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 .
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.
2. Claims 20-24 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to a computer program product which can be interpreted as transitory in nature with respect to lack of definition in the specification or claim language.
3. Claims 1-4, 7-14, 17-24
Claims 1-4,7-14, 17-24 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. The claims fall within at least one of the four categories of patent eligible subject matter. However, the claimed invention is directed to performing a mental process without significantly more.
The following is an analysis of the claims regarding subject matter eligibility in accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG):
Subject Matter Eligibility Analysis
Step 1: Do the Claims Specify a Statutory Category?
Claims 1-4, 7-10 describe a method/process, claims 11-14, 17-19 describe a system, and claims 20-24 describes a computer program product, therefore satisfying Step 1 of the analysis except for claims 20-24 (see above rejection).
Step 2 Analysis for Claims 1-10
Step 2A – Prong 1: Is a Judicial Exception Recited?
Claim 1 recites determining a defined defect category, obtaining current set metadata for the category wherein the metadata is learned from monitoring data set retrieval from an end system during a debugging process, providing a data set from an end system for use by a debugging tool, monitoring and maintaining a record of data access, and applying a learning process to update the metadata by removing content that has not been accessed for a predefined number of instances. The limitations describe processes that, under their broadest reasonable interpretation, covers performance of the limitations in the human mind but for the recitation of generic computer components (i.e., debugging tool and end system). That is, nothing in the claim elements preclude the steps from practically being performed in the mind. The limitations involve making determinations of categories can be performed by a human and recites a mental process. If a claim limitation, under its broadest reasonable interpretation, covers the practical performance of the limitation in the human mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. See the 2019 Revised Patent Subject Matter Eligibility Guidance.
The claim also recites mere data collection and contents of said data. An example of claims that recite mental processes cited in the October 2019 Update to the 2019 PEG includes “a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom, S.A.” Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. See MPEP 2106.04(a)(2)(III)(A, B, and C). The claim also recites a “learning” process without any detail of how this process is performed. In light of the lack of detail, the examiner interprets the learning as mere mental process with or without the aid of a generic, high-level, computer component as a tool. Accordingly, the claim recites an abstract idea.
The applicant has amended the claim to comprise monitoring and maintain a record of data access during operation of a debugging tool including access to the defined content and of the current data set metadata and access to additional content required by the debugging tool. The examiner interprets this as mere data collection using a generic debugging tool/software to collect the desired data as a computer system used by the user as tool for a mental process.
The applicant has also amended the claim to comprise applying a learning process to update the metadata by removing content has not been accessed for a predefined number of instances. The examiner again interprets this as merely using an off-the-shelf, generic AI program to achieve a mental process. There is nothing about the learning process that could not be achieved via mental process.
Claims 2-4, and 10 recite generating metadata, providing a core data set for classification, classifying the defect, comparing characteristics, and generating additional metadata. As rejected above, these limitations can be interpreted as mere mental processes.
Claim 7 recites monitoring data set access. As rejected above, these limitations can be interpreted as mere mental processes as well as mere data collection.
Claim 8 recites mere types of data being used.
Claim 9 recites a data log or a memory dump as a means for storing said data. Again, the computer components are recited at a high-level such as to merely performing a mental process on a generic computer or computer components.
Step 2A – Prong 2: Is the Judicial Exception Integrated into a Practical Application?
Claim 1 recites a computer-implemented method and a debugging tool. Even if the described methods are implemented on a computer, there is no indication that the combination of elements in the claim solves any particular technological problem other than merely taking advantage of the inherent advantages of using existing computer technology in its ordinary, off-the-shelf capacity to apply the identified judicial exceptions. This limitation can also be viewed as nothing more than an attempt to generally link the judicial exception to the technological environment of a computer (see MPEP 2106.05(h)).
Claim 1 further recites obtaining metadata from monitoring an end system and providing a data set from an end system. These limitations describe insignificant extra-solution activity pertaining to mere data gathering without providing any details regarding a specific problem being solved or specific remedial actions being taken. As such, these limitations do not integrate the abstract idea(s) into a practical application.
Claims 2-4, 7-10 contain no additional elements which would integrate the abstract idea(s) into a practical application. Accordingly, these 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(s).
Step 2B: Do the Claims Provide an Inventive Concept?
When evaluating whether the claims provide an inventive concept, the presence of any additional elements in the claims need to be considered to determine whether they add “significantly more” than the judicial exception.
In the instant case, as detailed in the analysis for Step 2A-Prong 2, claim 1 contains additional elements which require evaluation as to whether they provide an inventive concept to the identified abstract idea. The computer and end system recited in the claim describe a generic computer and/or computer components at a high level and do not represent “significantly more” than the judicial exception.
The limitations pertaining to data collection and determining of a defect category describe insignificant extra-solution activity and are written at a high level in a generic manner without providing any details regarding a specific problem being solved or specific remedial actions being taken. Therefore, these limitations recite no additional elements that would amount to significantly more than the abstract ideas defined in the claim.
Claims 2-4, 7-10 contain no additional elements which would integrate the abstract idea(s) into a practical application. Accordingly, these 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(s).
Step 2 Analysis for Claims 11-14, 17-19
Claims 11-14, 17-19 contain limitations for a system which are similar to the limitations for the methods specified in claims 1-4, 7-10, respectively. As such, the analysis under Step 2A – Prong 1, Step 2A – Prong 2, and Step 2B for claims 11-14, 17-19 is similar to that presented above for claims 1-4, 7-10.
In light of the above, the limitations in claims 11-14, 17-19 recite and are directed to an abstract idea and recite no additional elements that would amount to significantly more than the identified abstract ideas(s). Claims 11-14, 17-19 are therefore not patent eligible.
Step 2 Analysis for Claims 20-24
Claims 20-24 contain limitations for a computer program product which is similar to the limitations for the methods specified in claims 1-4, 8. As such, the analysis under Step 2A – Prong 1 and Step 2A – Prong 2 for claims 20-24 is similar to that presented above for claims 1-4, 8.
Step 2B: Do the Claims Provide an Inventive Concept?
When evaluating whether the claims provide an inventive concept, the presence of any additional elements in the claims need to be considered to determine whether they add “significantly more” than the judicial exception.
Claim 20 contains additional elements which require evaluation as to whether they provide an inventive concept to the identified abstract idea.
Claim 20 recites the additional element of a “one or more computer storage media”. The computer storage media cited in the claim describe generic computer components at a high level and do not represent “significantly more” than the identified judicial exception. The claimed limitations and does not represent “significantly more” than the identified judicial exception.
Response to Arguments
4. Applicant's arguments filed 3/3/26 have been fully considered but they are not fully persuasive.
With respect to the USC 102 and USC 112 rejections, the amended matter has overcome the rejections.
With respect the USC 101 rejections, the examiner maintains the both rejections.
The applicant has not amended claim 20 as to overcome the rejection in light of the computer program product which can be interpreted as transitory in nature with respect to lack of definition in the specification or claim language.
The applicant has amended and has argued the new language overcomes the rejection with respect to the claim describing an abstract idea. The examiner respectfully disagrees.
As stated in the rejection:
The applicant has amended the claim to comprise monitoring and maintain a record of data access during operation of a debugging tool including access to the defined content and of the current data set metadata and access to additional content required by the debugging tool. The examiner interprets this as mere data collection using a generic debugging tool/software to collect the desired data as a computer system used by the user as tool for a mental process.
The applicant has also amended the claim to comprise applying a learning process to update the metadata by removing content has not been accessed for a predefined number of instances. The examiner again interprets this as merely using an off-the-shelf, generic AI program to achieve a mental process. There is nothing about the learning process that could not be achieved via mental process.
The applicant argues the claim is directed to an improvement of a computer or a technical field, in light of the Specification. The examiner interprets the claim as not directed to the improvement of an actual computer, as no computer is transformed or improved in the claim and not to a technical field, in that, no field is even suggested other than “optimized data gathering” which is interpreted as an abstract idea. The claims need not to explicitly detail improvements, but must have the improvements reflected in the claims. Also, while the applicant may describe an improved mental process, but it is still a mental process using a computer and computing components as tools.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER S MCCARTHY whose telephone number is (571)272-3651. The examiner can normally be reached Monday-Friday 8:30-5:00.
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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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/CHRISTOPHER S MCCARTHY/Primary Examiner, Art Unit 2113
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