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 .
Acknowledgments
Claims 1-72 are cancelled.
Claims 73-96 are new claims.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/13/2026 has been entered.
Response to Arguments
35 USC 101
Applicant's arguments filed 4/13/2026 with respect to 35 USC 101 have been fully considered but they are not persuasive. The rejection is maintained.
Applicant argues on page 39
The requirement that one or more responsible users be selected in real time by an AI model executed
Examiner respectfully disagrees.
The AI model is merely an additional element used to carry out the abstract idea of selecting users. The claimed invention is merely automating a manual process. In addition, doing a step in real time is not a test for 101 patent eligibility.
Applicant argues on page 39-40
Database as Technical Infrastructure. The claim now recites that the computer system comprises a database storing organizational ownership and responsibility data.
Examiner respectfully disagrees.
The database is merely an additional element used to carryout out the abstract idea step of storing data. In addition, additional elements are not part of step 2A prong 1 where an abstract idea is identified.
Applicant argues on page 40
The limitation that selection occurs in real time while the computer system is taking the responsible decision ties the claim to a specific, temporally constrained machine operation.
Examiner respectfully disagrees.
Determining if a step is done in real time is not a test for 101 patent eligibility. The abstract idea step here is still selecting users which can be done without the use of a computer. A user is able to select users based on a criteria without the use of a computer.
Applicant argues on pages 41-43
Even assuming arguendo that any element of the claim is characterized as an abstract idea, the claim as a whole is integrated into a practical application. Claim 73 reflects a specific improvement to how AI systems operate - enabling them to autonomously and in real time identify the right human overseers via an AI model and database, engage them in a structured collaboration, and condition consequential actions on their input.
Examiner respectfully disagrees.
The claims are not solving a technical problem. Selecting users and then engaging with them is an improvement nested in the abstract idea steps of identifying and engaging. A user can do these steps without the need of a computer. In addition, Applicant’s specification states in para 0004 talks about tracking user behavior which is also not a technical problem. A technical problem 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 on page 43
Analogous to Example 40's threshold-triggered Netflow collection, the realtime AI model selection here serves as the technical mechanism that triggers and shapes the collaboration workflow, producing a specific, different system state than would exist without it.
Examiner respectfully disagrees.
The AI model is merely used as a tool to carry out the abstract idea step of selecting. The courts have also identified limitations that did not integrate a judicial exception into a practical application that include 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).
Applicant Argues on page 44
Should the Examiner conclude that the claim recites a judicial exception - which the Applicant disputes - the claim provides significantly more under Step 2B. The specific combination of a real-time AI model, a populated organizational ownership database, a multifactor analysis consuming organizational structure and event-type data, a structured tagged-response collaboration workflow, and the realtime pendency actions and protective measures of claims 95-96 is not well understood, routine, or conventional activity in any art. The Examiner has cited no evidence that this combination was conventional at the time of filing, and under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), such an evidentiary showing is required. Accordingly, the claims satisfy Step 2B.
Examiner respectfully disagrees.
Examiner did not used 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.” The consideration of well understood, routine, or conventional is only one consideration of step 2B, it is not the sole consideration. Accordingly, Berkheimer evidence is not required.
35 USC 103
Applicant’s arguments filed 4/13/2026, with respect to 35 USC 103 have been fully considered and are persuasive. The Examiner withdraws 35 USC 103 rejection.
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 73-96 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 subject matter eligibility for whether the claims fall within a statutory category (See MPEP 2106.03), claims 73-96 are directed to a computer system.
Regarding step 2A-1, Claims 73-96 recite a Judicial Exception. Exemplary independent claim 82 and similarly claims 73 and 83-94 recite the limitations of
to inquire and receive inputs from users and generate outcomes and perform actions…the one or more responsible users are selected using…model…and the collaboration process is a process by which the system selects one or more responsible users and contacts and inquires 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…wherein the collaboration process comprises issuing at least one query…either approving the event or flagging the event as potentially unauthorized; wherein the collaboration process further comprises following flagging of the event as potentially unauthorized, creating a group conversation with a plurality of responsible users, and, within the group conversation, providing relevant information; responding to requests by group members and providing requested information; providing information to members of the group; taking actions requested by responsible users in the group; and reporting to the group of decisions and activities taken autonomously; wherein an identity of the one or more responsible users is further determined in real time while taking the responsible decision based on a multifactor analysis performed… to identify which users have ownership or responsibility or designation for…serving as an input to the…model for determining the identity of the one or more responsible users in real time.
These limitations, as drafted, are a process that, under its broadest reasonable interpretation cover concepts of receiving, generating/creating, reporting, selecting, determining, identifying, providing, issuing, approving, and flagging data. The claims also state performing actions. 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 a computer system and AI model, the claim language encompasses simply selecting responsible users, contacting/inquiring the users, issuing a query, approving/flagging an event, creating a group conversation, providing information, taking actions, and identifying/determining identity of users. These are mere data manipulation steps. For example, a user is able to the steps of selecting users and carrying out actions and providing information. A user is also able to create a group conversation and give queries. None of the steps require a computer. The claimed invention is merely an automation of a manual process.
The claims deal with interactions between users and customers (Para 0117 and
figure 1a and 1b) The claims also recite group conversations. The claims also teach tracking personal behavior of users and mitigating a risk (i.e. an attack) from occurring. (See para 0004 of Applicant’s Specification). These make the claims fall in the abstract idea grouping of certain
methods of organizing human activity (business relations, risk mitigation 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, AI, computer system, database, application programming interface, organizational systems, external systems, messaging application, social media, user interface, policy editor tool, system, physical device, operating system, virtual employee, external network, network device, machine, 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 how the responsible users are selected. In addition, the dependent claims further recite what the responsible decision relates to such as an event with multiple statuses. In addition, the dependent claims recite details about the event such as change in user account, change in data, change in configuration, etc.
Regarding step 2B the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because claims 73-96 recite the additional elements of
AI software, AI, computer system, database, application programming interface, organizational systems, external systems, messaging application, social media, user interface, policy editor tool, system, physical device, operating system, virtual employee, external network, network device, machine, virtual/physical cloud based machine, policy engine, user interface tool, and database.
When looking at these additional elements individually, the additional elements are purely functional and generic the Applicant specification states a general purpose computer in para 0124.
When looking at the additional elements in combination, the Applicant’s specification merely states a general purpose computer as seen in para 0124. 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 73-96 are rejected under 35 U.S.C. 101.
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 (Al)-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.
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/MUSTAFA IQBAL/Primary Examiner, Art Unit 3625
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