Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office action is in response to Applicant’s amendment submitted on January 13, 2026.
Claims 1, 3-16, 18-20 are pending in the application.
Response to Arguments/Remarks
Claim Rejections - 35 USC § 101
Claims 1-20 were rejected under 35 U.S.C. 101 because the claimed invention was directed to an abstract idea without significantly more.
(1) Applicant argued that the claims are not directed to a mental process. The preamble restricts the method to a “computer-implemented context” and claims require monitoring a stream of collected events to detect a trigger condition. A human cannot practically monitor real-time digital event stream, identify types against a predetermined list, and simultaneously track counts to define "sequences" for transmission.
In response,
MPEP 2106.04(a)(2)(III)
Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"). Mental processes recited in claims that require computers are explained further below with respect to point C.
MPEP 2106.05(f) states,
Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’".
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
The courts do not distinguish a mental process performed by humans and mental processes performed on a computer. Claim 1 is amended to require a computer by reciting, “computer-implemented method.” The “computer” is a generic computer and amounts to no more that applying the judicial exception on a computer. The use of a computer to achieve process that cannot be mentally performed does not integrate a judicial exception into a practical application or provide significantly more. For example, a “process for monitoring audit log data that is executed on a general-purpose computer where the increased speed in the process comes solely from the capabilities of the general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016)” was found to be to be mere instructions to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process.
The claims do not comprise elements of monitoring real-time digital event stream. The claims recite, “events,” and does not define the events as “real-time digital event stream.” The claims have been amended to recite, “monitoring the collected events to determine when a given number of the collected events.” The examiner disagrees that a human is not capable of performing the “monitoring.” The claim does not specify how the “monitoring” is accomplished nor define the form of the collected events. A human is capable of receiving events, such as information that is presented on a paper or a generic display, and evaluating the events, including counting that a certain number of events have occurred.
(2) Applicant argued that the claims integrate the idea into a practical application because they provide a specific improvement to the functioning of computer and network resources. The present claims employ a specific, non-conventional approach (monitoring time intervals of sequences to dynamically update selection coefficients) to improve network bandwidth efficiency and remote processor load.
In response, MPEP 2106.05(a)
After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016) (patent owner argued that the claimed email filtering system improved technology by shrinking the protection gap and mooting the volume problem, but the court disagreed because the claims themselves did not have any limitations that addressed these issues). That is, the claim must include the components or steps of the invention that provide the improvement described in the specification.
It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field.
The examiner respectfully disagrees because the steps that provide the improvements are not recited in the claims. Additionally, the claims do not have additional elements that amount to more than the judicial exception that provide the improvement. Applicant argued that the claimed invention dynamically throttles the volume of data transmitted to a remote device based on the rate of incoming events (determined by the monitored time interval). The claims recite “updating, for each respective type of events, the selection coefficients”, and “applying the updating the updated selection coefficients,” the claims do not actually comprise a feature of throttling the events and sending events at modified rate to reduce the load of resources of the remote device.
For instance, In Finjan Inc v. Blue Coat Systems, the Federal Circuit determined that the claims recited additional elements that reflected the improvement. The court identified these benefits as improving computer functionality, and verified that the claims recite additional elements (e.g., specific steps of using the security profile in a particular way) that reflect this improvement. In BASCOM Global Internet Servs. v. AT&T Mobility, LLC, the Federal Circuit found the claimed system as an inventive concept because of non-conventional and non-generic arrangements of the additional elements, installation of filtering tool at a specific location, removed from the end-users, with customizable filtering features specific to each end user.
(3) Applicant argued that examiner has withdrawn the §103 rejection, admitting that the specific combination of monitoring intervals and updating coefficients is not obvious over the prior art. Applicant argued that specific combination of steps is novel and non-obvious, it cannot be “well-understood-routing, and convention” in the exact arrangement claimed.
In response,
MPEP 2106.05 states in part,
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9).
Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103) is further discussed in MPEP § 2106.05(d).
The determination of eligibility is separate from the determination of novelty. Patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.
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, 3-16, 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 16, broadest reasonable interpretation of the steps of the claim fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and opinion. See MPEP 2106.04(a)(2), subsection III.
The claim recites the limitation of “collect events and identify, for each respective collected event of the collected events, a type the respective collected event belongs to a predetermined list of types of events” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. The “collect events and identify, for each event of the collected events” in the context of the claim encompasses a person receiving information, such as by using a paper with information, and performing mental evaluation of the information to identify particular types of events. The claim does not place any limits on how the steps of collecting and identify are accomplished such that it is beyond the capability of the human mind.
The claim recites the limitation of “determine, for each respective type of events that is identified, a selection coefficient that indicates a proportion of events of the respective type of events to be transmitted to a remote device” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. The “determine… a selection coefficient” in the context of the claim encompasses a person evaluating the types of events and selecting and/or formulating a selection coefficient, such as the number of events that should be evaluated. Additionally, paragraphs [0048]-[0050] discloses that the coefficient may be determined based on upon a formula, i.e., a mathematical calculation, which is an abstract idea. The claim does not place any limits on how the determining is accomplished such that it is beyond the capability of the human mind.
The claim recites the limitation of “monitoring the collected events to determine when a given number of the collected events is reached, combine the collected events into a sequence, and determine, for the sequence, a time interval for which the given number of the collected events is collected” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. The “monitoring the collected events to determine when a given number of the collected events” is a step capable of being performed by a human. The claim does not place limits on how the monitoring is accomplished such that it is beyond human capability. The “monitoring” encompasses a person receiving events, such as presented on a paper or a generic display, and evaluating the events, including counting that certain number of events has occurred. The “combine the collected events into a sequence” and “determine, for the sequence a time interval” in the context of the claim encompasses a person mentally, or by pen and paper, chronologically ordering the events based on time associated with the events and determining the time interval by determining a difference between two events.
The claim recites the limitation of “for each respective type of events, selecting a plurality of events from the collected events in a sequence for transmission to the remote device based on the selection coefficients” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. The “select events for transmission” in the context of the claim encompasses a person mentally, or by pen and paper, identifying and marking particular events for notifying another person and/or further analysis.
The claim recites the limitation of “update, for each respective type of events, the selection coefficients based on comparing the time interval for which the given number of the collected events is collected with a predetermined time period” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. The “updating” and “comparing” in the context of the claim may encompass a person mentally comparing two time periods, a time period in which a certain number of events were collected to another time period, and revising the number of events that are to be selected from a next sequence of events.
The claim recites the limitation of “applying the updated selection coefficients for a next sequence of the collected events” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. The “applying” in the context of the claim may encompass a person selecting events from a listing of events based on a reevaluation of the number of events that are to be selected. The claim does not place limits and/or further specify how the “applying” is performed such that it is beyond human capability.
If the claim limitations, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. The claim recites additional elements of “at least one processor of a computing device” configured to perform each step of the claim. The processor and computing device are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer. The claim also recites the additional element, “transmit the plurality of selected events to the remote device.” The additional element amounts to “receiving or transmitting data over a network, e.g., using the Internet to gather data” which the courts have found 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. See MPEP 2106.05(d) Accordingly, the 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 claim is directed to an abstract idea.
The claim does 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 using a computing device to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Furthermore, the features of transmitting events are considered as “receiving or transmitting over a network, e.g,, using the Internet data gather data,” which the courts have found to be well‐understood, routine, and conventional functions. The activity of “data gathering” has been also found to be insignificant extra-solution activity. The limitations do not qualify as additional elements that are significantly more than the judicial exception. The claim is not patent eligible.
Claim 1, which is directed to a computer-implemented method, is rejected under a similar rationale as claim 16, which is directed to a system comprising at least one processor of a computing device configured to perform functions.
Claim 20 recites the additional element of a “non-transitory computer-readable medium for filtering events for transmission to remote devices, wherein the set of instructions comprises instructions for” performing steps of the claims. The additional element is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer. Accordingly, the additional element does not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. The claim does 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 using a computer to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claims 3-10, 12-15, 18-19 are directed to an abstract idea. The claims are directed to evaluation of data and making a determination based on evaluation of the data, which is capable of being performed by a human, mentally and/or using pen and paper.
Claim 11 is directed to an abstract idea. The limitation of “receiving a feedback from a remote device” amounts to “receiving or transmitting data over a network, e.g., using the Internet to gather data” which the courts have found 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. See MPEP 2106.05(d) The activity of “data gathering” has been found to be insignificant extra-solution activity. See MPEP 2106.05(g) Accordingly, the 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 claim is directed to an abstract idea.
Conclusion
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/JOSHUA JOO/Primary Examiner, Art Unit 2445