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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/18/2025 has been entered.
Response to Arguments
Applicant's arguments filed 08/18/2025 have been fully considered, but they are not fully persuasive. The 35 USC § 101 Double Patenting rejections of claims 1-22 are applied in light of Applicant's amendments.
The Applicant argues “The claims integrate the use of predictive models into a practical application that provides an improvement to the field of enterprise resource management.” (Remarks 08/18/2025)
In response, the Examiner respectfully disagrees. The claimed subject matter, is directed to an abstract idea by reciting concepts performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “Mental Process”, and reciting mathematical relationships, mathematical formulas or equations, mathematical calculations which falls into the “Mathematical concepts” group within the enumerated groupings of abstract ideas set forth in the 2019 PEG. The mere nominal recitation of a generic computer does not take the claim limitation out of methods of the mental processes and/or mathematical concepts grouping. The limitations below are a combination of both abstract ideas as they utilize predicative models (mathematical concepts) to monitor/determine/analyze information (mental process).
A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation. For example, a step of "determining" a variable or number using mathematical methods or "performing" a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation.
The claimed subject matter is merely claims a method for calculating and analyzing (predicting ) information. Although it may be intended to be performed in a digital environment, the claimed subject matter (as currently claimed in the independent claim) speaks to the calculating and analyzing (modeling and projecting) data. Such steps are not tied to the technological realm, but rather utilizing technology to perform the abstract idea (mathematical concepts). Additionally, the claimed subject matter can also be categorized as a Mental Process as it recites concepts performed in the human mind (observation and evaluation). The steps of calculating data, training/updating models, and generating a model can be performed by a human (mental process/pen and paper). The practice of calculating information and constructing models with set parameters and timelines can be performed without computers, and thus are not tied to technology nor improving technology.
The solution mentioned in the amended limitation is not implemented/integrated into technology and thus not an improvement to the technical field. Further, there is no integration into a practical application as the claims can be interpreted as humans per se, as the claims fail to tie the steps to technology; insignificant extra solution activities (which are merely calculating and/or analyzing data).
The steps relied upon by the Applicant as recited does not improve upon another technology, the functioning of the computer itself, or allow the computer to perform a function not previously performable by a computer. The claims do not mention to any use of a specialized computer and/or processor. The Applicant is using generic computing components (processors) to perform in a generic/expected way (obtaining and analyzing data).The abstract idea is not particular to a technological environment, but is merely being applied to a computer realm. The process of calculating and analyzing data, and performing additional analysis can be done without a computer, and thus the claims are not “necessarily rooted", but rather they are utilizing computer technology to perform the abstract idea. The Examiner does not recognize any elements of the Applicant's claims and/or specification that would improve or allow the computer to perform a function(s) not previously performable by the computer, or improve the functioning of the computer itself. It is insufficient to indicate that the claims are novel and non-obvious, and thus contain “something more.” Just because the components may perform a specialized function does not mean that that the computer components are specialized. As such the application of the abstract idea of collecting and analyzing data models, and performing correlation analysis is insufficient to demonstrate an improvement to the technology.
The use of Artificial Intelligence (AI), machine learning (ML) models, and/or artificial neural networks (ANN) fall within the realm of abstract ideas. They are, at their core, mathematical algorithms implemented on a computer. As highlighted in Examples 47-49 of the 2024 Patent Subject Matter Eligibility Guidance, the USPTO has consistently viewed claims directed to such models as being drawn to abstract ideas. These examples illustrate claims that, while couched in the language of specific applications, ultimately boil down to mathematical relationships and calculations.
For instance, consider a claim directed to "the predictive model based on the determined updated capacity." While this claim appears to have a practical application, a closer examination reveals that the core of the invention is the underlying mathematical model and its training process.
Furthermore, even if the claim recites specific steps related to data collection, preprocessing, or post-processing, these steps often represent well-understood, conventional activities. As demonstrated in Examples 47-49, adding such conventional elements to a claim directed to an abstract idea does not necessarily transform it into a patent-eligible application. These examples illustrate situations where the additional steps were deemed insufficient to provide an "inventive concept" that meaningfully narrowed the scope of the abstract idea. In the context of machine learning, simply collecting and preparing data for input into a model, or applying the model's output to a particular problem, falls into this category of conventional activity.
The Applicant has not created a new learning algorithm, but rather optimizing existing algorithm(s) or the application of known techniques to a new dataset. Such incremental advancements, while potentially valuable for business, do not automatically confer patent eligibility or a technological improvement. As highlighted in the Alice framework, the mere recitation of known components or processes does not necessarily amount to an inventive concept.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 recites “to generate output for comparison with user action responsive to the generated output.". It is unclear what is being claimed. It is unclear how the output is being generated if it first necessitates user action. For purposes of examination, the Examiner will interpret the claim language to mean that an output is generated after the user action is received.
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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Claims 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the “2019 Revised Patent Subject Matter Eligibility Guidance” (published on 1/7/2019 in Fed. Register, Vol. 84, No. 4 at pgs. 50-57, hereinafter referred to as the “2019 PEG”).
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the method (claims 1-10 and 21) and system (claims 11-20 and 22) are directed to potentially eligible categories of subject matter (i.e., process, machine, and article of manufacture respectively). Thus, Step 1 is satisfied.
With respect to Step 2, and in particular Step 2A Prong One of 2019 PEG, it is next noted that the claims recite an abstract idea by reciting concepts performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “Mental Process”, and reciting mathematical relationships, mathematical formulas or equations, mathematical calculations which falls into the “Mathematical concepts” group within the enumerated groupings of abstract ideas set forth in the 2019 PEG. The mere nominal recitation of a generic computer does not take the claim limitation out of methods of the mental processes and/or mathematical concepts grouping. The limitations below are a combination of both abstract ideas as they utilize predicative models (mathematical concepts) to monitor/determine/analyze information (mental process).
A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation. For example, a step of "determining" a variable or number using mathematical methods or "performing" a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation.
The limitations reciting the abstract idea(s) (Mental process), as set forth in exemplary claim 1, are: monitoring… user activity related to compliance with an output of a predictive model…based on a capacity and/or a cost-benefit of the output, the monitoring including receiving, for each of a plurality of inputs to the predictive model, data indicating whether a user took action associated with the output of the predictive model, a capacity of the user, and a cost-benefit associated with the output of the predictive model, determining, by the predictive system, based on the received data, an updated capacity indicating a more accurate indication of the available resources for processing the output of the predictive model; providing…the updated capacity; updating…the predictive model based on the determined updated capacity, wherein the updated predictive model including the updated capacity indicating a more accurate indication of the available resources for processing the output of the predictive model is applied to new inputs to the updated predictive model; and, in response to determining the updated capacity …; applying the selected new model or the kept predictive model to new inputs to generate output for comparison with user action responsive to the generated outputIndependent claim 11 recites the system for performing the method of independent claim 1 without adding significantly more. Thus, the same rationale/analysis is applied.
With respect to Step 2A Prong Two of the 2019 PEG, the judicial exception is not integrated into a practical application. The additional elements are directed to by a predicative system… wherein the predictive model outputs at least one of a decision, recommendation, or classification… the monitoring including receiving, for each of a plurality of inputs to the predictive model, data indicating whether a user took action associated with the output of the predictive model…; and wherein the predictive model forms part of a set of models trained according to respective capacity levels, wherein the capacity is associated with available resources for processing the output of the predictive model… automatically causing the predictive system to select a new model from a set of models or keep the predictive model, according to the updated capacity; A system comprising: at least one data processor; and memory storing instructions which, when executed by the at least one data processor, causes the data processor… (as recited in claims 1 and 11). However, these elements fail to integrate the abstract idea into a practical application because they fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional limitation(s) is/are directed to: by a predicative system… wherein the predictive model outputs at least one of a decision, recommendation, or classification… the monitoring including receiving, for each of a plurality of inputs to the predictive model, data indicating whether a user took action associated with the output of the predictive model…; and wherein the predictive model forms part of a set of models trained according to respective capacity levels… automatically causing the predictive system to select a new model from a set of models or keeping the current model, according to the updated capacity and/or updated cost-benefit; A system comprising: at least one data processor; and memory storing instructions which, when executed by the at least one data processor, causes the data processor… (as recited in claims 1 and 11) for implementing the claim steps/functions. These elements have been considered, but merely serve to tie the invention to a particular operating environment (i.e., computer-based implementation), though at a very high level of generality and without imposing meaningful limitation on the scope of the claim.
In addition, Applicant’s Specification (paragraph [0064]) describes generic off-the-shelf computer-based elements for implementing the claimed invention, and which does not amount to significantly more than the abstract idea, which is not enough to transform an abstract idea into eligible subject matter. Such generic, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible, as noted at pg. 74624 of Federal Register/Vol. 79, No. 241, citing Alice, which in turn cites Mayo. See, e.g., Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrate the abstract idea into a practical application. Their collective functions merely provide conventional computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that the ordered combination amounts to significantly more than the abstract idea itself. Further, the courts have found the presentation of data to be a well-understood, routine, conventional activity, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 (see MPEP 2106.05(d)).
The dependent claims (2-10 and 12-22) are directed to the same abstract idea as recited in the independent claims, and merely incorporate additional details that narrow the abstract idea via additional details of the abstract idea. For example claims 2-7 and 21 “wherein the predictive model comprises at least one of a classifier, a regression model, principal component analysis, singular value decomposition, least squares model, polynomial fitting model, k-means clustering model, logistic regression model, support vector machines, neural networks, conditional random fields, or decision trees; wherein determining the updated capacity and/or the updated cost-benefit includes increasing or decreasing the capacity and/or cost-benefit; wherein monitoring user activity related to compliance with an output of the predictive model comprises monitoring a field within a dataset for modification that indicates specific action by the user; wherein the determining the updated capacity and/or updated cost-benefit includes determining that the user treats an input to the predictive model differently than indicated by the output of the predictive model; determining that the user treats an input to the predictive model differently than indicated by the output of the predictive model; determining a performance of the predictive model; determining a performance of the user; and determining a new model in response to the performance of the user exceeding the performance of the model; receiving data characterizing performance of a plurality of models associated with a plurality of users, each of the plurality of models associated with a respective user from the plurality of users; receiving data characterizing, for each of the plurality of users, a respective compliance of the respective user; determining a differential pattern of performance and compliance across the plurality of models and the plurality of users; and determining, based on the differential pattern of performance and compliance, a desegregated model performance and a desegregated user compliance; wherein the capacity characterizes a number of events the user processes within a given period of time; wherein an event among the number of events includes a sales opportunity; wherein the cost-benefit characterizes a cost or benefit associated with the predictive model producing one or more outputs and the user taking an action associated with the respective one or more outputs or the user not taking an action associated with the respective one or more outputs; determining, by the predictive system, based on the received data, an updated cost- benefit; providing, by the predictive system, the updated cost-benefit; updating, by the predictive system, the predictive model based on the determined updated cost-benefit, wherein the updated predictive model including the updated cost-benefit is applied to new inputs to the updated predictive model ”, without additional elements that integrate the abstract idea into a practical application and without additional elements that amount to significantly more to the claims. The remaining dependent claims (12-20 and 22) recite the system for performing the method of claims 2-10. Thus, the same rationale/analysis is applied. Thus, all dependent claims have been fully considered, however, these claims are similarly directed to the abstract idea itself, without integrating it into a practical application and with, at most, a general purpose computer that serves to tie the idea to a particular technological environment, which does not add significantly more to the claims.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Accordingly, the subject matter encompassed by the dependent claims fails to amount to significantly more than the abstract idea itself.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-22 are rejected on the ground of nonstatutory double patenting over claims 1-33 of U.S. Patent No. 11,829,918 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
Claims of instant App. dated 10/20/2023
Claims of US Pat. No. 11,829,918
1 and 21
1
2
NA
3
2
4
3
5
11
6
10 and 11
7
11
8
15
9
14
10
NA
11 and 22
17
12
NA
13
18
14
19
15
27
16
26 and 27
17
27
18
14
19
15
20
NA
The method/system/apparatus (claims 1-33) of U.S. Patent No. 11,829,918 are configured with the functionality to perform the corresponding functions described by the method/system/apparatus (claims 1-20) of the instant application, such that the methods recited in the instant claims would have been obvious variants of the system and computer program product since one skilled in the art would reasonably understand a method as being obvious given a system and computer program product configured to perform the steps/functions of the method.
The chart above maps claims of the instant application to corresponding claims of U.S. Patent 11,829,918 that are patentably indistinct, though not identical. One of ordinary skill in the art would have recognized the slight differences between the claim language of the corresponding claims as being directed towards intention, slight variations in terminology, or obvious variants of corresponding claim elements, and therefore these claims are not patentably distinct from one another despite these slight differences. Accordingly, claims 1-20 of the instant application would have been deemed obvious in view of the above-noted claims of the ‘918 patent since "anticipation is the epitome of obviousness." See In re Kalm, 378 F.2d 959, 962 (CCPA 1967).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arif Ullah, whose telephone number is (571) 270-0161. The examiner can normally be reached from Monday to Friday between 9 AM and 5:30 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Beth Boswell, can be reached at (571) 272-6737. The fax telephone numbers for this group are either (571) 273-8300 or (703) 872-9326 (for official communications including After Final communications labeled “Box AF”).
/Arif Ullah/Primary Examiner, Art Unit 3625