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:
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 26, 2026 has been entered.
Status of Claims:
Claims 13-32 are pending.
Claims 13-20 and 27 are amended.
Response to Remarks:
Regarding 101:
The Applicant asserts that the claims as amended and originally presented do not have an abstract idea, in particular a mental process as rejected under the Non-Final Office Action. Specifically, the Applicant argues that the claims cannot be done in the human mind, because they require an element such as, “word processing tool, plug-in program, graphical user interface, user computing device,” assertion is not persuasive. The MPEP explicitly states on 2106.05 that a computer may aid in an invention and still fall within the realm of a mental process. For the computer to be sufficiently used in not a mental process, and thus assists in the improvement of technology, the MPEP 2106.05(F) states, “…To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.” Here, the claims are merely using the cited additional elements as insignificant extra-solution activity as well as understood, routine, conventional elements under MPEP 2106.05(d). Thus, the rejection is maintained.
Regarding 103:
The Applicant asserts that the suggestion of a task or a previously planned task may be obsolete is shown in Horton. The examiner agrees, however, after more research and examination, the Examiner has maintained the rejection under Horton in view of Cornet in further view of Heukelom. See below for clarification and citation.
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 13-32 are rejected under 35 U.S.C. 101 because the claimed invention is -directed to non-statutory subject matter. Claims 13-32 are directed to a judicial exception (i.e., a law of nature, natural phenomenon, or abstract idea) without significantly more.
Part I. 2A-prong one (Identify the Abstract Ideas)
The Alice framework, step 2A-Prong One (part 1 of Mayo test), here, the claims are analyzed to determine if the claims are directed to a judicial exception. MPEP §2106.04(a). In determining, whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong One of Step 2A), and whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong Two of Step 2A). See 2019 Revised Patent Subject Matter Eligibility Guidance (“PEG” 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7, 2019)).
Independent claims 13, 20, and 27 recite the abstract idea of a mental process. Specifically, when taken as a whole, is directed to the abstract idea of managing the workflow and practice of service providers as they carry out their work. (See, Applicant’s Specification paragraph 6)
Under step 2A-Prong One (part 1 of Mayo test), here, the claimed invention in claims 1, 12 and 19 are directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
Part II. 2A-prong two (additional elements that integrate the judicial exception into a practical application)
Under step 2A-Prong two (part 1 of Mayo test), this judicial exception is not integrated into a practical application under the second prong of Step 2A. In particular, the claims recite the additional elements beyond the recited abstract idea. Such as, “…system…processor…memory…graphical user interface…user device…computer program product…computer readable medium… project template…binary encoded signal…task metadata...word processing tool…application programming interface… “
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) and as insignificant extra-solution activity (i.e., "receiving, processing, storing, transmitting/notifying/displaying/presenting data"; "automating mental tasks") as well-understood, routine, conventional. (MPEP 2106.05(d))
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea with no significantly more elements.
As a result, Examiner asserts that the dependent claims are similarly directed to the abstract idea. Since these claims are directed to an abstract idea, the Office must determine whether the remaining limitations “do significantly more” than describe the abstract idea.
Part III. Determine whether any Element, or Combination, Amounts to“Significantly More” than the Abstract Idea itself
The Alice framework, we turn to step 2B (Part 2 of Mayo) to determine if the claim is sufficient to ensure that the claim amounts to “significantly more" than the abstract idea itself. These additional elements recite conventional computer components and conventional functions of:
Claims 13, 20, and 27 do not include any limitations amounting to significantly more than the abstract idea, alone.
Claims 13, 20, and 27 include various elements that are not directed to the abstract idea. These elements include, “…system…processor…memory…graphical user interface…user device…computer program product…computer readable medium… project template…binary encoded signal…task metadata...word processing tool…application programming interface…”these amounts to generic computing elements performing generic computing functions.
In addition, paragraphs 76-79 of the Applicant’s specifications detail any combination of a generic computer system program to perform the method (i.e., commercially available processors).
Generically recited computer elements do not add a meaningful limitation to the abstract idea because the Alice decision noted that generic structures that merely apply abstract ideas are not significantly more than the abstract ideas.
The dependent claims further limit the abstract idea without adding significantly more. This is taking into consideration claims limitation elements that includes “…plug in program…” These limitations, similar to the limitation elements of the independent claims above, generic computing elements performing generic computing functions.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Further, Examiner notes that the additional limitations, when considered as an ordered combination, add nothing that is not already present when looking at the additional elements individually.
Therefore, the dependent claims are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to independent claims 1, 20, 27.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 13-32 are rejected under 35 U.S.C. 103 as being unpatentable over Horton (US Pub. No. 2006/0259524) (Hereinafter, Horton) in view of Cornet (US Pub. No. 2017/0169520) (Hereinafter, Cornet) in further view of Heukelom (US20200250622) (Hereinafter, Heukelom).
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 (i.e., changing from AIA to pre-AIA ) 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.
As per claim 13,
Horton teaches,
A system comprising memory and one or more processors communicatively coupled to the memory, the one or more processors configured to:
(Abstract)
receive a project template that specifies one or more tasks to be performed in connection with a project wherein the one or more tasks are correlated with respective portions of a factual matrix describing a set of facts associated with the project;
(Paragraph 68, noting “…first tier (tier 0) is the global document repository 206 and includes draft, generic financial documents and templates. The generalized documents and templates in the first tier are publicly available. Users can use the documents in the global repository 206 as a starting source by customizing the generalized documents.; see also, paragraph 33, none embodiment, the custom document template comprises a standard XML-based format. Document translators (not shown) convert the documents the documents in the document repository 212 to and from conventional word processing and/or spreadsheet applications (e.g., Word, WordPerfect, Lotus Notes, Excel, HTML). The document translators allow users to use their own various, existing word processing tools while maintaining document formats, style guides, and templates.; see also, paragraph 36, The project management sub-module 224 provides a user with the ability to create and administer project teams, assign project tasks and timelines, track tasks and responsibilities, and generate task and project completion reports and alerts…”)
Horton does not teach; however, Cornet does teach,
Integrate a plug-in program component configured for real-time monitoring of the one or more tasks into a word processing tool for the project template;
(Paragraphs 215-218 and corresponding Figs. 6 & 23; discussing the blue bar which is information showing how much time was spent using a Microsoft office tool program in real time for each task; Noting the Applicant’s Specification indicating a plug-in program could be Microsoft Office Tool)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Cornet within the invention of Horton with the motivation of generating a system and method to track, report, bill and account for the time spent working by a service provider, such as, an attorney or other user. (See, Cornet Abstract)
Horton teaches,
configure a first portion of a graphical user interface of a user computing device for receiving input data related to the particular task;
(Fig. 4)
Horton does not teach; however, Cornet does teach,
extract metadata generated by a plug-in program component wherein the metadata indicates an amount of time spent using the word processing tool for the particular task;
(Paragraphs 215-218 and corresponding Figs. 6 & 23; discussing the blue bar which is information showing how much time was spent using a Microsoft office tool program in real time for each task; Noting the Applicant’s Specification indicating a plug-in program could be Microsoft Office Tool)
configure a second portion of the graphical user interface for rendering of second visual data associated with the extracted metadata, wherein the second visual data provides a human- interpretable representation of the amount of time spent using the word processing tool for the particular task;
(Figs. 6 & 23 showing the blue bar; this is read in conjunctions paragraphs 215-218 and above notations)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Cornet within the invention of Horton with the motivation of generating a system that encompasses multiple organizations of users for timeliness, monitoring, and/or rerouting tasks and activities for critical path requirements.
Horton/Cornet do not explicitly disclose, however, Heukelom does disclose,
provide, via the graphical user interface and based on content of the factual matrix,
at least one real-time suggestion about whether a new task should be considered or whether
a previously planned task may be obsolete;
(Paragraphs 57-61; wherein the factual matrix of the prior art is the dashboard (see, Fig. 7a-b, and the recommendation is the consideration of a new task for the user)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Heukelom within the invention of Horton/Cornet with the motivation of completing a discrete task that often involves numerous individuals, sometimes spanning multiple organizations for timeliness of sub-processes, monitoring and/or rerouting activities to maintain critical path requirements for users.
Horton teaches,
store an update to the factual matrix based on an indication that the particular task has been completed; and based on entries in the factual matrix, configure a third portion of the graphical user interface for receiving additional input data related to project.
(Paragraphs 33,36, 34, 57, 59, and 61 with corresponding Figs. 6a- 6b; noting on paragraph 36, “…generate task and project completion reports and alerts…” noting on 34, The content management sub-module 222 also provides the user with the ability to draft, review, edit, proofread, store, and retrieve documents…”; further noting on paragraph 57, “…A complete audit trail of changes and comments, from the initial file forward, are saved. As discussed below, several views of changes (for example, by editor or by date or by section) and comments are provided….”; further noting on paragraph 61 discussing viewing multiple documents edits and the ability to input more information or change the information in the documents).
As per claim 14,
Hornet does not teach; however, Cornet does teach,
The system of claim 13, wherein the one or more processors are further configured to:
determine a time entry based on the metadata generated by the plug-in program component;
(Paragraph 83 read in conjunction with paragraph 408)
and
store the time entry in a time entry database in association with the project, wherein the time entry database comprises one or more additional time entries received from one or more other user computing devices, and wherein the one or more additional time entries are associated with the project
(Paragraph 175)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Cornet within the invention of Horton with the motivation of generating a system that encompasses multiple organizations of users for timeliness, monitoring, and/or rerouting tasks and activities for critical path requirements.
As per claim 15,
Horton teaches,
The system of claim 14, wherein the project is a first project and the project template is a first project template, and wherein the one or more processors are further configured to:
receive an indication related to development of a second project;
(Paragraph 80, 51, 61)
And
Horton does not teach; however, Cornet does teach,
in response to a determination that the second project is similar to the first project,
generate a second project template for the second project based on the time entry
(Paragraph 118)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Cornet within the invention of Horton with the motivation of generating a system that encompasses multiple organizations of users for timeliness, monitoring, and/or rerouting tasks and activities for critical path requirements.
As per claim 16,
Horton teaches,
The system of claim 13, wherein the one or more processors are further configured to:
configure a fourth portion of the graphical user interface for receiving data related to one or more response to one or more questions regarding a nature of the project;
(Paragraph 82 and for context paragraph 81)
and
apply logic to the one or more responses to generate the project template.
(Figs. 6 A and 6 B)
As per claim 17,
Horton teaches,
The system of claim 13, wherein the one or more processors are further configured to:
configure a fourth portion of the graphical user interface for receiving data related to one or more response to one or more questions regarding a nature of the project;
(Paragraphs 81 & 82)
and
store the data related to the one or more responses in the factual matrix.
(Paragraph 34with Fig. 6 B and in conjunction with paragraph 54).
As per claim 18,
Horton/Cornet do not explicitly teach, however, Heukelom does teach,
The system of claim 13, wherein the one or more processors are further configured to:
generate data related to a real-time suggestion for one or more new tasks for the project based on the factual matrix; and
(paragraphs 57-61)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Heukelom within the invention of Horton/Cornet with the motivation of completing a discrete task that often involves numerous individuals, sometimes spanning multiple organizations for timeliness of sub-processes, monitoring and/or rerouting activities to maintain critical path requirements for users.
configure a fourth portion of the graphical user interface for providing the data related to the real-time suggestion for the one or more new tasks.
(Figs. 6 A and 6 B)
As per claim 19,
Horton teaches,
the system of claim 13, wherein the one or more processors are further configured to:
generate data related to a prediction as to whether a task of the project is obsolete based on the factual matrix
(Paragraphs 80-82)
configure a fourth portion of the graphical user interface for providing the data related to the prediction
(Figs. 6 A and 6 B).
As per claims 20-26:
The claims recite similar limitations to the claims above, however, in a method form. Horton does teach their invention within such a form, (see, Abstract). Therefore, claims 20-26 are rejected under similar limitations rationale as claims above, claims 13-19.
As per claims 27-32:
The claims recite similar limitations to the claims above, however, in a computer product form. Horton teaches the prior art invention in such form, see, Abstract. Therefore, claims 27-32 are rejected under similar limitations rationale as claims above, claims 13-19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZAHRA ELKASSABGI whose telephone number is (571)270-7943. The examiner can normally be reached Monday through Friday 11:30 to 8:00.
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ZAHRA . ELKASSABGI
Examiner
Art Unit 3623
/RUTAO WU/Supervisory Patent Examiner, Art Unit 3623
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