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 .
Remarks
The amendments were received on 5/22/26. Claims 1 and 24-42 are pending in the application. Claims 2-23 have been canceled and claims 24-42 have been added. Applicants' arguments have been carefully and respectfully considered.
Claims 1 and 24-42 are rejected under 35 U.S.C. 101.
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 and 24-42 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One asks: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea? See MPEP 2106.04 Part I. 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. See MPEP 2106.04(a).
With respect to claims 1, 30, and 37 the limitation of “processing a first controlling document” “processing a second controlling document,” and “performing comparison processing”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, nothing in the claim element precludes the step from practically being performed in the mind. For example, “processing” in the context of this claim encompasses the user thinking about data. Similarly, the limitation of “identifying a corresponding second requirement record data structure” and “identifying a mapping record”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, “identifying” in the context of this claim encompasses the user analyzing data. The limitation of “calculating a respective score”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, “comparing the first content and the second content,” “determining, based on the comparing, a content change value,” “classifying, based on the content-change value, the corresponding second requirement record data structure,” and “selecting, based on the corresponding second requirement record being classified as updated, the corresponding second requirement record data structure and the implementation record” in the context of this claim encompasses the user mentally evaluating data. 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.
At step 2a, prong two, this judicial exception is not integrated into a practical application. The claims require a computing system with a processor and memory, however, these are recited at a high level of generality such that they amount to no more than generic computer components. The claim recites “receiving a selection,” “for each first requirement record of a group of the first plurality of requirement record data structures: obtaining first content,” “obtaining second content,” and “modifying the implementation record.” These elements do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception and provide only insignificant extra solution activity that is mere data gathering in conjunction with the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
With respect to “receiving a selection,” “for each first requirement record of a group of the first plurality of requirement record data structures: obtaining first content,” and “obtaining second content”, the courts have found limitations directed towards data gathering to be well-understood, routine, and conventional. See MPEP 2106.05(d)(II). Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information).
With respect to “modifying the implementation record”, the courts have found limitations directed towards storing to be well-understood, routine, and conventional. See MPEP 2106.05(d)(II). Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts") and “storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
Considering the additional elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. The claim is not patent eligible.
With respect to claims 24, 25, 27, 29, 31, 32, 34, 36, 38, 39, and 41 the limitations further define limitations discussed above and do not integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
With respect to claims 26, 33, and 40, the limitations are directed towards the abstract ideas of “searching an index structure.” Under its broadest reasonable interpretation, these cover performance of the limitation in the mind but for the recitation of generic computer components.
With respect to claims 28, 35, and 42, the limitations describe “storing a classification”, the courts have found limitations directed towards storing to be well-understood, routine, and conventional. See MPEP 2106.05(d)(II). Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts") and “storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
Response to Arguments
35 U.S.C. 112
Applicant’s arguments with respect to the 35 U.S.C. 112 rejection have been fully considered and are persuasive. The 35 U.S.C. 112 rejection has been withdrawn.
35 U.S.C. 101
Applicant argues that the present claims are eligible because they operate on persistent structured machine representations of extracted requirements, reducing downstream processing associated with reevaluation of unchanged portions of the controlling documents. The Examiner respectfully disagrees. There is nothing about the claimed data structures that show that they are more than conventional data structures. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See MPEP 2106.05(f).
35 U.S.C. 103
Applicant’s arguments with respect to the 35 U.S.C. 103 rejection have been fully considered and are persuasive. The 35 U.S.C. 103 rejection has been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY N ALLEN whose telephone number is (571)270-3566. The examiner can normally be reached M-F 9 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sherief Badawi can be reached at 571-272-9782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRITTANY N ALLEN/ Primary Examiner, Art Unit 2169
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