Detailed Action
This action is in response to RCE filed on 03/02/2026.
This is in response to application filed on 06/01/2024. This application is continuation of application no. 16569295 (now US patent no. 12002123 B2) filed on 09/12/2019.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-18 are pending.
Claims 1-18 are rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/02/2026 has been entered.
Applicant's Response
In Applicant's Response dated 03/02/2026, Applicant amended claims 1, 7, and 13, and submitted Affidavit under rule 132. Applicant argued against various rejections previously set forth in the Office Action mailed 10/07/2025
In light of Applicant' s amendments and remarks, all objections and 112 rejections to the claims set forth previously are withdrawn.
Specification
The use of the term “Google” (specification, paragraphs 0015-0016), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 is rejected under 35 U.S.C. 101 as being directed to abstract idea without significantly more.
Representative claim 1 is directed to a system for generating Freedom of Information Act (FOIA) requests, comprising:
a law enforcement server comprising hardware circuitry and memory, the law enforcement server configured to:
store digital information relating to an individual in a law enforcement database;
retrieve the stored digital information from the law enforcement database;
generate a first signal comprising the retrieved digital information; and
transmit the first signal over a communications network;
a FOIA request server comprising hardware circuitry and memory, the FOIA request server being distinct from the law enforcement server and coupled to the law enforcement server over the communications network, the FOIA request server configured to:
receive the first signal from the law enforcement server;
receive the digital information contained in the first signal;
analyze the digital information to determine whether at least a predetermined percentage of relevant information fields are present, the relevant information fields including at least one of height, weight, race, gender, charge, case file, tax record, eye color, hair color, date of birth, and a picture of a face associated with the individual;
store the digital information in a FOIA request database if the predetermined percentage of relevant information fields is met;
trigger generation of a FOIA request using the digital information;
request missing information if the predetermined percentage of relevant information fields is not met;
automatically determine, based on the digital information, a governmental authority associated with missing information; and
automatically transmit the FOIA request over the communications network to a FOIA request processing server associated with the determined governmental authority;
a FOIA request processing server comprising hardware circuitry and memory, the FOIA request processing server being distinct from the law enforcement server and the FOIA request server, and coupled to the FOIA request server over the communications network, the FOIA request processing server configured to:
receive the FOIA request from the FOIA request server; and
process the FOIA request.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely,
Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper (see, October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55,942, hereinafter “PEG”).
Certain Methods Of Organizing Human Activity, fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
For instance, humans can mentally and/or via aid of pen/paper perform various human activities/steps for generating Freedom of Information Act (FOIA) requests, comprising mentally analyze the digital information to determine whether at least a predetermined percentage of relevant information fields are present, the relevant information fields including at least one of height, weight, race, gender, charge, case file, tax record, eye color, hair color, date of birth, and a picture of a face associated with the individual; mentally and/or via pen paper trigger generation of a FOIA request using the digital information; mentally determine, based on the digital information, a governmental authority associated with missing information; and mentally and/or via pen paper process the FOIA request.
Per prong 2, Step 2A, the additional non-emphasized elements as noted above, are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception; are merely adding words “apply it” (or an equivalent) with the judicial exception/mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(f, g, h). For instance,
“a law enforcement server comprising hardware circuitry and memory, the law enforcement server configured to: store digital information relating to an individual in a law enforcement database; retrieve the stored digital information from the law enforcement database; generate a first signal comprising the retrieved digital information; and transmit the first signal over a communications network” are merely data gathering steps/ adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g).
“a FOIA request server comprising hardware circuitry and memory, the FOIA request server being distinct from the law enforcement server and coupled to the law enforcement server over the communications network, the FOIA request server configured to: receive the first signal from the law enforcement server; receive the digital information contained in the first signal… store the digital information in a FOIA request database if the predetermined percentage of relevant information fields is met; request missing information if the predetermined percentage of relevant information fields is not met… automatically transmit the FOIA request over the communications network to a FOIA request processing server associated with the determined governmental authority” are merely data gathering steps/ adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g).
“a FOIA request processing server comprising hardware circuitry and memory, the FOIA request processing server being distinct from the law enforcement server and the FOIA request server, and coupled to the FOIA request server over the communications network, the FOIA request processing server configured to: receive the FOIA request from the FOIA request server” are merely data gathering steps/ adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g).
“process the FOIA request” if considered additional element, is merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f).
Additionally, the recited claim limitations do not improve the functionality of the electronic device or achieve improved technical results.
Per Step 2B, the additional non-emphasized elements as noted above, are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception; are merely adding words “apply it” (or an equivalent) with the judicial exception/mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; Generally linking the use of the judicial exception to a particular technological environment or field of use, or simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - and Berkheimer Memo see MPEP 2106.05(d, f, g, h). For instance,
“a law enforcement server comprising hardware circuitry and memory, the law enforcement server configured to: store digital information relating to an individual in a law enforcement database; retrieve the stored digital information from the law enforcement database; generate a first signal comprising the retrieved digital information; and transmit the first signal over a communications network” are merely data gathering steps/ adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g); adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) and/or simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d).
“a FOIA request server comprising hardware circuitry and memory, the FOIA request server being distinct from the law enforcement server and coupled to the law enforcement server over the communications network, the FOIA request server configured to: receive the first signal from the law enforcement server; receive the digital information contained in the first signal. store the digital information in a FOIA request database if the predetermined percentage of relevant information fields is met; request missing information if the predetermined percentage of relevant information fields is not met… automatically transmit the FOIA request over the communications network to a FOIA request processing server associated with the determined governmental authority” are merely data gathering steps/ adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g); adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) and/or simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d).
“a FOIA request processing server comprising hardware circuitry and memory, the FOIA request processing server being distinct from the law enforcement server and the FOIA request server, and coupled to the FOIA request server over the communications network, the FOIA request processing server configured to: receive the FOIA request from the FOIA request server” are merely data gathering steps/ adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g); adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) and/or simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d).
“process the FOIA request” if considered as additional element, is merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f).
Additionally, the recited claim limitations do not improve the functionality of the electronic device or achieve improved technical results. Accordingly, the above limitations singularly or in combination do not result in the claim as a whole amounting to significantly more than the judicial exception.
Accordingly, claim 1 is rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Independent claims 7, and 13 method and medium claims corresponding to system claim 1 and are of substantially same scope.
Accordingly, claims 7, and 13 is rejected under the same rational as set forth for claim 1.
Dependent claims 2-6, 8-12, and 14-18, when considered individually or in combination per steps as noted above are rejected under the same rational as set forth above for claims 1, 7, and 13. In particular,
As per claim 2, the rejection of claim 1 further incorporated, further recites wherein the predetermined percentage of relevant information fields is at least 40%.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 3, the rejection of claim 1 further incorporated, further recites wherein the hardware circuitry of the FOIA request server is further configured to validate the received digital information relating to the individual before storing it in the FOIA request database.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 4, the rejection of claim 1 further incorporated, further recites wherein the hardware circuitry of the FOIA request server is further configured to receive data from the FOIA request processing server in response to the FOIA request, analyze the received data to identify missing information fields, and generate and transmit additional FOIA requests to obtain the missing information fields.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 5, the rejection of claim 1 further incorporated, further recites wherein the law enforcement server is further configured to: validate the digital information relating to the individual before transmission to the FOIA request server.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 6, the rejection of claim 1 further incorporated, further recites wherein the FOIA request processing server is further configured to notify the FOIA request server upon completion of processing the FOIA request, and store processed FOIA requests and corresponding responses in a searchable database.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 7, the rejection of claim 6 further incorporated, further recites
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 8, the rejection of claim 1 further incorporated, further recites.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 9, the rejection of claim 1 further incorporated, further recites.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 10, the rejection of claim 1 further incorporated, further recites.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claims 9-12, and 14-18:
Claims 9-12, and 14-18 are method and medium claims corresponding system claims 2-6, and are of substantially same scope.
Accordingly, claims 9-12, and 14-18 are rejected under the same rational as set forth for claims 2-6.
Accordingly, claims 1-18 are rejected under 35 U.S.C. 101 as being directed to abstract idea.
Allowable Subject Matter
Claims 1-18 would be allowable if rewritten to overcome above noted rejections. Reasons for allowance well held abeyance until all matters in the prosecution are closed.
Response to Arguments
Applicant’s arguments filed on 03/02/2026 have been fully considered but they are not persuasive and/or moot in view of new/modified grounds/rational of rejections.
Applicant argues that the claim invention reflects improvements in computer-implemented workflow and is eligible under 35 U.S.C 101 in view USPTO example 48 and submission of affidavit under rule 132.
The examiner disagrees.
Firstly, the improvements as argued is directed the improvements of abstract idea itself. The alleged “improvements” do not improve the functionality of the electronic device (e.g. faster processor, memory/resource optimization etc.) or achieve improved technical results.
Secondly, example 48 (claim 2) was eligible in view detailed specification indicating improvements that provided a technical solution to a technical problem; however, the instant claimed invention in view of instant specification, provides no such improvement.
Thirdly, the affidavit under rule 132 does not sufficiently tie or show improvements to computing device/technical field and/or technical solution to technical problem.
Accordingly, applicant’s arguments are not persuasive and/or moot in view of modified grounds/rational of rejections.
All other arguments depend on arguments addressed above.
The examiner disagrees as noted above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
See form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUSTAFA A AMIN whose telephone number is (571)270-3181. The examiner can normally be reached on Monday-Friday from 8:00 AM to 5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Young, can be reached on 571-270-3180. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MUSTAFA A AMIN/ Primary Examiner, Art Unit 2194
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