DETAILED ACTION
In the response filed May 12, 2025, the Applicant amended claims 1-4 and 12-20. Claims 1-20 are pending in the current application.
Notice of 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 Arguments
Applicant’s arguments for claims 1-20 with respect to the 35 U.S.C. 101 rejection have been considered but are unpersuasive. Applicant argues that the claims are not directed to a judicial exception but rather a technological improvement in the field of automated roadmap software content creation (i.e., cloud-based software lifecycle management). Examiner respectfully disagrees. Here, under broadest reasonable interpretation, the amended claims describe or set-forth filtering data and generating workflow for updating an unsupported software application, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
Applicant argues that the claims are not directed to a judicial exception as they provide a technological solution to a technical problem – in particular, implementation of machine learning and natural language algorithms and the use of specialized logic. Examiner respectfully disagrees. Viewing the disclosure, the devices used to execute the claimed invention take the form of servers, general purpose computers, and mainframe computers, as well as mobile computing devices such as smartphones, tablets, and laptop computers (Paragraph [0037]) and not any specialized logic or systems as described by Applicant. The independent claims recite the additional elements/limitations of: “an Intake tool on an internal cloud environment,” “an external workflow software tool residing on an external cloud environment;” “at least one machine learning or natural language processing algorithm,” “a roadmap software tool,” “a content generating workflow software tool on the external cloud environment to create roadmap items;” “a backlog tool to update the internal software application,” (claims 1, 14, and 20); “a computing device… comprising: a processor; a memory; and a communication interface,” (claim 14); “a tangible computer-readable medium,” “a computing device,” (claim 20). The independent claims also recite the additional elements/limitations of: “transferring the data from the Intake tool to an external workflow software tool residing on an external cloud environment;” “populating automatically a roadmap software tool,” “sending the roadmap items from the external workflow software tool to an internal workflow software tool;” (claims 1, 14, and 20).
The requirement to execute the claimed steps/functions using “an Intake tool on an internal cloud environment,” “an external workflow software tool residing on an external cloud environment;” “at least one machine learning or natural language processing algorithm,” “a roadmap software tool,” “a content generating workflow software tool on the external cloud environment to create roadmap items;” “a backlog tool to update the internal software application,” (claims 1, 14, and 20); “a computing device… comprising: a processor; a memory; and a communication interface,” (claim 14); “a tangible computer-readable medium,” “a computing device,” (claim 20), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f).
The recited additional elements of “transferring the data from the Intake tool to an external workflow software tool residing on an external cloud environment;” “populating automatically a roadmap software tool,” “sending the roadmap items from the external workflow software tool to an internal workflow software tool;” (claims 1, 14, and 20), simply append insignificant extra-solution activity to the judicial exception, (e.g., mere pre-solution activity, such as data gathering, in conjunction with an abstract idea; mere post-solution activity in conjunction with an abstract idea). The term “extra-solution activity” is understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. The recited additional elements are deemed “extra-solution” because they are merely sending and receiving data between machines. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See MPEP § 2106.05(h).
Applicant argues the amended claims provide an improvement such as reduced latency and accuracy and compliance through the use of machine learning and natural language processing. Examiner respectfully disagrees. First, the claimed invention and the disclosure do not describe any implementation of reduced latency nor are there mentions of reduced system downtime with regard to software updates. Here, the alleged improvements described by the Applicant are non-technical subjective/abstract improvements, not technical improvements to computers or technological processes, but address a business challenge regarding the filtering and determining needed upgrades. Improved filtering, more accurate determinations are directed to, if anything, a business “improvement.” That a computer is used to execute this abstract idea serves merely to implement the abstract idea on a generic computer.
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Applicant’s arguments remain unpersuasive. The 35 U.S.C. 101 rejection is hereby maintained.
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 1-20 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.
Step 1: Claims 1-13 are drawn to a process and claims 14-19 are drawn to a machine, each of which is within the four statutory categories (e.g., a process, a machine). (Step 1: YES).
Claim 20 is rejected as it is directed to a “medium” and the specification is silent on whether the medium covers forms of non-transitory tangible media and transitory propagating signals per se. The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP § 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. §101, Aug. 24, 2009; p. 2. The word “tangibly” has been shown not to exclude transitory signals from the claim scope. As such, claim 20 should read “A non-transitory computer-readable storage medium…” Appropriate correction is required.
Step 2A – Prong One: In prong one of step 2A, the claims are analyzed to evaluate whether they recite a judicial exception.
Claim 1 (representative of claims 14 and 20) recites/describes the following steps:
“gathering data, …, from one or more data sources;”
“filtering, …, the data based on a predetermined criteria to identify one or more requests to update a software application being unsupported by an external cloud environment;” and
“wherein the filtering comprises… deprecation data comprising a deprecation status indicative of the software application being unsupported by the external cloud environment;”
“creating content automatically …, based on the one or more requests to update the software application being unsupported by the external cloud environment,”
“mapping external cloud accounts being unsupported by the external cloud environment to internal accounts to identify specific updates for an internal software application of the internal cloud account;”
“after approval by the internal workflow software tool, injecting the created content as one or more work items into a prioritized work queue… and transferring the one or more work items..”
These steps, under broadest reasonable interpretation, describe or set-forth filtering data and generating workflow for updating an unsupported software application, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Dependent claims 2 and 15 recite the same abstract idea as the independent claims because they recite the limitation “the deprecation data includes one or more attributes to identify the software application,” that further defines the data from the abstract idea. Claims 2 and 15 are rejected due to being abstract and does not reflect a practical application.
Dependent claims 3 and 16 recite the additional element of “a virtual private cloud, an internal cloud environment, and an internal computing environment,” which is analyzed in the steps below.
Dependent claim 4 recites the additional element of “tree algorithms,” which is analyzed in the steps below.
Dependent claim 5 recites the same abstract idea as the independent claims because it recites the limitation “mapping data of the software application being unsupported by the external cloud environment to global technology ownership data,” that further defines the creation of content from the abstract idea. Claim 5 recites the additional element of “a global technology product map,” which is analyzed in the steps below.
Dependent claim 6 recites the same abstract idea as the independent claims because it recites the limitation “mapping data of the software application being unsupported by the external cloud environment to global technology data,” that further defines the creation of content from the abstract idea. Claim 6 recites the additional element of “a global technology product line map,” which is analyzed in the steps below.
Dependent claim 7 recites the same abstract idea as the independent claims because it recites the limitation “generating a list of accounts for the software application being unsupported by the external cloud environment,” that further defines the creation of content from the abstract idea. Claim 7 is rejected due to being abstract and does not reflect a practical application.
Dependent claim 8 recites the same abstract idea as the independent claims because it recites the limitation “for private computing resources hosted on the external cloud environment for exclusive use by a user, performing a software check on the private computing resources to determine a list of external cloud accounts associated with the software application being unsupported by the external cloud environment,” that further defines the generation of accounts from the abstract idea. Claim 8 is rejected due to being abstract and does not reflect a practical application.
Dependent claim 9 recites the same abstract idea as the independent claims because it recites the limitation “mapping the list of external cloud accounts to line of business products with global technology ownership data,” that further defines the determining of accounts from the abstract idea. Claim 9 is rejected due to being abstract and does not reflect a practical application.
Dependent claim 10 recites the same abstract idea as the independent claims because it recites the limitation “obtaining a list of internal accounts…that maintains an internal software list, including software version and depreciation data indicating when a software application deprecates on the internal cloud environment,” that further defines the generation of accounts from the abstract idea. Claim 10 recites the additional element of “an identification number application that maintains an internal software list,” which is analyzed in the steps below.
Dependent claim 11 recites the same abstract idea as the independent claims because it recites the limitation “creating a roadmap items account list by mapping the list of external cloud accounts to the list of internal accounts,” that further defines the creation of content from the abstract idea. Claim 11 is rejected due to being abstract and does not reflect a practical application.
Dependent claims 12 and 18 recite the additional element of “sending the roadmap items account list from the content generating workflow software tool on the external cloud environment to the internal workflow tool on the internal cloud environment for approval to add one or more of the requests as the one or more work items to the roadmap software tool,” which is analyzed in the steps below.
Dependent claims 13 and 19 recite the same abstract idea as the independent claims because they recite the limitation “after approval, adding the one or more work items to the roadmap software tool and filtering and prioritizing the one or more work items to the prioritized work queue of the roadmap software tool to update the feature features of the software application being unsupported by the external cloud environment,” that further adds to the abstract idea. Claims 13 and 19 are rejected due to being abstract and does not reflect a practical application.
Dependent claim 17 recites the same abstract idea as the independent claims because it recites the limitation “mapping a list of external cloud accounts being unsupported by the external cloud environment to a list of internal accounts on the internal cloud environment,” that further defines the creation of content from the abstract idea. Claim 17 is rejected due to being abstract and does not reflect a practical application.
Step 2A – Prong Two:
The independent claims recite the additional elements/limitations of: “an Intake tool on an internal cloud environment,” “an external workflow software tool residing on an external cloud environment;” “at least one machine learning or natural language processing algorithm,” “a roadmap software tool,” “a content generating workflow software tool on the external cloud environment to create roadmap items;” “a backlog tool to update the internal software application,” (claims 1, 14, and 20); “a computing device… comprising: a processor; a memory; and a communication interface,” (claim 14); “a tangible computer-readable medium,” “a computing device,” (claim 20).
The independent claims also recite the additional elements/limitations of: “transferring the data from the Intake tool to an external workflow software tool residing on an external cloud environment;” “populating automatically a roadmap software tool,” “sending the roadmap items from the external workflow software tool to an internal workflow software tool;” (claims 1, 14, and 20).
The requirement to execute the claimed steps/functions using “an Intake tool on an internal cloud environment,” “an external workflow software tool residing on an external cloud environment;” “at least one machine learning or natural language processing algorithm,” “a roadmap software tool,” “a content generating workflow software tool on the external cloud environment to create roadmap items;” “a backlog tool to update the internal software application,” (claims 1, 14, and 20); “a computing device… comprising: a processor; a memory; and a communication interface,” (claim 14); “a tangible computer-readable medium,” “a computing device,” (claim 20), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f).
The recited additional elements of “transferring the data from the Intake tool to an external workflow software tool residing on an external cloud environment;” “populating automatically a roadmap software tool,” “sending the roadmap items from the external workflow software tool to an internal workflow software tool;” (claims 1, 14, and 20), simply append insignificant extra-solution activity to the judicial exception, (e.g., mere pre-solution activity, such as data gathering, in conjunction with an abstract idea; mere post-solution activity in conjunction with an abstract idea). The term “extra-solution activity” is understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. The recited additional elements are deemed “extra-solution” because they are merely sending and receiving data between machines. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See MPEP § 2106.05(h).
The dependent claims recite the additional elements/limitations of: “a virtual private cloud, an internal cloud environment, and an internal computing environment,” (claims 3 and 16); “tree algorithms” (claim 4); “a global technology product map,” (claim 5); “a global technology product line map,” (claim 6); and “an identification number application,” (claim 10).
The requirement to execute the claimed steps/functions using “a virtual private cloud, an internal cloud environment, and an internal computing environment,” (claims 3 and 16); “tree algorithms” (claim 4); “a global technology product map,” (claim 5); “a global technology product line map,” (claim 6); and “an identification number application,” (claim 10), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f).
The dependent also claims recite the additional elements/limitations of: “sending the roadmap items account list from the content generating workflow software tool on the external cloud environment to the internal workflow tool on the internal cloud environment..,” (claims 12 and 18).
The recited additional elements of “sending the roadmap items account list from the content generating workflow software tool on the external cloud environment to the internal workflow tool on the internal cloud environment …,” (claims 12 and 18), simply append insignificant extra-solution activity to the judicial exception, (e.g., mere pre-solution activity, such as data gathering, in conjunction with an abstract idea; mere post-solution activity in conjunction with an abstract idea). The term “extra-solution activity” is understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. The recited additional elements are deemed “extra-solution” because they are merely sending and receiving data between machines. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See MPEP § 2106.05(h).
Remaining dependent claims 2, 7, 8, 9, 11, 13, and 15, either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
As discussed above in “Step 2A – Prong 2,” the requirement to execute the claimed steps/functions using “an Intake tool on an internal cloud environment,” “an external workflow software tool residing on an external cloud environment;” “at least one machine learning or natural language processing algorithm,” “a roadmap software tool,” “a content generating workflow software tool on the external cloud environment to create roadmap items;” “a backlog tool to update the internal software application,” (claims 1, 14, and 20); “a computing device… comprising: a processor; a memory; and a communication interface,” (claim 14); “a tangible computer-readable medium,” “a computing device,” (claim 20); “a virtual private cloud, an internal cloud environment, and an internal computing environment,” (claims 3 and 16); “tree algorithms” (claim 4); “a global technology product map,” (claim 5); “a global technology product line map,” (claim 6); and “an identification number application,” (claim 10), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more.” See MPEP § 2106.05(f).
As discussed above in “Step 2A – Prong 2”, the recited additional elements of “transferring the data from the Intake tool to an external workflow software tool residing on an external cloud environment;” “populating automatically a roadmap software tool,” “sending the roadmap items from the external workflow software tool to an internal workflow software tool;” (claims 1, 14, and 20); “sending the roadmap items account list from the content generating workflow software tool on the external cloud environment to the internal workflow tool on the internal cloud environment…,” (claims 12 and 18), even if considered to be an “additional” element for the purpose of the eligibility analysis, would simply append insignificant extra-solution activity to the judicial exception, (e.g., mere post-solution activity in conjunction with an abstract idea). These additional elements, taken individually or in combination, additionally amount to well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, appended to the judicial exception. These additional elements, taken individually or in combination, are well-understood, routine and conventional to those in the field of data transmission. These limitations therefore do not qualify as “significantly more.” See MPEP § 2106.05(d). This conclusion is based on a factual determination. The determination that receiving data/messages over a network is well-understood, routine, and conventional is supported by Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014), and MPEP 2106.05(d)(II), which note the well-understood, routine, conventional nature of receiving data/messages over a network.
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer, generally link the abstract idea to a particular technological environment or field of use, append the abstract idea with insignificant extra solution activity associated with the implementation of the judicial exception, (e.g., mere data gathering, post-solution activity), and appended with well-understood, routine and conventional activities previously known to the industry.
Remaining dependent claims 2, 7, 8, 9, 11, 13, and 15, either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claims amount to significantly more than the abstract idea identified above (Step 2B: NO).
Allowable Subject Matter
Claims 1-20 would be allowable subject matter if revised and amended to overcome the rejections under 35 U.S.C. 101 as set forth in this Office action.
As per claim 1 (representative of claims 14 and 20), the closest prior art of record taken either individually or in combination with other prior art of record fails to teach or suggest filtering data of software update requests with a machine learning algorithm to determine which accounts are running software applications unsupported by an external cloud software application lifecycle manager and mapping the identified external accounts to the system’s internal accounts to identify specific updates for each internal account to add created update content for each approved internal account to a prioritized backlog queue in an internal product roadmap program. This combination of functions/features would not have been obvious to a PHOSITA in view of the prior art.
Conclusion
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.
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/Patrick Kim/Examiner, Art Unit 3628
/NATHAN C UBER/Supervisory Patent Examiner, Art Unit 3626
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