DETAILED ACTION
Response received on October 28, 2025 has been acknowledged. Claims 1, 3-4, 7-8, 10-11, 14-15, and 17-18 have been amended, Claims 2, 9, and 16 are cancelled and Claims 21-22 are newly added. Therefore, Claims 1, 3-8, 10-15, and 17-22 are pending. The double patent rejection is maintained.
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 .
Status of Claims
This Final Office action is in response to the application filed on on October 30, 2023 and in response to Applicant’s Arguments/Remarks filed on 10/28/2025. Claims 1, 3-8, 10-15, and 17-22 are pending.
Priority
Application 18497189 was filed on 10/30/2023 and is a continuation of U.S. Patent Application
18/497,073, filed October 30, 2023.
Applicant’s Reply
Applicant's response of on October 28, 2025 has been entered. The examiner will address applicant’s remarks at the end of this office action.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6-8, 13-15, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7-8, 11, 14-15, and 18 of U.S. Patent application 18/497,073, hereafter as ‘073 in view of Zwillings (US 2008/0091676). Although the claims at issue are not identical, they are not patentably distinct from each other because claims in both applications are directed to facilitate automatic transmission of the evidence based on requirements of standards.
18/497,189
18/497,073
Claims 1
A system comprising:
a processing device;
a memory device that includes instructions executable by the processing device for causing the processing device to perform operations comprising: receiving, from a user device, a first request for evidence associated with a standard;
in response to receiving the first request, accessing a mapping table that relates each piece of evidence of a plurality of pieces of evidence to one or more standards of a plurality of standards, wherein the plurality of pieces of evidence are stored in a repository, and wherein the mapping table relates each piece of evidence of the plurality of pieces of evidence to the one or more standards of the plurality of standards based on each piece of evidence satisfying a requirement of the one or more standards;
determining, using the mapping table, whether the evidence associated with the standard is in the repository;
in response to determining that a piece of evidence associated with the standard
in response to determining that the second piece of evidence associated with the standard is included in the repository;
retrieving the second piece of evidence from the repository
accessing a second mapping table that correlates evidence to users, wherein the second piece of evidence is correlated to a second user in the second mapping table
determining, based on the second mapping table, that the second piece of evidence is correlated with the second user
based on determining that the second piece of evidence is correlated with the second user, automatically transmitting the second piece of evidence to a second user device associated with the second user
‘073 does not disclose “is excluded from the repository: transmitting a second request to a computing system to retrieve the piece of evidence from the computing system, the computing system being separate from the repository; and after receiving the piece of evidence from the computing system, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository.
However, Zwilling teaches:
in response to determining that a piece of evidence associated with the standard is excluded from the repository (See [0045.)
after receiving the piece of evidence from the computing system, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository (See [0033]; [0035-0038]; Fig. 16,).
‘073 and Zwilling are both considered to be analogous to the claimed invention because they are in the same field of generating a compliance verification framework for an organization. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘073 to further include in response to determining that a piece of evidence associated with the standard is excluded from the repository and after receiving the piece of evidence from the computing system, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository as taught by Zwilling. This is desirable such that it allows for helping to manage documents to determine compliance with industry standards (Zwilling [0007]).
Claims 1
A system comprising:
a processing device;
a memory device that includes instructions executable by the processing device for causing the processing device to perform operations comprising: storing a plurality of pieces of evidence in a repository;
subsequent to storing the plurality of pieces of evidence in the repository, receiving, from a user device, a request for evidence associated with a standard;
in response to receiving the request, accessing a mapping table that elates each piece of evidence of the plurality of pieces of evidence to one or more standards of a plurality of standards, wherein the mapping table relates each piece of evidence of the plurality of pieces of evidence to the one or more standards of the plurality of standards based on each piece of evidence satisfying a requirement of the one or more standards;
identifying, using the mapping table, at least one piece of evidence of the plurality of pieces of evidence related to the standard;
in response to identifying the at least one piece of evidence of the plurality of pieces of evidence related to the standard, obtaining the at least one piece of evidence from the repository and transmitting the at least one piece of evidence to the user device as a response to the request for the evidence associated with the standard.
identifying, based on the second requirement of the first standard, a second piece of evidence;
determining that the second piece of evidence is not one of the plurality of pieces of evidence stored in the repository;
determining that the second standard is one of the plurality of standards described in the mapping table;
subsequent to obtaining the first piece of evidence and the second piece of evidence, transmitting the first piece of evidence and the second piece of evidence to the user device as a response to the network request for the evidence associated with the first standard.
Claim 6
wherein the plurality of pieces of evidence comprises log data, data records, and files, the log data being receivable from a log data tool executing on one or more of the plurality of computing systems.
Claim 4
wherein the plurality of pieces of evidence comprises log data, data records, and files, the log data being receivable from a log data tool executing on at least one user device.
Claim 7
wherein the operations further comprise: detecting a modification to at least one requirement of the standard, wherein the modification to the at least one requirement changes the evidence usable to satisfy the at least one requirement of the standard;
and updating the mapping table based on the modification to the at least one requirement.
Claim 7
wherein the memory device further includes instructions executable by the processing device for causing the processing device to perform operations comprising: detecting a modification to at least one requirement of the standard, wherein the modification to the at least one requirement changes the at least one piece of evidence of the plurality of pieces of evidence that is usable to satisfy the at least one requirement of the standard;
and updating the mapping table based on the modification to the at least one requirement.
Claim 8
A computer-implemented method comprising: receiving, by a processor and from a user device, a first request for evidence associated with a standard;
in response to receiving the first request, accessing a mapping table that relates each piece of evidence of a plurality of pieces of evidence to one or more standards of a plurality of standards, wherein the plurality of pieces of evidence are stored in a repository, and wherein the mapping table relates each piece of evidence of the plurality of pieces of evidence to the one or more standards of the plurality of standards based on each piece of evidence satisfying a requirement of the one or more standards;
determining, using the mapping table, whether the evidence associated with the standard is in the repository;
in response to determining that a piece of evidence associated with the standard
in response to determining that the second piece of evidence associated with the standard is included in the repository;
retrieving the second piece of evidence from the repository
accessing a second mapping table that correlates evidence to users, wherein the second piece of evidence is correlated to a second user in the second mapping table
determining, based on the second mapping table, that the second piece of evidence is correlated with the second user
based on determining that the second piece of evidence is correlated with the second user, automatically transmitting the second piece of evidence to a second user device associated with the second user
‘073 does not disclose “is excluded from the repository: transmitting a second request to a computing system to retrieve the piece of evidence from the computing system, the computing system being separate from the repository; and after receiving the piece of evidence from the computing system, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository.
However, Zwilling teaches:
in response to determining that a piece of evidence associated with the standard is excluded from the repository (See [0045.)
after receiving the piece of evidence from the computing system, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository (See [0033]; [0035-0038]; Fig. 16,).
‘073 and Zwilling are both considered to be analogous to the claimed invention because they are in the same field of generating a compliance verification framework for an organization. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘073 to further include in response to determining that a piece of evidence associated with the standard is excluded from the repository and after receiving the piece of evidence from the computing system, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository as taught by Zwilling. This is desirable such that it allows for helping to manage documents to determine compliance with industry standards (Zwilling [0007]).
Claims 8
A computer-implemented method comprising: storing a plurality of pieces of evidence in a repository;
subsequent to storing the plurality of pieces of evidence in the repository, receiving, from a user device, a request for evidence associated with a standard;
in response to receiving the request, accessing a mapping table that elates each piece of evidence of the plurality of pieces of evidence to one or more standards of a plurality of standards, wherein the mapping table relates each piece of evidence of the plurality of pieces of evidence to the one or more standards of the plurality of standards based on each piece of evidence satisfying a requirement of the one or more standards;
identifying, using the mapping table, at least one piece of evidence of the plurality of pieces of evidence related to the standard;
in response to identifying the at least one piece of evidence of the plurality of pieces of evidence related to the standard, obtaining the at least one piece of evidence from the repository and transmitting the at least one piece of evidence to the user device as a response to the request for the evidence associated with the standard.
identifying, based on the second requirement of the first standard, a second piece of evidence;
determining that the second piece of evidence is not one of the plurality of pieces of evidence stored in the repository;
determining that the second standard is one of the plurality of standards described in the mapping table;
subsequent to obtaining the first piece of evidence and the second piece of evidence, transmitting the first piece of evidence and the second piece of evidence to the user device as a response to the network request for the evidence associated with the first standard.
Claim 13
wherein the plurality of pieces of evidence comprises log data, data records, and files, the log data being receivable from a log data tool executing on one or more of the plurality of computing systems.
Claims 11
wherein the plurality of pieces of evidence comprises log data, data records, and files, the log data being receivable from a log data tool executing on at least one user device.
Claim 14
detecting a modification to at least one requirement of the standard, wherein the modification to the at least one requirement changes the evidence usable to satisfy the at least one requirement of the standard;
and updating the mapping table based on the modification to the at least one requirement.
Claim 14
detecting a modification to at least one requirement of the standard, wherein the modification to the at least one requirement changes the at least one piece of evidence of the plurality of pieces of evidence that is usable to satisfy the at least one requirement of the standard;
and updating the mapping table based on the modification to the at least one requirement.
Claim 15
A non-transitory computer-readable medium comprising instructions that are executable by a processing device for causing the processing device to perform operations comprising: receiving, from a user device, a first request for evidence associated with a standard;
in response to receiving the first request, accessing a mapping table that relates each piece of evidence of a plurality of pieces of evidence to one or more standards of a plurality of standards, wherein the plurality of pieces of evidence are stored in a repository, and wherein the mapping table relates each piece of evidence of the plurality of pieces of evidence to the one or more standards of the plurality of standards based on each piece of evidence satisfying a requirement of the one or more standards;
determining, using the mapping table, whether the evidence associated with the standard is in the repository;
in response to determining that a piece of evidence associated with the standard
in response to determining that the second piece of evidence associated with the standard is included in the repository;
retrieving the second piece of evidence from the repository
accessing a second mapping table that correlates evidence to users, wherein the second piece of evidence is correlated to a second user in the second mapping table
determining, based on the second mapping table, that the second piece of evidence is correlated with the second user
based on determining that the second piece of evidence is correlated with the second user, automatically transmitting the second piece of evidence to a second user device associated with the second user
‘073 does not disclose “is excluded from the repository: transmitting a second request to a computing system to retrieve the piece of evidence from the computing system, the computing system being separate from the repository; and after receiving the piece of evidence from the computing system, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository.
However, Zwilling teaches:
in response to determining that a piece of evidence associated with the standard is excluded from the repository (See [0045.)
after receiving the piece of evidence from the computing system, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository (See [0033]; [0035-0038]; Fig. 16,).
‘073 and Zwilling are both considered to be analogous to the claimed invention because they are in the same field of generating a compliance verification framework for an organization. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘073 to further include in response to determining that a piece of evidence associated with the standard is excluded from the repository and after receiving the piece of evidence from the computing system, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository as taught by Zwilling. This is desirable such that it allows for helping to manage documents to determine compliance with industry standards (Zwilling [0007]).
Claim 15
A non-transitory computer-readable medium comprising instructions that are executable by a processing device for causing the processing device to perform operations comprising: storing a plurality of pieces of evidence in a repository;
subsequent to storing the plurality of pieces of evidence in the repository, receiving, from a user device, a request for evidence associated with a standard;
in response to receiving the request, accessing a mapping table that elates each piece of evidence of the plurality of pieces of evidence to one or more standards of a plurality of standards, wherein the mapping table relates each piece of evidence of the plurality of pieces of evidence to the one or more standards of the plurality of standards based on each piece of evidence satisfying a requirement of the one or more standards;
identifying, using the mapping table, at least one piece of evidence of the plurality of pieces of evidence related to the standard;
in response to identifying the at least one piece of evidence of the plurality of pieces of evidence related to the standard, obtaining the at least one piece of evidence from the repository and transmitting the at least one piece of evidence to the user device as a response to the request for the evidence associated with the standard.
identifying, based on the second requirement of the first standard, a second piece of evidence;
determining that the second piece of evidence is not one of the plurality of pieces of evidence stored in the repository;
determining that the second standard is one of the plurality of standards described in the mapping table;
subsequent to obtaining the first piece of evidence and the second piece of evidence, transmitting the first piece of evidence and the second piece of evidence to the user device as a response to the network request for the evidence associated with the first standard.
Claim 20
wherein the plurality of pieces of evidence comprises log data, data records, and files, the log data being receivable from a log data tool executing on one or more of the plurality of computing systems.
Claim 18
wherein the plurality of pieces of evidence comprises log data, data records, and files, the log data being receivable from a log data tool executing on at least one user device.
Claim 3-5, 8-12, and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 U.S. Patent application 18/497,073, hereafter as ‘073 in view of Zwillings (US 2008/0091676), further in view of Erwin (US2023/0316184). Although the claims at issue are not identical, they are not patentably distinct from each other because claims in both applications are directed to facilitate automatic transmission of the evidence based on requirements of standards:
Claim 3, 10, and 17 - ‘073 and Zwilling discloses” wherein the evidence is first evidence, the standard is a first standard, and the piece of evidence is a first piece of evidence, and wherein the operations further comprise: receiving, from the user device; determining, based on the mapping table, that the second standard is excluded from the plurality of standards; in response to determining that the second standard is excluded from the plurality of standards: determining a second piece of evidence related to the second standard based on a requirement of the second standard;” (Claim 3 of ‘073)
‘073 nor Zwilling does not specifically disclose “the standard is included in the repository”. However, Erwin teaches “a third request for second evidence associated with a second standard and transmitting a fourth request to the computing system to retrieve the second piece of evidence associated with the second standard from the computing system”. However, Erwin teaches: “a third request for second evidence associated with a second standard and transmitting a fourth request to the computing system to retrieve the second piece of evidence associated with the second standard from the computing system.” (See [0002]; [0009-0011]; [0018]; Fig. 1).
‘073, Zwilling, and Erwin are all considered to be analogous to the claimed invention because they are in the same field of generating a compliance verification framework for an organization. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ‘073-Zwilling combination to further include a third request for second evidence associated with a second standard and transmitting a fourth request to the computing system to retrieve the second piece of evidence associated with the second standard from the computing system as taught by Erwin. This is desirable such that it allows for managing compliance standards for an organization, while more particular aspects of the present disclosure relate to dynamically and autonomously identifying and pairing regulations for an organization with benchmarks that can verify objective compliance with said regulations, and therein updating these across time and various organizations based on learned observations. (Erwin [0009]).
Claim 4, 11, and 18- ‘073 and Zwilling discloses “wherein the operations further comprise, upon receiving the second piece of evidence from the computing system: transmitting the second piece of evidence to the user device; storing the second piece of evidence in the repository; and updating the mapping table to include the second standard and to relate the second piece of evidence to the second standard.” (Claim 3 of ‘073)
‘073 nor Zwilling does not specifically disclose “as a response to the third request”. However, Erwin teaches “as a response to the third request.” (See [0002]; [0009-0011]; [0018]; Fig. 1).
073, Zwilling, and Erwin are all considered to be analogous to the claimed invention because they are in the same field of generating a compliance verification framework for an organization. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ‘073-Zwilling combination to further include as a response to the third request as taught by Erwin. This is desirable such that it allows for managing compliance standards for an organization, while more particular aspects of the present disclosure relate to dynamically and autonomously identifying and pairing regulations for an organization with benchmarks that can verify objective compliance with said regulations, and therein updating these across time and various organizations based on learned observations. (Erwin [0009]).
Claim 5, 12, and 19 - ‘073 and Zwilling discloses “receiving the plurality of pieces of evidence from a plurality of computing systems; and storing the plurality of pieces of evidence in the repository.” (Claim 1 of ‘073)
‘073 nor Zwilling does not specifically disclose “prior to receiving the first request for evidence associated with the standard”. However, Erwin teaches “prior to receiving the first request for evidence associated with the standard.” (See [0024]; Fig. 1).
073, Zwilling, and Erwin are all considered to be analogous to the claimed invention because they are in the same field of generating a compliance verification framework for an organization. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ‘073-Zwilling combination to further include prior to receiving the first request for evidence associated with the standard as taught by Erwin. This is desirable such that it allows for managing compliance standards for an organization, while more particular aspects of the present disclosure relate to dynamically and autonomously identifying and pairing regulations for an organization with benchmarks that can verify objective compliance with said regulations, and therein updating these across time and various organizations based on learned observations. (Erwin [0009]).
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, 3-8, 10-15, and 17-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1, 3-7, 21-22 are directed to a system (manufacture/machine), Claims 8, 10-14 are directed to a computer-implemented method (process), and Claims 15, 17-20 are directed to a non-transitory computer-readable storage medium (machine/apparatus). Thus, these claims fall within one of the four statutory categories of invention. (Step 1: YES).
For step 2A, the Examiner has identified independent method Claim 1 as the claim that represents the claimed invention for analysis. Claim 1, as exemplary example for Claims 8 and 15 is recited below, isolating the abstract idea from the additional elements, wherein the abstract idea is set in bold:
A system comprising: a processing device; and a memory device that includes instructions executable by the processing device for causing the processing device to perform operations comprising: receiving, from a first user device associated with a first user, a first request for evidence associated with a standard; in response to receiving the first request, accessing a first mapping table that relates each piece of evidence of a plurality of pieces of evidence to one or more standards of a plurality of standards, wherein the plurality of pieces of evidence are stored in a repository, and wherein the first mapping table relates each piece of evidence of the plurality of pieces of evidence to the one or more standards of the plurality of standards based on each piece of evidence satisfying a requirement of the one or more standards; determining, using the first mapping table, whether a first piece of evidence and a second piece of evidence associated with the standard are in the repository; in response to determining that the first piece of evidence associated with the standard is excluded from the repository: transmitting a second request to a computing system to retrieve the first piece of evidence from the computing system, the computing system being separate from the repository; in response to determining that the second piece of evidence associated with the standard is included in the repository; retrieving the second piece of evidence from the repository; accessing a second mapping table that correlates evidence to users, wherein the second piece of evidence is correlated to a second user in the second mapping table; determining, based on the second mapping table, that the second piece of evidence is correlated with the second user; based on determining that the second piece of evidence is correlated with the second user, automatically transmitting the second piece of evidence to a second user device associated with the second user; and after receiving the first piece of evidence from the computing system and the second piece of evidence from the repository, transmitting the first piece of evidence and the second piece of evidence to the first user device as a response to the first request and storing the first piece of evidence in the repository.
The above bolded limitations recite the abstract idea of facilitating automatic transmission of the evidence based on requirements of standards. These limitations under its broadest reasonable interpretation, covers certain methods of organizing human activity (i.e., commercial interactions include agreements in the form of contracts, advertising, marketing or sales activities or behaviors, and business relations.). For example, for the related computer components, this claim encompasses evidence management and standards verification activities that could be performed manually by compliance personnel reviewing documentation to determine whether required evidence satisfies applicable standards. Such activities may traditionally involve checking whether evidence exists, requesting missing documentation from separate sources, and correlating evidence to responsible users. Additionally, mapping evidence to standards and associating evidence with particular users constitutes organizing compliance oversight, as it involves categorizing documentation and distributing material for review and decision making. If a claim limitation, under its broadest reasonable interpretation, covers commercial interactions between parties, but for the recitation of generic computer components, then it falls within the “certain methods of organizing human activity” grouping of abstract ideas. The mere nominal recitation of a “processing device”, “memory device”, “user device”, and computing system” do not take the claim out of the methods of organizing human interactions grouping. Accordingly, Claims 1, 8 and 15 recites an abstract idea. (Step 2A- Prong 1: YES. The claims are abstract).
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional element of the claims are merely being used as a tool to execute the abstract idea, see MPEP 2106.05(f). Claim 1 recites the additional element of “processing device”, “memory device”, “user device”, and “computing system”. Additionally Claim 8 recites “processor”, “user device”, and “computing device”. Claim 15 recites “a non-transitory computer-readable medium”, “processing”, “user device”, and “computing device”. MPEP 2106.05(f) provides the following considerations for determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer: (1) whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished; (2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and (3) the particularity or generality of the application of the judicial exception. 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 and are at a high level of generality when considered both individually and as a whole such that it amounts no more than mere instructions to apply the exception using a generic computer component. Thus, Claims 1, 8, and 15 are directed to an abstract idea without a practical application.
For step 2B, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not amount to more than simply instructing one to practice the abstract idea by using generic computer components to carry out the steps that define the abstract idea. This does not render the claims as being eligible. See MPEP 2106.05(f). The additional elements when considered both individually and as an ordered combination did not add significantly more to the abstract idea because they were simply applying the abstract idea using generic computer components which cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, and claims 1, 8, and 15 are not patent eligible.
Claims 3-5, 7, 10-12, 14, and 17-19 recite elements that further limit the abstract idea of the independent claims to include in response to determining that a second piece of evidence associated with the standard is included in the repository, a third request for second evidence associated with a second standard; determining, based on the mapping table, that the second standard is excluded from the plurality of standards, transmitting the second piece of evidence to the user device as a response to the third request, and prior to receiving the first request for evidence associated with the standard, receiving the plurality of pieces of evidence. The dependent claims 3-5, 7, 10-12, 14, and 17-19 do not include any additional elements and therefore are considered patent ineligible for the reasons given above.
Claim 6, 13, and 20 recite elements that further limit the abstract idea of the independent claims to include wherein the plurality of pieces of evidence comprises log data, data records, and files, the log data being receivable. In addition, the claims recite new additional element of “log data tool” which is considered nothing more than a general link to a technological environment and generic computing devices to perform generic communicating functions such as storing data and instructions, transmitting and receiving data between computers. For step 2B, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not amount to more than simply instructing one to practice the abstract idea by using a computer to perform steps that define the abstract idea. This does not render the claims as being eligible. See MPEP 2106.05(f)
Claims 21-22 recite elements that further limit the abstract idea of the independent claims to include receiving, , a third request for second evidence associated with a second standard; determining, by analyzing the first mapping table, that the second standard is not one of the plurality of standards described in the first mapping table; subsequent to determining that the second standard is not one of the plurality of standards described in the first mapping table, identifying a third piece of evidence of the plurality of pieces of evidence related to the first standard by: determining that a third standard involves a requirement that is equivalent to a requirement of the second standard; and wherein the operations further comprise updating the first mapping table to include the second standard and to correlate the third piece of evidence to the second standard. The dependent claims 21-22 do not include any additional elements and therefore are considered patent ineligible for the reasons given above. The dependent claims 21-22 do not include any additional elements and therefore are considered patent ineligible for the reasons given above.
Subject Matter Free of Prior Art
The prior art of record neither anticipates nor supports a conclusion of obviousness without the use of impermissible hindsight with respect to the subject matter which is present in independent claims 1, 8, and 15.
In regards to Claims 1, 8, and 15 with respect to the prior art, the closest reference appears to be Erwin (US 2023/0316184) in view of Zwilling (US 2008/0091676).
Erwin teaches a system comprising (See Abstract & FIG 1): a processing device; (See [0017]) a memory device that includes instructions executable by the processing device for causing the processing device to perform operations comprising (See [0017]): receiving, from a user device, a first request for evidence associated with a standard; (See [0002]; [0009-0011]; [0018]; Fig. 1);in response to receiving the first request, accessing a mapping table that relates each piece of evidence of a plurality of pieces of evidence to one or more standards of a plurality of standards, wherein the plurality of pieces of evidence are stored in a repository, and wherein the mapping table relates each piece of evidence of the plurality of pieces of evidence to the one or more standards of the plurality of standards based on each piece of evidence satisfying a requirement of the one or more standards; (See [0002]; [0009-0011]; [0034]; Fig. 1); determining, using the mapping table, whether the evidence associated with the standard is in the repository; (See [0002]; [0009-0011]; [0034]; Fig. 1) transmitting a second request to a computing system to retrieve the piece of evidence from the computing system, the computing system being separate from the repository; (See [0045]).
Zwilling teaches in response to determining that a piece of evidence associated with the standard is excluded from the repository (See [0045]) after receiving the piece of evidence from the computing system, transmitting the piece of evidence to the user device as a response to the first request and storing the piece of evidence in the repository (See [0033]; [0035-0038]; Fig. 16).
However, Erwin in view of Zwilling alone or in combination fail to disclose or render obvious in response to determining that the second piece of evidence associated with the standard is included in the repository; retrieving the second piece of evidence from the repository; accessing a second mapping table that correlates evidence to users, wherein the second piece of evidence is correlated to a second user in the second mapping table; determining, based on the second mapping table, that the second piece of evidence is correlated with the second user; based on determining that the second piece of evidence is correlated with the second user, automatically transmitting the second piece of evidence to a second user device associated with the second user; and after receiving the first piece of evidence from the computing system and the second piece of evidence from the repository, when the claim is considered as a whole. Absent a suggestion or teaching in the prior art, the examiner will not engage in impermissible hindsight to supply the missing limitation(s). Therefore, independent claim 1, 8, and 15 and their dependent claims, are not rejected under prior art.
Response to arguments
Applicant's arguments filed October 28, 2025 have been fully considered but they are not persuasive.
The comments regarding the 35 USC 101 rejection are noted. On page 12 of Applicant’s response, applicant respectfully traverses that the claims allegedly recite an abstract idea without significantly more. Examiner respectfully disagrees. The applicant is referred to the 101-rejection section above as to why the claims are still not patent eligible. Examiner notes that the claims remain directed to an abstract idea of organizing, correlating, and transmitting information based on user requests and predetermined relationships, and the additional elements are being recited at a high-level of generality such that they amount to generic computer implementation that does not provide significantly more than the abstract idea itself. Applicant further argues that even if the claims could be fairly characterized as the "automatic transmission of evidence based on requirements of standards," which Applicant does not concede, that concept still does not correspond into any of the specifically listed sub- categories of the "certain method of organizing human activity" grouping in the MPEP. Examiner respectfully disagrees because the claimed automatic transmission of evidence based on requirements of standards reasonably falls within the “certain method of organizing human activity” grouping, as it recites managing and coordinating compliance related information between users through rules-based relationships, which constates a form of commercial or legal interaction and information management expressly recognized as an abstract idea under MPEP 2106.04(a). Applicant further asserts that the claims are patent eligible at Step 2A, Prong 1 because they do not recite a "certain method of organizing human activity" or any other abstract idea. Examiner respectfully disagrees for the same reasons set forth above and notes that the claims recite an abstract idea that constitutes a certain method of organizing human activity under Step 2A, Prong One.
Applicant further argues that the Examiner focused on the business relations sub-category to allege that the independent claims fall into the "certain methods of organizing human activities" grouping, and that the "business relations" category is specifically limited to business relationships; it does not expansively cover any and all business processes or practices. Examiner respectfully disagrees. Examiner notes that the business relations subcategory under the certain methods of organizing human activity grouping is not limited to formal business partnerships but encompasses broader commercial interactions, compliance activities, and information exchanges between entities, and the claimed standards-based evidence management and transmission reasonably falls within that scope. Applicant further argues that in contrast to the alleged business relations, the independent claims are directed to a process of obtaining pieces of evidence related to a standard in a computing resource efficient manner and in response to a request from a user device. Examiner respectfully disagrees because, notwithstanding the applicant’s characterization as a resource-efficient technical process, the independent claims merely recite obtaining and transmitting evidence in response to a request according to predefined standards using generic computing components, which reflects an abstract information management activity rather than a technological improvement to computer functionality. Applicant further argues that comparing the steps recited in the amended independent claims to the "business relations" sub-category is improper, the claims are patent eligible at Step 2A, Prong 1 because they do not recite a "certain method of organizing human activity" or any other abstract idea. Examiner respectfully disagrees because the amended independent claims, when properly considered as a whole, recite rule-based coordination and transmission of compliance related information between parties, which reasonably falls within the certain method of organizing human activity grouping under Step 2A, Prong One and therefore are directed to an abstract idea.
Applicant further argues that even assuming arguendo that the amended independent claims did recite a judicial exception, which Applicant expressly does not concede, any alleged judicial exception is integrated into a practical application by reciting a technical solution to a technical problem. Examiner respectfully disagrees. Examiner notes that the claimed steps merely recite generic data receiving, mapping table access, determining, retrieving, transmitting, and storing operations performed by a generic processing device and memory, which amount to generic computer implementation of an abstract information management concept and do not integrate any alleged judicial exception into a practical application or reflect a specific technological improvement to computer functionality. Applicant further argues that the present application provides a process for searching for and obtaining information stored by a computing system that is faster, more flexible, and less computationally intensive than conventional searching and procurement approaches, and that such technical improvements constitute integration into a practical application, which renders the claims patent eligible. Examiner respectfully disagrees because the alleged improvements in speed, flexibility, or computational efficiency are not reflected in the claim language itself, which recites only generic data retrieval, table lookups, and transmission steps performed by generic computing components, and therefore do not constitute a specific technological improvement or integrate the abstract information retrieval concept into a practical application.
Applicant further argues that the invention can allow the computer systems to perform their other tasks with reduced latency and improved responsiveness, thereby improving the functionality of the computing environment as a whole and that this technical solution is clearly reflected in the independent claims. Examiner respectfully disagrees for the same reasons set for the above. Applicant further argues that the technical improvements constitute integration into a practical application and are consistent with case law, such as in Enfish. Examiner respectfully disagrees. Examiner notes that unlike the specific table structure at issue in Enfish, the present claims do not recite a particular improvement to computer functionality or a specific data structure that changes how the computer operates, but instead rely on generic mapping tables and known data processing steps to implement the abstract idea of information management concept. Accordingly, the claims do not integrate the alleged judicial exception into a practical application consistent with Enfish. For the reasons mentioned above, the argument to the contrary is not persuasive. Thus, the rejections of Claims 1, 3-8, 10-15, and 17-22 under 35 USC 101 are maintained.
The comments regarding the 35 USC 103 rejection are noted. On page 17 of Applicant’s response, applicant asserts that nothing in Erwin, however, teaches or suggests “accessing a second mapping table that correlates evidence to users, determining, based on the second mapping table, that a piece of evidence is correlated with the second user, and based on determining that the second piece of evidence is correlated with the second user, automatically transmitting the second piece of evidence to a second user device associated with the second user”. Hence, the above-noted feature of claim 1 is a distinction over Erwin. The examiner finds the applicants argument to be persuasive. Erwin in view of Zwilling, alone or in combination fail to disclose or render obvious “determining that the second piece of evidence associated with the standard is included in the repository; retrieving the second piece of evidence from the repository; accessing a second mapping table that correlates evidence to users, wherein the second piece of evidence is correlated to a second user in the second mapping table; determining, based on the second mapping table, that the second piece of evidence is correlated with the second user; based on determining that the second piece of evidence is correlated with the second user, automatically transmitting the second piece of evidence to a second user device associated with the second user; and after receiving the first piece of evidence from the computing system and the second piece of evidence from the repository” when the claim is considered as a whole. Absent a suggestion or teaching in the prior art, the examiner will not engage in impermissible hindsight to supply the missing limitation(s). Therefore, independent claim 1, 5, and 8 and their dependent claims, are not rejected under prior art. Accordingly, the examiner withdraws the corresponding prior art rejections based on that subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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
extension fee 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 date of this final
action.
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/A.W.H./
Examiner, Art Unit 3626
/JESSICA LEMIEUX/Supervisory Patent Examiner, Art Unit 3626