DETAILED ACTION
This Non-Final Office Action is in response to the arguments and amendments filed January 4, 2025.
Further explanation and consideration are provided to the amended specification and drawings (as indicated below).
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 .
Reopening of Prosecution After Appeal Brief
In view of the Petition filed on 8 Sept. 2025, PROSECUTION IS HEREBY REOPENED. A separate response by the office to the Petition is forthcoming. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629
Drawings
The drawings were received on April 27, 2024. These drawings are entered. Examiner notes that these drawings are identical to the originally filed drawings of DIV application [17/725927].
The drawings were received on January 4, 2025. These drawings provide amended disclosure in providing amended terminology in terms of contract and DSCPI. These drawings are not entered on the basis of new matter (see the specification non-conformance in terms of the new matter).
The drawings were received on June 26, 2025. These drawings provide amended disclosure in providing amended terminology in terms of contract and DSCPI. These drawings are not entered on the basis of new matter (see the specification non-conformance in terms of the new matter).
Specification
The amendment filed May 14, 2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the amended specification is directed towards new matter. The specification provides new matter language in terms of the terminology additions: DSCPI and DSCGD. The specification further provides additional elements in terms of altering functional relationships that were not previously provided such as adding “resolve issues related to the DSCPI” and removing functional relationships that were described in the affirmative towards a contract (amended to be optional) and amending language regarding the “consumption of an object”. These elements were not previously presented in a manner ascribed and described previously that one of ordinary skill in the art would reasonably convey that the originally filed specification has possession of the amended language (both in consideration of the addition and removal of written description). This amended specification is not entered and the originally filed specification [January 18, 2024] will be relied upon as the specification for consideration purposes. Applicant is required to cancel the new matter in the reply to this Office Action.
The amendment filed January 4, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: The specification provides new matter language in terms of the terminology additions: DSCPI and DSCGD. The specification further provides removal of specific paragraphs that alter the background, functional description, and other considerations through deletion. The specification substitutes DSCPI for contract throughout the specification despite lacking written description for such amendments and the removal of paragraphs conveys the deletion of information and written description as to the functional and considered relationship within the specification. This is directly related to the removal/deletion of “contract” language. This is specific to the removal in paragraphs [21] that deletes, “bind to a contract”, “contract, which is an enforceable agreement binding a supplier to perform a service on an object per a specification for a consumer” and “wherein all actions and relationships herein ascribed to a contract, may be ascribed to a DSCPI instead, and operated without the bound agreement of a contract”. Further, the amended language further alters the scope as it relates to the technical environment. This is specific to the removal of sections within paragraph [63] regarding the technical environment that originally stated that, “The technical environment may use no computers at all, and instead rely on data recorded in green paper ledger books and processing performed with an abacus and key sort punch cards” and further based on the new matter addition of “The technical environment 704 will comprise a computer readable storage device having computer readable code stored therein, said storage device not being a signal, said program code containing instructions executable by a processor”. These additions and removals alter the scope of the written description and are directed towards new matter. These elements were not previously presented in a manner ascribed and described previously that one of ordinary skill in the art would reasonably convey that the originally filed specification has possession of the amended language (both in consideration of the addition and removal of written description). This amended specification is not entered and the originally filed specification [January 18, 2024] will be relied upon as the specification for consideration purposes. Applicant is required to cancel the new matter in the reply to this Office Action.
The amendment filed June 26, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The specification amendments are directed towards alterations with respect to the terminology contract being amended to DSCPI. The amendments also alter the scope of the specification in terms of removing sections regarding contract consideration and enforcement. This is specifically shown in paragraph [10] that alters the scope and relationship in terms of the contract/bind/agreement and altering the language to understanding/define/DSCPI. These additions and removals alter the scope of the written description and are directed towards new matter. These elements were not previously presented in a manner ascribed and described previously that one of ordinary skill in the art would reasonably convey that the originally filed specification has possession of the amended language (both in consideration of the addition and removal of written description). This amended specification is not entered and the originally filed specification [January 18, 2024] will be relied upon as the specification for consideration purposes. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claims 1 and 4 are directed towards new matter. The claims are directed towards terminology that is not provided or described in the originally filed specification [January 18, 2024] in terms of the specific language DSCPI and DSCGD and the functional relationships in terms of the DSCPI/DSCGD. The originally filed specification provides the scope of the written description in terms of contractual relationship, binding agreements, and other enforcement elements. The amended claim limitations provide new matter in terms of DSCPI and DSCGD that was not described in the originally filed specification. As such, claims 1 and 4 are rejected under 35 USC 112(a) for being directed towards new matter. Claims 2, 3, and 5-7 are rejected for being directed towards the same considered new matter and being dependent upon the rejected parent claim. Therefore, claims 1-7 are rejected under 35 USC 112(a).
Claims 4-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claim 4 is directed towards new matter. Claim 4 is directed towards, “. The claim is directed towards terminology that is not provided or described in the originally filed specification [January 18, 2024] in terms of the specific language regarding the technical environment. The specification provides the scope of the technical environment in terms, “The technical environment 704 may contain an integration, in whole or in part, of custom written software. The technical environment 704 may be deployed on a large scale using commercially available cloud and/or wide area network services. The technical environment 704 may be deployed on a small scale using a single personal computer and employing the data, processing, and presentation capabilities of a commercially available spreadsheet application. The technical environment 704 may use no computers at all, and instead rely on data recorded in green paper ledger books and processing performed with an abacus and key sort punch cards. The technical environment 704 may use an as yet to be invented algae based biologic artificial intelligence neural network. The technical environment 704 may be any combination of the above, or may take any other form capable of hosting the data, process, and presentation models” [63]. The amended claim limitations are directed towards specific technical elements of a processor, storage device not being a signal, and other program code/computer elements that are not described in the originally filed specification. As such, claim 4 is rejected under 35 USC 112(a) for being directed towards new matter. Claims 5-7 are rejected for being directed towards the same considered new matter and being dependent upon the rejected parent claim. Therefore, claims 4-7 are rejected under 35 USC 112(a).
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed towards an abstract idea without additional elements that are significantly more or transformative into a practical application.
Independent claims 1 and 4 are directed towards (as represented by claim 1), “A method of governing data within a domain, comprising: wherein, for each threshold evaluation period-end reached, the algorithm calculates corresponding statistics and executes said threshold evaluation; wherein for each threshold crossed, the algorithm invokes corresponding incentive(s) for consumers and/or suppliers to operate in accordance with the DSCPI; processing, by a processor of a computer system, wherein an algorithm is routinely executed to track the periodicity of threshold evaluations for an operational DSCGD; wherein, for each threshold evaluation period-end reached, the algorithm calculates corresponding scores and executes said threshold evaluation; wherein, for each threshold crossed, the algorithm identifies all health improvement activities for the DSCGD corresponding to said threshold as open, and calculates a relative value for each open health improvement activity based on the relative deflection of a corresponding score from the corresponding threshold and scaled to a budget, and calculates a relative cost of said health improvement activity based on a cost estimate for its category scaled to supply resources consumed; whereupon, the algorithm calculates a ranking of all open health improvement activities for the DSCGD based on a ratio of value to cost, and presents as recommended for invocation all of the highest-ranking open health improvement activities whose net cost fit within the remaining budget; whereupon, the governor may invoke or close recommended open health improvement activities, at their discretion; wherein, for each open health improvement activity invoked, the algorithm will decrement the budget by the health improvement activity's net cost”. The claims are describing an improvement process for data supply chain that is based on budgets and recommendations that the governor decides to invoke. The process includes a budget and cost for improvements and the analysis aspects are merely threshold elements based on relative estimates for the cost and improvement. The claims are describing a commercial activity and business relation based on cost and budget elements for improving data governance. Therefore, the claims are directed towards an abstract idea under the certain method of organizing human activity grouping.
The claims also fall into the mental process grouping. The claims are performing a collection and threshold analysis towards budgetary considerations and improvements that a person can perform in their mind. The threshold analysis and other considerations are performed at a high level of generality and the claims are merely collecting, analyzing, and presenting the recommendation to the user. As such, the claims are further directed towards a mental process grouping of abstract ideas.
Step 2(a)(II) considers the additional elements in terms of being transformative into a practical application. The additional elements of claims 1 and 4 are, “instantiating a Data Supply Chain Process Instance (herein after referred to as a DSCPI);instantiating a Data Supply Chain Governance Domain (herein after referred to as a DSCGD) over one or several DSCPIs; processing, by a processor of a computer system, wherein an algorithm is routinely executed to track the periodicity of threshold evaluations for an operational DSCPI (claim 1); A computer program product, comprising a computer readable storage device having computer readable program code stored therein, said storage device not being a signal, said program code containing instructions executable by a processor (claim 4)”. The additional elements of the technical environment and computer elements are described in terms of general purpose computers. This is specifically stated by the specification in terms of “The technical environment 704 may be deployed on a large scale using commercially available cloud and/or wide area network services. The technical environment 704 may be deployed on a small scale using a single personal computer and employing the data, processing, and presentation capabilities of a commercially available spreadsheet application. The technical environment 704 may use no computers at all, and instead rely on data recorded in green paper ledger books and processing performed with an abacus and key sort punch cards” {emphasis added}. The additional elements of claim 4 are directed towards generic technological elements to implement the abstract idea. As such, the claim is not directed towards additional elements that are transformative into a practical application. Refer to MPEP 2106.05(f).
Step 2(b) considers the additional elements in terms of being significantly more than the identified abstract idea. The additional elements of claims 1 and 4 are, “instantiating a Data Supply Chain Process Instance (herein after referred to as a DSCPI);instantiating a Data Supply Chain Governance Domain (herein after referred to as a DSCGD) over one or several DSCPIs; processing, by a processor of a computer system, wherein an algorithm is routinely executed to track the periodicity of threshold evaluations for an operational DSCPI (claim 1); A computer program product, comprising a computer readable storage device having computer readable program code stored therein, said storage device not being a signal, said program code containing instructions executable by a processor (claim 4)”. The additional elements of the technical environment and computer elements are described in terms of general purpose computers. This is specifically stated by the specification in terms of “The technical environment 704 may be deployed on a large scale using commercially available cloud and/or wide area network services. The technical environment 704 may be deployed on a small scale using a single personal computer and employing the data, processing, and presentation capabilities of a commercially available spreadsheet application. The technical environment 704 may use no computers at all, and instead rely on data recorded in green paper ledger books and processing performed with an abacus and key sort punch cards” {emphasis added}. The additional elements of claim 4 are directed towards generic technological elements to implement the abstract idea. As such, the claim is not directed towards additional elements that are significantly more than the identified abstract idea. Refer to MPEP 2106.05(f).
Dependent claims 2 and 5 are further describing the identified abstract ideas and not describing further additional elements beyond those identified above. The claim is directed towards, “and thus instantiated as, a DSCPI; for which the steps of the method are: a consumer identifies one or several purposes, wherein, for each purpose identified, the consumer identifies one or several metrics to measure the attainment of the purpose, wherein for each such metric, the consumer identifies one or several thresholds to indicate the degree to which the purpose has been attained; and then, for each purpose identified, the consumer identifies one or several data objects whose consumption is required to attain the purpose, wherein for each data object identified, the consumer identifies one or several metrics to measure that the data object was consumed for the purpose, wherein for each such metric, the consumer identifies one or several thresholds to indicate the degree to which the data object was consumed for the purpose; and then, for each data object identified, the consumer identifies one or several data services required to support the data object; and then, for each data service identified, the consumer identifies one or several specifications to which the data service must adhere, wherein for each specification identified, the consumer identifies one or several metrics to measure the performance of the data service in adherence to the specification, wherein for each such metric, the consumer identifies one or several thresholds to indicate the degree to which the data service has been performed in adherence to the specification; and also, for each data service identified, the consumer identifies one or several suppliers to perform the data service, wherein for each such supplier / data service combination, the consumer identifies one or several metrics to measure supply resources consumed in performance of the data service; and then, for each metric identified, the consumer identifies the method and periodicity of collection; and also, for each threshold identified, the consumer identifies the method and periodicity of evaluation, wherein for each such threshold, the consumer identifies a statistic, which is derived by: combining one or more metrics, which then may be combined with one or more external factors, whereupon the threshold is set along the scale of the statistic; and also, for each threshold identified, the consumer identifies one or several incentives to be invoked if the threshold is crossed; and then, for each DSCPI thus instantiated, the consumer identifies a governor which has the authority to resolve issues, related to the DSCPI, within a domain that encompasses the supplier and the consumer, whereupon the consumer informs the supplier of the elements of the DSCPI, whereupon the supplier and/or the consumer may escalate issues related to the DSCPI to the governor for resolution; and then, the operational actions of the DSCPI commence, and operate in perpetuity, until the DSCPI is retired, wherein said operational actions include, but are not limited to: supply of data services, consumption of data objects, collection of metrics”. Claim 5 further describes, “and then the product enables the amendment or retirement of a DSCPI as represented within the product”. The claim is further describing the commercial activity in terms of the data governance. This includes evaluation elements for adherence the contract. This provides a further sub-grouping of legal elements within the business relation ensuring that a contract is upheld based on parameters provided by the consumer. Further, the claims provide mental process elements as providing legal governance between a consumer, governor, and supplier to escalate issues. As such, the claims are further describing the identified abstract ideas. There are no further additional elements beyond those identified above. As such, claim 2 and 5 are not directed towards additional elements that are significantly more or transformative into a practical application.
Dependent claims 3 and 6 are further describing the identified abstract ideas and not describing further additional elements beyond those identified above. The claim is directed towards, “further comprising operational maturity, implementation maturity, happiness indicators, scores, weighting factors, and scaling factors; wherein the jurisdiction of a governor, and the collection of all DSCPIs within said jurisdiction, and the collection of all elements within said jurisdiction identified within this method, is referred to as, and thus instantiated as, a DSCGD; for which the steps of the method are: the governor identifies selected metrics, from metrics collected during the operation of DSCPIs within the DSCGD; and also, the governor identifies selected metrics of the operational maturity of the DSCGD, wherein, for the jurisdiction of the governor, the extent to which selected consumers, suppliers, purposes, data objects, and/or data services are governed by a DSCPI, is measured; and also, the governor identifies selected metrics of the implementation maturity of the DSCGD, wherein, for the jurisdiction of the governor, the extent to which selected changes to operational activities which consume data objects or supply data services, will influence corresponding changes to, retirement of, or creation of, a DSCPI, is measured; and also, the governor identifies selected metrics measuring selected issues escalated by consumers and/or suppliers related to DSCPIs within the DSCGD; and also, the governor identifies selected metrics measuring selected happiness indicators of consumers and/or suppliers related to DSCPIs within the DSCGD; and then, for each metric identified, the governor specifies the method and periodicity of collection; and then, for each metric identified, the governor identifies one or several thresholds to indicate whether the measured aspect of the data supply chain is satisfactory; and then, for each threshold identified, the governor specifies the method and periodicity of evaluation; and then, for each such threshold, the governor identifies a score, which is derived by: combining one or more metrics, which then may be combined with one or more external factors, which then is combined with a weighting factor and a scaling factor, by which the score may be balanced against all other scores within the DSCGD to the governor's preference, whereupon the threshold is set along the scale of the score; and then, for each threshold identified, the governor identifies one or several health improvement activities to be invoked if the threshold is crossed, wherein said health improvement activities may include, but are not limited to: the instantiation of one or several new DSCPIs; the retirement of one or several existing DSCPIs; the amendment of one or several elements within one or several existing DSCPIs; the resolution of issues with regards to one or several existing DSCPIs; and then, for each DSCGD instantiated, the governor sets a periodic budget for health improvement activities, and sets scalable cost estimates for categories of health improvement activities; and then, for each DSCGD instantiated, the operational actions of the DSCGD commence, and operate in perpetuity, until the DSCGD is retired, wherein the operational actions include, but are not limited to: collection of metrics, invocation of health improvement activities, management of the budget and cost estimates, resolution of escalated issues”. Claim 6 further describes, “and then the product enables the amendment or retirement of a DSCGD as represented within the product”. The claims are further describing the business relation in terms of contract adherence based on a jurisdiction and evaluations. The claims further describe metrics and periodic budget elements for improvements to the data supply chain. The claim provides aspects of the business relation that falls into the certain method abstract idea grouping. Further, the claims are describing a high level of analysis and governance between the contract execution and evaluation for the consumer and improvement that a person could provide these aspects in a mental process. There are not further additional elements beyond those identified above. As such, claim 3 and 6 are not directed towards additional elements that are significantly more or transformative into a practical application.
Dependent claim 7 is further describing the identified abstract ideas and describing further additional elements beyond those identified above. The claim is directed towards, “further comprising: an end user interface, which presents selectable alerts to suppliers, consumers, and/or governors, when an executing algorithm detects that a threshold has been crossed: an end user interface, which the user may select to present an end user navigable map of selectable elements of a DSCGD, wherein the map presents the selected elements, selectable attributes of the elements, and selectable relationships between the elements, wherein the navigation may begin at any element, and may proceed through any or all elements of the DSCGD, using drill-up, drill-down, drill-across, and/or hierarchical explosion techniques (including inside any DSCPI within the DSCGD), wherein the map may present the elements and relationships graphically, or tabularly, and also the map may present current, historical, or trend data of metrics, statistics, and/or scores associated with the presented map elements, wherein the elements may be presented in the form of reports, dashboards, graphical map icons, and/or other presentation modes and also the map may indicate where there are gaps in the DSCGD in relation to a reference standard DSCGD supplied by the governor, and also the map may indicate where there are proposed changes to the DSCGD, as reflected through the implementation maturity metrics within the DSCGD, and also the map may present open recommended health improvement activities, including their relative rankings, values, and costs, in relation to selected elements presented on the map; an application programming interface (API) of this product (herein referred to as the claimed product), which may be embedded within any other program product (herein referred to as an external product), wherein when embedded in an external product, the API may be associated with any data object used within the external product, and when activated by the external product, the API opens a portal into the claimed product, wherein the portal may then perform any of several functions available within the claimed product, depending on attributes selected through the API, including but not limited to: the portal may lookup whether the data object is governed within a DSCGD; the portal may activate and present the map of the DSCGD, using the selected data object as the beginning navigational element; the portal may present the DSCPI consumer element interfaces, to allow a consumer to create or amend DSCPI elements related to this data object; the portal may present the DSCGD governor element interfaces, to allow a governor to create or amend DSCGD elements related to this data object”. The claim is further describing the display of information and presenting the recommendations/information to a portal through an interface such that a user (governor) can create, drill-down, and otherwise view the information of the data governance including metrics, amended contracts, and other aspects. The additional elements that are beyond those identified above are in terms of the API and interface elements to view the information. The API and interface are described in the originally filed specification [63-67]. The additional elements are merely describing a generic interface to display the information. The interface and API are not technical improvements, but applying generic technology to implement the abstract idea. As such, the additional elements are not transformative into a practical application or significantly more than the identified abstract idea. Refer to MPEP 2106.05(f).
The claims are describing an abstract idea without additional elements that are significantly more or transformative into a practical application. Therefore, claims 1-7 are rejected under 35 USC 101 for being directed towards non-eligible subject matter.
Response to Arguments
Examiner notes that the specification amendments have been considered. The above consideration is provided to the specifications and drawings as entered as it relates to being entered/non-entered. In terms of the consideration and specification support, the originally filed specification [January 18, 2024] and drawings [April 27, 2024] are relied upon as the written description disclosure.
In response to the arguments filed January 4, 2025 on pages 46-53 regarding the 35 USC 101 rejection, specifically that the amended claim limitations are directed towards eligible subject matter.
Examiner respectfully disagrees.
Examiner notes that the arguments are with respect to the claims as presented in the Non-Final Office Action [November 4, 2024] and the current claims provide different claim limitations that are provided their own consideration as provided in this Office Action. As such, claims 1-7 are maintaining the 35 USC 101 rejection, as considered above in light of the amended claim limitation.
In response to the arguments filed January 4, 2025 on pages 53-73 regarding the prior art rejections, specifically that the amended claim limitations are not taught by the cited prior art. Examiner agrees. The prior art does not specifically teach the claims as amended. As such, the previous prior art rejections have been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW CHASE LAKHANI whose telephone number is (571)272-5687. The examiner can normally be reached M-F 730am - 5pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Monfeldt can be reached at 571-270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW CHASE LAKHANI/Primary Examiner, Art Unit 3629