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 the Claims
Claims 1-3, 9-11, and 17-19 are currently pending in this application.
Claims 1, 2, 9, 10, 17, and 18 are amended
Claims 1-3, 9-11 and 16-19 are currently pending in this application.
The rejection under 35 USC 103 is withdrawn.
The rejection under 35 USC 101 is maintained.
Response to Applicant Remarks
Applicant’s well-articulated remarks have been considered but are unpersuasive for the reasons below.
Regarding the rejection under 35 USC 101, Applicant argues that the claimed invention is a patent eligible mechanism for logic and computer storage. (Applicant’s 8/28/26 remarks, pp.9-10, “They recite a particular data-object architecture in which sequential entries use two different types of outputs: an action identifier that invokes executable action logic and an index value that transfers processing to the first entry carrying that index. The empty condition of the second entry causes the second index value to be output whenever that entry is processed. This is a specific mechanism for computer storage and execution of conditional logic, not merely the informational content of a flowchart.”) The examiner respectfully disagrees.
The examiner understands the recited feature to track Applicant’s Fig. 2 and Fig. 3. Applicant’s Fig. 2 recites 3 decision points (204, 220 and 234). Applicant’s Fig.3 table recites three indices (0 ,2, 5) that coincide with the decision points. For each index, Applicant’s Fig. 3 table recites two outcomes. For example for entry 1, index 0, if it is true that the invoice amount is between 0 and 100 (the TransactionAmount column shows the condition), then the result is SendForApproval1. If it is false that the amount is between 0 and 100, the subsequent entry #2 is invoked (TransactionAmount is empty) and the result is passing execution to index 2.
Although Applicant’s claims recite a logical flow, the examiner does not understand designating a decision point with an index and expressing the index, decision condition and result in a line by line format to necessarily to have a nexus with computer implementation. That is, although the logic could be implemented a code or pseudocode in a computer program, a human could read and write similar instructions to express a flowchart (fig.2) in a non-pictorial format. (See e.g., examples of coding with conditional expressions and the goto command, “C - Goto Statement “, 9/2021, https://web.archive.org/web/20210918003256/https://www.decodejava.com/c-goto-statement.htm )
Regarding the rejection under 35 USC 101, Applicant argues that the claimed invention cannot be performed in the human mind. (Applicant’s 8/28/26 remarks, p.11) The examiner respectfully disagrees.
Although Applicant’s claim recite language with technical characteristics (e.g. compressed decision model object and multi condition workflow), the examiner respectfully suggests that this could merely present a table or flowchart of steps. (See e.g., Applicant’s fig. 3 or 4). A human could certainly produce the objects represented in Fig. 3 or Fig. 4. That the claim recites a “compressed” decision model is not persuasive, for the reason that the scope of the compression is not set forth. That is, compression is a concept with a different meanings in computer science and also in everyday parlance. Information that is compressed could merely be summarized or distilled, which a flowchart certainly could do. A person certainly cannot mentally generate a software object and execute it in a computer. However, under 35 U.S.C. § 101, a field of use restriction—which merely limits the use of an abstract idea or judicial exception to a specific technological environment or industry—is not enough to make an otherwise ineligible claim patent-eligible. The examiner respectfully suggests that a human could manually produce and implement figs.3 and 4 even if the invention is intended to be implemented on the technological environment of a computing system.
Applicant has compared Applicant's invention to the patent eligible invention in the PTAB decision Ex parte Raux. (Applicant's 8/28/26 remarks, p.11, "The claims as now amended resolve that concern by reciting more than technical labels: they define the internal entry arrangement of the decision model object, the empty-condition/default-index control transfer, the process model object's mapping to executable logic, and execution of the single object without another decision model object. Those are operations of the claimed software architecture, not steps of a pre-computer approval practice.”) The examiner respectfully disagrees.
The examiner respectfully suggests that the claimed logic is not significantly different than human readable rules, programming language or pseudocode implemented on a generic computer.
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(“C - Goto Statement “, 9/2021, https://web.archive.org/web/20210918003256/https://www.decodejava.com/c-goto-statement.htm )
That is, a fairly simple snippet of pseudocode expanding the concept could read:
Label1: If (condition1) perform function1 else
goto Label2
Label2: If (condition2) perform function2 else
goto Label3
Label3: If (condition3) perform function3 else
goto Label4…
This could be decision model object (condition1), the empty-condition/default-index control transfer (the else), the process model object's mapping to executable logic, and execution of the single object without another decision model object (goto statement).
Applicant also argues that the claims do not recite a method of organizing human activity. (Applicant’s 8/28,26 remarks, p.11). The examiner respectfully disagrees.
Although the claims recite a broad workflow without reference to a specific human activity, eligibility analysis under 35 USC 101 requires interpretation of the invention in view of the specification. The examiner understands based on the specification that the application of the claimed workflow is an invoice approval process, which falls under human activity, a fundamental economic practice.
Applicant also argues that the invention is a practical application of an abstract idea. (Applicant’s 8/28/26 remarks, p.12 ) The examiner respectfully disagrees.
MPEP 2106.05a states "It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology.” A human organization could choose to have one approval flowchart for all expenditures rather than separate flows for each type of expenditure, which would similarly reduce the need and work to access separately documented approval processes. The examiner does not agree that this feature is particular to a computer implementation or that such a strategy improves the functioning of the computer. A human decision maker could generate/follow a flowchart or a list of steps/rules (including empty or default paths not requiring another decision) to route an invoice to a proper approver.
Applicant also compares the claimed invention to the eligible invention in the Enfish decision. (Applicant’s 8/28/26 remarks, p.13). However, Enfish is at least distinguishable because the self referential table in Enfish combined disparate data from disparate tables into a single self referential table, an improvement to computing technology. Applicant’s object appears to be a line by line rendition of pseudocode to traverse one conditional tree. The examiner respectfully suggests that the tree structure and the pseudocode are known techniques and does not find any technological improvement in putting the instructions in table object.
Applicant has compared Applicant’s invention to the patent eligible invention in the Federal Circuit decision XY, LLC vs Trans Ova Genetics. (Applicant’s 8/28/26 remarks, p.13)
However, in the XY decision, the patent eligible improvement was directed to operating a cytology apparatus to separate male or female cells. (XY, LLC vs Trans Ova Genetics, “Rather, the claims are directed to a purportedly improved method of operating a flow cytometry apparatus to classify and sort particles into at least two populations in real time, wherein first and second detectors detect signals from individual particles and a processor converts the signals to n-dimensional parameter data and rotationally alters that data to increase spatial separation among the data, thereby facilitating classification and sorting of each individual particle.”) The examiner does not agree that the “improved result” of applicant’s workflow arises to the same level of application of a process to achieve a result. Applicant’s invention operates on data to produce a decision that does not have a comparable effect on the real world or improve the underlying computer technology.
Applicant also points out the claimed 2i+2 index relationship. (Applicant’s 8/28/26 remarks, p.13). Although the indexing may be novel, the examiner discerns no functional improvement over another type of labeling scheme. Accordingly, the examiner does not interpret this to be a patent eligible technological improvement.
Applicant also points out the parsing, generation and display of a workflow representation. (Applicant’s 8/28/26 remarks, p.13). However, the examiner respectfully suggests that given a pseudocode of conditional statements and execution passing per Applicant’s fig. 3, a human could manually produce a visual representation (e.g. a flowchart using shapes and execution paths) similar to Applicant’s fig.4.
Applicant also argues that the invention improves the functioning of a computer, also citing the BASCOM decision. The examiner respectfully disagrees.
Again, although Applicant’s invention improves a workflow and efficiency of the workflow, there is no evidence it improves computing generally. In addition, the BASCOM decision is at least distinguishable, because the arrangement of the claimed filtering amongst the hardware elements in BASCOM contributed to eligibility. In contrast, Applicant’s invention recites no such hardware arrangement so much as implementing an abstract idea on a generic computer. That the invention creates a single model (e.g. could be a flowchart) that could be executed serially, reducing the need for network calls for other decision objects is not a computer specific improvement. An organization could institute one decision flowchart that a human can execute step by step without the need for consulting other flowcharts.
Applicant also argues that the claimed combination requires a factual determination per the Berkheimer decision. (Applicant’s 8/28/26 remarks, p.15). The examiner respectfully disagrees.
The examiner notes that Berkheimer merely clarifies the consideration of “additional elements” of claims. (USPTO 4/18/18 Memorandum, “ While the Berkheimer decision does not change the basic subject matter eligibility framework as set forth in MPEP § 2106, it does provide clarification as to the inquiry into whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity.”). In the present case, the examiner has opined that the claims invoke steps of an abstract idea implemented a computer processor and memory which are the additional elements. Although the claims recite a decision model object (e.g., the table of Applicant’s fig.3) as well as other data concepts, the examiner respectfully suggests that listing conditional steps in a table is part of the abstract idea, implemented by generic computers/memory. Accordingly, the Berkheimer decision is not an issue. Simply implementing an abstract idea on a generic computer does not make the idea eligible for a patent. (Alice Corp. v. CLS Bank)
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.
Claims 1-5, 8-13, and 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Regarding independent claims 1,9,17 the claimed invention recites an abstract idea without significantly more. The claims recite the abstract idea of generating and using a data processing workflow which is a mental process. Other than reciting a processor/memory nothing in the claims precludes the steps from being performed mentally. But for the processor/memory the limitations on generating a single compressed decision model for a multi condition workflow, generating object comprising first index, first condition, action conditional on first condition, generating second entry comprising first index/condition, empty condition, second index, generating third entry comprising second index and second condition depends on first condition being false wherein the third entry is a first entry in the decision model having the second index, generating process model maps identifier of action to logic, executing workflow, determining output identifier, determine and perform logic is a process that under its broadest reasonable interpretation could be performed by mentally but for the recitation of generic computer elements. If claim limitations, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Further the above limitations related to a data processing workflow stripped of the identified additional and insignificant elements could also be considered a “Method of Organizing Human Activity” relating to the managing human behavior and interactions. The examiner understands based upon Applicant’s specification that the workflow could be a process for approving a business transaction. Thus, the claims recite an abstract idea.
The judicial exception is not integrated into a practical application. The computers are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. The additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computer environment is not a practical application of the abstract idea and does not take the claim out of the mental process or method of organizing human activity grouping.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of the abstract idea into a practical application, the additional element of a processor and memory amounts to no more than mere instructions to apply the exception using a generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept Collecting, analyzing and displaying information, and receiving and transmitting over a network are conventional in the computing arts. (MPEP 2106.05h; See also MPEP 2106.05, Alice v. CLS, “. Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”).] The claims are not patent eligible.
Regarding the dependent claims, these claims are directed to limitations which serve to limit the data workflow steps. The subject matter of claims 2/10/18 (serially processing decision model entries), 3/11/19 (display workflow based on parsing) appear to add additional steps to the abstract idea, implemented by generic computers. These claims neither introduce a new abstract idea nor additional limitations which are significantly more than an abstract idea. They provide descriptive details that offer helpful context, but have no impact on statutory subject matter eligibility.
Therefore the limitations on the invention, when viewed individually and in ordered combination are directed to in-eligible subject matter.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Conclusion
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 ALLEN C CHEIN whose telephone number is (571)270-7985. The examiner can normally be reached Monday-Friday 8am -5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian Zeender can be reached at (571) 272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLEN C CHEIN/Primary Examiner, Art Unit 3627
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