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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/01/2026 has been entered; wherein:
claims 1, 8, 10, 12, and 14 have been amended; and
claim 4 has been cancelled.
DETAILED ACTION
Claims 1 – 3 and 5 – 15 remain pending and have been examined.
Responses to Amendments
Claim objections for claim 10 and objection for abstract are withdrawn in view of Applicant’s amendments.
101 rejections for claims 1 – 3 and 5 – 15 remain.
Responses to Arguments
Applicant’s arguments regarding claims 1, 8, and 12 have been considered but are not persuasive.
Regarding 35 USC 101 rejections for claims 1, 8, and 12, Applicant argues that “The Examiner characterizes the claimed ‘assessment,’ ‘calculation,’ and ‘selection’ at a high level of abstraction as activities capable of being mentally performed. However, such characterization ignores the claim as a whole and the manner in which the Specification defines the claimed invention. The claimed invention requires coordinated processing of multiple categories of software engineering parameters, generation of multiple independent assessment scores, structured threshold determination, and classification of the existing software application into one of several predefined software enhancement architectures. Such coordinated processing of numerous software engineering characteristics across application, business, and operational risk domains is not practically capable of being performed entirely within the human mind …” (Emphasis original. Remark; p. 22: last paragraph.)
Examiner respectfully disagrees. The abstract idea is determined based on whether limitations of the claim can be performed mentally by human. As discussed in office action mailed on 04/02/2026, the steps of “determining weightage scores,” “calculating the threshold score,” and ““selecting … one of a plurality of predefined recommendations” rely on human observation and evaluation of assessment parameters to decide weightage scores, human performing mathematical calculation to calculation threshold score, and human selecting recommendation(s) based on observation of evaluation of the threshold score.
Furthermore, all the steps of “developing” develop new enhancement which can be performed by human using paper and pen mentally.
In other words, these steps describe the mental processes and mathematical calculations and are not integrated with any additional element(s) that integrate the judicial exception into a practical application. The claims do not constitute an improvement in any technical field since these steps are directed to judicial exceptions without significantly more. Thus, the claims remain rejected under 35 USC 101.
Information Disclosure Statement
The information disclosure statement filed 07/01/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
The NPL “New and improved: modeling versions to improve app recommendation” was listed in IDS dated 07/01/2026, but a copy of the NPL was not provided. Therefore, the NPL was not considered.
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 – 3 and 5 – 15 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.
Claim 1
Step 1
The claim is statutory because it is directed to a method.
Step 2A, prong 1
The claim recites steps of
“assessing … the existing application based on at least one of:
one or more application assessment parameters, to determine an application weightage score;
one or more business assessment parameters, to determine a business weightage score; and
one or more risk-assessment parameters, to determine a risk weightage score;
calculating … a threshold score based on the application weightage score, the business weightage score, and the risk weightage score; and
selecting … one of a plurality of predefined recommendations for the existing application, based on the threshold score;
…
developing a new enhancement within the existing application recommendation;
developing the new enhancement as a separate new application dependent on the existing application …; and
developing the new enhancement as a complete independent application recommendation.”
The steps of determining weightage scores based on assessment parameters falls into category of mental processes as they rely on human’s deciding weightage scores based on human observation and evaluation of assessment parameters.
The step of calculating the threshold score based on weightage scores also recites mental process as it applies to mathematical calculations.
The step of “selecting … one of a plurality of predefined recommendations … based on the threshold score” relies on human observation and evaluation of the threshold score to decide recommendation for existing application.
All the steps of “developing” develop new enhancement which can be performed by human using paper and pen mentally.
These steps describe the mental processes and mathematical calculations and are not integrated with any additional element(s) that integrate the judicial exception into a practical application.
Step 2A, prong 2
The claim further recites additional limitations “establishing the communication or the integration between the new application and the existing application recommendation” and additional element “a recommendation generating device.”
The additional limitations “establishing the communication or the integration between the new application and the existing application recommendation” forms communication between applications and therefore, is considered as insignificant extra-solution activity and are not indicative of an integration into a practical application.
The additional element is recited at high level of generality and used as a tool to perform the limitations. Thus, the additional element is not indicative of an integration into a practical application.
Step 2B
The claim as a whole is not amounted to significantly more than the judicial exception. Claim 1 is directed to an abstract idea. Therefore, claim 1 is not patent eligible.
Analysis of claims 2 – 3 and 5 – 7
Claim 2
The claim recites “wherein the one or more application assessment parameters comprise: an existing application Lines of Code (LOC) parameter, an existing application usage or end users parameter, an availability of subject matter expert (SME) parameter, an application documentation existence parameter, a technology or framework skill set existence parameter, a technology or framework support in future parameter, a number of external systems involvement parameter, a database changes required parameter, an existing application stability parameter, an existing application complexity parameter, a flexibility in third party tool integration parameter, a new enhancement or module complexity parameter, a new enhancement or module estimated LOC parameter, a significant change in existing code base required parameter, a new enhancement or module relevance with existing modules parameter, and an existing code reusability parameter,
wherein the one or more business assessment parameters comprise: an expected additional infrastructure cost parameter, an expected additional maintenance cost parameter, a business criticality parameter, a return-on-investment prediction parameter, a time to market parameter, and a product roadmap parameter, and
wherein the one or more risk assessment parameters comprise: a security threats parameter, a data silos parameter, a performance bottlenecks parameter, a code to deploy lead time parameter, a new hire or training required parameter, and an adherence to regulatory and compliance rules parameter.”
These limitations merely define assessment parameters. Therefore, they amount to an insignificant extra-solution activity and are not indicative of an integration into a practical application.
Claim 3
The claim recites limitations
“calculating a standard threshold score based on a predefined application standard weightage score, a predefined business standard weightage score, and a predefined risk standard score;
calculating a mid-value threshold score based on the standard threshold score;
comparing the threshold score with the standard threshold score and the mid-value threshold score; and
selecting one of the plurality of predefined recommendations for the existing application, based on the comparison.”
The step of calculating the threshold scores recites mental process as it applies to mathematical calculations. Furthermore, the step of comparing threshold scores and selecting predefined recommendations falls into category of mental processes as they rely on human observation, evaluation, and opinion in deciding the selection of the predefined recommendations. These steps describe the mental processes relying on mathematical calculations without reciting an application to an improvement.
Claim 5
The claim recites
“selecting the developing the new enhancement within the existing application recommendation, when the threshold score is greater than or equal to the standard threshold score;
selecting the developing the new enhancement as the separate new application dependent on the existing application …, when the threshold score is less than the standard threshold score and greater than the mid-value threshold score; and
selecting the developing the new enhancement as a complete independent application recommendation, when the threshold score is less than or equal to the mid-value threshold score.”
These limitations merely select new enhancement based on comparison of threshold scores as they rely on human observation and evaluation of the threshold scores to select new enhancement based on the human’s comparison of threshold scores.
Thus, the limitations, under its broadest reasonable interpretation, cover performance of the limitation in the mind, and they are not integrated into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Furthermore, the step of “establishing the communication or the integration between the new application and the existing application recommendation” forms communication between applications and therefore, is considered as insignificant extra-solution activity and are not indicative of an integration into a practical application.
Claim 6
The claim recites
“assigning an application assessment parameter score corresponding to each of the one or more application assessment parameters, based on an associated predefined criteria and weightage; and
averaging one or more application assessment parameter scores corresponding to the one or more application assessment parameters, to obtain the application weightage score,
wherein the determining the business weightage score comprises:
assigning a business assessment parameter score corresponding to each of the one or more business assessment parameters, based on an associated predefined criteria and weightage; and
averaging one or more business assessment parameter scores corresponding to the one or more business assessment parameters, to obtain the business weightage score, and
wherein the determining the risk weightage score comprises:
assigning a risk-assessment parameter score corresponding to each of the one or more risk-assessment parameters, based on an associated predefined criteria and weightage; and
averaging one or more risk-assessment parameter scores corresponding to the one or more risk-assessment parameters, to obtain the risk weightage score.”
the limitations assign and calculate parameter scores recite mental process as they apply to mathematical calculations without reciting an application to an improvement. Thus, the limitations, under its broadest reasonable interpretation, cover performance of the limitation in the mind, and they are not integrated into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 7
The claim recites “the existing application is one of a legacy application and a monolith application.”
These limitations define application. Therefore, they amount to an insignificant extra-solution activity and are not indicative of an integration into a practical application.
Claims 8 and 12
Step 1
Claim 8 is statutory because it is directed to a device
Claim 12 is statutory because it is directed to a product.
Step 2A, prongs 1 and 2
Claims 8 and 12 recite limitations in the same manner as claim 1; therefore, they are also rejected for the same reasons.
Claims 8 and 12 further recite additional elements “a processor, a memory and a non-transitory computer-readable medium” which are recited at high level of generality and used as tools to perform the limitations. Thus, the additional elements are not indicative of an integration into a practical application.
Steps 2B
Claims 8 and 12, each as a whole, are not amounted to significantly more than the judicial exception. Therefore, they and their dependent claims are not patent eligible.
Claims 9 – 10 and 13 – 15
Claims 9 and 13 recite limitations in the same manner as claim 3; therefore, they are also rejected for the same reasons.
Claims 10 and 14 recite limitations in the same manner as claims 4 and 5 in combination; therefore, they are also rejected for the same reasons.
Claims 11 and 15 recite limitations in the same manner as claim 6; therefore, they are also rejected for the same reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CUONG V LUU whose telephone number is (571)270-1733. The examiner can normally be reached 6:30 AM - 3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hyung S. Sough can be reached at (571) 272-6799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CUONG V LUU/Examiner, Art Unit 2192
/S. Sough/SPE, Art Unit 2192
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