DETAILED ACTION
This non-final office action is in response to Applicant’s amendment filed June 29, 2026. Applicant’s June 29th amendment amended claim 17. Claims 1-16 are pending. Claims 1, 10 and 17 are the independent claims.
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 .
Response to Amendment
The 35 U.S.C. 101 rejection of claims 1-16 in the previous office action is maintained.
The 35 U.S.C. 101 rejection of claims 17-20 in the previous office action is withdrawn in response to Applicant’s amendments to the claims.
Applicant’s amendments to the claims necessitated the new grounds of rejection (35 U.S.C. 112(a) rejection of claims 17-20).
Response to Arguments
Applicant’s arguments, see Pages 17, 18, filed June 29, 2026, with respect to 35 U.S.C. 101 have been fully considered and are persuasive. The 35 U.S.C. 101 rejection of claims 17-20 has been withdrawn.
Applicant's arguments filed June 29, 2026 have been fully considered but they are not persuasive. Specifically, Applicant argues that claims 1-16 are patent eligible under 35 U.S.C. 101 as the claims recite a technical solution to a technical problem (e.g. constructing a non-conventional tailored prospect model...for predicting likelihoods of entities successfully completing opportunities so that automated computer tasks can be executed; Specification: Paragraphs 11, 20, 25, 40, 44; Remarks: Last Paragraph, Page 12; Paragraphs 2, 3, Page 14); the claims integrate the abstract idea into a practical application (e.g. non-routine/non-conventional prospect model that improves the operations of conventional systems - enable cross support/service interactions with users Remarks: Remarks: Last Paragraph, Page 13; Paragraph 2, Page 16); and the claims recite significantly more than an abstract idea (e.g. combination contain an inventive concept; Remarks: Paragraph 2, Page 15).
In response to applicant's argument that the claims are patent eligible under 35 U.S.C. 101 as the claims recite certain features of the invention, it is noted that the features upon which applicant relies (i.e., forming queries, using complicated APIs, extract data from separate databases, systems, networks; transforming data, synchronizing different data sources, normalizing data, etc.; Remarks: Paragraph 2, Page 12; enables cross support and service interactions with uses Remarks: Last Paragraph, Page 13) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims recite a technical solution to a technical problem, the examiner respectfully disagrees.
The claims remain directed to the well-known business practice of customer relationship management (CRM – Specification Paragraph 2 transitioning status from prospect to customer to client; Specification Paragraph 4), more specifically prospect management within a CRM system as well as a process capable of being performed in the human mind or via pen and paper. The claims are directed to generating/populating an account object in a CRM database (Claim1), generate/transmit content to an entity (Claims 10, 17) when prospects fit score, representing a probability that an entity (prospective customer) will complete an opportunity (e.g. providing information to a customer, selling a product or service to a customer, generating and providing a contract proposal for the customer, etc. Specification Paragraph 17), exceeds a threshold.
While the claims may represent an improvement to the fundamental economic process of customer relationship management by enabling a computer to execute a task of populating an account as an object with a CRM database or generating/transmitting content to an entity when a customer’s fit score exceeds a threshold (i.e. store data in a database about a potential customer – mere data storage – extra solution activity or mere data output – transmit content) storing data in a database does not provide a technical solution to a technical problem nor does transmitting content to an entity provide a technical solution to a technical problem.
While storing data in a computer can be associated with technical problems and technical solutions (e.g. Enfish, LLC v. Microsoft Corp. held that the claimed database software designed as a "self-referential" table is patent eligible under 35 U.S.C. § 101 because it is not directed to an abstract idea) none of Applicant’s arguments or disclosure discusses much alone recites a technical solution to a technical problem. Modeling prospective customers of a company/business (prospect model) based on a customer’s interactions with a website (traffic) and/or other historical data is a business problem and at best Applicant’s invention may provide an improvement in modeling prospective customers. Utilizing a customer relationship management system to generate a prospect model which then enables the CRM system to ‘populate’ an account object in a CRM database (i.e. store data) when a prospective customer’s probability of completing an ‘opportunity’ exceeds a threshold is not a technical solution to a technical problem.
Nothing in Applicant’s disclosure, claims or arguments suggests that any of the disclosed or claimed method steps address a technical problem inherent in computers or computer networks. Nor do Applicant’s disclosure, claims or arguments suggests that any of the disclosed or claimed method steps address another technology or technical field (CRM, prospect modeling are not technical fields – they are well-known business problems/approaches).
At best Applicant’s invention may improve the abstract idea itself – i.e. an improvement in mathematical modeling (probability of competing an opportunity) of prospective customers of a business/organization.
Automating customer relationship management, including populating an account object by a computer, is not enough for eligibility when it is recited at this level of generality without technical implementation details. See Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (generic speed and efficiency increases from applying a computer to a task do not improve computer functioning); Cel/spin Soft, Inc. y. Fitbit, Ine., 927 F.3d 1306, 1316 (Fed. Cir. 2019) (“But the need to perform tasks automatically is not a unique technical problem.”); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“[A]utomation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”’); O/P Techs., 788 F.3d at 1363 (“But relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”’).
Additionally, the last step of independent claims 1 and 10 directed to automating execution of a task to generated and populate an account as an object within the CRM database is directed to an insignificant application of the abstract idea as well as insignificant post extra solution activity (i.e. mere data storage). as described in MPEP § 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Development Group v. SAP America, 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”). vi. A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair, In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016). Further as discussed in MPEP 2106.05(g) Insignificant application: i. Cutting hair after first determining the hair style, In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016).
Similar to the discussion in Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), where the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself.” the instant application merely applies the abstract idea using a generic computer as a conduit/tool for the abstract idea and does not improve the functioning of a computer or computer networks, does not improve another technical field and does not provide a technical solution to a technical problem.
With regards to argued Specification Paragraph 11, this paragraph merely recites a single sentence describing Figure 3B. This paragraph fails to disclose at any level of detail a technical problem much alone a technical solution to a technical problem.
With regards to argued Specification Paragraph 20, this paragraph discloses what information maybe stored in a CRM database associated with customers or potential customers of an organization and that the information may also be used to generate a prospect profile and fit scores based upon similarities between prospects and existing customers. This paragraph fails to disclose at any level of detail a technical problem much alone a technical solution to a technical problem.
With regards to argued Specification Paragraph 25, this paragraph discloses that the prospect model is generated to correlate attributes of companies based on historical data and company information, generating a prospect profile and providing visualizations of combinations of prospects that would be worthwhile to pursue with respect to an opportunity due to a high likelihood of success of complete a sale with the organization. This paragraph fails to disclose at any level of detail a technical problem much alone a technical solution to a technical problem.
With respect to argued Specification Paragraph 40, this paragraph merely defines a prospect as a company that is an existing customer or known prospect of the organization. This paragraph fails to disclose at any level of detail a technical problem much alone a technical solution to a technical problem.
With regards to argued Specification Paragraph 44, this paragraph merely defines the phrase closed lost opportunity. This paragraph fails to disclose at any level of detail a technical problem much alone a technical solution to a technical problem.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims integrate the abstract idea into a practical application, the examiner respectfully disagrees.
As discussed above the claims are directed to the abstract idea of prospect management/ modeling as part of a customer relationship management system (a well-known business/economic practice). Additionally, the claims are directed to a mental processing practically capable of being performed in the human mind via observation, evaluation, judgement and opinion. Representative claim 1: The step of extracting primary features from historical data may be performed in the human mind using observation of data. The step of extracting traffic data corresponding to page views may be performed in the human mind using observation of data. The step of applying weights to the CRM records and traffic data may be performed in the human mind using evaluation. The step of applying weights is also directed to a mathematical operation/concept. The step of generating a prospect model may be performed in the human mind using judgement and opinion. The step generating the prospect model to evaluating primary/second features may be performed in the human mind using judgement and opinion. The step of grouping neighboring data containers in a multi-dimensional feature space may may be performed in the human mind using judgement and evaluation. This step is also directed to a mathematical operation/concept. The step of selecting the data container from the data container groups may be performed in the human mind using judgement and opinion. The step of generating a fit score for the company based on the container group may be performed in the human mind using evaluation. This step is also directed to a mathematical operation/concept. The step of generating and populating an account object within a CRM database may be performed in the human mind using evaluation. A person is more than capable of generating and populating data within a database using a generic computer and database each used for the well-known generic/conventional purposes.
Other than the recitation of a customer relationship management system (software per se), multi-client service system platform (software per se), database, memory, processor, machine readable medium comprising instructions nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea. The limitations directed to a hardware device including a customer relationship management system (software per se), multi-client service system platform (software per se), database, memory, processor, machine readable medium comprising instructions are each recited at a high level of generality and amount to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f).
Further the mere nominal recitation of a generic computer (i.e., customer relationship management system (software per se), multi-client service system platform (software per se), database, memory, processor, machine readable medium comprising instructions - each used for their well-understood, conventional and routine purpose) does not take the claim limitation out of the mental processes grouping. The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea of method for identifying prospects based on a prospect model (Title). In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (processor, memories, etc.), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps recited in the claims through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
Reevaluating the steps of extracting primary features from historical data, extracting traffic data, generating/populating an account object in a database (Claim 1) and generating/transmitting content (Claims 10, 17) which are considered insignificant extra solution activity, these limitations are mere data gathering and output recited at a high level of generality and amount to nothing more than receiving, storing and transmitting data which are well-understood, routine and conventional activities. The limitations remain insignificant extra solution activity even upon reconsideration. Even when considered in combination the additional elements represent mere instructions to apply an exception and insignificant extra solution activity which cannot provide an inventive concept.
Under the see MPEP § 2106.05, the claims are evaluated to determine if additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure ("MPEP") §§ 2106.05(a)-(c), (e)- (h)). A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
For example, limitations that are indicative of "integration into a practical application" include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP § 2106.05(a);
Applying the judicial exception with, or by use of, a particular machine - see MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a practical application" include:
Adding the words "apply it" (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP § 2106.05(±);
Adding insignificant extra-solution activity to the judicial exception- see MPEP § 2106.05(g); and
Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h).
In view of the MPEP § 2106.05, one must consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. The identified additional non-abstract elements recited in the independent claims are the generic customer relationship management system (software per se), multi-client service system platform (software per se), database, memory, processor, machine readable medium comprising instructions. These generic computer hardware merely performs generic computer functions of receiving, processing and saving data and represent a purely conventional implementation of applicant’s prospect modeling in the general field of customer relationship management and do not represent significantly more than the abstract idea. See at least MPEP § 2106.05(a) ("Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field").
These recited additional elements are merely generic computer components. The claims do present any other issues as set forth in the MPEP § 2106.05 regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. Rather, the claims merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea.
The claims do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)- (h)), the claims do not integrate the judicial exception into a practical application.
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other — a distinction that the Federal Circuit applied in Enfish, in rejecting a § 101 challenge at the first stage of the Mayo/Alice framework because the claims at issue focused on a specific type of data structure, i.e., a self-referential table, designed to improve the way a computer stores and retrieves data in memory, and not merely on asserted advances in uses to which existing computer capabilities could be put. See Enfish, 822 F.3d at 1335-36. Here the claims simply use a computer as a tool and nothing more.
For the reasons outlined above, that the claims recite a method of organizing human activity, i.e., an abstract idea, and that the additional element recited in the claim beyond the abstract idea (i.e., customer relationship management system (software per se), multi-client service system platform (software per se), database, memory, processor, machine readable medium comprising instructions) is no more than a generic computer component used as a tool to perform the recited abstract idea. As such, it does not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 (“[Wholly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, the claims are directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Step 2B)
Having determined under step one of the Mayo/Alice framework that the claims are directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether the claims include additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. See MPEP § 2106.05.
Under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself’ (emphasis added) (citation omitted)).
Here the only additional element recited in the claims beyond the abstract idea are a customer relationship management system (software per se), multi-client service system platform (software per se), database, memory, processor, machine readable medium comprising instructions” i.e., generic computer component. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Applicant has not identified any additional elements recited in the claim that, individually or in combination, provides significantly more than the abstract idea.
With regards to Applicant’s argument that the claimed invention provides non-routine/non-conventional prospect model that improves the operations of conventional systems - enabling cross support/service interactions with users, the examiner respectfully disagrees. Initially it is noted that the claims do not positively recite cross support/service interactions as claimed. At best the claims represent an improvement to the well-known business practice of customer relationship management, or more specifically improve the business process of modeling prospective customers of an organization – i.e. the improvement, at best, lies in an improvement in the abstract idea itself. The claims do not recite nor does Applicant’s specification disclose any improvement to any of the underlying technology (e.g. processor, memory, database, etc.) nor do the claims recite an improvement in another technology of technical field (CRM is not a technical field – it is as well-established business practice/process). The claims, as currently, recited merely collect (extract), process and store data.
With regards to Applicant’s argument that the claims constructs a non-conventional tailored prospect model...for predicting likelihoods of entities successfully completing opportunities so that automated computer tasks can be executed and therefore is patent eligible under 35 U.S.C. 101, the examiner respectfully disagrees. ‘Constructing’ a custom/unique prospect model (at best a collection of data attributes- customer profiles – fit score/probability of completing an opportunity) does not represent an technical improvement to a computer or other technology or another technical field. ‘Constructing’ a custom/unique prospect model does not represent a technical solution to a technical problem. Further storing data in a database, by generating and populating an account object is directed to insignificant extract solution activity (i.e. data storage) and may at best may represent automation of a well-known manual process of adding a prospect to a customer relationship management database commonly performed by humans using generic computers and generic computer databases.
Further the automating execution of a task step directed to an insignificant application of the abstract idea as discussed above (see at least MPEP § 2106.05(f), MPEP 2106.05(g) ).
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
In response to Applicant’s argument that the claims are patent eligible under 35 U.S.C. 101 as the claims recite significant more than the abstract idea, the examiner respectfully disagrees.
The claims use “conventional or generic technology in a nascent but well-known environment” to implement the abstract idea of business metric forecasting. In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). The recited technology (processor, memories, etc.), are used as a “conduit for the abstract idea,” not to provide a technological solution to a specific technological problem. Id.; see also id. at 611–13 (holding claims reciting the use of a cellular telephone and a network server to classify an image and store the image based on its classification to be abstract because the patent did “not describe a new telephone, a new server, or a new physical combination of the two” and did not address “how to combine a camera with a cellular telephone, how to transmit images via a cellular network, or even how to append classification information to that data”).
Nothing in Applicant’s disclosures suggests that the Applicant intended to accomplish any of the steps recited in independent claims 1 and 10 through anything other than well understood technology used in a routine and conventional manner. Therefore, the claims lack an inventive concept. See also, e.g., Elec. Power Grp., 830 F.3d at 1355 (holding claims lacked inventive concept where “[n]othing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); Content Extraction, 776 F.3d at 1348 (holding claims lacked an inventive concept where the claims recited the use of “existing scanning and processing technology”).
“If a claim’s only “inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG, 899 F.3d at 1290-91. “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” /d. at 1290; Final Act. 6—7 (claim 1 recites only an abstract idea; claims 10 and 11 recite only a generic computer and steps), 9.
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other — a distinction that the Federal Circuit applied in Enfish, in rejecting a § 101 challenge at the first stage of the Mayo/Alice framework because the claims at issue focused on a specific type of data structure, i.e., a self-referential table, designed to improve the way a computer stores and retrieves data in memory, and not merely on asserted advances in uses to which existing computer capabilities could be put. See Enfish, 822 F.3d at 1335-36. Here the claims simply use a computer as a tool and nothing more.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
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 1-16 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.
Regarding independent Claims 1 and 10, the claims are directed to the abstract idea of prospect management (sales lead management in a customer relationship management system). This is a process (i.e. a series of steps) which (Statutory Category – Yes –process).
The claims recite a judicial exception, a method for organizing human activity, prospect management (sales lead) as part of a customer relationship management system (Judicial Exception – Yes – organizing human activity). Specifically, the claims are directed to generating/populating an account object in a CRM database (Claim1) and/or generating/transmitting content to an entity (Claims 10) when prospects fit score, representing a probability that an entity/prospect will complete an opportunity, exceeds a threshold, wherein prospect management is a fundamental economic practice that falls into the abstract idea subcategories of sales activities and/or commercial interactions. Further all of the steps of “extracting”, “extracting”, “applying”, “generating”, “generating”, “grouping”, “selecting”, “generating” and “generating”, “generate and populate” (Claim 1), “generate and transmit” (Claim 10) recite functions of the prospect management are also directed to an abstract idea that falls into the abstract idea subcategories of sales activities and/or commercial interactions. The intended purpose of independent claims 1 and 10 appears to be generate and populate an account object in a database (i.e. data storage) as part of a customer relationship management system/multi-client service system (Claim 1) and/or transmit content (data) to an entity based on a fit score exceeding a threshold.
Accordingly, the claims recite an abstract idea – fundamental economic practice, specifically in the abstract idea subcategories of sales activities and/or commercial interactions. The exceptions are the company (that is a business), entity (that is a person) and account (that is a business) and additional limitations of generic customer management system (software per se), multi-client service system platform (software per se), computing device, memory, processor, machine readable medium comprising instructions and database (software per se) (Specification: Figures 4, 5).
Accordingly, the claims recite an abstract idea under Step 2A, Prong One, we proceed to Step 2A, Prong Two. Considering whether the additional elements set forth in the claim integrate the abstract idea into a practical application the previously identified non-abstract elements directed to generic customer management system (software per se), multi-client service system platform (software per se), computing device, memory, processor, machine readable medium comprising instructions and database (software per se). These generic computing components are merely used to extract (access), process and transmit data as described extensively in Applicant’s specification (Specification: Figures 4, 5). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Moreover, when viewed as a whole with such additional elements considered as an ordered combination, the claim modified by adding a generic computer would be nothing more than a purely conventional computerized implementation of applicant's prospect management (customer relationship management – account management) in the general field of business management and would not provide significantly more than the judicial exception itself. Note McRo, Inc. v. Bandai Namco Games America Inc. (837 F.3d 1299 (Fed. Cir. 2016)), guides: "[t]he abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' 837 F.3d at 1312 (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). The claims are not directed to a particular machine nor do they recite a particular transformation (MPEP § 2106.05(b)).
Additionally, the claims do not recite any specific claim limitations that would provide a meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment. Nor do the claims present any other issues as set forth in the MPEP § 2106.04/.05 regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. Rather, the claims merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)- (h)), Claims 1-16 do not integrate the judicial exception into a practical application.
Regarding the use of the generic (known, conventional) recited customer management system (software per se), multi-client service system platform (software per se), computing device, memory, processor, machine readable medium comprising instructions and database (software per se)," the Supreme Court has held "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. 208, 223. Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. The claims as a whole do not recite more than what was well-known, routine and conventional in the field (see MPEP § 2106.05(d)). In light of the foregoing, that each of the claims, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Additionally, the claims recite a judicial exception, a mental processes, which can be performed in the human mind or via pen and paper (Judicial Exception – Yes – mental process).
The claimed steps of applying weights to the CRM records, generating a prospect model, generating…a plurality of data containers, grouping….neighboring data containers, selecting….. the data container group, generating…a fit score for the company all describe the abstract idea. These limitations as drafted are directed to a process that under its reasonable interpretation covers performance of the steps in the mind but for the recitation of the generic computer components. Other than the recitation of a customer management system (software per se), multi-client service system platform (software per se), computing device, memory, processor, machine readable medium comprising instructions and database (software per se) nothing in the claimed steps precludes the step from practically being performed in the mind. The claims do not recite additional elements that are sufficient to amount to significantly more than the abstract idea because the steps extracting a set of primary features and extracting traffic data corresponding to traffic views are directed to insignificant pre-solution activity (i.e. data gathering). The step of and automating…execution of a task to generate and populate an account as an object (data storage) and generate and transmit content to an entity are directed to insignificant post-solution activity (i.e. data output/data storage).
Additionally, the last step of independent claims 1 and 10 directed to automating execution of a task to generated and populate an account as an object within the CRM database is directed to an insignificant application of the abstract idea as described in MPEP § 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Development Group v. SAP America, 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”). vi. A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair, In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016). Further as discussed in MPEP 2106.05(g) Insignificant application: i. Cutting hair after first determining the hair style, In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016).
The mere nominal recitation of a generic processor/computer does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process. (Judicial Exception recited – Yes – mental process).
The claims do not integrate the abstract idea into a practical application. The generic customer management system (software per se), multi-client service system platform (software per se), computing device, memory, processor, machine readable medium comprising instructions and database (software per se) are each recited at a high level of generality merely performs generic computer functions of retrieving, processing or displaying data. The generic processor/computer merely applies the abstract idea using generic computer components. The 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 claims do not recite improvements to the functioning of a computer or any other technology field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, the claims to do apply the abstract idea with a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (e.g. data remains data even after processing; MPEP 2106.05(c)), the claims no not apply or use the abstract idea in some other meaningful way beyond generally linking the user of the abstract idea to a particular technological environment (i.e. a generic computer) such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea (MPEP 2106.05(e)). The recited generic computing elements are no more than mere instructions to apply the exception using a generic computer component.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (Integrated into a Practical Application – No).
As discussed above the additional elements in the claims amount to no more than a mere instruction to apply the abstract idea using generic computing components, wherein mere instructions to apply an judicial exception using generic computer components cannot integrate a judicial exception into a practical application or provide an inventive concept. For the extracting and generate/populate steps that were considered extra-solution activity, this has been re-evaluated and determined to be well-understood, routine, conventional activity in the field. Applicant’s specification does not provide any indication that the computer/processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05(d)(II)) indicate that mere collection or receipt of data is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). For these reasons, there is no inventive concept. The claim is ineligible (Provide Inventive Concept – No).
The claims are ineligible under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Regarding dependent claims 2-9 and 11-16, the claims are directed to the abstract idea of prospect management (sales lead) and merely further limit the abstract idea claimed in independent claims 1 and 10.
Claims 2 and 12 further limit the abstract idea by monitoring the website, applying larger weights and updating the prospect model (a more detailed abstract idea remains an abstract idea). Claims 3 and 13 further limit the abstract idea by utilizing the fit score to assign the account to an account owner (a more detailed abstract idea remains an abstract idea). Claims 4 and 14 further limit the abstract idea by generating a notification for a prospect identified from traffic data (a more detailed abstract idea remains an abstract idea). Claims 5 and 15 further limit the abstract idea by generating the prospect model characterizing attributes of a target prospect (a more detailed abstract idea remains an abstract idea). Claims 6 and 16 further limit the abstract idea by generating a target prospect profile and transmitting the content to the entity (a more detailed abstract idea remains an abstract idea). Claim 7 further limits the abstract idea by characterizing and recommending attributes and entities that exhibit attribute features (a more detailed abstract idea remains an abstract idea). Claim 8 further limits the abstract idea by utilizing fit scores to generate and provide notifications identifying prospects (a more detailed abstract idea remains an abstract idea). Claim 9 further limits the abstract idea by utilizing fit scores to generate a first/second type of notification for a first/second subset of prospect (a more detailed abstract idea remains an abstract idea).
None of the limitations considered as an ordered combination provide eligibility because taken as a whole the claims simply instruct the practitioner to apply the abstract idea to a generic computer.
Further regarding Claims 1-16, Applicant’s specification discloses that the claimed elements directed to a customer management system (software per se), multi-client service system platform (software per se), computing device, memory, processor, machine readable medium comprising instructions and database (software per se) at best merely comprise generic computer hardware which is commercially available (Specification: Figures 4, 5). More specifically Applicant’s claimed features directed to a system do not represent custom or specific computer hardware circuits, instead the terms merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims merely recite manipulating data utilizing generic computer hardware (e.g. memory, processor, etc.). Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea. Further the lack of detail of the claimed embodiment in Applicant’s disclosure is an indication that the claims are directed to an abstract idea and not a specific improvement to a machine.
Accordingly given the broadest reasonable interpretation and in light of the specification the claims are interpreted to include the process steps being performed by a human mind or via pen and paper. The claim limitations which recite a computer implemented method is at best recite generic, well-known hardware. However, the recited generic hardware simply performs generic computer function of displaying or processing data. Generic computers performing generic, well known computer functions, alone, do not amount to significantly more than the abstract idea. Further the recited memories are part of every conventional general-purpose computer.
Applicant has not demonstrated that a special purpose machine/computer is required to carry out the claimed invention. A special purpose machine is now evaluated as part of the significantly more analysis established by the Alice decision and current 35 U.S.C. 101 guidelines. It involves/requires more than a machine only broadly applying the abstract idea and/or performing conventional functions.
Applicant’s specification discloses that the claimed elements directed to a customer management system (software per se), multi-client service system platform (software per se), computing device, memory, processor, machine readable medium comprising instructions and database (software per se)s merely comprise generic computer hardware which is commercially available (Specification: Figures 4, 5). More specifically Applicant’s claimed features directed to a system and components do not represent custom or specific computer hardware circuits, instead the term system merely refers to commercially available software and/or hardware. Thus, as to the system recited, "the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea." See Alice Corp. Pry. Ltd., 134 S.Ct. at 2360.
Accordingly, the claims are not patent eligible under 35 U.S.C. 101.
Subject Matter Eligibility Guidance
The USPTO’s Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112 provides cautionary warnings to patent applicants who describe and claim computer-implemented inventions in only broad, general terms. This new guidance is intended to address the “problem with broad functional claiming without adequate structural support in the specification” and address “when a claim is purely functional in nature rather than reciting with any specificity how the claimed function is achieved.”
Of particular note to the instant application are at least the following statements within the guidance:
Even if a claim is not construed as a means-plus function limitation under 35 U.S.C. § 112(f), computer-implemented functional claim language must still be evaluated for sufficient disclosure under the written description and enablement requirements of 35 U.S.C. § 112(a). As explained in further detail below, a specification must describe the claimed invention in sufficient detail (e.g., by disclosure of an algorithm) to establish that the applicant had possession of the claimed invention as of the application filing date. Additionally, any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. (Page 15)
The Federal Circuit explained that “[t]he test for the sufficiency of the written description ‘is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” Id. at 682 (quoting Ariad, 598 F.3d at 1351). The Federal Circuit emphasized that “[t]he written description requirement is not met if the specification merely describes a ‘desired result.’” Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). Thus, in applying this standard to the computer implemented functional claim at issue, the Federal Circuit stated that “[t]he more telling question is whether the specification shows possession by the inventor of how [the claimed function] is achieved.” Vasudevan, 782 F.3d at 683. (Page 16)
In order to satisfy the written description requirement set forth in 35 U.S.C. § 112(a), the specification must describe the claimed invention in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. For instance, the specification must provide a sufficient description of an invention, not an indication of a result that one might achieve. (Page 17)
When examining computer-implemented, software-related claims, examiners should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary (5th ed., 2002). Applicant may “express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340 (internal citation omitted). It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682-83. If the specification does not provide a disclosure of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result, a rejection under 35 U.S.C. § 112(a) for lack of written description must be made. See MPEP § 2161.01, subsection I. (Page 19)
The Federal Circuit has repeatedly held that the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. See Trs. of Bos. Univ., 896 F.3d at 1364 (Page 21)
Claim Rejections - 35 USC § 112
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 17-20 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent claim 17, the claims recites “generate, by a computer system using historical data extracted from the weighted CRM records, the weighted traffic data, and the prospects correlated with the set of IP addresses, a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software” wherein Applicant’s specification does not provide a sufficient description to show possession of the invention. Specifically, Applicant’s specification fails to provide a specific algorithm, models, flow-charts, steps, processes or the like for at least the step of generating a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software as claimed. Applicant’s specification only describes an indication of a result that one might achieve. This is insufficient to show possession or enablement under 35 U.S.C. 112.
Nowhere in Applicant’s disclosure is there any discussion at any level of generating a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software as newly claimed. At best, as Specification Paragraphs 20-25 make clear the system’s generated prediction model, using a first score, only predicts an existing or potential customers likelihood of completing purchasing a product or service sold (i.e. opportunity). There is no disclosure even remotely related to generate, by a computer system using historical data extracted from the weighted CRM records, the weighted traffic data, and the prospects correlated with the set of IP addresses, a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software as newly claimed. The phrase troubleshooting appears only in Specification Paragraphs 18, 19 and 26.
While Specification Paragraph 18 tangentially mention that the invention, as disclosed, may perform operations based upon the identification of a matching prospect and that those operations may include generate/populate service ticket with extracted troubleshoot information, remotely transmit/install software, perform a remote upgrade, perform a remote takeover to perform troubleshooting and sending a security code for authentication this paragraph, like the remainder of Applicant’s disclosure, fails to discuss at any level of detail the step of generate, by a computer system using historical data extracted from the weighted CRM records, the weighted traffic data, and the prospects correlated with the set of IP addresses, a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software as now claimed.
Specification Paragraph 19 discloses that the system comprises a multi-service business platform to serve the needs of multiple clients and that the system includes a CRM database having a plurality of objects which may store tickets (e.g. service tickets for troubleshooting a problem). Nowhere in Paragraph 19 is there any discussion at any level of detail related to generating a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software or more specifically to support the newly recited step of generate, by a computer system using historical data extracted from the weighted CRM records, the weighted traffic data, and the prospects correlated with the set of IP addresses, a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software as now claimed.
Similarly, Specification Paragraph 26 that the system may perform operations based on a report (Figure 3, Element 346) for a prospect matching one or more attributes within a prospect profile in the report and that some of those operations may include generate/populate a service ticket, upgrade software, remote takeover of the computing device to perform troubleshoot, sending a security code for authentication, or the like. This paragraph, like the remainder of Applicant’s disclosure, fails to discuss at any level of detail generating a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software or more specifically to support the newly recited step of generate, by a computer system using historical data extracted from the weighted CRM records, the weighted traffic data, and the prospects correlated with the set of IP addresses, a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software as now claimed.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step “generate, by a computer system using historical data extracted from the weighted CRM records, the weighted traffic data, and the prospects correlated with the set of IP addresses, a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software” as claimed nor the claimed embodiment as a whole.
While Applicant’s specification appears to suggest some potential capabilities of the claimed system/method, the Specification merely lists potential features and fails to disclose any specific method, mechanism, process, algorithm, or example for how to perform any of the claimed steps much alone the combination of the steps as claimed. Applicant’s specification simply represents a wish list of potential system/device capabilities without any disclosure as to HOW those wished for capabilities are actually performed or implemented (e.g. generate a prospect model to for predicting likelihoods of the entities successfully completing the troubleshooting process for the software).
The Federal Circuit explained that “[t]he test for the sufficiency of the written description ‘is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” Id. at 682 (quoting Ariad, 598 F.3d at 1351). The Federal Circuit emphasized that “[t]he written description requirement is not met if the specification merely describes a ‘desired result.’” Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). Thus, in applying this standard to the computer implemented functional claim at issue, the Federal Circuit stated that “[t]he more telling question is whether the specification shows possession by the inventor of how [the claimed function] is achieved.” Vasudevan, 782 F.3d at 683.
It is noted that the written description requirement under 112(a) is not satisfied by stating that one of ordinary skill in the art could devise an algorithm to perform the specialized programmed functions. For written description, the specification as filed must describe the claimed invention in sufficient detail so that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. An original claim may lack written description when the claim defines the invention in functional language specifying a desired result but the specification does not sufficiently identify how the inventor has devised the function to be performed or result achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient).
Further, the structure corresponding to claim limitations that are computer-implemented specialized functions must include a general-purpose computer or computer component along with the algorithms that the computer uses to perform each claimed specialized function.
It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682-83.
Applicant’s specification does not provide a disclosure of the computer and algorithms in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step of “generate, by a computer system using historical data extracted from the weighted CRM records, the weighted traffic data, and the prospects correlated with the set of IP addresses, a prospect model to characterize attributes of the entities for predicting likelihoods of the entities successfully completing the troubleshooting process for the software” as claimed.
Further regarding independent claim 17, the claims recites “extract, from a customer relationship management (CRM) database by a CRM system ……primary features from historical data of an opportunity relating to performing troubleshooting for software hosted by computers, wherein a primary feature include a name, a duration of a troubleshooting process and a result of the trouble shooting process ” wherein Applicant’s specification does not provide a sufficient description to show possession of the invention. Specifically, Applicant’s specification fails to historical data related to performing troubleshooting of software, more specifically fails to disclose that primary features, in the historical data, related to a name, duration of a troubleshooting process and a result of a troubleshooting process as claimed. Applicant’s specification only describes an indication of a result that one might achieve. This is insufficient to show possession or enablement under 35 U.S.C. 112.
As discussed above the phrase troubleshooting appears only tangentially in Specification Paragraphs 18, 19 and 26. None of those paragraphs, like the remainder of Applicant’s disclosure, disclosed that the primary features, in the historical data, related to a name, duration of a troubleshooting process and a result of a troubleshooting process as newly claimed. While Applicant’s disclosure discusses that primary features of (sales) opportunities include a name, duration and result – specification Paragraphs 20-25 make clear that opportunities do not include performing troubleshooting for software hosted by computers as claimed. The disclosed troubleshooting is distinct and separate from the disclosed opportunities.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step “extract, from a customer relationship management (CRM) database by a CRM system ……primary features from historical data of an opportunity relating to performing troubleshooting for software hosted by computers, wherein a primary feature include a name, a duration of a troubleshooting process and a result of the trouble shooting process” as claimed nor the claimed embodiment as a whole.
Further, the structure corresponding to claim limitations that are computer-implemented specialized functions must include a general-purpose computer or computer component along with the algorithms that the computer uses to perform each claimed specialized function.
It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682-83.
Applicant’s specification does not provide a disclosure of the computer and algorithms in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step of “extract, from a customer relationship management (CRM) database by a CRM system ……primary features from historical data of an opportunity relating to performing troubleshooting for software hosted by computers, wherein a primary feature include a name, a duration of a troubleshooting process and a result of the trouble shooting process” as claimed.
Further regarding independent claim 17, the claim recites “generate, using the prospect model, a fit score based upon the data container group, wherein the fit score represents a probability generated by the prospect model that the entity will complete the opportunity to troubleshoot the software” wherein Applicant’s specification does not provide a sufficient description to show possession of the invention. Specifically, Applicant’s specification fails to provide a specific algorithm, models, flow-charts, steps, processes or the like for at least the step of generating a probability generated by the prospect model that the entity will complete the opportunity to troubleshoot the software (fit score), using a prospect model as claimed. Applicant’s specification only describes an indication of a result that one might achieve. This is insufficient to show possession or enablement under 35 U.S.C. 112.
As discussed in detail above nowhere in Applicant’s disclosure is there any discussion that the disclosed opportunity and/or predicted likelihood of completing an opportunity (the sale of a product or service) encompasses troubleshooting of any kind. More specifically nowhere in Applicant’s disclosure there an specific algorithm, models, flow-charts, steps, processes or the like for at least the step of generating a probability generated by the prospect model that the entity will complete the opportunity to troubleshoot the software (fit score), using a prospect model as claimed
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step recite “generate, using the prospect model, a fit score based upon the data container group, wherein the fit score represents a probability generated by the prospect model that the entity will complete the opportunity to troubleshoot the software” as claimed nor the claimed embodiment as a whole.
Further regarding independent claim 17, the claim recites “in response to the fit score exceeding a threshold, automating, by the machine, execution of the troubleshooting process at a computing device of the entity by….” wherein Applicant’s specification does not provide a sufficient description to show possession of the invention. Specifically, Applicant’s specification fails to disclose automating execution of a troubleshooting process in response to a fit score exceeding a threshold as claimed. Applicant’s specification only describes an indication of a result that one might achieve. This is insufficient to show possession or enablement under 35 U.S.C. 112.
As discussed above, in detail, only Specification Paragraphs 18, 19 and 26 discuss troubleshooting as a series of operations that maybe performed in response to a prospect matching a prospect profile in a report. None of these paragraphs discuss or disclose that any of the troubleshooting operations are in any way related to a first score (probability of a customer purchasing a product or service) much alone the system/machine automatically execute a troubleshooting process in response to a first score exceeding a threshold as claimed.
Applicant’s disclosure does discussion comparing the fit score to a threshold in several paragraphs (see below) however nowhere in Applicant’s disclosure is a fit score compared to a threshold nor more specifically does the machine automatically execute a troubleshooting process in response to a fit score exceeding a threshold as claimed.
Specification Paragraphs 28 and 29 disclose that when a first score representing a likelihood of a company completing a sale exceeds a threshold a notification may be sent.
Specification Paragraphs 95 and 97 disclose populating an account in the CRM when the first score exceeds a threshold.
Accordingly, Applicant's specification fails to provide adequate written support to show possession as well as lacks written disclosure to enable one to use the invention without undue experimentation as claimed. Applicant's disclosure fails to disclose any specific method, algorithm, approach, process or working example for the step of recite “in response to the fit score exceeding a threshold, automating, by the machine, execution of the troubleshooting process at a computing device of the entity by….” as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sahni et al., U.S. Patent No. 12026076 discloses a CRM system enabling a service provided to uncover and troubleshoot issues related to clients.
Urdiales et al., U.S. Patent No. 11775494 discloses a CRM system with ability to generate/populate service tickets and trigger troubleshooting workflows.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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 SCOTT L JARRETT whose telephone number is (571)272-7033. The examiner can normally be reached M-TH 6am-4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth Boswell can be reached at (571) 272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SCOTT L. JARRETT
Primary Examiner
Art Unit 3625
/SCOTT L JARRETT/Primary Examiner, Art Unit 3625
Prosecution Insights