DETAILED ACTION
To practice compact prosecution, applicant was contacted on 9/18/2026 for an amendment to place the application in a condition of allowance. The examiner’s call was not returned. This OA is thus issued.
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 .
Response to Arguments
Applicant's arguments filed 08/27/2026 have been fully considered but they are not persuasive.
On page 10 of the remark, applicant argued: “Claims 14-17 recite a content collaboration system. As amended, claim 14 recites that the centralized automation rule service is instantiated by cooperation of a processor and a memory ([0079], [0080]), as suggested by the Examiner, and the observation that claim 14 may be construed as software per se should therefore be rendered moot. The claims fall within the statutory categories of 35 U.S.C. § 101.” The examiner disagrees. “cooperation of a processor and a memory, the centralized automation rule service communicably . . . “ (under BRI) can mean processors and memory reside in a remote system. Claim 14 can still be SW per se.
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.
the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter.
Claims 1-20 are rejected under 35 U.S.C. 101.
As per claim 1, the claim recites a method, therefore is a process.
“ . . . causing generation of a graphical user interface of the content collaboration system, the graphical user interface including an input field for receiving user input . . . generating a trigger-selection prompt . . . generating a component-selection prompt . . . generating a rule-selection prompt . . . identifying . . . generating a service on the content collaboration system . . . “ These limitations, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of generic computer components. Thus, the claim recites a mental process.
The limitation of “providing the trigger-selection prompt . . . obtaining a first generative response . . . providing the component-selection prompt . . . obtaining a second generative response . . . obtaining . . . ”, amounts to data gathering which is considered to be insignificant extra solution activity (MPEP 2106.05(g); this limitation is also a mere generic transmission and presentation of collected and analyzed data which is considered to be insignificant extra solution activity (MPEP 2106.05(g). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. As for WURC, the claim is not simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. The claim is directed to the abstract idea.
As discussed above, the limitation of “providing the trigger-selection prompt . . . obtaining a first generative response . . . providing the component-selection prompt t . . . obtaining a second generative response . . . obtaining . . . ”, amounts to data gathering which is considered to be insignificant extra solution activity (MPEP 2106.05(g); The claim is ineligible.
As per claim 2, see rejection on claim 1. “analyzing . . . identifying . . . “ These limitations, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of generic computer components. Thus, the claim recites a mental process. “reconfiguring . . . “ is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Kamen. The claim is ineligible.
As per claim 3, see rejection on claim 2. . “generating . . . “ These limitations, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of generic computer components. Thus, the claim recites a mental process. “providing . . . obtaining . . . “ amounts to data gathering which is considered to be insignificant extra solution activity (MPEP 2106.05(g); The claim is ineligible.
As per claim 4, see rejection on claim 1. “determining . . . “ These limitations, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of generic computer components. Thus, the claim recites a mental process. “providing . . . obtaining . . . “ amounts to data gathering which is considered to be insignificant extra solution activity (MPEP 2106.05(g); The claim is ineligible.
As per claim 5, see rejection on claim 1. “identifying . . . “ These limitations, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of generic computer components. Thus, the claim recites a mental process. “providing . . . obtaining . . . “ amounts to data gathering which is considered to be insignificant extra solution activity (MPEP 2106.05(g); The claim is ineligible.
As per claim 6, see rejection on claim 1. “wherein the trigger-selection prompt further comprises a description of each trigger of the set of example automation trigger schemas” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Weitzel. The claim is ineligible.
As per claim 7, see rejection on claim 1. “wherein the component-selection prompt further comprises a description of each automation component or rule clause of the set of example automation components or rule clauses” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Weitzel. The claim is ineligible.
As per claim 8, see rejection on claim 1. “wherein the rule-selection prompt further comprises a first description of the first generative response, and a second description of the second generative response” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Weitzel. The claim is ineligible.
As per claim 9, see rejection on claim 1. “a statement that a purpose of the generative output engine is to generate an automation rule in response to the rule-selection prompt” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Weitzel. The claim is ineligible.
As per claim 10, see rejection on claim 1. “determining . . . causing generation of a second graphical user interface of the content collaboration system . . . “ These limitations, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of generic computer components. Thus, the claim recites a mental process.
As per claim 11, see rejection on claim 1. “wherein the generative output engine is external to the content collaboration system” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Weitzel. The claim is ineligible.
As per claim 12, see rejection on claim 1. “the generative output engine is at least a portion of the content collaboration system” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Weitzel. The claim is ineligible.
As per claim 13, see rejection on claim 1. “wherein the at least one automation component or rule clause comprises one or more of page archiving, page ownership changing, page status changing, page copying, page deletion, page moving, new page publishing, page restriction, blog deletion, comment addition, label addition, label removal, watcher management, space permission addition, space archiving, custom variable creation, issue assignment, issue cloning, issue comment addition, issue creation, sub-task creation, variable creation, comment deletion, issue deletion, issue editing, issue linking, work logging, issue lookup, watcher management, issue transition, email sending, message sending, text message sending, outgoing web request sending, service desk customer addition, service desk request creation, version creation, version release, attachment deletion, action logging, issue data re-fetching, entity property setting, event publishing, or an action with a third party platform external to the content collaboration system” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See YITZHAKI. The claim is ineligible.
As per claim 14, see rejection on claim 1. Furthermore, claim 14 can be construed as software per se because a first interface, a second interface, a centralized automation rule service can be (under BRI) software. A case in point: [0036] of spec suggests that the centralized automation rule service 112 may be a rich text editor. Applicant is encouraged to claim hardware constructs such as a processor to overcome SW per se issue. “instantiated by cooperation of a processor and a memory, the centralized automation rule service communicably . . . “ (under BRI) does not require claim 14 to include a processor or memory because they can be situated at a remote server.
As per claim 15, see rejection on claim 2.
As per claim 16, see rejection on claim 3.
As per claim 17, see rejection on claim 4.
As per claim 18, see rejection on claim 1.
As per claim 19, see rejection on claim 18. “wherein the one or more trigger- selection criteria comprise a set of example automation trigger schemas and a set of example input-output natural language to trigger pairs” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Fletcher. The claim is ineligible.
As per claim 20, see rejection on claim 18. “wherein the one or more component- selection criteria comprise a set of example automation components or rule clauses and a set of example input-output natural language to automation component or rule clause pairs” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Fletcher. The claim is ineligible.
As per claim 21, see rejection on claim 18. “wherein the one or more rule-selection criteria comprise a set of example automation rules” is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. See Weitzel. The claim is ineligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHARLIE SUN whose telephone number is (571)270-5100. The examiner can normally be reached 9AM-5PM.
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, Pierre Vital can be reached at (571) 272-4215. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLIE SUN/Primary Examiner, Art Unit 2198
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