DETAILED ACTION
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 .
Claim(s) 1-3, 5-8, 10-13, and 15 are pending for examination. Claims 1, 6, and 11 are amended. Claim(s) 4, 9, and 14 were previously cancelled. This action is Non-Final.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/23/2026 has been entered.
Response to Arguments
Applicant's arguments filed 2/23/2026 with respect to the 35 U.S.C. 101 rejection have been fully considered but they are not persuasive.
Claims 1-3, 5-8, 10-13, and 15 are not directed to an abstract idea: [...]
Re: Step 2A: Claims are not directed to a law of nature, natural phenomenon, or abstract idea.
Applicant Argues: In response, Applicant submits that amended claims 1, 6, and 11 integrate a judicial exception into a practical application in terms of achieving improvement in the functioning of a computer (MPEP §§ 2106.04(d)(1) and 2106.05(a)) i.e., assigned distinct non-zero weight factor value to security operations (network firewall) than zero weight factor value for document. Applicant submits that the amended claim limitation recites computing first ETI score (T-ETI) score, a subset of questions including a weight factor between a value 0 and a value 1 that assigns a degree of importance and impact of each question's perspective on the IT operational firewall in the security operations and the value 0 is assigned to a documentation in respect to the IT Operational endurance. The network firewall have a higher significance compared to documentation in respect to IT Operation endurance.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes as argued (i.e., assigned distinct non-zero weight factor value to security operations (network firewall) than zero weight factor value for document), and similarly claimed, “...computing first ETI score (T-ETI) score, a subset of questions including a weight factor between a value 0 and a value 1 that assigns a degree of importance and impact of each question's perspective on the IT operational firewall in the security operations and the value 0 is assigned to a documentation in respect to the IT Operational endurance...” are noted to be part of the abstract idea, thus, the purported improvement is to the abstract idea itself.
The features of “...computing first ETI score (T-ETI) score, a subset of questions including a weight factor between a value 0 and a value 1 that assigns a degree of importance and impact of each question's perspective on the IT operational firewall in the security operations and the value 0 is assigned to a documentation in respect to the IT Operational endurance...” are noted to fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite business relations. Further, such features are noted to encompass steps that a user can manually perform in the human mind or by a human using a pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mental processes” grouping of abstract ideas.
The examiner further respectfully notes use of “a hardware processor” to “compute” is noted to be additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. This element in the step 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 component and merely invoke such additional element as a tool to perform the abstract idea. See MPEP 2106.05(f). 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. The claim is directed to an abstract idea. Therefore, this argument is not persuasive.
Applicant Argues: Applicant submits that amended claims 1, 6, and 11 integrate a judicial exception into a practical application in terms of achieving improvement in the functioning of a computer (MPEP §§ 2106.04(d)(1) and 2106.05(a)) i.e., T-ETI score correspond to level of a service class associated with technology resource per dimension. The dimension comprises technology alignment, business/entity's resilience, security operations (SecOps), service continuity, an adaptability, and strategic governance.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes as argued, and similarly claimed, “...T-ETI score correspond to level of a service class associated with technology resource per dimension. The dimension comprises technology alignment, business/entity's resilience, security operations (SecOps), service continuity, an adaptability, and strategic governance” are noted to be part of the abstract idea, thus, the purported improvement is to the abstract idea itself.
The features of “...T-ETI score correspond to level of a service class associated with technology resource per dimension. The dimension comprises technology alignment, business/entity's resilience, security operations (SecOps), service continuity, an adaptability, and strategic governance” are noted to fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite business relations. Further, such features are noted to encompass steps that a user can manually perform in the human mind or by a human using a pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mental processes” grouping of abstract ideas.
The examiner further respectfully notes use of “a hardware processor” to “compute” is noted to be additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. This element in the step 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 component and merely invoke such additional element as a tool to perform the abstract idea. See MPEP 2106.05(f). 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. The claim is directed to an abstract idea. Therefore, this argument is not persuasive.
Applicant Argues: Applicant submits that amended claims 1, 6, and 11 integrate a judicial exception into a practical application in terms of achieving improvement in the functioning of a computer (MPEP §§ 2106.04(d)(1) and 2106.05(a)) i.e., assessing information technology (IT) operational endurance of an entity.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes as argued, and similarly claimed, “...assessing information technology (IT) operational endurance of an entity” are noted to be part of the abstract idea, thus, the purported improvement is to the abstract idea itself.
The features of “...assessing information technology (IT) operational endurance of an entity” are noted to fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite business relations. Further, such features are noted to encompass steps that a user can manually perform in the human mind or by a human using a pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mental processes” grouping of abstract ideas.
The examiner further respectfully notes use of “processor implemented method” is noted to be an additional element that is described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. This element in the step 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 component and merely invoke such additional element as a tool to perform the abstract idea. See MPEP 2106.05(f). 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. The claim is directed to an abstract idea. Therefore, this argument is not persuasive.
Applicant Argues: Applicant submits that amended claims 1, 6, and 11 integrate a judicial exception into a practical application in terms of achieving improvement in the functioning of a computer (MPEP §§ 2106.04(d)(1) and 2106.05(a)) i.e., identifying business service models including store services, delivery center, distribution center, head office/branch office business, data center, third party integrations, ecommerce, manufacturing plants, and research centers.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes as argued, and similarly claimed, “...identifying business service models including store services, delivery center, distribution center, head office/branch office business, data center, third party integrations, ecommerce, manufacturing plants, and research centers” are noted to be part of the abstract idea, thus, the purported improvement is to the abstract idea itself.
The features of “...identifying business service models including store services, delivery center, distribution center, head office/branch office business, data center, third party integrations, ecommerce, manufacturing plants, and research centers” are noted to fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite business relations. Further, such features are noted to encompass steps that a user can manually perform in the human mind or by a human using a pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mental processes” grouping of abstract ideas.
The examiner further respectfully notes use of “a hardware processor” to “identify” is noted to be additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. This element in the step 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 component and merely invoke such additional element as a tool to perform the abstract idea. See MPEP 2106.05(f). 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. The claim is directed to an abstract idea. Therefore, this argument is not persuasive.
Applicant Argues: Applicant submits that amended claims 1, 6, and 11 apply or use 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 (MPEP § 2106.05(e)) i.e., summing up D-ETI scores across previously chosen business service model including the data center, and the O-ETI score for corresponding business service model is computed/generated. upon all the D-ETI numbers are generated.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes as argued, and similarly claimed, “...summing up D-ETI scores across previously chosen business service model including the data center, and the O-ETI score for corresponding business service model is computed/generated. upon all the D-ETI numbers are generated” are noted to be part of the abstract idea, thus, the purported improvement is to the abstract idea itself.
The features of “...summing up D-ETI scores across previously chosen business service model including the data center, and the O-ETI score for corresponding business service model is computed/generated. upon all the D-ETI numbers are generated” are noted to fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite business relations. Further, such features are noted to encompass steps that a user can manually perform in the human mind or by a human using a pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mental processes” grouping of abstract ideas.
The examiner further respectfully notes use of “a hardware processor” to “sum” is noted to be additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. This element in the step 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 component and merely invoke such additional element as a tool to perform the abstract idea. See MPEP 2106.05(f). 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. The claim is directed to an abstract idea. Therefore, this argument is not persuasive.
Applicant Argues: Applicant submits that amended claims 1, 6, and 11 integrate a judicial exception into a practical application in terms of achieving improvement in the functioning of a computer (MPEP §§ 2106.04(d)(1) and 2106.05(a)) i.e., representing business service model including highest D- ETI score of 'm'. by characteristics of the service class of a highest attainable service class level.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes as argued, and similarly claimed, “...representing business service model including highest D- ETI score of 'm'. by characteristics of the service class of a highest attainable service class level” are noted to be part of the abstract idea, thus, the purported improvement is to the abstract idea itself.
The features of “...representing business service model including highest D- ETI score of 'm'. by characteristics of the service class of a highest attainable service class level” are noted to fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite business relations. Further, such features are noted to encompass steps that a user can manually perform in the human mind or by a human using a pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mental processes” grouping of abstract ideas.
The examiner further respectfully notes use of “a hardware processor” to “compute” is noted to be additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. This element in the step 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 component and merely invoke such additional element as a tool to perform the abstract idea. See MPEP 2106.05(f). 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. The claim is directed to an abstract idea. Therefore, this argument is not persuasive.
Applicant Argues: Therefore, Applicant believes that the judicial exception is integrated into a practical application and claims 1-3, 5-8, 10-13, are patent eligible (Step 2A: No).
Examiner’s Response: The examiner respectfully disagrees based on the examiner’s responses provided above. Therefore, this argument is not persuasive.
Re: Step 2B: Claims recite additional element(s) that amount to significantly more than the judicial exception(s).
Applicant Argues: Applicant believes that the subject matter of amended claims 1, 6, and 11 achieves significantly more in terms of assigned distinct non-zero weight factor value to security operations (network firewall) than zero weight factor value for document. Applicant submits that the amended claim limitation recites computing first ETI score (T-ETI) score, a subset of questions including a weight factor between a value 0 and a value 1 that assigns a degree of importance and impact of each question's perspective on the IT operational endurance, is presented to the entity. The weight factor of the value 1 is assigned to the network firewall in the security operations and the value 0 is assigned to a documentation in respect to the IT Operational endurance. The network firewall have a higher significance compared to documentation in respect to IT Operation endurance.
[...]
Further, referring to XY, LLC vs. Trans Ova Genetics, 968 F.3d 1323, 1330-32 (Fed. Cir. 2020), the Federal Circuit determined that claims to a method of operating a flow cytometry apparatus to classify and sort particles into at least two populations in real time to more accurately classify similar particles was not directed to "the abstract idea of using a 'mathematical equation that permits rotating multidimensional data' even though they may have involved mathematical concepts. Similar to the above referenced Federal Circuit decision, Applicant's claimed subject matter discloses assessment of information technology (IT) operational endurance of an entity. The step includes computing (i) a first Essential Technology Impact (ETI) score (T-ETI),a second ETI score (D-ETI), and a third ETI score (0-ETI) for each of the one or more relevant business service models. However, Applicant asserts that the mathematical concepts considered for operational endurance score for the entity based on the computed third ETI score, a maximum attainable value of the third ETI score using the identified current state of the one or more operations, and the identified degree of confidence of the one or more operations.
[...]
Therefore, taking all the claim elements individually, or in combination, the claim as a whole amounts to "significantly more" than an abstract idea of itself (Step 2B: Yes).
Applicant requests the examiner consider the above mentioned arguments submissions on the merits. By means of the aforementioned submissions, Applicant respectfully submits that the subject matter claimed does not merely constitute an abstract idea and constitutes significantly more than an abstract idea.
Accordingly, Applicant respectfully requests withdrawal of the rejection of claims 1-3, 5- 8, 10-13, and 15 under 35 U.S.C § 101.
Examiner’s Response: The examiner respectfully disagrees. The examiner respectfully notes that the “...computing first ETI score (T-ETI) score, a subset of questions including a weight factor between a value 0 and a value 1 that assigns a degree of importance and impact of each question's perspective on the IT operational endurance, is presented to the entity. The weight factor of the value 1 is assigned to the network firewall in the security operations and the value 0 is assigned to a documentation in respect to the IT Operational endurance” are noted to fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite business relations. Further, such features are noted to encompass steps that a user can manually perform in the human mind or by a human using a pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mental processes” grouping of abstract ideas. The examiner notes the features as noted above are part of the abstract idea, thus, the purported improvement is to the abstract idea itself. The examiner respectfully notes that the additional element of use of a “hardware processor” and/or memory, and/or communication interface to “compute” amounts to no more than mere instructions to apply the exception using a generic computer component and do not add anything that is not already present when they are considered individually or in combination. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. There are no meaningful limitations that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. Therefore, this argument is not persuasive.
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) 1-3, 5-8, 10-13, and 15 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Step 1: claim(s) 1-15 are directed to a process, machine, and/or manufacture. Therefore, the claims are directed to statutory subject matter under Step 1 (Step 1: YES). See MPEP 2106.03.
Prong 1, Step 2A: claim 1, and similar claim(s) 6 and 11, taken as representative, recites at least the following limitations that recite an abstract idea:
A
identifying,
identifying,
identifying,
computing,
wherein to compute the T-ETI score a subset of questions including a weight factor between a value 0 and a value 1 that assigns a degree of importance and impact of each question's perspective on the IT operational endurance, is presented to the entity, and
wherein the weight factor of the value 1 is assigned to a network firewall in the security operations and the value 0 is assigned to a documentation in respect to the IT Operational endurance,
(ii) a second ETI score (D-ETI) across the one or more associated technology domains, wherein the second ETI score corresponds to a dimension specific average T-ETI score across the one or more associated technology domains, and wherein the business service model include a highest D-ETI score of 'm', represented by characteristics of the service class of a highest attainable service class level, and
(iii) a third ETI score (O-ETI) for each of the one or more relevant business service models based on the first ETI score and the second ETI score, using one or more predefined tables, wherein the third ETI score corresponds to one or more operation model specific cumulative D-ETI score (O-ETI),
wherein the D-ETI scores are summed up across previously chosen business service model including the data center, and the O-ETI score for corresponding business service model is computed/generated, upon all the D-ETI numbers are generated, and wherein the one or more predefined tables comprise a service class lookup table, a dimension-attribute table, and an ETI lookup table;
computing,
mapping,
calculating,
The above limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in MPEP 2106.04(a)(2)(II), in that they recite "commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. The broadest reasonable interpretation of these limitations includes for claim 1, and for similar claim(s) 6 and 11 includes identifying a set of entity data..., identifying one or more relevant business service models..., ...select the one or more relevant business service models, identifying one or more technology domains..., ...select the one or more associated technology domains, based on the one or more relevant business service models identified..., computing scores for the preceding data using a tables, computing scores..., mapping scores to identifying current state of operations to meet one or more business objects and a degree of confidence to perform the one or more business objectives, and calculating an endurance score, thus, claim 1, and similar claim(s) 6 and 11 falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they recite business relations.
The above limitations, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas, enumerated in MPEP 2106.04(a)(2)(III), in that they recite as concepts performed in the human mind, including observations, evaluations, judgments, and opinions. That is, other than reciting for claim 1, and for similar claim(s) 6 and 11, i.e., hardware processor, memory, communication interface; nothing in these claim element(s) precludes the step(s) from practically being performed in the mind. For example, the broadest reasonable interpretation of these limitations for claim 1, and similar claim(s) 6 and 11, identifying a set of entity data..., identifying one or more relevant business service models..., ...select the one or more relevant business service models, identifying one or more technology domains..., ...select the one or more associated technology domains, based on the one or more relevant business service models identified..., computing scores for the preceding data using a tables, computing first..., second..., third... and “endurance”... scores..., mapping scores to identifying current state of operations to meet one or more business objects and a degree of confidence to perform the one or more business objectives, and calculating an endurance score, thus, encompasses steps that a user can manually perform in the human mind or by a human using a pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mental processes” grouping of abstract ideas.
Accordingly, these claims recite an abstract idea.
Prong 2, Step 2A: Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05(f)), (2) Adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)), (3) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)). Claim 1, and for similar claim(s) 6 and 11, recite i.e., hardware processor, an interface to select, memory, communication interface. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration (see Applicant’s Specification, ⁋[0029]). These elements in the steps 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 component and merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). 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. The claim is directed to an abstract idea.
As such, under Prong 2 of Step 2A, when considered both individually and as a whole, the limitations of Claim 1, and for similar claim(s) 6 and 11 are not indicative of integration into a practical application (Prong 2, Step 2A: NO). See MPEP 2106.04(d).
Since claim 1, and similar claim(s) 6 and 11 recites an abstract idea and fails to integrate the abstract idea into a practical application, claim 1, and similar claim(s) 6 and 11 is “directed to” an abstract idea under Step 2A (Step 2A: YES). See MPEP 2106.04(d).
Step 2B: The recitation of the additional elements is acknowledged, as identified above with respect to Prong 2 of Step 2A. These additional elements do not add significantly more to the abstract idea for the same reasons as addressed above with respect to Prong 2 of Step 2A.
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 elements of for claim 1, and for similar claim(s) 6 and 11, i.e., hardware processor, an interface to select, memory, communication interface; amounts to no more than mere instructions to apply the exception using a generic computer component and do not add anything that is not already present when they are considered individually or in combination. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, under Step 2B, there are no meaningful limitations in claim 1, and similar claim(s) 6 and 11 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO). See MPEP 2106.05.
Accordingly, under the Subject Matter Eligibility test, claim 1, and similar claim(s) 6 and 11 is ineligible.
Regarding Claims 2, 3, 5, 7, 8, 10, 12, 13, and 15, claims 2, 3, 5, 7, 8, 10, 12, 13, and 15 further defines the abstract idea that is present in their respective independent claims and hence are abstract for at least the reasons presented above w/ respect to “Certain Methods of Organizing Human Activity” as the claims recite further concepts of "commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations i.e., further features related to calculating and/or further recite “Mental Processes” as the claims recite further concepts that can be performed in the human mind, including observations, evaluations, judgments, and opinions. These dependent claim does not include any additional elements that integrate the abstract idea into a practical application; as such elements are recited at a high level of generality such that it amounts not more than mere instructions to apply the exception using a generic computer component. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do no not amount to significantly more than the abstract idea itself. Thus, the aforementioned claims are not patent-eligible.
Conclusion
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/ASFAND M SHEIKH/Primary Examiner, Art Unit 3626