DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Final Office Action is responsive to Applicant's amendment filed on 28 November 2025. Applicant’s amendment on 28 November 2025 amended Claims 2-10, 12-19, and 21-24. Claims 25-27 is newly presented. Currently Claims 2-10, 12-19, and 21-27 are pending and have been examined. Claim 11 and 20 has been canceled. The Examiner notes that the 101 rejection has been maintained.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 28 November 2025 has been entered.
Examiner’s Note
The Examiner notes that while the previous independent claims have been canceled and rewritten it is noted that the claims are viewed to still be eligible for a double patent rejection.
Response to Arguments
Applicant's arguments filed 28 November 2025 have been fully considered but they are not persuasive.
The Applicant argues on pages 9-10 that “Claim Generality Alone Does Not Preclude Patent Eligibility. The Examiner asserts that the claims are not patent eligible because they are at a high level of generality, citing to Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). However, this is not determinative of patent eligibility. Data Engine, Blue Planet, and other Federal Circuit decisions involve claims that are at a high level of generality but met the patent eligibility requirements because there is a "technical improvement." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016); Data Engine Technologies LLC v. Google LLC, 906 F.3d 999, 1009. For example, and further discussed below, Claim 1 of the '259 patent in Data Engine was held to be patent eligible despite the lack of any implementation details in the claim. Accordingly, asserting that the claims are at a high level of generality does not negate that there is a technical improvement”.
The Examiner respectfully disagrees.
In response to the arguments in the Examiner notes that the Applicant’s argument that claims generality alone does not preclude patent eligibility is acknowledged; however, this misapprehends the basis for the rejection. The issue is not merely the level of generality, but rather that the claims are directed to the abstract idea of organizing, searching, and displaying information, and lack any recitation of a specific technological improvement to computer functionality that would render them patent-eligible under Alice step one or step two.
The cited cases Enfish, McRO, and Data Engine are distinguishable because each involved claims reciting specific technological improvements to computer functionality itself. In Enfish, the claims recited a specific self-referential logical table structure that improved computer database operation by reducing storage requirements and increasing search speed an improvement to how the computer functioned. In McRO, the claims recited specific rules for automated lip synchronization that produced a previously unavailable result in animation technology. In Data Engine, the claims recited a specific three-dimensional spreadsheet navigator interface with particular claimed features that improved user navigation of complex data structures in spreadsheets.
In contrast, the present claims recite conventional graph database operations (storing nodes, edges, and properties; traversing pathways; identifying connected nodes) and conventional graphical user interface functionality (displaying visual representations, providing search capability, showing indicators, displaying selectable options). The claims do not recite any specific improvement to graph database technology, any unconventional data structure, or any specific technical mechanism that improves computer functionality. Instead, they describe using generic computer components to implement the abstract idea of organizing information in a graph format and providing a visual interface to search and display that information. Under Electric Power Group, such collecting, analyzing, and displaying information using conventional computer components remains abstract. The claimed "technical improvement" must be to the technology itself, not merely to a field of use implemented through conventional technology. See ChargePoint. The claims therefore remain ineligible under 35 U.S.C. § 101 and the rejection is maintained.
The Applicant argues on pages 10-12 that “Technical Improvements Are Not Limited to Those That Improve the Functioning of Computers: With respect to the functioning of a computer, this criteria is satisfied. The claims describe a variety of improvements, including improved graph traversal where an initial node is known to a user but endpoint nodes of interest are not known, the use of a designated node type to efficiently terminate traversal and store discovered pathways, the integration of a visual workspace that allows users to interactively add and explore relevant pathways, and the configuration of the system to associate discovered pathways with starting nodes for rapid retrieval and display. In addition, a graph naturally presents an exponentially large number of path traversals to find relevant paths in the graph. The system applies the algorithm to find relevant paths based on reaching a type of node and in response saves the structure of that discovered path as a tool for navigating the graph visually in the workspace. This preprocessing and storage also reduce the time needed to find such relevant paths.
With respect to improvements in any other technology or technical field, the MPEP lists the following examples in 2106(a):
i. "Components or methods, such as measurement devices or techniques, that generate new data, Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1355, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016);"
ii. "A specific, structured graphical user interface that improves the accuracy of trader transactions by displaying bid and asked prices in a particular manner that prevents order
entry at a changed price, Trading Techs. Intl, Inc. v. CQG, Inc., 675 Fed. App'x 1001 (Fed.
Cir. 2017) (non-precedential)."
The claimed inventions are also an improvement in another technology or technical field. The above examples confirm that improving the functioning of computers is not the sole test. The Examiner has further asserted that the claims merely involve data processing performed by a computer, which amounts to nothing more than applying an abstract idea using conventional technology. However, characterizing the claimed invention in this way overlooks the specific technical improvements recited in the claims and does not, in isolation, negate that the claimed invention constitutes an improvement to another technology or technical field. The position that computer invention are at a high level of generality and are data processing can be unfairly used to consume or as a "side-step" to all computer inventions which is not the intent of the case law.
Similar to the Data Engine case, the claims here recite a method that differs from prior art methods and provides for improved navigation such as in the field of database. The Examiner has not disputed that this is another technology or technical field, nor that there is an improvement”.
The Examiner respectfully disagrees.
In response to the arguments in the Examiner notes that the argument that technical improvements are not limited to computer functioning is correct in principle; however, the claims must still recite a specific improvement to technology rather than merely applying abstract ideas using conventional technology. MPEP 2106.05(a) requires that the improvement be to technology or a technological process, not merely an improvement in an abstract idea or business process implemented through conventional computer operations.
The alleged improvements cited—graph traversal to find endpoints, preprocessing and storing discovered pathways, visual workspace integration, and associating pathways with starting nodes—are conventional graph database operations well-known in the art. Graph databases inherently store nodes, edges, and properties; graph traversal algorithms (depth-first search, breadth-first search, etc.) are fundamental operations for finding paths between nodes; and storing query results for rapid retrieval is a basic database optimization technique. The claims do not recite any specific, unconventional algorithm, data structure, or technical mechanism that improves how these operations are performed. Instead, they describe using conventional graph database technology to organize and display information for a particular purpose.
The cited examples from MPEP 2106.05(a) are distinguishable. Electric Power Group involved new measurement techniques generating new data types, not merely collecting and displaying existing data. Trading Technologies involved a specific graphical user interface structure that solved a technical problem (preventing order entry at changed prices) through a particular arrangement of display elements—a specific solution beyond mere conventional GUI design. Here, the claims recite generic GUI elements (visual workspace, search capability, indicators, selectable options) without any specific structure or arrangement that achieves a technical improvement.
The comparison to Data Engine is inapposite. In Data Engine, the claims recited a specific three-dimensional spreadsheet navigator with particular features (outlined delineations, familiar notebook tabs) that provided an unconventional way to navigate complex spreadsheet data—a specific improvement to spreadsheet technology beyond what prior spreadsheet interfaces provided. The court emphasized that the claims recited "a specific interface and implementation" for navigating three-dimensional spreadsheets. 906 F.3d at 1009. Here, the claims recite conventional graph visualization and traversal operations without any specific, unconventional implementation details.
The alleged improvement is not to database technology, graph traversal algorithms, or graphical user interface functionality, but rather to organizing information in a particular way for a particular purpose (identifying connections to nodes of interest). This is an improvement to the abstract idea of data organization and presentation, not to technology itself. As the Federal Circuit held in ChargePoint, "a claim for a new abstract idea is still an abstract idea" and "the improvement is to the abstract idea itself." 920 F.3d at 769. Similarly, in Customedia, the court held that "the asserted innovation is an innovation in the realm of abstract ideas, with conventional computer and network components used to carry out the idea."
The position is not circular. The claims are directed to abstract ideas (organizing and displaying information using graph structures) implemented through conventional technology, and they do not recite any specific technological improvement sufficient to render them patent-eligible under either Alice step one or step two. The claims therefore remain ineligible under 35 U.S.C. § 101, the rejection is maintained.
The Applicant argues on page 12 that “The Technical Benefits of an Improvement Do Not Need to Be Explained in the Specification. As a matter of examining convenience, the MPEP asks Examiners to evaluate the specification first, but it also states that "[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art." M.P.E.P. § 2106.04(d)(1). The technical benefits here are readily seen and understood by those of ordinary skill in the art as explained in this and prior responses. The position that the specification must specify a natural result of an improvement is analogous to saying the sky is not blue because it does not say so in the specification, but one can readily see that it is blue by looking up”.
The Examiner respectfully disagrees.
In response to the arguments in the Examiner notes that the argument misconstrues the basis for the rejection. The issue is not whether the specification adequately describes technical benefits, but rather whether the claims recite a specific technological improvement as opposed to merely applying conventional technology to implement an abstract idea. MPEP § 2106.04(d)(1) addresses how to identify improvements disclosed in the specification; it does not excuse claims from actually reciting a technological improvement in the first instance.
The cited MPEP section states that "the specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art." This presumes there is an actual improvement to technology. Here, one of ordinary skill in the art would readily recognize that the claimed operations—storing graph data structures with nodes and edges, traversing pathways through graphs to find connections, displaying visual representations of nodes and connections, providing search functionality, and displaying selectable options to view subgraphs—are all conventional operations in graph database and graphical user interface technology. These are well-understood, routine, and conventional activities in the field.
The claims do not recite any specific, unconventional mechanism, algorithm, data structure, or technical implementation that improves how graph databases operate, how graph traversal is performed more efficiently, or how graphical user interfaces function. Instead, they describe using conventional graph database technology and conventional GUI elements to organize and display information for a particular application (identifying connections to nodes of interest). This is applying known techniques to a particular problem, not improving the technology itself.
As the Federal Circuit explained in BSG Tech LLC v. BuySeasons, Inc., "the claims here do not improve any technology or technical field" but rather "recite the abstract idea of using a database to provide personalized information and apply conventional computer technology to achieve it." Similarly, in Customedia Technologies, LLC v. Dish Network Corp., the court held that using conventional technology to implement an innovation "in the realm of abstract ideas" does not satisfy Alice step one or two.
The analogy to the sky being blue is inapposite. Patent eligibility requires that claims recite more than abstract ideas implemented through conventional technology. The "technical benefits" asserted are simply the natural results of applying conventional graph database and GUI technology to organize and display information—they do not constitute improvements to the technology itself. The claims therefore remain ineligible under 35 U.S.C. § 101 and the rejection is maintained.
The Applicant argues on pages 12-13 that “Claim Language May NOT Be Ignored During Evaluation. Applicant asserts that it is also legal error to evaluate the claim, at least under 2B, without considering the claim as whole including all of the claim language. See MPEP 2106.4 II (2) ("In Prong Two, Examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception.) (emphasis added). MPEP 2106.05 ("If the claim as a whole does recite significantly more than the exception itself, the claim is eligible (Step 2B: YES) at Pathway C, and the eligibility analysis is complete.") (emphasis added). As such, the Examiner cannot ignore language in the claims that the Examiner considers to be abstract or non-technical with respect to evaluating the full combination of the claim features. It should be emphasized that the Alice analysis does not say or establish that identifying that something can be performed in the brain means that in step 2A prong 2 or step 2B, that claim features can be ignored in the evaluation. In addition, the only purported non-technical terms in the language is in the preamble (which has now been removed) and therefore, the claim language should not be ignored when for example assessing the claim combination as a whole, as required by the MPEP. The broadest reasonable interpretation of a claim cannot simply ignore significant amount of language in the claim. The algorithm, the structures, the interface, the data structure, and many other features would simply be ignored. The MPEP states that the claim language is evaluated as a whole, which explicitly means all of the claim language. For example, MPEP 2111.01 states that the meaning of the claim terms is the plain ordinary meaning given by those of ordinary skill in art, as opposed to giving the terms, no meaning or ignoring the terms as potentially proposed by the Examiner. MPEP 2111.01 ("[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp.; Sunrace Roots Enter. Co. v. SRAM Corp. Those with ordinary skill in the art would not ignore practically all of the claim language, as proposed by the Office”.
The Examiner respectfully disagrees.
In response to the arguments in the Examiner notes that the argument mischaracterizes the eligibility analysis. The Examiner has considered all claim limitations, both individually and as an ordered combination, as required by Alice Corp. v. CLS Bank International. Evaluating whether claim elements provide significantly more than an abstract idea is not the same as "ignoring" claim language. Rather, it is the required analysis under Alice step 2B and MPEP 2106.05(d).
Under Alice step 2B, the Examiner must determine whether additional elements, considered individually and in combination, amount to significantly more than the abstract idea itself. The Supreme Court made clear that "the mere recitation of a generic computer cannot transform a patent-abstract idea into a patent-eligible invention." Alice. The Court further stated that additional claim elements must be examined "both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.).
The Examiner has analyzed the claimed elements database storing graph data structures, software engine traversing pathways through graphs, visual interactive interface with workspace and search tools, displaying indicators and selectable options and determined that these are generic computer components performing conventional functions. Graph databases, graph traversal algorithms, graphical user interfaces with search functionality, and visual display of data are all well-understood, routine, and conventional in the art. Even when considered in combination, these conventional elements do not integrate the abstract idea into a practical application or provide an inventive concept sufficient for eligibility.
This is consistent with Federal Circuit precedent. In Berkheimer v. HP Inc., the court confirmed that conventional computer components and operations, even in combination, do not necessarily amount to significantly more. In SAP America, Inc. v. InvestPic, LLC, 8, the court held that claims using "only conventional computer components in a conventional manner" were ineligible even though all claim elements were considered. The court explained that "the innovation is in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm." Id.
MPEP 2106.05(d) provides that elements that are well-understood, routine, conventional activity do not provide significantly more. The Examiner has not ignored claim language but has properly determined that the recited elements database storage, graph traversal, visual interface with search and display capabilities are conventional computer operations that do not transform the abstract idea of organizing and displaying information into patent-eligible subject matter. The claims therefore remain ineligible under 35 U.S.C. § 101 and the rejection is therefore maintained.
The Applicant argues on pages 13-16 that “The Examiner 's Characterization of the Data Engine Case Is Not Consistent With the Facts and Analysis of That Case. The Examiner characterizes the Data Engine case as "a specific example of the use of a 3D spreadsheet ...the key takeaway was that the claims provide a particular manner of navigating three-dimensional spreadsheets, implementing an improvement in electronic spreadsheet functionality, but providing a known technical problem [sic] in computers in a particular way." Applicant respectfully disagrees with this characterization and raises that a proper depiction of the facts and analysis in Data Engine would show that improvements in the field of database technology and related navigation features-like those claimed in the present invention-are not abstract ideas. In designating the claims there to not be directed towards abstract ideas, the court in Data Engine drew upon similarities to their holding in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1361 (Fed. Cir. 2018). (emphasis added) MPEP 2106.05 (Because this approach considers all claim elements, the Supreme Court has noted that 'it is consistent with the general rule that patent claims 'must be considered as a whole." Alice Corp., 573 U.S. at 218 n.3, 110 USPQ2d at 1981 (quoting Diamond v. Diehr, Data Engine Technologies LLC v. Google LLC, 906 F.3d 999, 1009.") (emphasis added). In Core Wireless, the court rejected "the accused infringer's contention that the claims were merely directed to the abstract idea of indexing information because the claims were directed 'to an improved user interface for computing devices' and ' a particular manner of summarizing and presenting information in electronic devices. Id., citing Core Wireless, 880 F.3d at 1362. Instead, they held that the claims "recited a specific improvement over prior systems, resulting in an improved user interface for electronic devices, and thus were directed to "an improvement in the functioning of computers". Id., citing Core Wireless, 880 F.3d at 1363. Without attempting to distinguish away the applicability of this holding due to any differing subject matter being claimed, the court in Data Engine held that the claims there were similarly patent eligible in part due to them "improving the efficient functioning of computers" through the recitation of "a 'specific' and 'particular' manner of navigating a three-dimensional spreadsheet." Id. As seen here, differences in the underlying technology do not negate the applicability of the holding, which turns on the nature of the claimed improvement, not the specific domain. Here, the claims are not abstract as they provide specific and particular technical improvements in the field of database technology and related navigational features that amount to a more efficient functioning of computers. In Data Engine, one claim held to be directed towards patent-eligible subject matter is claim 1 from US Patent No. 5,590,259. As the preamble to the '259 patent's claim 1 describes, a "three-dimensional spreadsheet" is merely a construct comprising "a plurality of information cells arranged in a three-dimensional matrix, said information cells storing user-supplied data and formulas operative on said user-supplied data". As discussed above, this particular arrangement and relationship of data-storing cells do not render the holding in Data Engine as solely applicable to "three-dimensional spreadsheets" and thus inapplicable to the present field of technology.
The Examiner respectfully disagrees.
In response to the arguments in the Examiner notes that it appears that mischaracterizes the eligibility analysis. The Examiner has considered all claim limitations, both individually and as an ordered combination, as required by Alice Corp. v. CLS Bank International. Evaluating whether claim elements provide significantly more than an abstract idea is not the same as "ignoring" claim language. Rather, it is the required analysis under Alice step 2B and MPEP 2106.05(d).
Under Alice step 2B, the Examiner must determine whether additional elements, considered individually and in combination, amount to significantly more than the abstract idea itself. The Supreme Court made clear that "the mere recitation of a generic computer cannot transform a patent-abstract idea into a patent-eligible invention." Alice. The Court further stated that additional claim elements must be examined "both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. at 217 (quoting Mayo Collaborative Servs. v. Prometheus).
The Examiner has analyzed the claimed elements database storing graph data structures, software engine traversing pathways through graphs, visual interactive interface with workspace and search tools, displaying indicators and selectable options and determined that these are generic computer components performing conventional functions. Graph databases, graph traversal algorithms, graphical user interfaces with search functionality, and visual display of data are all well-understood, routine, and conventional in the art. Even when considered in combination, these conventional elements do not integrate the abstract idea into a practical application or provide an inventive concept sufficient for eligibility.
This is consistent with Federal Circuit precedent. In Berkheimer v. HP Inc., the court confirmed that conventional computer components and operations, even in combination, do not necessarily amount to significantly more. In SAP America, Inc. v. InvestPic, LLC, the court held that claims using "only conventional computer components in a conventional manner" were ineligible even though all claim elements were considered. The court explained that "the innovation is in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm." Id.
MPEP 2106.05(d) provides that elements that are well-understood, routine, conventional activity do not provide significantly more. The Examiner has not ignored claim language but has properly determined that the recited elements database storage, graph traversal, visual interface with search and display capabilities are conventional computer operations that do not transform the abstract idea of organizing and displaying information into patent-eligible subject matter. The claims therefore remain ineligible under 35 U.S.C. § 101 and the rejection is maintained.
The Applicant argues on pages 16-17 that “The Tufte Book is Irrelevant: Additionally, the Examiner identifies the book "The Visual Display of Quantitative Information," published in 1983 by Tufte and asserts that this book shows that graph theory is used to reveal data with graphics, thus rendering the current application devoid of "a technological improvement or improvement to the technical field." Applicant reviewed an online copy of the book and found no mention of graph theory as purported by the Examiner. It makes mention of graphics and graphical design which are not the same as graph theory. This view also ignores the combination of features that have been highlighted including the integration of the node type as an endpoint in the processing including self-navigation of data to find user-unknown relevant data”.
The Examiner respectfully disagrees.
In response to the arguments in the Examiner notes that the argument regarding the Tufte book is acknowledged. To the extent the book was cited to suggest it discusses graph theory in the computer science sense (graph data structures with nodes and edges), this characterization may have been imprecise. The book "The Visual Display of Quantitative Information" addresses principles of graphical design and visual presentation of data, which is distinct from graph theory and graph database technology as claimed.
However, the § 101 rejection does not depend on this reference. The determination that the claimed elements are conventional is based on what is well-understood, routine, and conventional to one of ordinary skill in the art of graph databases and graphical user interfaces as of the effective filing date. Graph databases that store information as nodes, edges, and properties; graph traversal algorithms that find paths between nodes; visual interfaces with workspaces that display graphical representations of data; search engines that surface matching nodes; and interactive tools that allow users to add and explore data visualizations are all well-established technologies in the relevant art.
Regarding the combination of features, the Examiner has considered the claims as a whole, including the integration of node types as endpoints in processing and the automated traversal to find connections to nodes of interest. Even when considered in combination, these elements represent conventional graph database operations and GUI functionality applied to the abstract idea of organizing and displaying information to reveal relationships. As the Federal Circuit held in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, an inventive concept requires "more than the abstract idea plus all the steps that were well-understood, routine and conventional."
The claimed combination using a graph database to store data, automatically traversing paths to find connections to specified node types, and providing a visual interface to search and display those connections applies well-understood graph database and GUI technologies to implement the abstract idea of organizing and presenting information. This does not constitute a technological improvement or an inventive concept sufficient for patent eligibility under Alice step 2B. The claims therefore remain ineligible under 35 U.S.C. § 101 and the rejection is therefore maintained.
The remaining Applicant's arguments filed on 16 December 2025 have been fully considered but they are not persuasive.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 25, 26, and 27 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 with rolled up claims 11-13 of application 17/865,046 now Patent 11,948,116. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 in addition to rolled up claims 11-13 in the referenced patent and claim 1 of the instant application recite substantially similar limitations.
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 2-10, 12-19, and 21-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter because the claim(s) 2-10, 12-19, and 21-27 as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. The claim(s) 2-10, 12-19, and 21-27 is/are directed to the abstract idea of risk data navigation to investigate and evaluate financial trade and business-related risks. 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 than the judicial exception itself. Claim(s) (2-10, 12-19, and 21-27) is/are directed to an abstract idea without significantly more.
Step 1
Regarding Step 1 of the Subject Matter Eligibility Test for Products and Processes (from the January 2019 §101 Examination Guidelines), claim(s) (2-10 and 25) is/are directed to a system, claim(s) (12-19 and 26) is/ are directed to a method, and claims(s) (21-24 and 27) is/are directed to a computer readable medium and therefore the claims recites a series of steps and, therefore the claims are viewed as falling in statutory categories.
Step 2A Prong 1
The claimed invention is directed to an abstract idea without significantly more. The claim(s) 2-10, 12-19, and 21-27 recite(s) mental process. Specifically, the independent claims 25, 26, and 27 are a mental process: as drafted, the claim recites the limitation of risk data navigation to investigate and evaluate financial trade and business-related risks that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting a processor, nothing in the claim precludes the determining step from practically being performed in the human mind. For example, but for the processor language, the claim encompasses the user manually determining risk data navigation to investigate and evaluate financial trade and business-related risks. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping. This limitation is a mental process. While the Guidance provides that claims do not recite a mental process when they contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations (network monitoring, data encryption for communication, or rendering images). However with regard to the instant application the Examiner has reviewed the disclosure and determined that the underlying claimed invention is described as a concept that is performed in the human mind and/or with the aid of a pen and paper, and thus it is viewed that the applicant is merely claiming that concept performed 1) on a generic computer, 2) in a computer environment or 3) is merely using a computer as a tool to perform the concept, and therefore is considered to recite a mental process.
Note to the Applicant per the 2019 October Guidance: The 2019 PEG sets forth a test that distills the relevant case law to aid in examination, and does not attempt to articulate each and every decision. As further explained in the 2019 PEG, the Office has shifted its approach from the case-comparison approach in determining whether a claim recites an abstract idea and instead uses enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent. By grouping the abstract ideas, the 2019 PEG shifts Examiners’ focus from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types. In sum, the 2019 PEG synthesizes the holdings of various court decisions to facilitate examination.
Step 2A Prong 2
Specifically, the determined judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and additionally the data managing steps required to use the calculate do not add a meaningful limitation to the method as they are insignificant extra-solution activity (including post solution activity).
The claim recites the additional element(s): that a processor is used to perform the determining steps. The processor in the step is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data (the risk data navigation to investigate and evaluate financial trade and business-related risks). This generic processor limitation is 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. The claim is directed to the abstract idea.
The claim recites the additional element(s): store graph data, receive data input, traverse pathways, generates a visual graphic, communicates matching nodes, displays for the matching, notifying relevant subgraphs, and providing a selectable option which performs the determining steps. The storing, receiving, traverse, generates, communicates, displaying, notifying, and providing a selectable option steps are recited at a high level of generality (i.e., as a general means of analyzing information), and amounts to mere data management, which is a form of insignificant extra-solution activity. The processor that performs the determining steps are also recited at a high level of generality, and merely automates the determining steps. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component (the processor).
The Examiner has further determined that the claims as a whole does not integrate a judicial exception into a practical application in order to provide an improvement in the functioning of a computer or an improvement to other technology or technical field. It has been determined that based on the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. It has not been provided clearly in the disclosure that the alleged improvement would be apparent to one of ordinary skill in the art, but is instead in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art, and therefore does not improve the technology. Second, in the instance, which in this case it is not clear that the specification sets forth an improvement in technology, the claim must not reflect the disclosed improvement (the claims must include components or steps of the invention that provide the improvement described in the specification).
Note to the Applicant from the October 2019 Guidance: Generally, Examiners are not expected to make a qualitative judgment on the merits of the asserted improvement. If the Examiner concludes the disclosed invention does not improve technology, the burden shifts to applicant to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology. Any such evidence submitted under 37 C.F.R. § 1.132 must establish what the specification would convey to one of ordinary skill in the art and cannot be used to supplement the specification. For example, in response to a rejection under 35 U.S.C. § 101, an applicant could submit a declaration under § 1.132 providing testimony on how one of ordinary skill in the art would interpret the disclosed invention as improving technology and the underlying factual basis for that conclusion.
For further clarification the Examiner points out that the claim(s) 1-17 recite(s) obtaining usage data, classifying the interactions, quantifying the classified interactions, generating of models, and determining a probability of the particular user interaction which are viewed as an abstract idea in the form of a mental process. This judicial exception is not integrated into a practical application because the use of a computer for storing, receiving, traversing, generates, communicates, displaying, notifying, and providing which is the abstract idea steps of valuing an idea (risk data navigation to investigate and evaluate financial trade and business related risks) in the manner of “apply it”.
Thus, the claims recites an abstract idea directed to a mental process (i.e. the risk data navigation to investigate and evaluate financial trade and business related risks). Using a computer to obtaining, classifying, quantifying, generation, identifying, and determining the data resulting from this kind of mental process merely implements the abstract idea in the manner of “apply it” and does not provide 'something more' to make the claimed invention patent eligible. The claimed limitations of a computing device is not constraining the abstract idea to a particular technological environment and do not provide significantly more.
risk data navigation to investigate and evaluate financial trade and business-related risks would clearly be to a mental activity that a company would go through in order to decide how to manage data. The specification makes it clear that the claimed invention is directed to the mental activity data gathering and data analysis to determine how to manage data.
The dependent claims recite elements that narrow the metes and bounds of the abstract idea but do not provide ‘something more’.
The dependent claims do not remedy these deficiencies.
No Claims recite limitations which further limit the claimed analysis of data.
Claims 2, 3, 1-8, 10, 12, 15-17, 19, and 21 recites limitations directed to claim language viewed insignificantly extra solution activity.
Using a computer to perform the data processing as claimed is merely implementing the abstract idea in the manner of “apply it” and does not provide significantly more. Additionally with respect to the Berkheimer the Examiner points out that the steps of the claim are viewed to be to nothing more than spell out what it means to apply it on a computer and cannot confer patent-eligibility as there are no additional limitations beyond applying an abstract idea, restricted to a computer. As the claims are merely implementing the abstract idea in the manner of “Apply It” the need for a Berkheimer analysis does not apply and is not required. With respect to the currently filed claims the implementing steps can be found in Botea (previously disclosed) which discloses how the claims alone and in combination are viewed to be well understood, routine and conventional based on point 3 of the Berkheimer memo and subsequent evidence, complying with and providing evidence.
Claims 4, 5, 9, 13, 14, 18, and 22-24 recites limitations directed to claim language viewed non-functional data labels.
Thus, the problem the claimed invention is directed to answering the question based on gathered and analyzed information about mental activity data gathering and data analysis to determine how to manage data and calculate a total planned occupancy. This is not a technical or technological problem but is rather in the realm of data and occupancy management and therefore an abstract idea.
Step 2B
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed with respect to Step 2A Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component.
The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. This is the case because in order for the claims to be viewed as significantly more the claims must incorporate the integral use of a machine to achieve performance of a method, in contrast to where the machine is merely an object on which the method operates, which does not provide significantly more 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. Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not provide significantly more. Additionally, another consideration when determining whether a claim recites significantly more is whether the claim effects a transformation or reduction of a particular article to a different state or thing. "[T]ransformation and reduction of an article ‘to a different state or thing’ is the clue to patentability of a process claim that does not include particular machines. All together the above analysis shows there is not improvement in computer functionality, or improvement to any other technology or technical field. The claim is ineligible.
With respect to the Berkheimer as noted above the same analysis applies to the 2B where the claims are viewed as applying it and as such no further analysis is required. However, with respect to the claims that are viewed as extra solution or post solution activity the Examiner notes that the claims are viewed as well-understood, routine, and conventional because a citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s). An appropriate publication could include a book, manual, review article, or other source that describes the state of the art and discusses what is well-known and in common use in the relevant industry.
The dependent claims recite elements that narrow the metes and bounds of the abstract idea but do not provide ‘something more’. Specifically, the dependent claims do not remedy these deficiencies of the independent claims.
With respect to the legal concept of prima facie case being a procedural tool of patent examination, which allocates the burdens going forward between the Examiner and the applicant. MPEP § 2106.07 discusses the requirements of a prima facie case of ineligibility. In particular, the initial burden was on the Examiner and believed to be properly provided as to explain why the claim(s) are ineligible for patenting because of the above provided rejection which clearly and specifically points out in accordance with properly providing the requirement satisfying the initial burden of proof based on the Guidance from the United States Patent and Trademark Office and the burden now shifts to the applicant.
Therefore, based on the above analysis as conducted based on the Guidance from the United States Patent and Trademark Office the claims are viewed as a court recognized abstract idea, are viewed as a judicial exception, does not integrate the claims into a practical application, and does not provide an inventive concept, therefore the claims are ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bodart et al. (WO 2007/018929 A2) discloses a data analysis using graphical visualization.
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/S.S.S/Examiner, Art Unit 3623 /RUTAO WU/Supervisory Patent Examiner, Art Unit 3623