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 .
DETAILED ACTION
1. This Office Action is in response to the amendment filed on 07/06/2026. Claims 1-18 are pending in this application. Claims 1, 7 and 13 are independent claims. This Office Action is made Final.
Claim Rejections - 35 USC § 101
2. 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.
3. Claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The independent claims 1, 7 and 13 are corresponding to one of four statutory categories including method, system, and method respectively under step 1. The claims 1, 7 and 13 similarly recite “a data processing method in object-oriented programming (OOP) in an integrated development environment, the method comprising: in the integrated development environment, obtaining, by a processor, N objects corresponding to code indexes, wherein the N objects belong to a same class of OOP, each of the N objects comprises M attributes, N is a positive integer greater than or equal to 2, and M is a positive integer greater than or equal to 1; determining, by the processor, M groups of data based on attribute values of the M attributes comprised in each of the N objects, wherein the M groups of data are in a one-to-one correspondence with the M attributes, and each of the M groups of data indicates attribute values of a corresponding attribute of the N objects; and storing, by a memory, the M groups of data by using M storage space sets respectively, wherein each storage space set comprises storage spaces with consecutive addresses”.
The limitation of the claims 1, 7 and 13 of “determining M groups of data based on attribute values of the M attributes comprised in each of the N objects, wherein the M groups of data are in a one-to-one correspondence with the M attributes, and each of the M groups of data indicates attribute values of a corresponding attribute of the N objects” as a drafted is a mental process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind such as “determining”. For example, a human may determine M groups of data based on attribute values of the M attributes comprised in each of the N objects, wherein the M groups of data are in a one-to-one correspondence with the M attributes, and each of the M groups of data indicates attribute values of a corresponding attribute of the N objects with a pen and paper or in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong I.
This judicial exception is not integrated into a practical application. In particular, the claims 1, 7 and 13 recite additional elements such as “in the integrated development environment, obtaining N objects corresponding to code indexes, wherein the N objects belong to a same class of OOP, each of the N objects comprises M attributes, N is a positive integer greater than or equal to 2, and M is a positive integer greater than or equal to 1”.
Examiner would like to point out that with the broad reasonable interpretation, this element amounts to mere data gathering under MPEP § 2106.05(g): Insignificant Extra-Solution Activity, which does not impose any meaningful limits on practicing the mental process (insignificant additional element). 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 insignificant additional elements under Step 2A Prong 2 and Step 2B.
This judicial exception is not integrated into a practical application. In particular, the claims 1, 7 and 13 recite additional elements such as “storing the M groups of data by using M storage space sets respectively, wherein each storage space set comprises storage spaces with consecutive addresses”.
Examiner would like to point out that with the broad reasonable interpretation, this element amounts to mere data storing under MPEP § 2106.05(g): Insignificant Extra-Solution Activity, which does not impose any meaningful limits on practicing the mental process (insignificant additional element). 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 insignificant additional elements under Step 2A Prong 2 and Step 2B.
The limitation of the claims 2, 8 and 14 of “determining, based on the attribute values of the M attributes comprised in each of the N objects, that the M attributes comprise M1 first-type attributes, wherein attribute values of first attributes of any two of the N objects are different, the first attribute is any one of the M1 first-type attributes, and M1 is a positive integer greater than or equal to 1 and less than or equal to M” as a drafted is a mental process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind such as “determining”. For example, a human may determine M groups of data based on attribute values of the M attributes comprised in each of the N objects, wherein the M groups of data are in a one-to-one correspondence with the M attributes, and each of the M groups of data indicates attribute values of a corresponding attribute of the N objects with a pen and paper or in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong I.
The limitation of the claims 2, 8 and 14 of “determining M1 groups of data, wherein the M1 groups of data are in a one-to-one correspondence with the M1 first-type attributes, N pieces of data comprised in an ith group of data in the M1 groups of data respectively indicate attribute values of an ith first-type attribute in the M1 first-type attributes of the N objects, and i=1, ..., or M1” as a drafted is a mental process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind such as “determining”. For example, a human may determine M groups of data based on attribute values of the M attributes comprised in each of the N objects, wherein the M groups of data are in a one-to-one correspondence with the M attributes, and each of the M groups of data indicates attribute values of a corresponding attribute of the N objects with a pen and paper or in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong I.
This judicial exception is not integrated into a practical application. In particular, the claims 2, 8 and 14 recite additional elements such as “wherein the step of storing the M groups of data comprises: storing the M1 groups of data by using M1 first storage space sets, wherein an ith first storage space set in the M1 first storage space sets comprises N pieces of consecutive storage space, and the N pieces of consecutive storage space in the ith first storage space set are respectively used to store the N pieces of data comprised in the ith group of data”.
Examiner would like to point out that with the broad reasonable interpretation, this element amounts to mere data storing under MPEP § 2106.05(g): Insignificant Extra-Solution Activity, which does not impose any meaningful limits on practicing the mental process (insignificant additional element). 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 insignificant additional elements under Step 2A Prong 2 and Step 2B.
The limitation of the claims 3, 9 and 15 of “determining, based on the attribute values of the M attributes comprised in each of the N objects, that the M attributes comprise M2 second-type attributes, wherein attribute values of second attributes of any two of the N objects are the same, the second attribute is any one of the M2 second-type attributes, and M2 is a positive integer greater than or equal to 1 and less than or equal to M” as a drafted is a mental process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind such as “determining”. For example, a human may determine, based on the attribute values of the M attributes comprised in each of the N objects, that the M attributes comprise M2 second-type attributes, wherein attribute values of second attributes of any two of the N objects are the same, the second attribute is any one of the M2 second-type attributes, and M2 is a positive integer greater than or equal to 1 and less than or equal to M with a pen and paper or in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong I.
The limitation of the claims 3, 9 and 15 of “determining M2 groups of data, wherein data comprised in a jth group of data in the M2 groups of data indicates attribute values of a jth second-type attribute in the M2 second-type attributes of the N objects, and j=1, ..., or M2” as a drafted is a mental process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind such as “determining”. For example, a human may determine M2 groups of data, wherein data comprised in a jth group of data in the M2 groups of data indicates attribute values of a jth second-type attribute in the M2 second-type attributes of the N objects, and j=1, ..., or M2 with a pen and paper or in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong I.
This judicial exception is not integrated into a practical application. In particular, the claims 3, 9 and 15 recite additional elements such as “wherein the step of storing the M groups of data comprises: storing the M2 groups of data by using M2 second storage space sets, wherein storage space comprised in a jth second storage space set in the M2 second storage space sets is used to store the data comprised in the jth group of data”.
Examiner would like to point out that with the broad reasonable interpretation, this element amounts to mere data storing under MPEP § 2106.05(g): Insignificant Extra-Solution Activity, which does not impose any meaningful limits on practicing the mental process (insignificant additional element). 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 insignificant additional elements under Step 2A Prong 2 and Step 2B.
The limitation of the claims 4, 10 and 16 of “determining, based on the attribute values of the M attributes comprised in each of the N objects, that the M attributes comprise M3 third-type attributes, wherein a third attribute of each of the N objects can be determined based on a function, the third attribute is any one of the M3 third-type attributes, and M3 is a positive integer greater than or equal to 1 and less than or equal to M” as a drafted is a mental process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind such as “determining”. For example, a human may determine, based on the attribute values of the M attributes comprised in each of the N objects, that the M attributes comprise M3 third-type attributes, wherein a third attribute of each of the N objects can be determined based on a function, the third attribute is any one of the M3 third-type attributes, and M3 is a positive integer greater than or equal to 1 and less than or equal to M with a pen and paper or in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong I.
The limitation of the claims 4, 10 and 16 of “determining M3 groups of data, wherein a function comprised in a kth group of data in the M3 groups of data can determine attribute values of a kth third-type attribute in the M3 third-type attributes of the N objects, and k=1, ..., or M3” as a drafted is a mental process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind such as “determining”. For example, a human may determine M3 groups of data, wherein a function comprised in a kth group of data in the M3 groups of data can determine attribute values of a kth third-type attribute in the M3 third-type attributes of the N objects, and k=1, ..., or M3 with a pen and paper or in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong I.
This judicial exception is not integrated into a practical application. In particular, the claims 4, 10 and 16 recite additional elements such as “wherein the step of storing the M groups of data comprises: storing the M3 groups of data by using M3 third storage space sets, wherein storage space comprised in a kth third storage space set in the M3 third storage space sets is used to store the function comprised in the kth group of data”.
Examiner would like to point out that with the broad reasonable interpretation, this element amounts to mere data storing under MPEP § 2106.05(g): Insignificant Extra-Solution Activity, which does not impose any meaningful limits on practicing the mental process (insignificant additional element). 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 insignificant additional elements under Step 2A Prong 2 and Step 2B.
This judicial exception is not integrated into a practical application. In particular, the claims 5, 11 and 17 recite additional elements such as “wherein a size of each piece of storage space in each of the M storage space sets is equal to a size of maximum storage space occupied by data indicating an attribute value”.
Examiner would like to point out that with the broad reasonable interpretation, this element
especially “a computer readable storage medium having program instructions embodied therewith, the program instructions readable by a device to cause the device” amount to additional elements such as insignificant extra-solution such as “field of use” as in MPEP § 2106.05(h): Field of Use and Technological Environment, which does not impose any meaningful limits on practicing the mental process. 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 an abstract idea under step 2B.
The limitation of the claims 6, 12 and 18 of “determining P storage space sets from the M storage space sets, wherein the P storage space sets are in a one-to-one correspondence with the P attributes” as a drafted is a mental process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind such as “determining”. For example, a human may determine P storage space sets from the M storage space sets, wherein the P storage space sets are in a one-to-one correspondence with the P attributes with a pen and paper or in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong I.
The limitation of the claims 6, 12 and 18 of “respectively determining the attribute values of the P attributes of the one or more objects based on data comprised in the P storage space sets” as a drafted is a mental process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind such as “determining”. For example, a human may respectively determine the attribute values of the P attributes of the one or more objects based on data comprised in the P storage space sets with a pen and paper or in a human mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea under Step 2A Prong I.
This judicial exception is not integrated into a practical application. In particular, the claims 6, 12 and 18 recite additional elements such as “obtaining a read instruction instructing to read attribute values of P attributes of one or more of the N objects, wherein P is a positive integer greater than or equal to 1 and less than or equal to M”.
Examiner would like to point out that with the broad reasonable interpretation, this element amounts to mere data gathering under MPEP § 2106.05(g): Insignificant Extra-Solution Activity, which does not impose any meaningful limits on practicing the mental process (insignificant additional element). 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 insignificant additional elements under Step 2A Prong 2 and Step 2B.
Dependent claims 2-6, 8-12 and 14-18 are also similar rejected under same rationale as cited above wherein these claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. These claims are merely further elaborate the mental process itself or providing additional definition of process which does not impose any meaningful limits on practicing the abstract idea. Claims 2-6, 8-12 and 14-18 is also rejected for incorporating the deficiency of their independent claims 1, 7 and 13.
Reasons for Allowance
4. The following is an examiner’s statement of reasons for allowance: the prior-art, Hull (US PGPub 20030078993) Shi (US PGPub 20040230983) Bessonov (US Patent 8028276) Heyns (US PGPub 20160253405) failed to disclose of a data processing method in object-oriented programming (OOP) in an integrated development environment, comprising: in the integrated development environment, obtaining N objects corresponding to code indexes, wherein the N objects belong to a same class of OOP, each of the N objects comprises M attributes, N is a positive integer greater than or equal to 2, and M is a positive integer greater than or equal to 1; determining M groups of data based on attribute values of the M attributes comprised in each of the N objects, wherein the M groups of data are in a one-to-one correspondence with the M attributes, and each of the M groups of data indicates attribute values of a corresponding attribute of the N objects; and storing the M groups of data by using M storage space sets respectively, wherein each storage space set comprises storage spaces with consecutive addresses, as recited by the independent claim 1.
Regarding Claim 1, the closest prior-art found, Hull, Shi, Bessonov and Heyns discloses of a data processing method in object-oriented programming (OOP) in an integrated development environment, comprising: in the integrated development environment, obtaining N objects corresponding to code indexes, wherein each of the N objects comprises M attributes, N is a positive integer greater than or equal to 2, and M is a positive integer greater than or equal to 1; determining M groups of data based on attribute values of the M attributes comprised in each of the N objects; and storing the M groups of data by using M storage space sets respectively, wherein each storage space set comprises storage spaces with consecutive addresses
Individually, Hull teaches that data objects 306 comport with the object-oriented programming paradigm of computer software development in that data objects have both a state defined by one or more attributes and a behavior defined by one or more methods specified for a class of objects, data objects 306 in this illustrative embodiment support neither inheritance nor polymorphism, both of which are known aspects of some object-oriented programming languages. In alternative embodiment, inheritance, polymorphism, or both can be supported for data objects 306.
Shi teaches that the website development framework uses an extensible OOP technique which divides the attributes of each predefined class into basis attributes that are defined in the corresponding class, and alterable attributes that are defined in a configuration file. The database server and the database cooperatively provide storage and access services for data required by the website development framework and business websites to be built.
Bessonov teaches that a system for generating a test file, comprising: a computer processor; a program development tool, executing on the computer processor, for creating annotated test code using an object oriented programming language and comprising a first testing annotation, a second testing annotation, a class, and a method comprising test case code, wherein the first testing annotation defines an attribute value for an attribute of a test group, and wherein the second testing annotation defines an attribute value for an attribute of a test case, and a transformation tool executing on the computer processor and configured to: receive the annotated test code from the program development tool.
Heyns teaches that typically each data set is stored in consecutive address locations in memory. For example, this may be implemented using an array structure, whereby an element in the array is accessed using its array index. In this way, partitioning the data set may comprise identifying the array indexes that correspond to the boundary elements for the size of the desired partitions. In an example data set comprising thirty-two elements to be partitioned into four partitions of eight elements, the boundary elements for the first partition can be accessed by reading the first and eighth memory locations; the boundary elements for the second partition can be accessed by reading the ninth and seventeenth memory locations and so on. It is not necessary for the elements of a data set to be stored in consecutive address locations. For example, the elements may be stored randomly, with knowledge of the memory addresses according to the sorted data set. As such, the partitioning step may comprise firstly identifying the size of the partitions to be used and then retrieving the corresponding boundary elements from memory.
However, the prior-art, Hull, Shi, Bessonov and Heyns failed to disclose the following subject matter such as “wherein the M groups of data are in a one-to-one correspondence with the M attributes, and each of the M groups of data indicates attribute values of a corresponding attribute of the N objects, wherein the N objects belong to a same class of OOP” in the claim 1.
Therefore, the prior-art, Hull, Shi, Bessonov and Heyns failed to teach the method of claim 1, the system of claim 7 and the product of claim 13 as well as their dependent claims. Thus, claims 1-18 contain allowable subject matter.
5. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
6. Applicant's argument w.r.t. 101 Abstract Idea rejection on claims 1, 7 and 13 with their dependent claims have been fully considered but they are not persuasive.
Regarding the argument of the remark on pages 11-12 that the amendment to the claims 1, 7 and 13 are not directed to an abstract idea but directed to a practical application, the examiner would like to point out that the amendment to incorporate the abstract idea with a generic computing device does not change the subject matter of the claim limitation as mental processes.
C. A Claim That Requires a Computer May Still Recite a Mental Process
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of “anonymous loan shopping” recited in a computer system claim is an abstract idea because it could be “performed by humans without a computer”).
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
1. Performing a mental process on a generic computer. An example of a case identifying a mental process performed on a generic computer as an abstract idea is Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018). In this case, the Federal Circuit relied upon the specification in explaining that the claimed steps of voting, verifying the vote, and submitting the vote for tabulation are “human cognitive actions” that humans have performed for hundreds of years. The claims therefore recited an abstract idea, despite the fact that the claimed voting steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504. Another example is Versata, in which the patentee claimed a system and method for determining a price of a product offered to a purchasing organization that was implemented using general purpose computer hardware. 793 F.3d at 1312-13, 1331, 115 USPQ2d at 1685, 1699. The Federal Circuit acknowledged that the claims were performed on a generic computer, but still described the claims as “directed to the abstract idea of determining a price, using organizational and product group hierarchies, in the same way that the claims in Alice were directed to the abstract idea of intermediated settlement, and the claims in Bilski were directed to the abstract idea of risk hedging.” 793 F.3d at 1333; 115 USPQ2d at 1700-01.
2. Performing a mental process in a computer environment. An example of a case identifying a mental process performed in a computer environment as an abstract idea is Symantec Corp., 838 F.3d at 1316-18, 120 USPQ2d at 1360. In this case, the Federal Circuit relied upon the specification when explaining that the claimed electronic post office, which recited limitations describing how the system would receive, screen and distribute email on a computer network, was analogous to how a person decides whether to read or dispose of a particular piece of mail and that “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper”. 838 F.3d at 1318, 120 USPQ2d at 1360. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were “the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries.” 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
3. Using a computer as a tool to perform a mental process. An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of “anonymous loan shopping”, which was a concept that could be “performed by humans without a computer.” 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
Regarding another argument on page 12 of the remark that claims 1, 7 and 13 are directed to avoiding the waste of memory resources occupied by objects in a reference ring, it’s not clearly recited in the claim limitation to be considered as integrating the judicial exception into a practical application and also in order to determine if additional element is integrating the abstract idea into a practical application, 1) The specification should describe the claimed improvement to achieve the desired goal and 2) The claimed improvement should be reflected at least in the additional elements by specifying how the claimed improvement performs the additional element to improve functioning of a computer or existing technical field.
2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022]
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. 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.
I. RELEVANT CONSIDERATIONS FOR EVALUATING WHETHER ADDITIONAL ELEMENTS INTEGRATE A JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION
The Supreme Court and Federal Circuit have identified a number of considerations as relevant to the evaluation of whether the claimed additional elements demonstrate that a claim is directed to patent-eligible subject matter. The list of considerations here is not intended to be exclusive or limiting. Additional elements can often be analyzed based on more than one type of consideration and the type of consideration is of no import to the eligibility analysis. Additional discussion of these considerations, and how they were applied in particular judicial decisions, is provided in MPEP § 2106.05(a) through (c) and MPEP § 2106.05(e) through (h).
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);
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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/JAE U JEON/Primary Examiner, Art Unit 2193
Prosecution Insights