DETAILED ACTION
This Office action is in response to the amendment submitted on August 14, 2025, entered by the RCE filed on the same date.
Claims 21, 23, 24, 26-34, and 36-42 are pending (no Claim 35).
Claims 21, 24, 36, 41, and 42 have been amended.
Claims 1-20, 22, and 25 have been canceled.
The objections to Claims 21, 24, and 36 are withdrawn in view of the Applicant’s amendments to the claims.
The 35 U.S.C. § 112(b) rejections of Claims 24 and 36-42 are withdrawn in view of the Applicant’s amendments to the claims.
The 35 U.S.C. § 101 rejections of Claims 21, 23, 24, 26-34, and 36-42 are maintained in view of the Applicant’s arguments and amendments to the claims. Accordingly, these rejections are maintained and further explained hereinafter.
For clarity of the prosecution history record, Claims 30, 32, 34, and 36 recite the limitation “a high impact.” It is noted that the Applicant’s specification states that “[…] each of the ranked covariate features having a score above a threshold for example, may be selected as the features having a high impact on the quality metric, and therefore may selected for coarsened exact matching, as indicated selected covariate features 408” (page 18, paragraph [0055]). Thus, the term “high” appears to be described by the specification which provides a standard for ascertaining the requisite degree and one of ordinary skill in the art would be able to reasonably determine the scope of the claimed invention. Therefore, Claims 30, 32, 34, and 36 meet the requirements of § 112(b).
For clarity of the prosecution history record, Claim 33 recites the limitation “a low impact.” It is noted that the Applicant’s specification states that “[e]ach of the features having a score above a threshold for example, may be selected as the features having a high impact on the quality metric. A subset of the identified covariates having a low impact on the quality metric may be removed based on feature imbalance at 628” (page 21, paragraph [0060]). Thus, the term “low” appears to be described by the specification which provides a standard for ascertaining the requisite degree and one of ordinary skill in the art would be able to reasonably determine the scope of the claimed invention. Therefore, Claim 33 meets the requirements of § 112(b).
For clarity of the prosecution history record, it is noted that, in the “Amendments to the Claims” (submitted on 08/14/2025), Claim 35 is missing. And for the purposes of further examination and avoiding any confusions, Claims 36-42 are not renumbered as Claims 35-41, respectively, by the Examiner. Examiner kindly asks the Applicant to renumber Claims 36-42 accordingly in the response to the instant Office action.
For clarity of the prosecution history record, the Applicant’s representative was contacted by the Examiner on August 19, 2025 regarding proposed claim amendments to put the claims in condition for allowance. However, the Applicant’s representative failed to respond in due time.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on August 14, 2025 has been entered.
Response to Amendment
Specification
The disclosure is objected to because of the following informalities:
Page 25, paragraph [0067] of the specification contains a typographical error: “whereby the prototype because operational” should read -- whereby the prototype becomes operational --.
Appropriate correction is required.
Claim Objections
Claims 21, 24, 29, 30, 34, 36, 37, and 40 are objected to because of the following informalities:
Claim 21 recites “operationalizing […] the predicted quality metric model.” It should read -- operationalizing […] the validated predicted quality metric model --.
Claim 21 recites “using […] the generated predicted quality metric model.” It should read -- using […] the validated predicted quality metric model --.
Claim 24 recites “training data.” It should read -- based on training data --.
Claims 24 and 29 recite “a random forest classification model.” It should read -- the random forest classification model --.
Claim 30 recites “the existing quality metric.” It should read -- an existing quality metric --.
Claims 30, 34, and 36 recite “the existing quality metric.” It should read -- an existing quality metric --.
Claim 36 contains a typographical error: “the first group of devices and the second group of devices is coarsened” should read -- the first group of devices and the second group of devices are coarsened --.
Claim 37 recites “each of the coarsened features.” It should read -- each feature of the coarsened features --.
Claim 40 recites “each device.” It should read -- each device of the first group of devices --.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 31-33 and 40 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 31 recites the limitation “the quality metric.” There is insufficient antecedent basis for this limitation in the claim. In the interest of compact prosecution, the Examiner subsequently interprets this limitation as reading “a quality metric” for the purpose of further examination.
Claims 32 and 33 depend on Claim 31. Therefore, Claims 32 and 33 suffer the same deficiency as Claim 31.
Claim 31 recites the limitation “the feature.” There is insufficient antecedent basis for this limitation in the claim. In the interest of compact prosecution, the Examiner subsequently interprets this limitation as reading “a feature” for the purpose of further examination.
Claims 32 and 33 depend on Claim 31. Therefore, Claims 32 and 33 suffer the same deficiency as Claim 31.
Claim 32 recites the limitation “the features.” There is insufficient antecedent basis for this limitation in the claim. In the interest of compact prosecution, the Examiner subsequently interprets this limitation as reading “features” for the purpose of further examination.
Claim 33 depends on Claim 32. Therefore, Claim 33 suffers the same deficiency as Claim 32.
Claim 40 recites the limitation “the quality metric derived from the first group of devices.” There is insufficient antecedent basis for this limitation in the claim. In the interest of compact prosecution, the Examiner subsequently interprets this limitation as reading “a quality metric derived from the first group of devices” for the purpose of further examination.
Claim 40 recites the limitation “the quality metric associated with the second group of devices.” There is insufficient antecedent basis for this limitation in the claim. In the interest of compact prosecution, the Examiner subsequently interprets this limitation as reading “a quality metric associated with the second group of devices” for the purpose of further examination.
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 21, 23, 24, 26-34, and 36-42 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim Interpretation: Under the broadest reasonable interpretation (BRI), the limitations of Claim 21 are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. See MPEP § 2111.
In addition, these steps are recited as being performed by a computing device in the claim. The computing device is recited at a high level of generality, i.e., as a generic computer component performing generic computer functions.
Step 1: Claim 21 is directed to a method, which is a process (a series of steps or acts), and falls within one of the statutory categories of invention.
Step 2A, Prong One: Claim 21 recites the limitations:
(a) validating […] the generated predicted quality metric model;
(b) operationalizing […] the predicted quality metric model, wherein the predicted quality metric is provided based on a quality metric associated with a pre-release software candidate; and
(c) using […] the generated predicted quality metric model to predict a software execution quality at a second group of devices based on a software execution quality at the first group of devices.
The recited steps, under the broadest reasonable interpretation (BRI), cover performance of the steps in the human mind alone or with the aid of pen and paper. That is, other than reciting:
(1) by a/the computing device.
Nothing in the claim precludes the steps from practically being performed in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper. For example, but for the (1) language, the limitation (a) in the context of the claim encompasses a human evaluating a predicted quality metric model using observation, evaluation, judgment, and opinion to validate the predicted quality metric model. Similarly, the limitations (b) and (c) in the context of the claim encompass the human performing these steps in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper as well. See MPEP § 2106.04(a)(2)(III).
If a claim limitation, under its broadest reasonable interpretation (BRI), covers performance of the limitation in the human mind alone or with the aid of pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two: This judicial exception is not integrated into a practical application. In particular, the claim recites the additional element:
(1) by a/the computing device.
The additional element (1) is recited at a high-level of generality such that it amounts to no more than mere instructions to apply the judicial exception using generic computer components. The computing device is used as a tool to perform the recited steps of the claim. See MPEP § 2106.05(f).
Also, the claim recites the additional element:
(2) obtaining […] a predicted quality metric and a set of features for a first group of devices, wherein the predicted quality metric is determined from empirical data and is based on the set of features received from telemetry information originating from the first group of devices.
The additional element (2) is mere data gathering recited at a high level of generality, and thus is an insignificant extra-solution activity. See MPEP § 2106.05(g). Furthermore, all uses of the recited judicial exception require such data gathering, and, as such, the additional element does not impose any meaningful limits on the claim. The additional element amounts to necessary data gathering. See MPEP § 2106.05.
Also, the claim recites the additional element:
(3) training […] a predicted quality metric model based on the predicted quality metric and the set of features, thereby generating the predicted quality metric model.
The additional element (3) fails to meaningfully limit the claim because it does not require any particular application of the judicial exception and is, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception. See MPEP § 2106.05(f). The additional element recites only the idea of training a predicted quality metric model without details on how this is accomplished. The claim omits any details as to how the training of the predicted quality metric model solves a technical problem, and instead recites only the idea of a solution or outcome. Therefore, the additional element attempts to cover any solution to the identified problem of training the predicted quality metric model with no restriction on how the training is accomplished and no description of the mechanism for accomplishing the training, and does not integrate a judicial exception into a practical application because this type of recitation is equivalent to the words “apply it.”
Accordingly, even when viewed in combination, the 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. The claim is directed to an abstract idea.
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea. As discussed hereinabove with respect to integration of the abstract idea into a practical application, the claim recites the additional element:
(1) by a/the computing device.
The additional element (1) amounts to no more than mere instructions to apply the judicial exception using generic computer components. Mere instructions to apply a judicial exception using generic computer components cannot provide an inventive concept.
Also, the claim recites the additional element:
(2) obtaining […] a predicted quality metric and a set of features for a first group of devices, wherein the predicted quality metric is determined from empirical data and is based on the set of features received from telemetry information originating from the first group of devices.
The additional element (2) simply appends a well-understood, routine, and conventional activity previously known to the industry, specified at a high level of generality, to the judicial exception is not indicative of an inventive concept. MPEP § 2106.05(d)(II) expressly states that the courts have recognized the computer function of receiving or transmitting data over a network, e.g., using the Internet to gather data as a well‐understood, routine, and conventional computer function when it is claimed in a merely generic manner (e.g., at a high level of generality) or as an insignificant extra-solution activity. Thus, a person of ordinary skill in the art would readily comprehend that it is well-understood, routine, and conventional in the computing art to obtain predicted quality metric and device feature data. Therefore, this additional element remains an insignificant extra-solution activity even upon reconsideration and does not amount to significantly more.
Also, the claim recites the additional element:
(3) training […] a predicted quality metric model based on the predicted quality metric and the set of features, thereby generating the predicted quality metric model.
The additional element (3) does not require any particular application of the judicial exception and is, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception. The analysis under Step 2A, Prong Two is carried through to Step 2B. Therefore, the additional element attempts to cover any solution to the identified problem of training the predicted quality metric model with no restriction on how the updating is accomplished and no description of the mechanism for accomplishing the updating, and does not provide significantly more because this type of recitation is equivalent to the words “apply it.”
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as a combination adds nothing that is not already present when looking at the additional elements taken individually. Even when considered in combination, the additional elements represent mere instructions to apply a judicial exception using generic computer components, an insignificant extra-solution activity, and only the idea of a solution or outcome, and therefore do not provide an inventive concept. The claim is not patent eligible.
Claim 23 is rejected under 35 U.S.C. 101 as directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more for at least the reason stated hereinabove.
Claim 23 recites the limitation:
(a) wherein validating the generated predicted quality metric model comprises determining if identified features for the predicted quality metric matches an actual quality metric for a second group of devices.
The claim is dependent on Claim 21, but does not add any feature or subject matter that would solve the judicial exception deficiencies of Claim 21. For instance, Claim 23 recites further mental steps which can be practically performed in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper and thus, fails to make the claim any less abstract. See MPEP § 2106.04(a)(2)(III). Therefore, Claim 23 does not add any steps or additional elements, when considered both individually and as a combination, that would convert Claim 21 into patent-eligible subject matter.
Claims 21 and 23 are therefore not drawn to patent-eligible subject matter as they are directed to an abstract idea without significantly more.
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Claim Interpretation: Under the broadest reasonable interpretation (BRI), the limitations of Claim 24 are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. See MPEP § 2111.
Step 1: Claim 24 is directed to a method, which is a process (a series of steps or acts), and falls within one of the statutory categories of invention.
Step 2A, Prong One: Claim 24 recites the limitations:
(a) generating, using a random forest classification model and training data, a feature importance metric, wherein remaining feature data for the first group of device feature data and remaining feature data for the second group of device feature data are coarsened and associated weights are assigned to coarsened features; and
(b) predicting a software execution quality at the second group of devices based on a software execution quality at the first group of devices, wherein the predicted software execution quality is based at least in part on the feature importance metric.
The recited steps, under the broadest reasonable interpretation (BRI), cover performance of the steps in the human mind alone or with the aid of pen and paper. That is, nothing in the claim precludes the steps from practically being performed in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper. For example, the limitation (a) in the context of the claim encompasses a human evaluating a random forest classification model and training data using observation, evaluation, judgment, and opinion to generate a feature importance metric. Similarly, the limitation (b) in the context of the claim encompasses the human performing the step in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper as well. See MPEP § 2106.04(a)(2)(III).
If a claim limitation, under its broadest reasonable interpretation (BRI), covers performance of the limitation in the human mind alone or with the aid of pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two: This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements:
(1) receiving feature data from a first group of devices and a second group of devices; and
(2) obtaining feature importance from a random forest classification model.
The additional elements (1) and (2) are mere data gathering recited at a high level of generality, and thus are an insignificant extra-solution activity. See MPEP § 2106.05(g). Furthermore, all uses of the recited judicial exception require such data gathering, and, as such, the additional elements do not impose any meaningful limits on the claim. The additional elements amount to necessary data gathering. See MPEP § 2106.05.
Also, the claim recites the additional element:
(3) operationalizing a prototype in which the prototype becomes operational and provides the predicted software execution quality.
The additional element (3) fails to meaningfully limit the claim because it does not require any particular application of the judicial exception and is, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception. See MPEP § 2106.05(f). The additional element recites only the idea of operationalizing a prototype without details on how this is accomplished. The claim omits any details as to how the operationalizing of the prototype solves a technical problem, and instead recites only the idea of a solution or outcome. Therefore, the additional element attempts to cover any solution to the identified problem of operationalizing the prototype with no restriction on how the operationalizing is accomplished and no description of the mechanism for accomplishing the operationalizing, and does not integrate a judicial exception into a practical application because this type of recitation is equivalent to the words “apply it.”
Accordingly, even when viewed in combination, the 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. The claim is directed to an abstract idea.
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea. As discussed hereinabove with respect to integration of the abstract idea into a practical application, the claim recites the additional elements:
(1) receiving feature data from a first group of devices and a second group of devices; and
(2) obtaining feature importance from a random forest classification model.
The additional elements (1) and (2) simply append a well-understood, routine, and conventional activity previously known to the industry, specified at a high level of generality, to the judicial exception is not indicative of an inventive concept. MPEP § 2106.05(d)(II) expressly states that the courts have recognized the computer function of receiving or transmitting data over a network, e.g., using the Internet to gather data as a well‐understood, routine, and conventional computer function when it is claimed in a merely generic manner (e.g., at a high level of generality) or as an insignificant extra-solution activity. Thus, a person of ordinary skill in the art would readily comprehend that it is well-understood, routine, and conventional in the computing art to receive device feature data and obtain device feature importance data. Therefore, these additional elements remain an insignificant extra-solution activity even upon reconsideration and do not amount to significantly more.
Also, the claim recites the additional element:
(3) operationalizing a prototype in which the prototype becomes operational and provides the predicted software execution quality.
The additional element (3) does not require any particular application of the judicial exception and is, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception. The analysis under Step 2A, Prong Two is carried through to Step 2B. Therefore, the additional element attempts to cover any solution to the identified problem of operationalizing the prototype with no restriction on how the operationalizing is accomplished and no description of the mechanism for accomplishing the operationalizing, and does not provide significantly more because this type of recitation is equivalent to the words “apply it.”
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as a combination adds nothing that is not already present when looking at the additional elements taken individually. Even when considered in combination, the additional elements represent an insignificant extra-solution activity and only the idea of a solution or outcome, and therefore do not provide an inventive concept. The claim is not patent eligible.
Claims 26-34 are rejected under 35 U.S.C. 101 as directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more for at least the reasons stated hereinabove.
Claim 26 recites the limitation:
(a) wherein the predicted quality metric for software expected to be executed at the second group of devices is predicted based on a quality metric for software executing at the first group of devices.
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Claim 27 recites the limitation:
(a) wherein the received feature data is specific to a quality metric and received from both the first group of devices and the second group of devices.
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Claim 28 recites the limitation:
(a) wherein a pre-processing comprises cleanup of the feature data and the cleanup of the feature data comprises removing null values and segmenting and categorizing data.
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Claim 29 recites the limitation:
(a) wherein a pre-processed data is provided in a format specific to a random forest classification model.
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Claim 30 recites the limitation:
(a) wherein a pre-processed data is utilized to train the random forest classification model and once trained, a remaining portion of the pre-processed data is utilized to predict feature data representing covariates having a high impact on the existing quality metric.
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Claim 31 recites the limitation:
(a) wherein the random forest classification model scores features representing covariates impacting the quality metric in which each feature score indicates an impact of the feature on the existing quality metric.
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Claim 32 recites the limitation:
(a) wherein each of features having a score above a threshold is selected as the features having a high impact on the existing quality metric.
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Claim 33 recites the limitation:
(a) wherein a subset of identified covariates having a low impact on the existing quality metric is removed based on feature imbalance.
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Claim 34 recites the limitation:
(a) wherein feature imbalance is assessed such that features having a high impact on the existing quality metric and representing imbalance between the first group of devices and the second group of devices are utilized in a coarsened exact matching process.
These claims are dependent on Claim 24, but do not add any feature or subject matter that would solve the judicial exception deficiencies of Claim 24. For instance, Claims 26-34 either recite further mental steps which can be practically performed in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper and thus, fail to make the claim any less abstract (see MPEP § 2106.04(a)(2)(III)) or additional elements that do not integrate the judicial exception into a practical application of the judicial exception because: 1) they are mere instructions to apply the judicial exception using generic computer components (see MPEP § 2106.05(f)); 2) they are mere data gathering/transmitting/outputting recited at a high level of generality, and thus are insignificant extra-solution activities (see MPEP § 2106.05(g)); or 3) they do not require any particular application of the judicial exception and are, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception (see MPEP § 2106.05(f)), and thus, are not significantly more than the abstract idea. Therefore, Claims 26-34 do not add any steps or additional elements, when considered both individually and as a combination, that would convert Claim 24 into patent-eligible subject matter.
Claims 24 and 26-34 are therefore not drawn to patent-eligible subject matter as they are directed to an abstract idea without significantly more.
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Claim Interpretation: Under the broadest reasonable interpretation (BRI), the limitations of Claim 36 are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. See MPEP § 2111.
Step 1: Claim 36 is directed to a method, which is a process (a series of steps or acts), and falls within one of the statutory categories of invention.
Step 2A, Prong One: Claim 36 recites the limitations:
(a) generating, using a random forest classification model and based on training data, a feature importance metric, wherein features having a high impact on the existing quality metric and representing imbalance between the first group of devices and the second group of devices is coarsened into different groups based on a predetermined set of criteria in which the predetermined set of criteria correspond to a distribution and a number of strata; and
(b) predicting a software execution quality at the second group of devices based on a software execution quality at the first group of devices, wherein the predicted software execution quality is based at least in part on the feature importance metric.
The recited steps, under the broadest reasonable interpretation (BRI), cover performance of the steps in the human mind alone or with the aid of pen and paper. That is, nothing in the claim precludes the steps from practically being performed in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper. For example, the limitation (a) in the context of the claim encompasses a human evaluating a random forest classification model and training data using observation, evaluation, judgment, and opinion to generate a feature importance metric. Similarly, the limitation (b) in the context of the claim encompasses the human performing the step in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper as well. See MPEP § 2106.04(a)(2)(III).
If a claim limitation, under its broadest reasonable interpretation (BRI), covers performance of the limitation in the human mind alone or with the aid of pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two: This judicial exception is not integrated into a practical application. In particular, the claim recites the additional element:
(1) receiving feature data from a first group of devices and a second group of devices.
The additional element (1) is mere data gathering recited at a high level of generality, and thus is an insignificant extra-solution activity. See MPEP § 2106.05(g). Furthermore, all uses of the recited judicial exception require such data gathering, and, as such, the additional element does not impose any meaningful limits on the claim. The additional element amounts to necessary data gathering. See MPEP § 2106.05.
Also, the claim recites the additional element:
(2) operationalizing a prototype in which the prototype becomes operational and provides the predicted software execution quality.
The additional element (2) fails to meaningfully limit the claim because it does not require any particular application of the judicial exception and is, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception. See MPEP § 2106.05(f). The additional element recites only the idea of operationalizing a prototype without details on how this is accomplished. The claim omits any details as to how the operationalizing of the prototype solves a technical problem, and instead recites only the idea of a solution or outcome. Therefore, the additional element attempts to cover any solution to the identified problem of operationalizing the prototype with no restriction on how the operationalizing is accomplished and no description of the mechanism for accomplishing the operationalizing, and does not integrate a judicial exception into a practical application because this type of recitation is equivalent to the words “apply it.”
Accordingly, even when viewed in combination, the 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. The claim is directed to an abstract idea.
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea. As discussed hereinabove with respect to integration of the abstract idea into a practical application, the claim recites the additional element:
(1) receiving feature data from a first group of devices and a second group of devices.
The additional element (1) simply appends a well-understood, routine, and conventional activity previously known to the industry, specified at a high level of generality, to the judicial exception is not indicative of an inventive concept. MPEP § 2106.05(d)(II) expressly states that the courts have recognized the computer function of receiving or transmitting data over a network, e.g., using the Internet to gather data as a well‐understood, routine, and conventional computer function when it is claimed in a merely generic manner (e.g., at a high level of generality) or as an insignificant extra-solution activity. Thus, a person of ordinary skill in the art would readily comprehend that it is well-understood, routine, and conventional in the computing art to receive device feature data. Therefore, the additional element remains an insignificant extra-solution activity even upon reconsideration and does not amount to significantly more.
Also, the claim recites the additional element:
(2) operationalizing a prototype in which the prototype becomes operational and provides the predicted software execution quality.
The additional element (2) does not require any particular application of the judicial exception and is, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception. The analysis under Step 2A, Prong Two is carried through to Step 2B. Therefore, the additional element attempts to cover any solution to the identified problem of operationalizing the prototype with no restriction on how the operationalizing is accomplished and no description of the mechanism for accomplishing the operationalizing, and does not provide significantly more because this type of recitation is equivalent to the words “apply it.”
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as a combination adds nothing that is not already present when looking at the additional elements taken individually. Even when considered in combination, the additional elements represent an insignificant extra-solution activity and only the idea of a solution or outcome, and therefore do not provide an inventive concept. The claim is not patent eligible.
Claims 37-42 are rejected under 35 U.S.C. 101 as directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more for at least the reasons stated hereinabove.
Claim 37 recites the limitation:
(a) wherein a coarsened exact matching process generates weights associated with each of the coarsened features such that a quality metric derived on basis of the first group of devices is used to predict the quality metric for the second group of devices based on similarities and differences that exist between the first and second groups of devices.
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Claim 38 recites the limitation:
(a) wherein the coarsened exact matching process generates groups having no matched members.
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Claim 39 recites the limitation:
(a) wherein the existing quality metric generated from the first group of devices utilizing weights associated with the coarsened features.
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Claim 40 recites the limitation:
(a) wherein the existing quality metric determined for each device is weighted such that a weighted mean of the quality metric derived from the first group of devices indicative of the quality metric associated with the second group of devices.
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Claim 41 recites the limitation:
(a) wherein an alarm condition is raised if a predicted quality metric for the second group of devices is determined as correlated to the predicted quality metric for the first group of devices.
<<>> + <<>> + <<>> + <<>> + <<>> + <<>> + <<>> + <<>>
Claim 42 recites the limitation:
(a) wherein an alarm condition is raised if a predicted quality metric for the second group of devices or the predicted quality metric for the first group of devices is determined to be out of range.
These claims are dependent on Claim 36, but do not add any feature or subject matter that would solve the judicial exception deficiencies of Claim 36. For instance, Claims 37-42 either recite further mental steps which can be practically performed in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper and thus, fail to make the claim any less abstract (see MPEP § 2106.04(a)(2)(III)) or additional elements that do not integrate the judicial exception into a practical application of the judicial exception because: 1) they are mere instructions to apply the judicial exception using generic computer components (see MPEP § 2106.05(f)); 2) they are mere data gathering/transmitting/outputting recited at a high level of generality, and thus are insignificant extra-solution activities (see MPEP § 2106.05(g)); or 3) they do not require any particular application of the judicial exception and are, at best, the equivalent of merely adding the words “apply it” (or an equivalent) to the judicial exception (see MPEP § 2106.05(f)), and thus, are not significantly more than the abstract idea. Therefore, Claims 37-42 do not add any steps or additional elements, when considered both individually and as a combination, that would convert Claim 36 into patent-eligible subject matter.
Claims 36-42 are therefore not drawn to patent-eligible subject matter as they are directed to an abstract idea without significantly more.
Allowable Subject Matter
Claims 21, 23, 24, 26-34, and 36-42 are allowable over the cited prior art. However, the Applicant must overcome any corresponding objections and/or rejections of these claims set forth hereinabove in order to place these claims in condition for allowance.
Response to Arguments
Applicant’s arguments, filed on August 14, 2025, with respect to the 35 U.S.C. § 103 rejections of Claims 21, 24, and 36 have been fully considered, but they are not persuasive.
In the Remarks, the Applicant argues:
Amended claims 21 and 24, under its broadest interpretation, is directed to a technical solution to solve the technical problem of generating a predicted quality metric for a version of software based on quality metrics from a population or group of software evaluators. According to MPEP § 2106.04(a)(2)(III)(A), “A Claim With Limitation(s) That Cannot Practically be Performed in the Human Mind Does Not Recite a Mental Process. Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations. See … SiRF Tech., Inc. v. Int'l Trade Comm’n, 601 F.3d 1319, 94 USPQ2d 1607 (Fed. Cir. 2010), as directed to inventions that ‘could not, as a practical matter, be performed entirely in a human’s mind’).” (Emphasis added).
Amended claim 21 recites the limitations of “training, by the computing device, a predicted quality metric model based on the predicted quality metric and the set of features, thereby generating the predicted quality metric model; … and using, by the computing device, the generated predicted quality metric model to predict a software execution quality at a second group of devices based on a software execution quality at the first group of devices.”
Additionally, amended claim 24, and similarly claim 36, recites the limitation of “operationalizing a prototype in which the prototype becomes operational and provides the predicted software execution quality.” (Emphasis added). At least the above limitations cannot be practically performed in the human mind. For example, a human mind cannot practically perform “training, by the computing device, a predicted quality metric model based on the predicted quality metric and the set of features, thereby generating the predicted quality metric model” or “operationalizing a prototype to provide software execution quality.” Applying the rule in MPEP § 2106.04(a)(2)(III)(A), at least such aspects do not fall into the grouping of mental process.
(See Remarks – pages 8 and 9, emphasis in original.)
Examiner’s response:
Examiner disagrees. With respect to the Applicant’s assertion that “a human mind cannot practically perform prediction of ‘a software execution quality,’ much less doing so by ‘using [a] generated predicted quality metric model,’ as recited by claim 21,” the Examiner respectfully submits that, in SiRF Tech., Inc. v. Int'l Trade Comm’n, 601 F.3d 1319, 94 USPQ2d 1607 (Fed. Cir. 2010) (hereinafter “SiRF Tech.”), the court found that claims to a “method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals” would require the use of a GPS receiver (a computer) to perform the claimed method because there was no evidence that the calculations could be performed entirely in the human mind. Thus, in SiRF Tech., it was clear that the method at issue could not be performed without the use of a computer because it requires the manipulation of computer data structures in a computation-heavy technological area, such as processing GPS satellite signals.
In contrast, it is clear in the present case that one could mentally perform (with the aid of pen and paper) the “using the generated predicted quality metric model to predict a software execution quality […]” step of Claim 21, for example, because the claimed method consists of only the general approach of predicting a software execution quality using a predicted quality metric model. Under the broadest reasonable interpretation, one could, as a practical matter, review the data statistics of a predicted quality metric model to make predictions about software execution quality. The claimed method does not require any manipulation of computer data structures in computation-heavy technological areas. Thus, it would not be difficult at all for a human to perform the prediction step of Claim 21.
Furthermore, with respect to the Applicant’s assertion that “a human mind cannot practically perform ‘training, by the computing device, a predicted quality metric model based on the predicted quality metric and the set of features, thereby generating the predicted quality metric model’ or ‘operationalizing a prototype to provide software execution quality,’” the Examiner respectfully submits that, as pointed out in the 35 U.S.C. § 101 rejections of Claims 21, 24, and 36 hereinabove, for example, the limitations “training […] a predicted quality metric model based on the predicted quality metric and the set of features, thereby generating the predicted quality metric model” and “operationalizing a prototype in which the prototype becomes operational and provides the predicted software execution quality” are evaluated under Step 2A, Prong Two of the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) as additional elements that are not indicative of integration into a practical application when recited in a claim with a judicial exception. Thus, these steps are not evaluated under Step 2A, Prong One of the 2019 PEG to determine whether a claim “recites” an abstract idea. Therefore, the Applicant’s argument asserting that a human mind cannot practically perform “training […] a predicted quality metric model based on the predicted quality metric and the set of features, thereby generating the predicted quality metric model” and “operationalizing a prototype in which the prototype becomes operational and provides the predicted software execution quality” is, at best, moot.
Therefore, for at least the reasons set forth above, the rejections made under 35 U.S.C. § 101 with respect to Claims 21, 23, 24, 26-34, and 36-42 are proper and therefore, maintained.
In the Remarks, the Applicant argues:
According to MPEP § 2106.04(d)(1), “[a] claim reciting a judicial exception is not directed to the judicial exception if it also recites additional elements demonstrating that the claim as a whole integrates the exception into a practical application. One way to demonstrate such integration is when the claimed invention improves the functioning of a computer or improves another technology or technical field.” (Emphasis added).
Applying the rule set forth in MPEP § 2106.04(d)(1), amended claims 21 and 24 recite specific improvements to the technical field of generating a predicted quality metric for a yet to be released version of software based on actual quality metrics from a population or group of software evaluators. For example, amended claim 21 recites limitations of “training, by the computing device, a predicted quality metric model based on the predicted quality metric and the set of features, thereby generating the predicted quality metric model.” Also, amended claim 24 recites the limitation of “operationalizing a prototype in which the prototype becomes operational and provides the predicted software execution quality.” (Emphasis added). At least such aspects reflect an improvement to software deployment and corresponding execution quality.
(See Remarks – page 9, emphasis in original.)
Examiner’s response:
Examiner disagrees. With respect to the Applicant’s assertion that “amended claims 21 and 24 recite specific improvements to the technical field of generating a predicted quality metric for a yet to be released version of software based on actual quality metrics from a population or group of software evaluators,” the Examiner respectfully submits that Claims 21 and 24 are not rooted in computer technology and therefore, do not improve the functioning of a computer or improves another technology or technical field. Although the training step in Claim 21 is performed by a computing device and the operationalizing step in Claim 24 is also performed (presumably) by the computing device, however, the training and the operationalizing do not change the underlying operations of the computing device itself nor improve the functioning of the computing device itself. In other words, the training and the operationalizing are executed by the computing device and do not affect the computing device in any way. Thus, the claimed invention is an example of an invention that is not necessarily rooted in computer technology, even if it uses a computing device.
Therefore, for at least the reason set forth above, the rejections made under 35 U.S.C. § 101 with respect to Claims 21, 23, 24, 26-34, and 36-42 are proper and therefore, maintained.
In the Remarks, the Applicant argues:
Additionally, these data analysis steps are different from “a claim to ‘collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom, SA.” (id.; 48 830 F.3d 1350, 1356 (Fed. Cir. 2016); emphasis added). Contrarily to Electric Power Group, amended claims 21 and 24 recite detailed features (e.g., Amended claim 21 recites the limitation of “training, by the com