DETAILED ACTION
This Office action is in response to Applicant's amendment and request for
reconsideration filed on May 07, 2026.
Response to Arguments
Applicant's amendments overcome the previous rejections under 35 U.S.C. §112 and §103.
With respect to the previous rejections under 35 U.S.C. §101, Applicant’s arguments have been fully considered, but they are not persuasive.
First, with regard to Applicant’s representative’s characterization of the Examiner’s intent and focus:
see pp. 17 of Applicant’s remarks, “At the end of the day, the reader of this paper will appreciate that the Examiner wants, e.g., the public to believe that the abstract idea exception applied to claims of this application merely because the Examiner said as much”; and
see pp. 16 (footnote), “In this regard, it is requested that the Examiner respect the Applicant's time (and dollars) and stop losing focus in respect of the examination of this application”,
Applicant’s representative, Mark Wilinski, Reg. No. 63,230, is reminded of CFR 1.3, regarding discourtesy of Applicant or Attorney:
Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.
With that said, the reader of this paper will appreciate that the Examiner has no intention to mislead the public, but is simply following applicable patent examining guidance. Furthermore, the reader of this paper will appreciate that the Examiner is focused on ensuring Applicant’s invention meet all legal standards to be granted a patent.
Secondly, with regard to Applicant’s alleged practical application (see pp. 12 of Applicant’s argument, i.e., “claim 1 effectively bridges two completely different types of risks in respect of the (first, second, and third-related) data – namely, a (first) risk in respect of a communication service provided in a communications network and a (second) risk in respect of fire, flash flooding, or a tornado”), assessing or determining risk per se does not improve a communication network/services. In other words, assessing/determining risk by itself does not add a practical application within the meaning of Prong Two of the Alice/Mayo test (see MPEP §2106.04).
As opposed to Enfish and/or Desjardins, which are examples of cases in which the inventions were found to provide a practical application, Applicant’s claimed invention is similar to that of Electric Power Group, i.e., "collecting information, analyzing it, and displaying certain results of the collection and analysis" (see MPEP §2106.04(a)), in that Applicant’s claimed invention performs a series of processing steps, and displays/reports the result, i.e., “sending the report or the message to a communication device associated with personnel of the communications network … the sending of the report or the message directing the personnel to an area or region associated with the at least one risk for rerouting first communication services from a first path to a second path to reduce the risk”. Although the generated report is intended “…for rerouting first communication services from a first path to a second path to reduce the risk”, the independent claims do not actually require any further tangible action on the communication network/services to provide such an improvement.
With respect to Applicant’s further arguments, see pp. 13: “The current rejection of February 10, 2026, continues with this same, erroneous approach. Even under the broadest reasonable interpretation (BRI), the Examiner appreciates that the independent claims are directed to significantly more than "Mental Processes", as fairly indicated by the section 102/103 treatment of the claims over the course of the prosecution history (and the various Office Actions associated therewith).”
Respectfully, it appears the “erroneous approach” Applicant is referencing, is also known as the Alice/Mayo two-part test, modified by the 2019 Patent Eligibility Guidance (“2019 PEG”), which is firmly rooted in Supreme Court case law, and the only test that is used to evaluate the eligibility of claims for patent-eligible subject matter (see MPEP §2106), which the Examiner must follow.
Secondly, Applicant appears to be confused with patentability under §102/103 and the requirement for “significantly more” under §101 (see pp. 13 of Applicant’s remarks). As the Supreme Court and Federal Circuit have already established, see MPEP§2106.05(h), “Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination.” In other words, an abstract idea that meets the requirements of novelty and non-obviousness, under 35 U.S.C. §102 and §103, as is the case here, is nevertheless an abstract idea and thus patent ineligible under 35 U.S.C. §101.
With regard to Applicant’s further argument “The only logical conclusion that can be reached based on the Examiner's response (or lack thereof) is that the Examiner believes that the MPEP supersedes the jurisprudence of the United States Supreme Court” (see pp. 16 of Applicant’s remarks). As the reader of this paper is no doubt aware the MPEP distills the relevant case law to aid in examination, thus the most “logical conclusion” is the Examiner is citing the MPEP as a convenience, with full knowledge that the MPEP is firmly rooted in Supreme Court precedent (e.g., Mayo, Alice, Diehr, etc.) as well as Federal Circuit decisions (e.g., Enfish, Electric Power Group, etc.).
In addition, Applicant appears to read Henry Schein and Bostock as overturning the Supreme Court’s precedential decisions in Mayo and Alice (see pp. 16, i.e., “As discussed at pages 15- 17 of the paper filed January 8, 2026, the United States Supreme Court decision in Henry Schein (in view of Bostock) stands for the proposition that Courts lack the power to rewrite statutes to say something that they do not”). However, neither Henry Schein or Bostock considered patent eligibility standards. Thus, Mayo and Alice are still controlling with respect to the application of 35 U.S.C. §101.
Finally, with regard to Applicant’s further arguments regarding Congressional intent (see pp. 17-18), the requirements for patent-eligible subject matter under 35 U.S.C. §101 are clearly set forth in MPEP §2106, which the Examiner must follow. Following appeal, the Applicant is welcome to seek judicial review (see MPEP §1216) to challenge the legality of the Alice/Mayo two-part test.
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 1-5, 7-19 and 22-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
As per claim 1, Applicant’s claimed invention falls under the “Mental Processes” subject matter grouping of abstract ideas in the 2019 Revised Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Dep’t of Commerce Jan. 07, 2019) (“2019 PEG”) as, but for the recitation of generic computer components (i.e., “a processing system including a processor; and a memory that stores executable instructions that, when executing by the processing system, facilitate performance of operations”), the claimed invention could otherwise be performed in the human mind, or by a human using pen and paper (See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’; and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of ‘‘computer’’ or ‘‘computer readable medium’’ does not make a claim otherwise directed to process that ‘‘can be performed in the human mind, or by a human using a pen and paper’’ patent eligible)). The limitations that are directed to the judicial exception (i.e., mental process) are:
obtaining first data of resources of a communications network;
obtaining second data of: mobility, power, streaming data, transport, access, administration, or any combination thereof;
obtaining risk-related data, the risk-related data including: engineered risks, weather-based risks, environmental risks, weather, sporting events, concerts, political activities, key performance indicator (KPI) related degradations, power failures, and equipment failures;
processing the first data and the second data to generate a representation of at least one risk in respect of a communication service provided in the communications network …;
identifying a resource that is available to reduce the at least one risk from a first level to a second level, resulting in a first identification;
identifying an area where investment is appropriate to reduce the at least one risk from the first level to the second level in accordance with a count of subscribers impacted, a geographical region of coverage, and a criticality of service, resulting in a second identification: identifying an order of priority to recover from a plurality of outages, resulting in a third identification;
causing, based on the first identification, the second identification, and the third identification, an action to be undertaken to reduce the at least one risk from the first level to the second level, wherein the action includes generating a report or a message that captures the representation;
sending the report or the message …
the sending of the report or the message directing the personnel to an area or region associated with the at least one risk for rerouting first communication services from a first path to a second path to reduce the risk.
Moreover, there are no additional claim limitations, either alone or in combination, that integrate the abstract idea into a practical application or add significantly more to the judicial exception. As noted above, the generic computer components (i.e., “a processing system including a processor; and a memory that stores executable instructions that, when executing by the processing system, facilitate performance of operations”) do not add a practical application or significantly more to the judicial exception (see MPEP §2106.05(f)). Moreover, the use of “a communication device”, within the further limitation of “sending the report or the message to a communication device associated with personnel of the communications network…”, written at a high-level of generality, represents insignificant extra-solution activity, e.g., data outputting (see MPEP §2106.05(g)), and thus fails to add a practical application. Moreover, the step of “sending the report to a communication device” represents well-understood routine, and conventional activity (e.g., email or text message) and thus, even in combination with the generic computer components (i.e., “processing system including a processor”), does not add significantly more to the abstract idea.
Finally, the use of artificial intelligence in the claim, i.e., “wherein the processing is based on a use of machine learning, artificial intelligence, or a combination thereof” and “utilizing the first data, the second data, and the risk-related data to train a model that is used to assess a risk in respect of a fire, flash flooding, or a tornado”, without placing any limits on how the “machine learning” and/or “artificial intelligence” functions, or otherwise limit how the AI model utilizes, or is trained to utilize, “…the first data, the second data, and the risk-related data” to “assess a risk in respect of a fire, flash flooding, or a tornado”, fails to integrate the abstract idea into a practical application or add significantly more to the judicial exception.
Similar to claim 2 of example 47 of the July 2024 Subject Matter Eligibility Examples, and unlike Desjardins, the claim does not reflect a technological improvement to the operation of the machine-learning/AI model itself, but rather uses artificial intelligence, similar to a generic computer, to merely execute the abstract idea (see MPEP §2106.05(f)) and/or merely indicates a field of use or technological environment in which the judicial exception is performed (see MPEP §2106.05(h))(see also “2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence” 89 Fed. Reg. 58128 (July 17, 2024). Thus, even when considered in combination with the claims as a whole, the additional elements amount to no more than insignificant extra-solution activity (i.e., “mere instructions to apply the exception using a generic computer component”), which cannot provide an inventive concept. As such, claim 1 is rejected under 35 U.S.C. §101, as being directed to non-statutory subject matter.
Claim 2, similar to claim 1, recites further limitations directed to the judicial exception (i.e., mental process) that could be performed in the human mind, and/or using pen and paper, without reciting any additional elements that integrate the abstract idea into a practical application or add significantly more to the judicial exception.
As per claim 3, similar to claim 1, the additional limitation of “sending the modified report or the modified message to the communication device, a second communication device, or a combination thereof” written at a high-level of generality, represents necessary data gathering and outputting (see MPEP §2106.05(g)) which does not add a practical application or significantly more to the abstract idea.
As per claims 4-5, 7, and 8, similar to claim 1, the claimed limitations could otherwise be performed in the human mind, and/or using pen and paper. As such, similar to claim 1, claims 4-5, 7, and 8 are directed to the abstract idea/mental process category of abstract ideas, enumerated by the 2019 PEG. Moreover, there are no additional limitations that add a practical application and/or significantly more to the judicial exception. As such, claims 4-5, 7, and 8 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter.
As per claim 9, the limitation “determining that the at least one risk exceeds a threshold” could otherwise be performed in the human mind. Additionally, similar to claim 1, the additional limitation “based on the determining that the at least one risk exceeds a threshold, transmitting the report or the message to a second communication device”, written at a high-level of generality, represents necessary data outputting to generic computer components (e.g., second communication device) (see MPEP §2106.05(g)) which does not add a practical application or significantly more to the judicial exception.
As per claim 10, similar to claim 1, the additional limitation “wherein the threshold is specified by a first user of the communication device or a second user of the second communication device”, written at a high-level of generality, represents necessary data gathering and outputting (see MPEP §2106.05(g)) and does not add a practical application or significantly more to the judicial exception
As per claims 11-12, similar to claim 1, the claimed limitations could otherwise be performed in the human mind, and/or using pen and paper. As such, similar to claim 1, claims 11-12 are directed to the abstract idea/mental process category of abstract ideas, enumerated by the 2019 PEG. Moreover, there are no additional limitations that add a practical application and/or significantly more. As such, claims 11-12 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter.
As per claims 13-14, the further limitations of “modifying a parameter of a second communication device from a first value to a second value…”, and “modifying a parameter of a third communication device from the first value to a third value…”, written at a high-level of generality, simply serves to link the judicial exception to a particular technological environment (see MPEP §2106.05(h)) without reciting a practical application or significantly more than the judicial exception.
Claims 15-19 recite limitations that are substantially similar to those recited in claims 1-5 and 7-14 and are thus rejected under 35 U.S.C. 101 for the same reasons as noted above.
With respect to claims 22-23, the further “determining” limitations could otherwise be performed in the human mind, and/or using pen and paper. As such, similar to claim 1, claims 22-23 are directed to the abstract idea/mental process category of abstract ideas, enumerated by the 2019 PEG. Moreover, there are no additional limitations that add a practical application and/or significantly more to the judicial exception. As such, claims 22-23 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter.
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.
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/BRENDAN Y HIGA/Primary Examiner, Art Unit 2441
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