additional limitations of accessing exchange rates, calculating billable values and displaying a ‘WIP’ report. Accessing and display of data is also insignificant extra-solution activity. Calculating is also a mental process.
Conclusion of Law
The examiner concludes that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception. From these determinations the examiner further notes that the claims do not recite an improvement to the functioning of the computer itself or to any
PNG
media_image4.png
1
1
media_image4.png
Greyscale
other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this the examiner finds the claims are directed to a mental process without significantly more.
Response to Arguments and amendments
Applicants
Applicants argue that the claims are allowable due to their analogy to the claims in Core Wireless Licensing S.A.R.L v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). Remarks at 11. Applicants also argue that the pending case is analogous to Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1009 (Fed. Cir. 2018). Remarks at 9, and Adasa Inc. vs. Avery Dennison, 55 F. 4th 900 (Fed. Cir. 2022).
In Core Wireless, the claimed invention specified particular technological functionality in the form of “an application summary that can be reached directly from [a] menu” such that the summary window “is displayed while the one or more applications are in an un-launched state.” Core Wireless, 880 F.3d at 1362–63. The court in Data Engine Technologies characterized the claimed invention in Core Wireless as not “merely directed to the abstract idea of indexing information,” but instead providing “an improved user interface for electronic devices” such that the claim was “directed to ‘an improvement in the functioning of computers.’” Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1009 (Fed. Cir. 2018).
In Data Engine Technologies, the court addressed a set of claims directed to a specific method of navigating three-dimensional spreadsheets through the use of tabs. Id at 1008–09. The inventive tabs permitted easy access to spreadsheet workspaces that previously required a user to “search through complex menu systems” and “memorize frequently needed commands.” Id at 1008. Certain claims “require[d] at least one user-settable identifying character to label the notebook tab and describes navigating through the various spreadsheet pages . . . that are identified by their tabs.” Id. The court found the claims to require a “specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers.” Id at 1009. The court distinguished the claimed invention from one that would merely recite “a generic method of labeling and organizing” spreadsheet data. Id at 1008–09.
The court in Data Engine further addressed claims that recited “associating each of the cell matrices with a user-settable page identifier” without “the specific implementation of a notebook tab interface.” Id at 1012. The court held that these were claims not limited to the “specific technical solution and improvement in electronic spreadsheet functionality” set forth in the eligible tab claims and were, thus, found ineligible. Id.
Claim 1 does not recite an interface such as was found to provide eligibility in Core Wireless. At most, the claim recites displaying the first time entry and the second time entry on a graphical user interface and displaying the work-in-progress report. Claim 1 does not set forth any particular interface for such communicating, much less any particular technological functionality or improvement of an interface itself, and is therefore more akin to the ineligible claims in Data Engine than to the eligible claims in Core Wireless.
As to Adasa, those claims were directed to an RFID transponder and have nothing to do whatsoever with the pending case.
Applicants also contend:
“There is a specific mechanism within the computer system that eliminates redundant data entry, ensures accuracy of matter information across multiple contexts, and allows for high-level data analysis. These applications improve the operation of the computer.” Remarks at 10.
And:
“In addition to the previous mass editing functionality, the additional limitations of the unique coding and subsequent manipulation of display data further saves the user from having to navigate separate screens and from having to then navigate within those screens. Further, the instant claims now include further technical requirements. Id.
In rebuttal the Examiner points out that as discussed in Customedia Technologies, LLC v. Dish Network Corporation, 951 F.3d 1359 (Fed. Cir. 2020): “We have also held that improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality. For example, in Trading Techs. I, we held patent ineligible claims directed to a computer-based method for facilitating the placement of a trader’s order. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092–93 (Fed. Cir. 2019) (Trading Techs. I). Although the claimed display purportedly “assist[ed] traders in processing information more quickly,” we held that this purported improvement in user experience did not “improve the functioning of the computer, make it operate more efficiently, or solve any technological problem.” Id.; see also Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1381, 1384–85 (Fed. Cir. 2019) (Trading Techs. II) (holding that claims “focused on providing information to traders in a way that helps them process information more quickly” did not constitute a patent-eligible improvement to computer functionality)”. Customedia, 951 F.3d at 1365.
Accordingly, for reasons of record and as set forth above, the examiner maintains the rejection of the claims as being directed to a judicial exception without significantly more, and thereby being directed to non-statutory subject matter under 35 USC §101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert R. Niquette whose telephone number is 571-270-3613. The examiner can normally be reached on Monday through Friday, 5:30 AM to 2:00 PM Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicants are 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, Abhishek Vyas, can be reached at 571-270-1836.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT R NIQUETTE/
Primary Examiner, Art Unit 3691
1 See e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
2 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed. Cir. 2018).
3 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
4 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981).
5 MPEP 2106.05(d)(II) The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added));
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.