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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 14, 2026 has been entered.
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 1-3, 6-11, 14-18, and 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.
Independent claims 1, 8, and 16 recite “the generating comprising binding each of the plurality of nodes to a respective element of a plurality of elements in a declarative knowledge base.” The only description of binding nodes in a declarative knowledge base comes from paragraph 39, which describes in vague language that the declarative knowledge base can carry this out using any kind of interface of service needed, that a runtime interpreter that knows how to do this can be used, and that there can be specific directional instructions. However, this does not provide a level of detail that would allow one of ordinary skill in the art to make or use the invention. Searches in the prior art have not returned any results for binding nodes to elements in a declarative knowledge base, such that this type of functionality would not be understood by one of ordinary skill in the art. Therefore, without some explanation of the products or algorithms needed to carry out the binding of nodes to elements in a declarative knowledge base, this limitation lacks written description support in the specification.
The dependent claims are further rejected based on their dependency from the rejected independent claims.
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 1-4, 6-11, 14-18, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
At step 1, claim 1 is directed to a system, claim 8 is directed to a method, and claim 16 is directed to a non-transitory medium. Each claim is directed to a statutory category.
At step 2A prong I, claim 1 (exemplary) recites a judicial exception. The limitations of claim 1 that recite the judicial exception are:
generating a decision tree comprising a plurality of nodes, the generating comprising binding each of the plurality of nodes to a respective element of a plurality of elements in a declarative knowledge base;
displaying the decision tree;
receiving a first selection of a first node, the first selection related to an employment inquiry;
receiving a second selection of a second node, the second selection relating to a geographical preference associated with the employment inquiry;
dynamically modifying the decision tree such that the plurality of nodes is limited to a subset of one or more nodes related to the employment inquiry and the geographical preference, the dynamically modifying comprising removing nodes outside of the subset of nodes;
receiving a third selection of a preferred node of the subset of nodes;
dynamically modifying the decision tree such that the decision tree is limited to the preferred node and a corresponding at least one branch, the dynamically modifying comprising removing nodes outside of the preferred node at the corresponding at least one branch; and
displaying the modified decision tree limited to the preferred node and the corresponding at least one branch, the displaying comprising retrieving data bound to the preferred node from the declarative knowledge base.
These limitations constitute a Mental Process. A person could easily draw a decision tree, receive information, and modify the tree accordingly. Additionally, these limitations fall into the grouping of Certain Methods of Organizing Human Activity, as they pertain to fundamental economic principles or practices, specifically commercial or legal interactions, managing personal behavior, and following rules or instructions.
At step 2A prong II, the additional elements are: one or more processors, via a graphical user interface, and a non-transitory computer-readable medium. These are generic computer components recited at a high level of generality, such that they amount to no more than using the words "apply it." These elements do not serve to integrate the abstract idea into a practical application.
At step 2B, the additional elements are analyzed, both individually and in combination, to determine if the claim as a whole amounts to significantly more than the judicial exception. The processors, computer readable medium, and graphical user interface, as discussed above, are generic computer components recited at a high level of generality, such that they amount to no more than using the words "apply it." They do not, individually or in combination, serve to take the abstract idea beyond the judicial exception.
Therefore, claims 1, 8, and 16 are ineligible.
When analyzing the dependent claims, claim 20 does not include additional elements but only further limits the abstract idea, and so is also ineligible. Claims 2, 3, 6, 7, 9-11, 14, 15, 17, and 18 contain additional elements. Claims 2, 7, 9, 15, 17 discloses a declarative knowledge base, claim 3, 7, 10, 11, 18 discloses a declarative application programming interface, claim 6, 14 discloses a dynamic dashboard. Each of these are generic computer components recited at a high level of generality, such that they amount to no more than using the words "apply it." As above, they do not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception. Dependent claims 2, 3, 6, 7, 9-11, 14, 15, 17, 18, and 20 are ineligible as well.
Response to Arguments
Applicant's arguments filed May 14, 2026 have been fully considered but they are not persuasive. Applicant argues that the claims solve two technical problems, that it is difficult to maintain and update workflow data, and that workflow configurations are inflexible. However, mere automation of a workflow is not a technical solution to a technical problem, as a workflow is generally an abstract process, and automation only involves using a computer to carry out the basic computing function of automating a manual process. The limitation of binding nodes to elements in a declarative knowledge base is part of the abstract idea, and further is not described in the specification in a way to suggest a technical improvement to a technical problem (see 112(a) rejection). If applicant contends that the node binding and declarative knowledge base are improvements to software that improve computer functioning, this should be reflected in the specification, as emphasized by Desjardins. Further, without such description, it is not clear that this cannot be done within the human mind. Paragraph 39 discusses prompting a user when there is missing data or to start workflows, which suggests that some of this activity would be done by a human, as part of a mental process. Therefore, the 101 rejection is maintained.
The 103 rejection is withdrawn based on the amended limitations and the 112(a) rejection above. If the 112(a) issue is resolved, a future art rejection may be made.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Salonidis (US 2021/0065048) teaches hiding non-selected nodes while displaying selected nodes in a decision tree (see paragraph 98).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ILANA L SPAR whose telephone number is (571)270-7537. The examiner can normally be reached 8-4 M-F.
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/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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