DETAILED ACTION
This communication is a Final Rejection Office Action in response to the 10/10/2025 filling of Application 18/632,114.
Claims 1, 9, 17 have been amended. Claims 1-20 are now presented.
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 file 10/10/25 with respect to the prior art have been fully considered and are persuasive. The prior art rejections have been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Regarding the rejection under 101, the Applicant argues “As described in Applicant's Specification, in accordance with an embodiment, a technical advantage of the described systems and methods includes that the use of a system-wide or shared analytic applications schema or data model, maintained within an analytic applications environment (cloud) tenancy; together with tenant-specific customer schemas, maintained within customer tenancies; enables each customer's (tenant's) data warehouse instance, or database tables, to be populated or otherwise associated with live data (live tables), as received from their enterprise software application or data environment, on an automated or a periodic, e.g., hourly/daily/weekly, or other basis, and reflecting best practices for particular analytics use cases. (Applicant's Specification, at Paragraph [0028]). Applicant respectfully submits that the claims, as currently amended, conform with the requirements of 35 U.S.C. 101. Reconsideration thereof is respectfully requested.”
The Examiner respectfully disagrees. When determining whether a claim simply recites a judicial exception with the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following:
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it". 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims "so result focused, so functional, as to effectively cover any solution to an identified problem")).
In the instant case, the additional elements of the broadly recited extract, transform, load process attempt to cover any solution to the identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, which does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it”. For example, the claims do not state how the schema addresses particular analytics use cases or best practices, to receive data from a tenant's enterprise software application or data environment, for loading into a data warehouse; how the process operates to populate data warehouse instances and database tables for particular tenants with data as received from their enterprise software application or data environment; or how the data transformation layer creates data mappings which compute aggregations of transformed data. As such, extract, transform, load elements do not integrate a judicial exception into a practical application or provide significantly more.
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 non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, in step 2A prong 1 it must then be determined whether the claim is recite a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim recites a judicial exception, under step 2A prong 2 it must additionally be determined whether the recites additional elements that integrate the judicial exception into a practical application. If a claim does not integrate the Abstract idea into a practical application, under step 2B it must then be determined if the claim provides an inventive concept.
In the Instant case Claims 1-8 are directed toward a system for determination of recommendations and alerts for use within an analytics environment. Claims 9-16 are directed toward a method for determination of recommendations and alerts for use within an analytics environment. Claims 17-20 are directed toward a computer program product for determination of recommendations and alerts for use within an analytics environment. As such, each of the Claims is directed to one of the four statutory categories of invention.
MPEP 2106.04 II. A. explains that in step 2A prong 1 Examiners are to determine whether a claim recites a judicial exception. MPEP 2106.04(a) explains that:
To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
As per step 2A prong 1 of the eligibility analysis, claim 1 is directed to the abstract idea of analyzing data to generate recommendations or alerts to a tenant of the plurality of tenants which falls into the abstract idea categories of certain methods of organizing human activity and mental processes.
The elements of Claim 24 that represent the Abstract idea include:
A system for determination of recommendations and alerts for use within an analytics environment, comprising:
an analytic applications environment;
wherein the historical data at each respective tenant schema is aggregated;
creation of data mappings which compute aqqregations of transformed data, including that the historical data at each respective tenant schema relevant for the purposes of determining particular recommendations or alerts is aggregated into an aggregated data warehouse instance at the data warehouse;
wherein said queries are utilized to generate recommendations or alerts to a tenant of the plurality of tenants, based on the aggregated data warehouse instance.
MPEP 2106.04(a)(2) II. states:
The phrase "methods of organizing human activity" is used to describe concepts relating to:
fundamental economic principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and
managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).
The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
In the instant case, the limitations of aggregating historical data and generating recommendations or alerts are directed to commercial or legal interactions including sales activities or behaviors, and business relations and fundamental economic principles such as generating recommendations to improve business operations.
MPEP 2106.04(a)(2) states:
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions
In the instant case, the limitations aggregating historical data and generating recommendations or alerts cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “a processor” nothing in the claim element precludes the steps from being performed in the human mind.
Under step 2A prong 2 the examiner must then determine if the recited abstract idea is integrated into a practical application. MPEP 2106.04 states:
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e)
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
In the instant case, this judicial exception is not integrated into a practical application. In particular, Claim 1 recites the additional elements of:
A system for determination of recommendations and alerts for use within an analytics environment, comprising:
a computer comprising one or more processors;
an analytic applications environment running on the computer, wherein the analytic applications environment comprises a data pipeline or process, including an extract, transform, load process that operates in accordance with an analytic applications schema adapted to address particular analytics use cases or best practices, to receive data from a tenant's enterprise software application or data environment, for loading into a data warehouse:
wherein the analytics application environment accesses a data warehouse for storage of data by a plurality of tenants, each of the plurality of tenants being associated with a respective tenant schema at the data warehouse;
wherein the data pipeline or process including the extract, transform, load process operates to populate data warehouse instances and database tables for particular tenants with data as received from their enterprise software application or data environment, as defined by a combination of the analytic applications schema, and their tenant schema;
wherein an extract, transform, load process stores data, said data comprising historical data, from source applications or transactional database environments of one or more of the plurality of tenants to each respective tenant schema at the data warehouse;
wherein the analytic applications environment comprises a data transformation layer that includes an aqqregate generation component,
an aggregated data warehouse instance at the data warehouse; and
wherein queries are executed against the aggregated data warehouse instance
However, the computer elements (a computer comprising one or more processors) are recited at a high level of generality and given the broadest reasonable interpretation are simply generic computers performing generic computer functions. Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea and mere instructions to implement an abstract idea on a computer.
Further, the accessing a data warehouse, executing queries and the extract, transform, load process are recited broadly. For example, the claim does not define the tenant schema, the data warehouse instance, or the extract, transform, load process. Under the broadest reasonable interpretation the limitations amounts to data gathering and data storage which the MPEP says is insignificant pre and post solution activity (see MPEP 2106.05(g).
Further, the use of the extract, transform, load process that operates in accordance with an analytic applications schema; the data pipeline or process including the extract, transform, load process operates to populate data warehouse instances and database tables for particular tenants with data as received from their enterprise software application or data environment, as defined by a combination of the analytic applications schema, and their tenant schema; and the analytic applications environment comprises a data transformation layer that includes an aqqregate generation component is indicative of adding the words “apply it” (or an equivalent) with the judicial exception. MPEP 2106.05(f) states:
When determining whether a claim simply recites a judicial exception with the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following:
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it". 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims "so result focused, so functional, as to effectively cover any solution to an identified problem")).
In the instant case, the additional elements of the broadly recited extract, transform, load process attempt to cover any solution to the identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, which does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it”. For example, the claims do not state how the schema addresses particular analytics use cases or best practices, to receive data from a tenant's enterprise software application or data environment, for loading into a data warehouse; how the process operates to populate data warehouse instances and database tables for particular tenants with data as received from their enterprise software application or data environment; or how the data transformation layer creates data mappings which compute aqqregations of transformed data. As such, extract, transform, load elements do not integrate a judicial exception into a practical application or provide significantly more.
Viewing the generic computer elements in combination with the accessing and storing data and the broadly recited extract, transform load process does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea.
In step 2B, the examiner must determine whether the claim adds a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d).
As discussed with respect to Step 2A Prong Two, the additional element of the processor in the claim amount 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 on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Further, similar to the analysis with respect to step 2A prong 2 recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished cannot provide an inventive concept under step 2B of the eligibility analysis.
Further, nothing in the claim indicates that the retrieval and storage of information is anything other than conventional. See MPEP 2106.05(d) that states “Receiving or transmitting data over a network, e.g., using the Internet to gather data is conventional when claimed in a merely generic manner (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Also see MPEP 2106.05(d) that states storing and retrieving information in memory is conventional when claimed in a merely generic manner (see Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93).
Viewing the generic computer elements in combination with the accessing and storing data and the broadly recited extract, transform load process does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to an inventive concept.
Further Claims 2-8 further limit the abstract idea of an analysis that can be performed mentally or certain methods of human activity that were already rejected in claim 1, but fail to remedy the deficiencies of the parent claim as they do not impose any limitations that amount to significantly more than the abstract idea itself.
Further, Claim 8 further defines the extract, transform, load process, but still amounts to mere data gathering which is insignificant pre solution activity and not beyond what is well known and conventional.
Accordingly, the Examiner concludes that there are no meaningful limitations in claims 2-8 that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The analysis above applies to all statutory categories of invention. As such, the presentment of claim 1 otherwise styled as a method or computer program product, for example, would be subject to the same analysis. Therefore, Claims 9-20 are rejected for the same rational that applied to claims 1-8.
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.
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/DEIRDRE D HATCHER/Primary Examiner, Art Unit 3625