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 .
Double Patenting – Non-statutory
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-18 of Patent No. US12124327. Although the claims at issue are not identical, they are not patentably distinct from each other because claim(s) 1 is similar to claim(s) 1 of US12124327. Therefore the patent claim and the application claim would have been obvious.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims fall within at least one of the four categories of patent eligible subject matter. However, the claimed invention is directed to performing steps that fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind. An analysis of the claims regarding subject matter eligibility follows:
Step1: Claim(s) 1-20 recite an automated system, a method, and an automated incident resolution system, therefore satisfying Step 1 of the analysis.
Step 2A, Prong 1: Claim(s) 1, 9, 18 recite apply a machine learning model to determine a recommended action using the incident information and the information on previous incident information, update the machine learning model using at least one of the incident information, the recommended action, which, under their broadest reasonable interpretation, covers performance of the limitations entirely in the human mind and/or with the aid of pen and paper. Specifically, the steps of applying a machine learning model to determine a recommended action may be practically performed in the human mind using observation, evaluation, and judgement of the incident information and the information on previous incident information, the recommendation response, the recommended action. (MPEP 2106.04(a)(2), subsection Ill). For example, “apply” in the context of the claim(s) encompasses a user applying a machine learning model to determine a recommended action using the incident information and the information on previous incident information, “update” in the context of the claim(s) encompasses the user updating the machine learning model using at least one of the incident information, the recommended action.
Claim(s) 2-8, 10-17, 19-20 recite further limitations that fall under the judicial exception as recited in claim(s) 1, 9, 18. Each of the further limitations encompass performance of the steps within the human mind.
Step 2A, Prong 2: The additional elements recited in claim(s) 1, 9, 18, “processor” “memory” “database,” “a user interface,” “server,” “receive incident information from a monitoring system in communication with the digital processing system,“ “present the recommended action to the user via the user interface,” “receive a recommendation response,” “the automated resolution facilitation server is further configured to receive new action information about each of a plurality of actions taken in furtherance of resolving the incident, the new action information including a result of a previous action taken in response to a previous action recommendation;” do not integrate the judicial exception into a practical application. These limitations are directed to implementing the abstract idea using generic computer components (MPEP 2106.05(f)) and recite mere data gathering and outputting recited at a high level of generality, and thus are insignificant extra-solution activity (MPEP 2106.05(g)).
Claim(s) 2-8, 10-17, 19-20 recite further details regarding calculating a confidence level of actions, and storing all incident information and action information. These claims contain no additional elements which would integrate the abstract idea into a practical application.
Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the identified abstract idea.
Step 2B: Claim(s) 1, 9, 18 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed in Step 2A, Prong 2 above, the recitations of “processor” “memory” “database,” “a user interface,” “server,” “receive incident information from a monitoring system in communication with the digital processing system,” “present the recommended action to the user via the user interface,” “receive a recommendation response,” “the automated resolution facilitation server is further configured to receive new action information about each of a plurality of actions taken in furtherance of resolving the incident, the new action including a result of a previous action taken in response to a previous action recommendation;” are recited at a high level of generality. These elements amount to receiving or transmitting data using generic computers and are well-understood, routine, conventional activity (MPEP 2106.05(d), subsection II).
Regarding claim(s) 2-8, 10-17, 19-20, the additional elements are not sufficient to amount to significantly more than the judicial exception because they simply apply the exception using a generic computer.
Therefore, claim(s) 1-20 recite an abstract idea without significantly more, and are not patent eligible.
Response to Remarks
The amendments overcome the rejection under 101 software per se.
Applicant's Remarks have been fully considered but they are not persuasive.
Regarding the rejections under 101, the Remarks state, “the Specification states, "[w]hen an incident occurs in a highly complex enterprise environment technology system Specification at [0004]. The Specification goes on to inform that "[i]n enterprise scale technology systems dealing with vast numbers of data streams, there may be thousands of opportunities for service disruptions every hour."” The Remarks further state, “The Specification of the present application makes it clear that the systems and methods recited in the claims relate to addressing computer system failures by simulating responses within those systems. The problem addressed by this Application, therefore, relates specifically to an issue only existing within computer networks and systems.” However, the examiner respectfully disagrees. The claim does not provide the method for the improvement. The claim fails to recite details of how a solution to a problem is accomplished.
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 KATHERINE LIN whose telephone number is (571)431-0706. The examiner can normally be reached Monday-Friday; 8 a.m. - 5 p.m. EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bryce Bonzo can be reached at (571) 272-3655. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE LIN/ Primary Examiner, Art Unit 2113
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