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 .
Applicant’s Reply
Applicant's response of 12/11/25 has been entered. The examiner will address applicant's remarks at the end of this office action. Currently claims 1-20 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The first paragraph of 35 U.S.C. § 112 contains a written description requirement that is separate and distinct from the enablement requirement. AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Vas-Cath, 935 F.2d at 1562-63; Ariad, 598 F.3d at 1351. The written description requirement of 35 U.S.C. 112, first paragraph applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit, "[a]lthough many original claims will satisfy the written description requirement, certain claims may not." Ariad, 598 F.3d at 1349; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343-46 (Fed.Cir. 2005); Regents of the University of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. See Ariad, 598 F.3d at 1350; Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement"). In addition, original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Ariad, 598 F.3d at 1349 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention's boundaries.") (citing Eli Lilly, 119 F.3d at 1568).
For claims 1, 8, 15, the claim recites that a stability score is generated and that is based on collected data that is monitoring data (broad language, can be any data) and monitoring data (broad language, can be any data). The claim recites that the stability score indicates the overall health of the enterprise technology ecosystem by a quantifiable measure. Upon a review of the specification for guidance on how the stability score is being generated based on collected data that is broadly recited as being logging data and monitoring data (so broad it can be any data), it is noted that nothing has been disclosed beyond the function itself of generating the stability score based on collected data. The specification does not explain how the stability score is being determined such that one of skill in the art would be able to conclude that the applicant was in possession of the claimed invention. The collected data is broadly recited such that the logging data can be any data and the monitoring data can be any data, they are not specific data that relates to network performance or system performance or something like that where the data is quantifiable and would represent system health. The extent of the disclosure to this limitation in the specification as originally filed is that the system can predict the stability across layers using the collected data by generating a stability score. This is just a disclosure to the function itself and is not disclosing how the applicant envisioned having this step be performed by the recited system. The disclosure amounts to a black box that is not setting forth how the applicant is going about and causing the claimed generating the stability score to occur. The claim recites the functional end result to be achieved where the specification does not disclose how that function is caused to occur, other than disclosing that it occurs. The specification does not provide an adequate written description of the invention that is sufficient to convey possession to one of skill in the art for this claimed limitation.
For claims 1, 8, 15, the claim recites that actionable tasks are generated based on the one or more dependencies. Upon a review of the specification for guidance on how this function is being performed, including by a processor, it is noted that nothing has been disclosed beyond the function itself of generating actionable tasks using an artificial intelligence model. The specification does not explain how the tasks are being generated based on the generated dependencies such that one of skill in the art would be able to conclude that the applicant was in possession of the claimed invention. The extent of the disclosure to this limitation in the specification as originally filed is that the system can generate actionable tasks based on determined dependencies for the collected data. The disclosure with respect to this limitation amounts to a black box that is not setting forth how the applicant is going about and causing the claimed function to occur of generating the actionable tasks based on the generated dependencies. The claim recites the functional end result to be achieved where the specification does not disclose how that function is caused to occur, other than disclosing that it occurs. The specification does not provide an adequate written description of the invention that is sufficient to convey possession to one of skill in the art for this claimed limitation.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a system, a non-transitory computer readable medium storing executable instructions, and a method. Claims 1-20 are found to pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of processing/analyzing data to recommend tasks be performed so as to optimize an enterprise technology ecosystem.
Using claim 1 as a representative example that is applicable to claims 8, 15, the abstract idea is defined by the elements of:
collect data for processes operating across one or more layers of an enterprise technology ecosystem, the data including logging and monitoring data corresponding to the processes;
identify relationships among the collected data
generate a stability score for the enterprise technology ecosystem based on the collected data, wherein the stability score indicates overall health of the enterprise technology ecosystem by a quantifiable measure;
predict imbalances within the enterprise technology ecosystem based on the relationships;
optimize the processes operating across the layers by:
identifying one or more dependencies in the collected data,
synthesizing the collected data to generate actionable tasks based on the one or more dependencies, and
updating
maintain operational equilibrium of the processes across all layers by recommending the actionable tasks to maintain the overall health of the enterprise technology ecosystem indicated by the stability score
The above limitations are reciting a process by which data about an organization is processed/analyzed to generate and make recommendations of actionable tasks that can be taken to result in operational equilibrium to maintain overall health (no action is taken in the claims, the claim only results in a recommendation being made). The processing/analyzing data to make recommendations on how to improve (optimize, make more efficient) an enterprise ecosystem is what defines the abstract idea. A human can perform the recited steps as they did with businesses and companies prior to the invention of computers. People are the ones that historically have analyzed company data to make recommendations on how to improve operations, etc.. The abstract idea is claiming a concept from the field of operational research, where organizational data is analyzed to improve operations by generating and making recommendations of actionable tasks that can be implemented. This is a commercial practice that is done by all businesses and amounts to claiming a certain method of organizing human activities.
For claim 1, the additional elements are the claimed computing system that has a processor and memory that stores executable instructions to perform the steps that define the abstract idea, the recitation to the use of artificial intelligence for the claimed identification of the relationships (that is part of the abstract idea), and the use of a generative AI model for the claimed synthesizing of the collected data to generate the actionable tasks (that is part of the abstract idea). The additional elements are the use of a computer and general links to the use of artificial intelligence.
Claim 8 recites the additional elements of a non-transitory computer readable medium that stores executable instructions to perform the steps that define the abstract idea and the use of artificial intelligence and a generative AI model.
Claim 15 recites the additional element that is the use of artificial intelligence and the use of a generative AI model. There is no system or processor or other device(s) that are part of the scope of method claim 15 other than by recitation to the use of artificial intelligence that requires a computer.
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing system with a processor and memory (computer readable medium) that uses artificial intelligence (recited at a high level of generality), both of which are merely being used as a tool to execute the abstract idea. The claimed elements to the computing system with a processor and memory and the use of artificial intelligence (for the identification of the relationships and for generating the actionable tasks, both of which are part of the abstract idea) amounts to a general link to a particular technological environment, see MPEP 2106.05(f),(h). The claim is simply instructing one to practice the abstract idea by using a generically recited computing system that uses artificial intelligence to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer that executes an artificial intelligence program, all being generically recited. This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination with the claim as a whole because they do not amount to more than simply instructing one to practice the abstract idea by using a computing system with a processor and memory (computer readable medium) that uses artificial intelligence (recited at a high level of generality), both of which are merely being used as a tool to execute the abstract idea, and which amount to a general link to a particular technological environment see MPEP 2106.05(f),(h). The comments made above for the 2nd prong are equally applicable for step 2B. The claimed computing system and use of artificial intelligence as recited in the claims does not amount to more than a mere instruction to implement the abstract idea on a computer that executes an artificial intelligence program, all being generically recited. This does not provide for significantly more than the abstract idea. Therefore, claims 1, 8, 15, are not found to be eligible.
For claims 2, 9, 16, the claimed of “trigger alerts to a planning and execution team when tasks are identified” is a further recitation to the same abstract idea that was found for claims 1, 8, 15. A human being can trigger an alert be sent out to a team of people to perform a task. This is reciting more about the abstract idea. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 3, 10, 17, the limitation reciting operating autonomously, taking proactive, reactive, and prescriptive actions to prevent issues and maintain equilibrium is claiming more about the abstract idea. People can operate autonomously to do what has been claimed. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 4, 11, 18, the incorporation of feedback into the actions taken, for use in subsequent cycles, is another recitation that is defining more about the abstract idea of the claims. People can receive feedback from others and use the feedback to assist in future decisions and actions. The applicant is claiming a further embellishment of the abstract idea. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 5, 12, 19, the generation of the dependency map in the claimed manner is considered to be reciting more about the abstract idea of claims 1, 8, 15. A person can make a dependency map using pen and paper. What is claimed is part of the abstract idea. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 6, 13, 20, the claimed interaction with a cloud, hybrid, or any device connected to other platforms is considered to be an additional element that is not part of the abstract idea; however, the claimed limitation is nothing more than a general link to using computers connected to by a network, such as the Internet to perform an interaction such as data communication. This is simply an instruction for one to use a networked computer that can interact with other devices. This is a general link to computer implementation and the use of a network for the abstract idea, and does not render the claims eligible. See MPEP 2106.05(f). The claimed additional elements do not r provide for integration at the 2nd prong and do not provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 7, 14, the integration with a management platform for agile project management is also considered to be part of the abstract idea. This limitation is broadly recited and is not expressly requiring anything specific other than integration with a platform, with the intended use being for agile project management. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
Therefore, for the above reasons, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Response to arguments
For the 112a rejection, the traversal is not persuasive to show that the claimed invention does have a showing of possession in the specification as originally filed. The applicant argues that the generation of the stability score is supported by the specification in paragraphs 67, 68, 35. This is not persuasive. The examiner has re-read the entire specification and the disclosure is not specific on the data that is being collected and how it is used to generate the stability score. The disclosure is more of a general disclosure to the general concept of collecting data for an enterprise and using the data to generate a stability score that indicates the overall health of the enterprise technology system. Nothing is specifically disclosed about the collected data and how it represents the health of the enterprise system and how that data is used to generate the stability score. The specification is very broad in this regard as far as it is teaching the collection of data in a general sense with no specificity on the type of data and how it represents system health and does no more than to teach the use of the claimed data to generate a stability score in any and all manners. The specification does not teach a single manner by which the applicant is generating the stability score. The applicant argues that the stability score represents a quantifiable metric that the system determines when imbalances exist; however, the specification does not disclose anything that quantifies how the stability score is generated. The argument is not persuasive.
With respect to the claimed generation of the tasks, the applicant argues that the specification discloses that a generative AI model is used to synthesize the collected data to generate actionable tasks. The applicant argues that the specification teaches the generation of recommendations for actions is done based on the dependencies with the applicant citing to paragraphs 069, 037, 025, and 028. Paragraph 069 does not disclose anything about how the recommended actionable tasks are being generated other than the fact that an AI model is being used and that the stability prediction and scoring is used. Paragraphs 025, 028, and 037, also do not disclose anything about how the generation of the recommended actionable tasks is to occur, other than the fact that the overall function is being performed. Nothing is disclosed about how the system goes about and generates actionable tasks that can be recommended to be undertaken. All that is disclosed is that the system can use an AI model to analyze the predicted stability or the stability score to generate actional tasks to be recommended. This is just claiming the functional end result to be achieved, not any particular manner by which the applicant contemplated the claimed function to be performed. The applicant argues that the mechanism by which the tasks are generated is through generative AI models that synthesize information to generate resolution recommendations and action plans based on identified dependencies. This argument is more than a statement of the functional end result to be achieved, not how it is being accomplished such that one could conclude that the applicant was in possession of the claimed invention. The argument is not persuasive.
The 112b rejection has been withdrawn in view of the amendment to the claims that has rendered the rejection moot.
The 35 USC 101 rejection of claim 8 for not reciting statutory subject matter at step 1 of the eligibility analysis has been overcome by the amendment to the claim that is reciting a “non-transitory” computer readable medium.
The traversal of the 35 USC 101 rejection is not persuasive with respect to the claims being directed to an abstract idea without significantly more. The rejection is being maintained in view of the amended claims as is set forth in this office action.
The applicant argues that the claims are directed to an improvement in computer technology that is improving the functioning of computer systems. This is not persuasive because the claims do not result in technology or a computer system being improved. The claimed invention result in actionable tasks being recommended. The claim defines the maintaining of operational equilibrium of the processes across all layers as being done by recommending actionable tasks, that could be undertaken to maintain the overall health of the enterprise technology ecosystem. The making of a recommendation without more is not providing for any improvement at all to anything. If the recommendation and the actionable tasks are not implemented then there is nothing that is being improved. Also, the claimed invention is broadly recited such that the claims are not directed at a specific technological problem that is providing equilibrium for a technology ecosystem in any particular manner such that even if one were to claim implementing the recommended tasks, it amounts to a general idea and is not solving a specific problem in the technology ecosystem realm with a specific solution. The claimed invention is just making recommendations on what could be done to maintain overall health of a technology ecosystem, but nothing by way of technology is being improved by the claimed invention. The argument is not persuasive.
The citation to Ex Parte Desjardins is noted but is not persuasive to show that the claims are eligible. Other than citing to the decision for the premise that a claimed invention can be eligible if it serves to improve technology, the decision is not relevant to anything claimed because the claims do not recite anything specific about the use of machine learning or training of a machine learning model, as was the case in Desjardins. The features argued as providing for an improvement to technology are those that define the abstract idea, and as already addressed, the result of the claim does not serve to improve technology. The applicant is more or less arguing that because the system is analyzing data in the claimed manner to determine actionable tasks (that can be anything) and that can be recommended to improve a system, it is eligible. This is not persuasive because technology is not being improved by the claimed invention. The use of artificial intelligence in the claims is broadly recited and is nothing more than a general link to the field of machine learning. There is nothing claimed that represents more than a general link to machine learning where the result of the claim does not improve technology. Even if there is an improvement in the claimed steps, the improvement lies in the abstract idea itself and not in an improvement to technology. The argument is not persuasive.
With respect to the maintaining of equilibrium that the applicant argues is also an improvement to technology, the examiner notes that the claim itself defines the maintaining of operational equilibrium of the processes across all layers is as being accomplished by recommending actionable tasks, that could be undertaken to maintain the overall health of the enterprise technology ecosystem. The making of a recommendation without more is not providing for any improvement to anything. There is no equilibrium for a technology ecosystem that is being maintained by the claimed invention other than by simply providing a recommendation for actionable tasks, that can be anything at all. One of ordinary skill in the art would understand that the claimed invention is not improving technology contrary to what has been argued. The argument is not persuasive.
On pages 15-16 of the reply the applicant argues that the claims are eligible at step 2B. The applicant more or less repeats the claimed invention and alleges that the claims are improving technology. As already addressed by the examiner, technology is not being improved by the claimed invention. The applicant argues that the claims recite logging and monitoring data and argues that the specification teaches the data as being training data from Jira or Jira Align and other planning management tools. This is not persuasive and does not appear to be commensurate with the scope of the claims. The applicant is arguing that logging and monitoring data itself makes the claim eligible. This is not persuasive because the data being argued is part of the abstract idea, not an additional element that amounts to reciting significantly more with the claim as a whole.
With respect to the argument that the examiner has not provided factual support for the claimed invention being well understood, routine, and conventional, the examiner notes that no such requirement exists in the eligibility guidance. The examiner has not taken the position that anything is well understood, routine, or conventional at step 2B because nothing has been found to be an insignificant extra solution activity at the 2nd prong. Examiners do not have to prove that a claimed invention was well understood, routine, and conventional in a given field to find that the claims are not eligible. To do so would be injecting a prior art analysis into the eligibility inquiry. Something that is well understood, routine, and conventional is more than just known in the art, it means that something is more or less ubiquitous in a given field. There is no requirement that an examiner prove with evidence that a claimed invention is so well known in a given field that it rises to the level of being well understood, routine, and conventional. The rejection of record does not find anything to be an insignificant extra solution activity at the 2nd prong so there is nothing to reassess at step 2B with respect to the issue of being well understood, routine, and conventional (the Berkheimer memo). The argument is not persuasive.
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 DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/Primary Examiner, Art Unit 3626