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 with respect to rejections under 35 USC 101 have been fully considered but they are not persuasive. Applicant argues the claims are not directed to an abstract idea by referencing McRO. Examiner emphasizes that, while the claims in McRO were directed toward using limited rules, the limited rules were used in a process specifically designed to achieve an improved technological result in conventional industry practice, such that the claimed solution represents a technological improvement over the existing, manual 3-D animation techniques. Therefore, McRO’s claims are distinguishable from Applicant's claims because the limited rules or “statistical processing rules" involved in the claimed invention are not rooted in, or reasonably understood as encompassing, a technological solution that represents a technological improvement. The claimed invention merely determines and quantifies a digital service score by providing steps of the evaluation. Evaluation is one of the categories of mental process.
With respect to prong 2, Applicant argues the cloud-based platform and processor provide a practical application. As claimed, however, the processor and platform amount to using a computer as a tool to perform the abstract idea. Maintaining user identity is claimed with such generality that, as claimed, is part of the abstract idea. Anonymous response to a survey or evaluation is an abstract idea.
Applicants’ comparison to Example 40 is unfounded. The claim referenced offered a specific improvement over prior systems resulting in improved network monitoring. There is no analogous improvement to any network monitoring. The claims are directed to evaluating a service which is not a technical improvement. The rejection has been updated to reflect the most recent claim language.
Applicant’s arguments with respect to previous rejection under 35 USC 112 have been fully considered and are persuasive. The rejection under 35 USC 112 has been withdrawn.
Applicant’s arguments filed with respect to prior art rejections have been fully considered and are persuasive. The prior art rejection under 35 USC 102 has been withdrawn.
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.
Claim(s) 1-8, 10-13 and 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(s) 1-8, 10-13 and 15 is/are directed to a method and system. Thus, all the claims are within the four potentially eligible categories of invention, satisfying Step 1 of the Subject Matter Eligibility (SME) test.
As per Prong One of Step 2A of the §101 eligibility analysis set forth in MPEP 2106, the Examiner notes that the claims recite mental processes and certain methods of organizing human activity.
More specifically, independent claim 1 recites:
A method for evaluating a digital service
defining,
defining,
defining,
receiving,
processing,
determining,
calculating,
determining,
assigning, via the processor, a benchmark value to each of the one or more benchmarks equal to the calculated weighted total value for the corresponding one of the one or more benchmarks if the related particular functionality thereto is determined to be available in the digital service; [mental process – evaluation]
calculating,
calculating,
Independent Claim 11 recites similar claim limitations and therefore the same analysis applies. The claims recite data analysis steps to calculate a digital service score. The concept of data analysis is a fundamental business practice long prevalent in our system of commerce and categorized as certain methods of organizing human activity. The use of data analysis is also a building block of ingenuity in corporate planning. Thus, data analysis, like hedging, is an "abstract idea" beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356. In addition, the claims recite mental processes as indicated in the reproduced claim above. The nominal recitation of a cloud based platform and processor does not necessarily preclude the claim from reciting an abstract idea as evidenced by the analysis at Prong 2 of Step 2A.
Regarding Prong Two of Step 2A, a claim reciting an abstract idea must be analyzed to determine whether any additional elements in the claim integrate the judicial exception into a practical application. Limitations that are indicative of integration into a practical application include: Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a); Applying or using a judicial exception to effect a particular treatment or prophylaxis for disease or medical condition – see Vanda Memo; Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b); Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP 2106.05(e) and the Vanda Memo issued in June 2018.
In this case, the independent claims do not include limitations that meet the criteria listed above, thus the abstract idea is not integrated into a practical application. Both independent claim 1 and independent claim 11 recite a processor and cloud based platform which performs the steps which amounts to using a computer as a tool to perform the abstract idea. There is no integration into a practical application.
The dependent claims further limit the abstract idea and some recite additional elements that do not integrate the abstract idea into a practical application. The recitation of calculating a service category score in claims 2 and 12 is a mental process and certain methods of organizing human activity as indicated for claim 1. The processor amounts to using a computer as a tool to perform the abstract idea. There is no integration into a practical application. In claims 3 and 13, the defining, defining, receiving, calculating and calculating steps are mental process and certain methods of organizing human activity as indicated for claim 1. The processor amounts to using a computer as a tool to perform the abstract idea. There is no integration into a practical application. Claims 4-7, 10 and 15 recite calculation steps which are mental process and certain methods of organizing human activity as indicated for claim 1. The processor amounts to using a computer as a tool to perform the abstract idea. There is no integration into a practical application. Claim 8 recites a ranking step which is a mental process and certain methods of organizing human activity as indicated for claim 1. The processor amounts to using a computer as a tool to perform the abstract idea. There is no integration into a practical application.
The claims do not include limitations beyond generally linking the use of the abstract idea to a particular technological environment. When considered individually and in combination, the system and software claim elements only contribute generic recitations of technical elements to the claims. It is readily apparent, for example, that the claim is not directed to any specific improvements of these elements. The invention is not directed to a technical improvement. When the claims are considered individually and as a whole, the additional elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense.
Lastly and in accordance with Step 2B, 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, and when considered individually and in combination, the additional elements amount to no more than mere instruction to apply the exception using generic computer component. Mere instruction to apply an exception using generic computer components cannot provide an inventive concept.
Allowable Subject Matter
Claims 1-8, 10-13, and 15 are allowable over the prior art, but remain ineligible under 35 USC 101. The closest prior art, Parker et al, US 2004/0059628, and Pavletic et al, US 2019/0295114, taken alone or in combination, fails to explicitly teach calculating a digital service index as a first percentage of number of functionalities related with the one or more benchmarks available in the digital service. As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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 JOHNNA LOFTIS whose telephone number is (571)272-6736. The examiner can normally be reached M-F 7:00am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Epstein can be reached at 571-270-5389. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOHNNA LOFTIS
Primary Examiner
Art Unit 3625
/JOHNNA R LOFTIS/Primary Examiner, Art Unit 3625