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 .
Acknowledgements
Claims 20-23 and 50 have been cancelled.
Claims 24-49 are withdrawn with respect to Applicant’s response to Election/Restriction requirement from 9/24/2024.
Claims 51-53 are new claims.
Claims 1-19 and 51-53 are pending.
Applicant provided Information Disclosure Statement.
This is a final rejection with respect to Applicant’s amendments filed 5/15/2025.
Allowable Subject Matter
Claims 4, 6, 8, 10, 13-15, 17-19, and 51-53 are allowable if rewritten to include all of the limitations of the base claim and any intervening claims, and if the independent claims were amended in such a way as to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
Response to Amendments
With respect to Applicant’s amendments, Examiner withdraws 35 USC 112 rejection.
Response to Arguments
35 USC 101
Applicant's arguments filed 5/15/2025 with respect to 35 USC 101 have been fully considered but they are not persuasive. The rejection is maintained.
Applicant argues on page 13-15 that the claimed invention addresses technological problems, Applicant states
In particular, the present disclosure addresses the reality that a computer does not know the identity of its owners. Thus, a simple "human-in-the-loop" verification system is insufficient for ensuring that an action is authorized, because it is not always possible to verify that the right human is contributing the input. The computer needs verifiable information to support its decisions. To do this, the computer needs to properly select the people to whom it is to ask the questions. By involving the right people in the making process, the system is able to make high-quality decisions and provide accountability for decisions that were made. See specification, paragraph [0071 ].
For example, claims 5 and 6 recite specific examples of events that may trigger the collaboration process of claim 1. Thus, stated differently, the claimed "collaboration
process" serves to improve the performance of specific technical actions, by serving as a security check for each of the types of events recited in those claims.
Examiner respectfully disagrees.
Properly selecting the right people and making high quality decisions are not technical improvements but merely improvements nested in the abstract idea steps of selecting and making decisions. These steps are mere data manipulation steps that do not require a computer. In contrast, a technical improvement is seen in the court case of McRO. The patents in McRO were an improvement on 3-D animation wherein the prior art comprised that "for each keyframe, the artist would look at the screen and, relying on her judgment, manipulate the character model until it looked right — a visual and subjective process." Thus, the patents in McRO aimed to automate a 3-D animator's tasks, specifically, determining when to set keyframes and setting those keyframes.
Applicant argues on page 17 that the claims recite significantly more, Applicant states
Certain claims integrate the "collaboration process" with the functioning of the system as a whole. These include claim 10 (policy editor tool configured to define policy and guidelines for the process of making a responsible decision), and claim 17 (policy engine for making a decision on activities before and after responses by the one or more responsible users). Still other claims limit the specific manner in which users are contacted as part of the collaboration process, including claims 11, 13, 15, and 18. One of the guidelines for evaluating whether a claim recites "significantly more" than a judicial exception is whether the judicial exception is "applied with a particular machine." The specific manner in which the users may be contacted - through particular accounts or devices - thus adds to the "significantly more" of the claims. In addition to the content of the claims itself supplying "significantly more" than the judicial exception, many of the elements in these claims were deemed novel and nonobvious over the art of record. By definition, such elements are not "well-understood, routine, conventional activity in the field."
Examiner respectfully disagrees.
Applicant argues that the claimed invention includes a particular machine, however the claimed invention recites general computer configurations in para 0086. In addition, it is noted that while the application of a judicial exception by or with a particular machine is an important clue, it is not a stand-alone test for eligibility. Id.
In addition, Examiner did not use the language well understood, routine, or conventional when rejecting the claims under 35 USC 101 from the 8/4/2023 office action. The 101 rejection was not on the basis of step 2b being well understood, routine, or conventional but rather in the manner of "apply it.” Accordingly, Berkheimer evidence is not required.
Applicant argues on page 17-18
In view of the above, Applicant contends that claim 1, as it was pending, was
directed to patentable subject matter. Nevertheless, in order to advance prosecution,
Applicant has amended claim 1. The preamble has been amended to recite that the
responsible decision is performed "by said computer system.”… These amendments
further emphasize that the collaboration process is performed in order to enable making
of a responsible decision by the computer system, and thus that the collaboration is
integrated into a pragmatic process.
Examiner respectfully disagrees.
Merely adding a computer system is not enough to overcome 35 USC 101 rejection. The computer here is merely used as a tool to carry out the abstract idea. 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.
35 USC 103
Applicant's arguments filed 5/15/2025 with respect to 35 USC 103 have been fully considered but they are not persuasive. The rejection is maintained.
Applicant argues on page 19 that the claim limitations doesn’t teach responsible decision.
Examiner respectfully disagrees.
Dasgupta clearly teaches a responsible decision as seen here
the process of making a responsible decision comprises a decision to perform an action that has direct consequences on one or more of a legal entity, a living creature, or the physical world, outside of the computer system. Granting access to a sensitive document to a user has consequences for the legal entity such as organization or government agency if that user is not trustworthy, so a responsible decision must be made. (See para 0064-The present invention is applicable for various forms of organizations, enterprises, and governmental agencies. In several embodiments, the present invention comprises a method of accessing classified documents from an active archived system, in response to a user access request for classified data, information, or services).
Examiner advises Applicant to amend claims to be in line with Applicant’s interpretation of responsible decision.
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 1-19 and 51-53 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-19 and 51-53 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more than the judicial exception itself.
Regarding Step 1 of the Subject Matter Eligibility Test for Products and Processes (from 2019 Revised Patent Subject Matter Eligibility Guidance), claims 1-19 and 51-53 are directed to the statutory category of a computer system.
Regarding step 2A-1, Claims 1-19 and 51-53 recite a Judicial Exception. Exemplary independent claim 1 recites the limitations of
…to receive inputs from users and generate outcomes and perform actions…the one or more responsible users are selected on a basis of one or more of the following criteria: knowledge of truth; impact of mistake on said user; legal owner of a resource; accountability for system activity or error; role in organization; designation as responsible user for a given situation; or custody of physical or digital asset; and the collaboration process is a process by which the system selects one or more responsible users and contacts said one or more responsible users to support the responsible decision…by providing one or more of information, knowledge, or approval of the responsible decision prior to… acting on the decision; the responsible decision comprises a decision to perform an action that has direct consequences on one or more of a legal entity, a living creature, or the physical world, outside of the computer system.
These limitations, as drafted, are a process that, under its broadest reasonable interpretation cover concepts of receiving, generating, transmitting, and selecting data. The claim limitations fall under the abstract idea grouping of mental process, because the limitations can be performed in the human mind, or by a human using a pen and paper. For example, but for the language of computer system, the claim language simply encompasses selecting and contacting users with respect to a decision made. The invention states additional steps such providing information, performing actions, and receiving inputs from users. Making decisions, receiving inputs, generating outcomes, performing actions, and selecting/contacting users is not novel and has been done before the technological age. These steps also do not require a computer and are mere data manipulation steps.
The claims deal with interactions between users and customers (Para 0117 and figure 1a and 1b). These make the claims fall in the abstract idea grouping of certain methods of organizing human activity (business relations and interactions between people). It is clear the limitations recite these abstract idea groupings, but for the recitations of generic computer components. The mere nominal recitations of generic computer components does not take the limitations out of the mental process and certain methods of organizing human activity grouping. The claims are focused on the combination of these abstract idea processes.
Regarding step 2A-2- This judicial exception is not integrated into a practical application, and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The claim recites the additional elements of AI software, computer system, database, API, AI, organizational systems, external systems, messaging application, social media, user interface, policy editor tool, system, device, operating system, virtual employee, virtual/physical cloud based machine, policy engine, user interface tool, and database. These components are recited at a high level of generality, and merely automate the steps. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component.
The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer components or software. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Further, the claims do not provide for recite any improvements to the functioning of a computer, or to any other technology or technical field; applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; applying the judicial exception with, or by use of, a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; or 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.
The dependent claims have the same deficiencies as their parent claims as being directed towards an abstract idea, as the dependent claims merely narrow the scope of their parent claims. For example, the dependent claims further describe what the AI is such as a virtual employee. In addition, the dependent claims further describe what the step of verifying entails such as communicating with users via multiple devices. In addition, the dependent claims further recite what the collaboration process entails such as a crowdsourcing.
Regarding step 2B the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because claim 1 recites
AI software and computer system
Claim 5 recites API, computer system, physical device, and AI.
Claim 8 recites AI
Claim 9 recites organizational systems, external systems, messaging application, social media and user interface.
Claim 10 recites policy editor tool
Claim 11 recites system
Claim 13 recites multiple devices.
Claim 16 recites operating system, virtual employee, and virtual/physical cloud based machine,
Claim 17 recites policy engine
Claim 18 recites specific device
Claim 19 recites user interface tool and database.
When looking at these additional elements individually, the additional elements are purely functional and generic, the Applicant specification states general purpose computer configurations as seen in para 0086.
When looking at the additional elements in combination, the computer components add nothing that is not already present when the steps are considered separately. See MPEP 2106.05
Looking at these limitations as an ordered combination and individually adds nothing additional that is sufficient to amount to significantly more than the recited abstract idea because they simply provide instructions to use generic computer components, recitations of generic computer structure to perform generic computer functions that are used to "apply" the recited abstract idea. Thus, the elements of the claims, considered both individually and as an ordered combination, are not sufficient to ensure that the claim as a whole amounts to significantly more than the abstract idea itself. Since there are no limitations in these claims that transform the exception into a patent eligible application such that these claims amount to significantly more than the exception itself, claims 1-19 and 51-53 are rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 2, 7, 9, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dasgupta (US20190312881A1) in further view of Raffoul (US20210090190A1).
Regarding claim 1, Dasgupta teaches
A computer system…to engage in a collaboration process with one or more responsible users in a process of making a responsible decision by said computer system, wherein: the computer system is configured to (See para 0081-In order to provide a context for the various computer-implemented aspects of the invention, the following discussion provides a brief, general description of a suitable computing environment in which the various aspects of the present invention may be implemented. ) This shows a computer system. (See abstract-A system and related methods for providing greater security and control over access to classified files and documents and other forms of sensitive information based upon a multi-user permission strategy centering on organizational structure.)(See fig. 1) This teaches a collaborative process of accessing documents with one or more responsible users such as approvers to make a responsible decision to approve or deny access to a document.
the computer system is configured to receive inputs from users and generate outcomes and perform actions (See para 0028-After receiving a request from a user to access sensitive information, the system determines the number of approvals as well as finds the appropriate approvers and notifies them accordingly. ) This shows the system can receive inputs such as request to access a document. (See para 0028-Then based on the shared trust policy (Step 3), it will choose a set of users 40 from the organization (based on the organization structure and the role of the user) who are available at that instance of time to act as approvers (User A and User B, and possibly more), notifying them to approve the request (Step 4).) This shows the system is able to generate outcomes such as outcome of picking approvers. The system also perform actions such as granting or denying document access.
the one or more responsible users are selected on a basis of one or more of the following criteria: knowledge of truth; impact of mistake on said user; legal owner of a resource; accountability for system activity or error; role in organization; designation as responsible user for a given situation; or custody of physical or digital asset The system chooses the responsible users based on role in organization as seen here (See para 0028-Then based on the shared trust policy (Step 3), it will choose a set of users 40 from the organization (based on the organization structure and the role of the user) who are available at that instance of time to act as approvers (User A and User B, and possibly more), notifying them to approve the request (Step 4). )
and the collaboration process is a process by which the system selects one or more responsible users and contacts said one or more responsible users to support a decision the responsible decision…by providing one or more of information, knowledge, or approval of the responsible decision prior to the system acting on the decision; (See para 0028-Then based on the shared trust policy (Step 3), it will choose a set of users 40 from the organization (based on the organization structure and the role of the user) who are available at that instance of time to act as approvers (User A and User B, and possibly more), notifying them to approve the request (Step 4).) This shows the system selects one or more approvers and contacts them to support the decision to let the other user access the document. The system does this by providing the decision information to the approvers as seen in figure 1.
the responsible decision comprises a decision to perform an action that has direct consequences on one or more of a legal entity, a living creature, or the physical world, outside of the computer system. Granting access to a sensitive document to a user has consequences for the legal entity such as organization or government agency if that user is not trustworthy, so a responsible decision must be made. (See para 0064-The present invention is applicable for various forms of organizations, enterprises, and governmental agencies. In several embodiments, the present invention comprises a method of accessing classified documents from an active archived system, in response to a user access request for classified data, information, or services).
Even though Dasgupta teaches responsible users and decisions, it doesn’t teach artificial intelligence, however Raffoul teaches
responsible artificial intelligence software…the responsible artificial intelligence software has legal or moral accountability derived from one or more of authorization or assumption of responsibility (See abstract-Machine learning and artificial intelligence-based methods and subsystems can be used to analyze these agreements. ) (See para 0096- implemented as a combination of both software (e.g., a computer program product) and hardware.)This shows the system has AI software that is run. (See para 0048-For example, AI may be used by the documentation analysis module 50 to identify more and more issues in contract reviews by continuously learning from an expert user's feedback. An expert user may be a lawyer, for example. ) This shows the AI has legal accountability since it was trained with expert data such as lawyer feedback. A lawyer is authorized to review legal documents. (i.e. legal accountability from authorization).
Dasgupta and Raffoul are analogous art because they are from the same problem solving of document management and both belong to G06Q10 classification. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Dasgupta’s invention by incorporating the method of Raffoul because Dasgupta would also be able to use machine learning/AI technologies. The AI technology would help approvers make decisions of whether to allow access or not as well as helping pick approvers. The AI technology would also help to automate the decision making process and learn from past instances of whether or not to allow access. Having being trained on past data, the AI technology would improve decision making over time. All these factors would make the art of Dasgupta more sophisticated.
Regarding claim 2, Dasgupta and Raffoul teach the limitations of claim 1, however Dasgupta further teaches
wherein the responsible decision relates to an event that has one or more of the following statuses: under investigation; cleared; or flagged. (See para 0028- When all of the selected approvers 50 grant the request (Step 5), the requesting user 10 obtains access to the classified document (Step 6). The access or approver logs are stored 60, and are available for and will be analyzed for any incident detection or prevention of malicious behavior (Step 7), using on-line or off-line analysis techniques and methods.) This shows the event is cleared since the approvers have granted the request of document access.
Regarding claim 7, Dasgupta and Raffoul teach the limitations of claim 1, however Dasgupta further teaches
wherein the one or more responsible users are selected based on the following criteria: specific person; relation to specific person; role in organization; or responsibility in organization. (See para 0028- Then based on the shared trust policy (Step 3), it will choose a set of users 40 from the organization (based on the organization structure and the role of the user) who are available at that instance of time to act as approvers (User A and User B, and possibly more), ) This teaches responsible users with respect to role in the organization.
Regarding claim 9, Dasgupta and Raffoul teach the limitations of claim 7, however Dasgupta further teaches
wherein the computer system is configured to define roles of users within an organization and relation of users to specific persons within an organization based on one or more of the following processes: scanning organizational data; communicating with organizational systems; communicating with external systems; collecting and processing information in messaging applications and social media; requesting and receiving input from a responsible user; receipt of manual input by a person using a user interface; and analyzing information from formatted data and document. (See para 0030- As an initial step to implementing the present invention, an access control graph for a subject organization is generated, based on the interrelationship among employees and their roles in an organization. This requires capturing information about the organization's specific hierarchical structures, roles, and task assignments. Since organizational capacity can vary over time, variations in number of employees/participants, roles, and the like, are supported) This shows capturing organizational information which corresponds to scanning organizational data.
Regarding claim 16, Dasgupta and Raffoul teach the limitations of claim 1, however Raffoul further teaches
wherein the decision is made by an artificial intelligence that is one or more of: an operating system of a physical device; a virtual employee; or a virtual or physical cloud-based machine. (See fig. 8) (See para 0034- the system can apply machine learning and/or artificial intelligence-based methods and subsystems to analyze the agreements. These methods and subsystems may include techniques related to natural language processing (NLP), using artificial intelligence models trained on legal documents by legal experts.) Figure 8 shows physical devices with respect to a system and the AI is run on these devices. The Examiner interprets this to mean the AI is part of the operating system on these physical devices. The art also teaches cloud based machine as seen here where the AI can also be run (See para 0065- Additionally, as should be clear, some embodiments of the system (for instance, embodiments hosted on the cloud or permitting multiple simultaneous users) may support many simultaneous classes of user. )
Claim(s) 3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dasgupta (US20190312881A1) in further view of Raffoul (US20210090190A1) in further view of Law (US20040243260A1).
Regarding claim 3, Dasgupta and Raffoul teach the limitations of claim 2, however Dasgupta further teaches
wherein the collaboration process comprises issuing at least one query to each of the one or more responsible users regarding whether the event is authorized… Examiner interprets the query given to the approvers to be whether or not to grant document access (See para 0028- Then based on the shared trust policy (Step 3), it will choose a set of users 40 from the organization (based on the organization structure and the role of the user) who are available at that instance of time to act as approvers (User A and User B, and possibly more), notifying them to approve the request (Step 4).)
However Dasgupta doesn’t teach what the approvers choosing options are, however Law teaches Law teaches by prompting each of the identified responsible users to select from one of the following three tags: (1) "Clear," signifying approval of the event; (2) "Flag," signifying disapproval of the event; and (3) "Dismiss," signifying referral of the event to others; and, based on the responses of the one or more responsible users, either approving the event or flagging the event as potentially unauthorized. (See figure 15) Figure 15 shows Approve button which corresponds to the clear tag. Selecting the approve button/clear tag would approve the event from figure 15.
Dasgupta and Law are analogous art because they are from the same problem of approval system and both belong to G06Q10 classification. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Dasgupta’s invention by incorporating the method of Law because Dasgupta would be able to use figure 15 with respect to the approvers. This would give the approvers an interface to make a selection regarding the document request. This would make the art of Dasgupta more sophisticated since it would give Approvers options regarding the request such as approving or clearing.
Regarding claim 5, Dasgupta, Raffoul, and Law teach the limitations of claim 3, however Dasgupta further teaches
wherein the event is one or more of the following: a change in a user account; a change in data; a change in configuration; a change in organization data and structure; an action performed by a computer system; an action performed by a physical device controlled by a computer system; an autonomous activity; a decision made by an artificial intelligence; a transfer of funds; a request in an application programming interface. Dasgupta teaches action performed by computer system since it performs action of granting access to a document based on approver actions. (See para 0028).
Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dasgupta (US20190312881A1) in further view of Raffoul (US20210090190A1) in further view of Avala (US20220027828A1).
Regarding claim 11, Dasgupta and Raffoul teach the limitations of claim 1, however they do not teach multi-factor verification, however Avala teaches
further comprising a system for verifying identities of responsible users using multi-factor verification. (See para 0069- For authentication, the response system can authenticate users, authorize users and grant access through user identity and authentication. With the help of the service provider and the cloud network, the response system can obtain verification of user identity via multi-factor authentication) This shows multi-factor verification.
Dasgupta and Avala are analogous art because they are from the same problem of authentication and both belong to G06Q10 classification. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Dasgupta’s invention by incorporating the method of Avala because Dasgupta would be able to use the multi-factor authentication to better identify approvers. This would ensure approvers are actually approvers and not a threat to the organization. This would make the system of Dasgupta’s more secure and safe.
Regarding claim 12, Dasgupta, Raffoul, and Avala teach the limitations of claim 11, however Dasgupta further teaches
wherein the collaboration process comprises crowd sourcing to multiple responsible users. (See figure 1) The system crowdsources the task of allowing document access because it reaches out to a plurality of approvers to approve the decision. (See para 0009- The system does this by finding a set of possible approvers for a user file access request based on potential approvers rank, availability, and other pertaining conditions.)
Conclusion
The prior art made of record and not relied upon considered pertinent to Applicant’s disclosure.
Wilson (US11443102B1) Discloses methods and systems for artificial intelligence (AI)-assisted document annotation and training of machine learning-based models for document data extraction are described.
Oliner (US20180365309A1) Discloses a Machine data of an operating environment that is conveyed by a network to a data intake and query system (DIQS) which reflects the machine data as timestamped entries of a field-searchable datastore.
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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/MUSTAFA IQBAL/Primary Examiner, Art Unit 3625
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