DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is responsive to communications filed on April 22, 2026.
Claims 1, 2, 4, 5, 7 and 8 have been amended.
Claim 9 has been cancelled.
Claims 1-8 have been examined and are pending.
Allowable Subject Matter
With respect to independent claim 1, the prior art of record does not teach or suggest, either solely or in combination, the limitations "f) Training, by a training component, the evaluation component of the porting system with data of the porting log based on the decisions and outcome of the porting project using a porting mechanism to reach the pre-defined technical porting goal for the porting system." when considered in combination with the other limitations of claim 1.
With respect to independent claim 7, the prior art of record does not teach or suggest, either solely or in combination, the limitations "f) a training component configured for training the creation and evaluation component of the porting system with data of the porting log based on the decisions and outcome of the porting project using a porting mechanism to reach the pre-defined technical porting goal for the porting system." when considered in combination with the other limitations of claim 7.
Note, however, that claims 1, 2 and 4-8 are rejected under 35 USC § 101 as being directed to an abstract idea.
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a qualification component, a user interface connector, a porting component, an evaluation component, and a training component, in claim 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Response to Amendments
In view of Applicants' amendment to paragraph [0025], the objection to the specification is withdrawn.
In view of Applicants' amendments, the former objection to the claims is withdrawn. However, a new objection to the claims is raised (see below).
In view of Applicants' amendments, the rejection of claims 1, 2 and 4-8 under 35 USC § 101 as being directed to an abstract idea is maintained. However, in view of Applicant's amendments, the rejection of claim 8 under 35 USC § 101 as being directed to non-statutory subject matter is withdrawn. The rejection of claim 9 under 35 USC § 101 is withdrawn in view of Applicants cancellation of said claim.
Response to Arguments
On page 7 of their Remarks, Applicants disagreed with examiner's interpretation of certain limitations from claim 7 as invoking 35 U.S.C. 112(f), arguing "...that these terms are not generic placeholders but rather have sufficiently definite meaning as the names for structure to persons of ordinary skill in the art, and therefore should not be interpreted under § 112(f)." Examiner has carefully considered Applicants arguments but found them unpersuasive. While there is no exclusive list of generic placeholders, the claimed qualification component, user interface connector, porting component, evaluation component, and training component, are not examples of recognized structures in the prior art for performing their respectively claimed functions. By contrast, the term "processor" is typically recognized in many arts as a computer processor with a defined function. In light of the forgoing, Examiner maintains the interpretation of claim 7 as invoking 112(f).
As noted above in the "Claim Interpretation" section: "If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph."
With respect to the rejection of claims 1, 2 and 4-9 under 35 U.S.C. § 101, Applicants argued:
"Here, several claim limitations cannot practically be performed in the human mind. First, step c) of claim 1 recites "creating software artifacts of the target system."3 The Examiner asserts that a software engineer can "manually create artifacts, such as user manuals, of the target system." 4 However, software artifacts are "databases, data models, printed documents or scripts." 5" (Remarks, page 8)
Examiner respectfully disagrees. Paragraph [0008] of Applicant's specification describes a software artifact as "a by-product of software development that helps to describe the architecture, design, and function of software." While [0008] also describes software artifacts as "databases, data models, printed documents or scripts.", those examples are not exhaustive, merely exemplary. One of ordinary skill in the art would recognize that handwritten user manuals, produced by software engineers, especially early in the software development process, constitute "a by-product of software development that helps to describe the architecture, design, and function of software." Furthermore, claim 1 does not explicitly recite what comprises a software artifact.
Applicants also argued:
"Moreover, the specification describes that "[a] creation component for an automated porting system is responsible for generating or converting software artifacts for both the source and target platforms. In the context of porting, the creation system is focused to API (Application Programming Interface), code, tests, and documentation." 6 Generating APIs, code, and tests for a target system cannot practically be performed in the human mind." (Remarks, page 8)
Examiner respectfully disagrees. One of ordinary skill in the art would recognize that software engineers can manually produce handwritten user manuals, an example of documentation, by thoughtful application of mental processes with the assistance of pen and paper.
Applicants also argued:
"Second, step d) of claim 1 recites "evaluating test results by applying and/or simulating each ported software artifact." 7 The specification describes that "[a]n evaluation component for an automated porting system is responsible for assessing the quality of software artifacts and test results using rule-based search, formal languages, and statistical data." 8 Simulating software execution is inherently a computational activity that cannot be performed mentally or with pen and paper." (Remarks, pages 8-9)
Examiner respectfully disagrees. In claim 1, step d) explicitly recites "Evaluating, by an evaluation component, software artifacts created or converted by each of the executed porting steps and/or evaluating test results by applying and/or simulating each ported software artifact based on a given quality model of the porting project and on the technical value model;". Usage of and/or represents either-or-both wording. In other words, step d) can refer to "Evaluating, by an evaluation component, software artifacts created or converted by each of the executed porting steps
Applicants also argued:
"Moreover, even if the claims recite an abstract idea, the claims as a whole integrate any such idea into a practical application by improving the functioning of the porting system itself Per MPEP § 2106.04(d), a claim integrates a judicial exception into a practical application when it improves the functioning of a computer or improves another technology. USPTO Example 47 (Anomaly Detection) is instructive. In that example, Claim 2 was found ineligible because it merely used a trained ANN to detect and analyze anomalies and output anomaly data. However, Claim 3 was found eligible because it integrated the abstract idea into a practical application by improving network security. Specifically, Claim 3 included steps of "(e) dropping the one or more malicious network packets in real time; and (f) blocking future traffic from the source address." 12 The USPTO explained that "[t]he claimed invention reflects this improvement in the technical field of network intrusion detection. Steps (d)-(f) provide for improved network security using the information from the detection to enhance security by taking proactive measures.
Here, the training step in claim 1 creates a self-improving porting system that is analogous to the actions in Example 47's Claim 3. The specification describes that "[t]he porting system can be designed as a self-improving system. After the training and learning as described in f) the porting and evaluation component are improved. So the porting system changes from a former version to a subsequent version." 13 Just as Example 47's Claim 3 used the ANN's output to take concrete actions that improved network security, the present claims use the evaluation results to train and improve the porting system itself, which is a concrete technical improvement to the functioning of the system." (Remarks, pages 9-10)
Examiner respectfully disagrees. In claim 1, step f), the evaluation component of the porting system is trained with data of the porting log. Thus, as would be expected with any machine learning model (which examiner interprets as the evaluation component) undergoing training, the underlying model is refined and improved, in this case, with the output of porting activity as reflected in the porting log. However, claim 1 does not recite how an improved evaluation component leads to an improved porting system. In other words, how does the porting system use this refined evaluation component to improve the porting of software artifacts to a target system ("A computer-implemented method for porting software artifacts from a source system to a target system..."). In Example 47, claim 3, the output of the ANN leads to concrete remedial actions including "(e) dropping the one or more malicious network packets in real time;" and "(f) blocking future traffic from the source address." No equivalent steps for improving the porting of software artifacts exist in Applicant's claim. Applicant's argument that, "After the training and learning as described in f) the porting and evaluation component are improved. So the porting system changes from a former version to a subsequent version" describes an inherent quality of training a machine learning model, that of iterative refinement, not an improvement to the porting system.
Applicants also argued:
"Furthermore, the Examiner asserts that the training step amounts to "employing a generic machine learning technique" because "no detail regarding how the evaluation component of the porting system is trained by the training component" is provided. 14 However, claim 1 specifies what is trained (i.e. the evaluation component), what data is used (i.e. data of the porting log based on the decisions and outcome of the porting project, and the purpose that is to reach the pre-defined porting goal. This describes a specific feedback loop that improves the porting system's technical function, not generic machine learning." (Remarks, page 10)
Examiner respectfully disagrees. The elements described by Applicants amount to generic properties of training an ML model, namely, 1) a training dataset (data of the porting log), 2), a model to be trained (evaluation component), and 3) learning patterns to make predictions (purpose that is to reach the pre-defined porting goal). Claim 1 does not recite activities or properties of training the evaluation component that one of ordinary skill in the art would recognize as additional to these generic properties.
Applicants also argued:
"Finally, the Examiner acknowledged that "the prior art of record does not teach or suggest 15 the training limitation when considered in combination with the other limitations of claim 1. This acknowledgment of novelty supports that the training step has technical significance beyond mere generic machine learning.
Examiner respectfully disagrees. According to MPEP, 2106.05 I, "Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101."
Claim Objections
The following claims are objected to. It is suggested Applicants amend these claims as follows:
Claim 1
-- f) Training, by a training component, the evaluation component of the porting system with data of the porting log based on the decisions and outcome of the porting project using a porting mechanism to reach the pre-defined technical porting goal for the porting system. --
Claim 3
3. The method according to claim 1, wherein the training incorporates an artifact-based maturity rating of each source and/or target system artifact to generate a higher quality of the software artifacts and test results.
Claim 7
-- f) a training component configured for training the creation and evaluation component of the porting system with data of the porting log based on the decisions and outcome of the porting project using a porting mechanism to reach the pre-defined technical porting goal for the porting system. --
Claim 8
-- 8. A computer program product comprising a non-transitory computer -readable storage medium storing instructions which, when [[is]] executed by one or more processors, cause the one or more processors to carry out the [[a]] method according to claim 1. --
Claims 2-6 and 8 are additionally objected to due to their dependence on objected parent claim(s).
Appropriate correction is required.
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, 2 and 4-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 1 recites a method for porting software artifacts from a source system to a target system based on a porting strategy. Under a broadest reasonable interpretation, claim 1 would fall under the category of mental processes as the claim features limitations performable as mental steps, with the assistance of pen & paper, but without additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea. An analysis of claim 1 according to the 2019 Revised Patent Subject Matter Eligibility test follows:
Step 1: Is the claim directed to a process, machine, manufacture or composition of matter?
Yes, claim 1 is directed to a method and, therefore, a process.
Step 2A Prong 1: Does the claim recite an Abstract Idea, Law of Nature, or Natural Phenomenon?
Yes, claim 1 recites an abstract idea as the following limitations are performable as mental processes with the assistance of pen & paper: a) Quantifying a pre-defined technical porting goal of a porting project into a technical value model; - a software engineer can represent a porting goal of a porting project as a quantifiable measure based upon a technical value model; b) Receiving, the software engineer can verbally receive from a manager decisions regarding the target system and porting tasks and a current version of the porting system; c) Executing, - the software engineer can manually perform traceable porting steps based upon selected decisions, porting tasks and a current version of a porting methodology, and manually create artifacts, such as user manuals, of the target system; d) Evaluating, - the software engineer can evaluate software artifacts, such as user manuals, created by performing the porting steps, by evaluating a given artifact using a quality model and the technical value model; e) Outputting, the software engineer can enter into a paper log references to versions of artifacts created and evaluated, along with evaluation results, and review said paper log.
Step 2A Prong 2: Does the Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application?
Claim 1 recites the method steps are computer-implemented and performed by components of a porting system which are hardware components and/or software components executed by one or more processors, where such components include a user interface (UI), a porting component, an evaluation component, an output component, a user interface device, and a training component. However, implementing the method on a computer using the recited components simply amounts to using a generic computer as a tool to perform the abstract idea and, therefore, does not integrate the abstract idea into a practical application.
Claim 1 also recites the additional element of f) Training, by a training component, the evaluation component of the porting system with data of the porting log based on the decisions and outcome of the porting project using a porting mechanism to reach the pre-defined technical porting goal for the porting system. - Since no detail regarding how the evaluation component of the porting system is trained by the training component, using data from the porting log based on the decisions and outcome of the porting project, the additional element simply amounts to employing a generic machine learning technique to train a machine learning model. Thus, the additional element amounts to using generic instructions for implementing the abstract idea on a computer and, consequently, do not integrate the judicial exception into a practical application.
Step 2B: Does the Claim Recite Additional Elements That Amount To Significantly More Than The Judicial Exception?
Claim 1 recites the method steps are computer-implemented and performed by components of a porting system which are hardware components and/or software components executed by one or more processors, where such components include a user interface (UI), a porting component, an evaluation component, an output component, a user interface device, and a training component. However, implementing the method on a computer using the recited components simply amounts to using a generic computer as a tool to perform the abstract idea and, therefore, does not amount to significantly more than the abstract idea.
Claim 1 also recites the additional element of f) Training, by a training component, the evaluation component of the porting system with data of the porting log based on the decisions and outcome of the porting project using a porting mechanism to reach the pre-defined technical porting goal for the porting system. - Since no detail regarding how the evaluation component of the porting system is trained by the training component, using data from the porting log based on the decisions and outcome of the porting project, the additional element simply amounts to employing a generic machine learning technique to train a machine learning model. Thus, the additional element amounts to using generic instructions for implementing the abstract idea on a computer and, consequently, do not amount to significantly more than the abstract idea.
Claim 2 is also directed to the abstract idea as the limitation "wherein the evaluation component can switch into different kinds of training modus whereby each training modus determines which kind of artificial intelligence (AI)-based and/or rule-based trainable model supports the evaluation component." is recited functionally, not assertively, as no actual switching of training modes takes place in the claim. Since the claim lacks additional elements indicative of integrating the abstract idea into a practical application or amounting to significantly more than the abstract idea, the claim is ineligible.
Claim 4 is also directed to the abstract idea as the software engineer can manually redefine a training goal if evaluation results miss the pre-defined technical porting goal. Since the claim lacks additional elements indicative of integrating the abstract idea into a practical application or amounting to significantly more than the abstract idea, the claim is ineligible.
Claim 5 is also directed to the abstract idea as the software engineer can manually raise a training goal if evaluation results meet the pre-defined technical porting goal. Since the claim lacks additional elements indicative of integrating the abstract idea into a practical application or amounting to significantly more than the abstract idea, the claim is ineligible.
Claim 6 recites the additional element of "wherein evaluation results are presented as distance between a porting goal and the outcome of the porting project on the user interface device." which amounts to using a generic computer component to perform the abstract idea. Since the claim lacks additional elements indicative of integrating the abstract idea into a practical application or amounting to significantly more than the abstract idea, the claim is ineligible.
Claim 7 recites a system for performing the method of claim 1 and, therefore, is rejected for the same reasons given for claim 1. Since claim 7 does not recite further additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea, claim 7 is ineligible.
Claim 8 is rejected for the same reasons given for analogous claim 1. While claim 8 recites the further additional elements of a non-transitory computer-readable storage medium storing instructions which, when executed by one or more processors, cause the one or more processors to carry out the method of claim 1, said further additional elements simply amount to using a generic computer as a tool to perform the abstract idea and, therefore, do not integrate the abstract idea into a practical application or amount to significantly more than the abstract idea.
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 GEOFFREY R ST LEGER whose telephone number is (571)270-7720. The examiner can normally be reached M-F (IFP) ~9:00-5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hyung S Sough can be reached at 571-272-6799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEOFFREY R ST LEGER/Primary Examiner, Art Unit 2192
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