DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 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 19-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims is directed to the computer program product that is not defined as non-transitory in the Specification. The claim, as amended, is directed to the “computer program product” and not to the “non-transitory computer readable storage medium”.
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 1-20
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. The claims fall within at least one of the four categories of patent eligible subject matter. However, the claimed invention is directed to performing data collection, data analysis, and basic mathematical calculations without significantly more.
The following is an analysis of the claims regarding subject matter eligibility in accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG):
Subject Matter Eligibility Analysis
Step 1: Do the Claims Specify a Statutory Category?
Claims 1-9 describe a method/process, claims 10-18 describe a system/apparatus, and claims 19-20 describe a computer product, therefore satisfying Step 1 of the analysis except for the above USC 101 rejection of claims 19-20.
Step 2 Analysis for Claims 1-11
Step 2A – Prong 1: Is a Judicial Exception Recited?
Claim 1 recites generating fingerprints for test cases which identifies a code path for a SUT, identifying test cases that cover a portion of a code of the SUT, executing test cases to generate results, designating a test case as a champion test case, and demoting the champion test case to a regular case when a portion of code of the SUT has been deleted. The limitations describe processes that, under their broadest reasonable interpretation, covers performance of the limitations in the human mind. The claim is merely directed to data collection and data analysis/identification and generically generating a fingerprint that is mere information specifying a collected data. The claim, as amended, recites executing a test case for the generation of a result, which can be interpreted as a mental process with possible mathematical concepts and demoting a test case when the collected data shows a portion had been deleted. The examiner interprets this as merely collecting data after the data has been deleted and then mentally, with possible pen and paper or a generic computing device, demoting a test case based on the said collected data.
If a claim limitation, under its broadest reasonable interpretation, covers the practical performance of the limitation in the human mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. See the 2019 Revised Patent Subject Matter Eligibility Guidance. Accordingly, the claim recites an abstract idea.
As explained in the October 2019 Update to the 2019 PEG, when determining whether a claim recites a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations), consideration must be given as to whether a claim recites a mathematical concept or merely includes limitations that are based on or involve a mathematical concept.
Claim 2 merely analyzes the collected data to designate a champion test case using the collected data.
Claim 3 merely uses the collected breakpoint data to generate the designated data .
Claim 4 identifies/analyzes the collected data and prioritizes a calculated result for execution, but does not actually execute.
Claim 5 further identifies/analyzes the collected data.
Claim 6 also identifies/analyzes the collected data to produce further data and then stores said collected data. The limitations describe processes that, under their broadest reasonable interpretation, covers performance of the limitations in the human mind but for the recitation of generic computer components (i.e., storage). That is, nothing in the claim elements preclude the steps from practically being performed in the mind.
Claim 7 further stores the collected data, and identifies/analyzes the data by comparing the collected data designate a result.
Claim 8 recites high- level mathematical concepts to further determine resultant data. As explained in the October 2019 Update to the 2019 PEG, when determining whether a claim recites a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations), consideration must be given as to whether a claim recites a mathematical concept or merely includes limitations that are based on or involve a mathematical concept.
Claim 9 recites generating test cases using a model. The limitations describe processes that, under their broadest reasonable interpretation, covers performance of the limitations in the human mind but for the recitation of generic computer components (i.e. high-level, off the shelf, computer components/models).
Step 2A – Prong 2: Is the Judicial Exception Integrated into a Practical Application?
Claims 1-9 recite test cases, a SUT, “storing” ,which implies storage, and a model. Even if the described methods are implemented on a computer, there is no indication that the combination of elements in the claim solves any particular technological problem other than merely taking advantage of the inherent advantages of using existing computer technology in its ordinary, off-the-shelf capacity to apply the identified judicial exceptions.
These limitations describe insignificant extra-solution activity pertaining to mere data gathering, identifying/analyzing data, and storing data, without providing any details regarding a specific remedial action being taken or even applying the resultant data to transform the system. As such, these limitations do not integrate the abstract idea(s) into a practical application.
Dependent claim limitations also describe further details regarding the data and/or statistical/mathematical calculations. These claims contain no additional elements which would integrate the abstract idea(s) into a practical application.
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 identified abstract idea(s).
Step 2B: Do the Claims Provide an Inventive Concept?
When evaluating whether the claims provide an inventive concept, the presence of any additional elements in the claims need to be considered to determine whether they add “significantly more” than the judicial exception.
In the instant case, as detailed in the analysis for Step 2A-Prong 2, claim 1 contains additional elements which require evaluation as to whether they provide an inventive concept to the identified abstract idea. The components recited in the claim describe a generic computer and/or computer components at a high level and do not represent “significantly more” than the judicial exception.
Therefore, these limitations recite no additional elements that would amount to significantly more than the abstract ideas defined in the claim.
Step 2 Analysis for Claims 10-18
Claims 10-18 contain limitations for a system which are similar to the limitations for the methods specified in claims 1-9, respectively. As such, the analysis under Step 2A – Prong 1, Step 2A – Prong 2, and Step 2B for claims 10-18 is similar to that presented above for claims 1-9.
In light of the above, the limitations in claims 10-18 recite and are directed to an abstract idea and recite no additional elements that would amount to significantly more than the identified abstract ideas(s). Claims 10-18 are therefore not patent eligible.
Step 2 Analysis for Claims 19-20
Claims 19-20 contain limitations for a computer program product which are similar to the limitations for the methods specified in claims 1-9, respectively. As such, the analysis under Step 2A – Prong 1 and Step 2A – Prong 2 for claims 19-20 is similar to that presented above for claims 1-9.
Step 2B: Do the Claims Provide an Inventive Concept?
When evaluating whether the claims provide an inventive concept, the presence of any additional elements in the claims need to be considered to determine whether they add “significantly more” than the judicial exception.
Claim 19 contains additional elements which require evaluation as to whether they provide an inventive concept to the identified abstract idea.
Claim 19 recites the additional elements of a computer program product comprising a computer-readable medium. The computer-readable medium and product cited in the claim describe generic computer components at a high level and do not represent “significantly more” than the identified judicial exception. The enabling of the instructions to perform the method recites intended use of the claimed limitations and does not represent “significantly more” than the identified judicial exception.
Conclusion
In light of the above, the limitations in claims 1-20 recite and are directed to abstract ideas and recite no additional elements that would amount to significantly more than the identified abstract idea(s). Claims 1-20 are therefore not patent eligible.
Response to Arguments
Applicant's arguments filed 7/29/25 have been fully considered but they are not fully persuasive.
The amendment has overcome the art rejection; however, the USC 101 rejection is maintained.
As stated in the rejection, the claim, as amended, recites executing a test case for the generation of a result, which can be interpreted as a mental process with possible mathematical concepts and demoting a test case when the collected data shows a portion had been deleted. The examiner interprets this as merely collecting data after the portion has been deleted and then mentally, with possible pen and paper or a generic computing device, demoting a test case based on the said collected data.
As suggested in the prior Interview, dated 8/8/25, the examiner suggests transforming the device, such as further clarifying the “portion of code of the SUT that has changed” and “deleted” of the portion of code as an active step rather than just a prior step and being merely collected data after the step. Support in the Specification would also be necessary.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S MCCARTHY whose telephone number is (571)272-3651. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bryce Bonzo can be reached at (571)272-3655. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER S MCCARTHY/Primary Examiner, Art Unit 2113