DETAILED ACTION
This Office action is in response to the amendment submitted on April 6, 2026.
Claims 1-4 and 6-10 are pending.
Claims 1-4 and 6-10 are currently amended.
Claim 5 is canceled.
The objection to the title of the invention is withdrawn in view of the Applicant’s amendments to the title of the invention.
Applicant has failed to address the objection to the abstract. Accordingly, this objection is maintained and further explained hereinafter.
The objections to Claims 7 and 9 are withdrawn in view of the Applicant’s amendments to the claims.
The 35 U.S.C. § 112(b) rejections of Claims 1-10 are withdrawn in view of the Applicant’s amendments to the claims or cancellation of the claim.
The 35 U.S.C. § 101 rejections of Claims 1-10 are maintained in view of the Applicant’s arguments and amendments to the claims and further explained hereinafter. The 35 U.S.C. § 101 rejection of Claim 5 is withdrawn in view of the Applicant’s cancellation of the claim.
In the interest of facilitating compact prosecution, the Examiner kindly asks the Applicant’s representative to authorize Internet communications with the Examiner by submitting Form PTO/SB/439 using Patent Center.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
Claim Interpretation Under 35 USC § 112(f)
In light of the Applicant’s amendments to Claims 1-4 and 6-10 and cancellation of Claim 5 and further consideration of the claims by the Examiner, Claims 1-9 are no longer being interpreted under 35 U.S.C. § 112(f).
Specification
The abstract of the disclosure is objected to because it exceeds 150 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-4 and 6-10 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 1 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 1 is directed to a software performance verification system, which is a machine, and falls within one of the statutory categories of invention.
Step 2A, Prong One: Claim 1 recites the limitations:
(a) extract a partial code as part of the code;
(b) convert a word included in the partial code into a common form word;
(c) acquire from the word dictionary a value corresponding to the description of the word;
(d) generate a feature vector comprising the acquired value as an element;
(e) generate a performance verification model that […] includes the feature vector of the partial code for learning and performance information indicative of a performance of the software expressed by at least either indicator of throughput, response time, and resource usage obtained […]; and
(f) generate, as a verification result of the partial code, information based on output obtained through input of the partial code as a verification target to the performance verification model, wherein the output from the performance verification model comprises a probability value indicative of a performance of a process implementing the partial code.
These 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) a processor.
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 code of a program in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to extract a partial code. And the limitation (b) in the context of the claim encompasses a human evaluating the partial code in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to convert a word. And the limitation (c) in the context of the claim encompasses a human evaluating the word dictionary in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to acquire a value. And the limitation (d) in the context of the claim encompasses a human evaluating the partial code in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to generate a feature vector. And the limitation (e) in the context of the claim encompasses a human evaluating the performance of a software in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to generate a performance verification model. And the limitation (f) in the context of the claim encompasses a human evaluating the performance verification model in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to generate a verification result of the partial code. See MPEP § 2106.04(a)(2)(III).
If a claim limitation, under its broadest reasonable interpretation, 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) a processor.
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 processor is used as a tool to perform the various steps of the claim. See MPEP § 2106.05(f).
Also, the claim recites the additional element:
(2) […] executing a software implemented based on the partial code.
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 executing a software without details on how this is accomplished. The claim omits any details as to how executing a software 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 executing a software with no restriction on how it is accomplished and no description of the mechanism for accomplishing it, and does not integrate the judicial exception into a practical application because this type of recitation is equivalent to the words “apply it.”
Also, the claim recites the additional element:
(3) store code of a program configuring software and a word dictionary comprising information associating a description obtained by converting to common form a word used in the code describing the software with a value set for each such description.
The additional element (3) is mere data outputting 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 outputting, and, as such, the additional element does not impose any meaningful limits on the claim. The additional element amounts to necessary data outputting. See MPEP § 2106.05(g).
Also, the claim recites the additional element:
(4) […] a machine learning model having been trained by use of learning data […].
The additional element (4) merely indicates a field of use or technological environment in which the judicial exception is performed. Although the additional element (4) limits the identified judicial exceptions (a) to (f), however, this type of limitation merely confines the use of the abstract idea to a particular field of use or technological environment (artificial intelligence (AI)) and thus, fails to add an inventive concept to the claims. See MPEP § 2106.05(h).
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 above with respect to integration of the abstract idea into a practical application, the claim recites the additional element:
(1) a processor.
The additional element (1) amounts to no more than mere instructions to apply the judicial exception using generic computer components. The analysis under Step 2A, Prong Two is carried through to Step 2B. The use of a computer or other machinery in its ordinary capacity does not integrate a judicial exception into a practical application or provide significantly more.
Also, the claim recites the additional element:
(2) […] executing a software implemented based on the partial code.
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 executing a software with no restriction on how it is accomplished and no description of the mechanism for accomplishing it, and does not provide significantly more because this type of recitation is equivalent to the words “apply it.”
Also, the claim recites the additional element:
(3) store code of a program configuring software and a word dictionary comprising information associating a description obtained by converting to common form a word used in the code describing the software with a value set for each such description.
The additional element (3) 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 and thus, are not indicative of an inventive concept. MPEP § 2106.05(d)(II) expressly states that the courts have recognized the computer function of storing and retrieving information in memory 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 store code of a program and a word dictionary. Therefore, the limitation remains an insignificant extra-solution activity even upon reconsideration and does not amount to significantly more.
Also, the claim recites the additional element:
(4) […] a machine learning model having been trained by use of learning data […].
The additional element (4) is, at best, mere instructions to “apply” the abstract ideas, which cannot provide an inventive concept. The analysis under Step 2A, Prong Two is carried through to Step 2B. Therefore, the additional element does not meaningfully limit the claim because employing generic computer functions to execute an abstract idea, even when limiting the use of the abstract idea to one particular field of use or technological environment, does not add significantly more.
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, only the idea of a solution or outcome, an insignificant extra-solution activity, and a field of use or technological environment, and therefore do not provide an inventive concept. The claim is not patent eligible.
Claims 2-4 and 6-9 are dependent on Claim 1, but do not add any feature or subject matter that would solve the judicial exception deficiencies of Claim 1.
Claim 2 recites the limitations:
(a) wherein the code includes a description of a method, and the processor is to:
(b) extract the partial code from the code in units of the method.
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Claim 3 recites the limitations:
(a) wherein the code includes a description of a method, and the processor is to:
(b) extract, as the partial code, a description including the description of one method and the description of another method having a call relation with the method.
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Claim 4 recites the limitations:
(a) wherein the processor is to:
(b) generate, as the feature vector, a vector having metrics values acquired from the partial code as the element of the vector.
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Claim 6 recites the limitations:
(a) wherein the processor is to:
(b) output a probability of there being a problem with the performance of the process to be implemented based on the partial code.
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Claim 7 recites the limitations:
(a) wherein the processor is to:
(b) output a probability of indicators indicating the performance of the process to be implemented based on the partial code, each of the plurality of indicators based on a different viewpoint.
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Claim 8 recites the limitations:
(a) wherein the processor is to:
(b) receive, via a user interface, from a user, designation of the code and designation of a predetermined method described in the code; and
(c) extract as the partial code the description of the predetermined method designated by the user in the code.
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Claim 9 recites the limitations:
(a) wherein the processor is to:
(b) responsive to receiving a request to verify the code, extract the partial code from the code;
(c) generate the feature vector based on the partial code;
(d) generate the verification result of the partial code by inputting the feature vector of the partial code to the performance verification model;
(e) provide the verification result; and
(f) based on the verification result, determine whether to register the code with a repository to manage the code jointly developed by a plurality of users.
Claims 2-4, 8, and 9 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)).
Claims 6-9 recite further additional elements that do not integrate the judicial exception into a practical application of the judicial exception because 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)) and thus, are not significantly more than the abstract idea.
Thus, Claims 2-4 and 6-9 do not add any steps or additional elements, when considered both individually and as a combination, that would convert Claim 1 into patent-eligible subject matter.
Therefore, Claims 1-4 and 6-9 are 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 10 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 10 is directed to a software performance verification 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 10 recites the limitations:
(a) extracting […] a partial code as part of the code;
(b) converting […] a word included in the partial code into a common form word;
(c) acquiring […] from the word dictionary a value corresponding to the description of the word;
(d) generating […] a feature vector comprising the acquired value as an element;
(e) generating […] a performance verification model that […] includes the feature vector of the partial code for learning and performance information indicative of a performance of the software expressed by at least either indicator of throughput, response time, and resource usage obtained […]; and
(f) generating, […] as a verification result of the partial code, information based on output obtained through input of the partial code as a verification target to the performance verification model, wherein the output from the performance verification model comprises a probability value indicative of a performance of a process implementing the partial code.
These 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) a processor.
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 code of a program in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to extract a partial code. And the limitation (b) in the context of the claim encompasses a human evaluating the partial code in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to convert a word. And the limitation (c) in the context of the claim encompasses a human evaluating the word dictionary in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to acquire a value. And the limitation (d) in the context of the claim encompasses a human evaluating the partial code in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to generate a feature vector. And the limitation (e) in the context of the claim encompasses a human evaluating the performance of a software in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to generate a performance verification model. And the limitation (f) in the context of the claim encompasses a human evaluating the performance verification model in the human mind alone using observation, evaluation, judgment, and opinion or with the aid of pen and paper to generate a verification result of the partial code. See MPEP § 2106.04(a)(2)(III).
If a claim limitation, under its broadest reasonable interpretation, 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) a processor.
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 processor is used as a tool to perform the various steps of the claim. See MPEP § 2106.05(f).
Also, the claim recites the additional element:
(2) […] executing a software implemented based on the partial code.
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 executing a software without details on how this is accomplished. The claim omits any details as to how executing a software 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 executing a software with no restriction on how it is accomplished and no description of the mechanism for accomplishing it, and does not integrate the judicial exception into a practical application because this type of recitation is equivalent to the words “apply it.”
Also, the claim recites the additional element:
(3) storing […] code of a program configuring software and a word dictionary comprising information associating a description obtained by converting to common form a word used in the code describing the software with a value set for each such description.
The additional element (3) is mere data outputting 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 outputting, and, as such, the additional element does not impose any meaningful limits on the claim. The additional element amounts to necessary data outputting. See MPEP § 2106.05(g).
Also, the claim recites the additional element:
(4) […] a machine learning model having been trained by use of learning data […].
The additional element (4) merely indicates a field of use or technological environment in which the judicial exception is performed. Although the additional element (4) limits the identified judicial exceptions (a) to (f), however, this type of limitation merely confines the use of the abstract idea to a particular field of use or technological environment (artificial intelligence (AI)) and thus, fails to add an inventive concept to the claims. See MPEP § 2106.05(h).
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 above with respect to integration of the abstract idea into a practical application, the claim recites the additional element:
(1) a processor.
The additional element (1) amounts to no more than mere instructions to apply the judicial exception using generic computer components. The analysis under Step 2A, Prong Two is carried through to Step 2B. The use of a computer or other machinery in its ordinary capacity does not integrate a judicial exception into a practical application or provide significantly more.
Also, the claim recites the additional element:
(2) […] executing a software implemented based on the partial code.
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 executing a software with no restriction on how it is accomplished and no description of the mechanism for accomplishing it, and does not provide significantly more because this type of recitation is equivalent to the words “apply it.”
Also, the claim recites the additional element:
(3) storing […] code of a program configuring software and a word dictionary comprising information associating a description obtained by converting to common form a word used in the code describing the software with a value set for each such description.
The additional element (3) 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 and thus, are not indicative of an inventive concept. MPEP § 2106.05(d)(II) expressly states that the courts have recognized the computer function of storing and retrieving information in memory 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 store code of a program and a word dictionary. Therefore, the limitation remains an insignificant extra-solution activity even upon reconsideration and does not amount to significantly more.
Also, the claim recites the additional element:
(4) […] a machine learning model having been trained by use of learning data […].
The additional element (4) is, at best, mere instructions to “apply” the abstract ideas, which cannot provide an inventive concept. The analysis under Step 2A, Prong Two is carried through to Step 2B. Therefore, the additional element does not meaningfully limit the claim because employing generic computer functions to execute an abstract idea, even when limiting the use of the abstract idea to one particular field of use or technological environment, does not add significantly more.
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, only the idea of a solution or outcome, an insignificant extra-solution activity, and a field of use or technological environment, and therefore do not provide an inventive concept. The claim is not patent eligible.
Therefore, Claim 10 is not drawn to patent-eligible subject matter as it is directed to an abstract idea without significantly more.
Allowable Subject Matter
Claims 1-4 and 6-10 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 submitted on April 6, 2026 have been fully considered, but they are not persuasive.
In the Remarks, the Applicant argues:
For example, amended independent claim 1 recites “generat[ing] a performance verification model that is a machine learning model … trained by us[ing] … [(i)] the feature vector of the partial code for learning and [(ii)] performance information … obtained by executing a software implemented based on the partial code,” where “the output from the performance verification model comprises a probability value indicative of a performance of a process implementing the partial code.” Applicant respectfully submits that amended independent claim 1 cannot reasonably be interpreted as being performable “in the human mind” or “with pen and paper.” That is, the subject matter of claim 1 involves machine learning training and inference using a trained model and associated data structures that are simply not practically performable as mental steps, even under broadest reasonable interpretation.
(See Remarks – pages 10 and 11, emphasis in original.)
Examiner’s response:
Examiner disagrees. With respect to the Applicant’s assertion that “[…] the subject matter of claim 1 involves machine learning training and inference using a trained model and associated data structures that are simply not practically performable as mental steps, even under broadest reasonable interpretation,” the Examiner respectfully submits that, as pointed out in the 35 U.S.C. § 101 rejection of Claim 1 hereinabove, the limitation “a machine learning model having been trained by use of learning data” is treated under Step 2A, Prong Two of the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) as an additional element that confines the use of the abstract idea to a particular field of use or technological environment (artificial intelligence (AI)) and thus, fails to add an inventive concept to the claim. This limitation is further treated under Step 2B of the 2019 PEG as an additional element that does not amount to an inventive concept (a.k.a. “significantly more” than the judicial exception). Thus, this limitation is not evaluated under Step 2A, Prong One of the 2019 PEG to determine whether the claim recite an abstract idea. Therefore, the Applicant’s argument asserting that “[…] the subject matter of claim 1 involves machine learning training and inference using a trained model and associated data structures that are simply not practically performable as mental steps, even under broadest reasonable interpretation” is, at best, moot.
Therefore, for at least the reason set forth above, the rejections made under 35 U.S.C. § 101 with respect to Claims 1-4 and 6-10 are proper and therefore, maintained.
In the Remarks, the Applicant argues:
Moreover, as a matter of ordinary practice, a human would not reasonably perform manual process of “extract[ing] a partial code as part of the code,” “convert[ing] a word included in the partial code into a common form word,” “acquir[ing] from the word dictionary a value corresponding to the description of the word,” and “generat[ing] a feature vector comprising the acquired value as an element,” as recited in amended claim 1. Indeed, generating a feature vector that comprises, as an element, a value acquired from look up in a word dictionary is not a task a human would practically perform mentally or with pen and paper.
(See Remarks – page 11.)
Examiner’s response:
Examiner disagrees. With respect to the Applicant’s assertion that “[…] as a matter of ordinary practice, a human would not reasonably perform manual process of ‘extract[ing] a partial code as part of the code,’ ‘convert[ing] a word included in the partial code into a common form word,’ ‘acquir[ing] from the word dictionary a value corresponding to the description of the word,’ and ‘generat[ing] a feature vector comprising the acquired value as an element,’ as recited in amended claim 1,” the Examiner respectfully submits that, contrary to the Applicant’s assertion, the “extrat[ing],” “convert[ing],” “acquir[ing],” and “generat[ing]” steps could practically be performed in the human mind alone or with the aid of pen and paper because they are mental/manual concepts. Specifically, “extrat[ing] a partial code” could be practically performed by a human being using pen and paper to remove a partial code from the rest of the code. “[C]onvert[ing] a word” could be practically performed by a human being using pen and paper to change a word into a common form word. “[A]cquir[ing] […] a value” could be practically performed by a human being using pen and paper to obtain a value from a word dictionary. And “generat[ing] a feature vector” could be practically performed by a human being using pen and paper to create a feature vector. Thus, as can be seen, these steps could be, as a practical matter, mentally/manually performed by a human being with the aid of pen and paper.
Therefore, for at least the reason set forth above, the rejections made under 35 U.S.C. § 101 with respect to Claims 1-4 and 6-10 are proper and therefore, maintained.
In the Remarks, the Applicant argues:
Furthermore, the subject matter of claim 1 involves a specific technical pipeline for software performance verification that transforms program code into a feature vector using a word dictionary and uses a trained machine-learning model (e.g., trained with execution-derived performance information such as throughput, response time, and resource usage) to output a probability value used as the verification result for the partial code. These too are not tasks that would be practically performed in the human mind or on paper. Such technical features integrate any purported judicial exception into a practical application.
(See Remarks – page 11.)
Examiner’s response:
Examiner disagrees. Applicant’s arguments are not persuasive for at least the following reasons:
First, with respect to the Applicant’s assertion that “[t]hese too are not tasks that would be practically performed in the human mind or on paper. Such technical features integrate any purported judicial exception into a practical application,” the Examiner respectfully submits that the purported feature of “a specific technical pipeline” or its variants are not recited in Claim 1. Instead, it only broadly recites “a processor” for performing a software performance verification. As pointed out in the 35 U.S.C. § 101 rejection of Claim 1 hereinabove, the “processor” is recited at a high-level of generality (i.e., as a generic processor) such that it amounts to no more than mere instructions to apply the judicial exception using generic computer components. Accordingly, the 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. The claim is directed to an abstract idea. Furthermore, the Examiner considers the recitation of a processor performing a software performance verification as merely reciting use of a processor as a tool to implement the abstract concept. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Unlike Enfish, [the claim] does not claim a software method that improves the functioning of a computer … [but] claims a ‘process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’”) (Citation omitted). The reviewing court said “‘[the] mere automation of manual processes using generic computers’ … ‘does not constitute a patentable improvement in computer technology.’” Trading Techs. Int’l Inc. v. IBGLLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)). USPTO examination procedure also requires that “the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology.” See MPEP § 2106.05(a).
Second, the Examiner would like to point out that the improvement provided by the technical solution of Claim 1 resides within the abstract idea identified in Step 2A, Prong One of the 2019 PEG. As discussed in the 35 U.S.C. § 101 rejection of Claim 1 hereinabove, the steps pertaining to performing a software performance verification are within the realm of capability of mental processes. Furthermore, inasmuch as the Applicant is arguing that such technical features integrate any purported judicial exception into a practical application, the technical solution of Claim 1 is an improvement to the abstract idea of performing a software performance verification, as it is a process that could be, as a practical matter, mentally/manually performed by a human being with the aid of pen and paper. New/improved abstract idea is still abstract idea and thus, cannot integrate the judicial exception into a practical application.
Therefore, for at least the reasons set forth above, the rejections made under 35 U.S.C. § 101 with respect to Claims 1-4 and 6-10 are proper and therefore, maintained.
In the Remarks, the Applicant argues:
In addition, the amended claim recites additional elements that amount to significantly more than any alleged abstract idea, including at least: “store … a word dictionary comprising information associating a description obtained by converting to common form a word used in the code describing the software with a value set for each such description,” “convert a word included in the partial code into a common form word,” “acquire from the word dictionary a value corresponding to the description of the word,” “generate a feature vector comprising the acquired value as an element,” “generate a performance verification model that is a machine learning model having been trained by use of learning data that includes the feature vector of the partial code for learning and performance information indicative of a performance of the software expressed by at least either indicator of throughput, response time, and resource usage obtained by executing a software implemented based on the partial code,” and “generate, as a verification result of the partial code, information based on output obtained through input of the partial code as a verification target to the performance verification model, wherein the output from the performance verification model comprises a probability value indicative of a performance of a process implementing the partial code,” as recited in claim 1. Indeed, the subject matter of claim 1 is not “mere instructions to apply the exception on generic components” and does not reflect mere “necessary data storing,” contrary to the assertion on pages 9 and 10 of the Office Action, but instead provides an inventive concept to address the difficulty of “determin[ing] whether the performance requirements are met at the source code level.” (Specification, paragraph [0006]).
(See Remarks – pages 11 and 12.)
Examiner’s response:
Examiner disagrees. With respect to the Applicant’s assertion that “[…] the subject matter of claim 1 is not ‘mere instructions to apply the exception on generic components’ and does not reflect mere ‘necessary data storing,’ contrary to the assertion on pages 9 and 10 of the Office Action, but instead provides an inventive concept to address the difficulty of ‘determin[ing] whether the performance requirements are met at the source code level,’” the Examiner respectfully submits that, as pointed out in the 35 U.S.C. § 101 rejection of Claim 1 hereinabove, only the “processor” is treated under Step 2A, Prong Two of the 2019 PEG as an additional element that 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. And only the “storing” step is treated under Step 2A, Prong Two of the 2019 PEG as an additional element that is merely data outputting recited at a high level of generality and thus, is an insignificant extra-solution activity. 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.
Therefore, for at least the reason set forth above, the rejections made under 35 U.S.C. § 101 with respect to Claims 1-4 and 6-10 are proper and therefore, maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Qing Chen whose telephone number is 571-270-1071. The Examiner can normally be reached on Monday through Friday from 9:00 AM to 5:00 PM ET.
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/Qing Chen/
Primary Examiner, Art Unit 2191
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