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 1-4, 7, 9-14, 17-23
Claims 1-4,7, 9-14, 17-23 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, 9-10 describe a method/process, claims 11-14, 17-19 describe a system, and claims 20-23 describes a computer program product, therefore satisfying Step 1 of the analysis.
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 previously 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 also previously 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 has presently amended to include generating a heat map comprising of data elements with a highest usage rate using an algorithm and, wherein, the heat map can be adjusted. The examiner contends that this is more data collection and generating a mapping using the collected data and can be achieved via a mental process on paper or on a computer as a tool.
The applicant has further amended the claim wherein there is an initial data set and, using statistical learning or machine learning, generating an optimal set. Again, the examiner contends this can be achieved via a mental process, at most, using a generic AI model to calculate the optimal set from the original set.
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 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.
The applicant has also amended the claims, as discussed above, and has argued the amendment is now directed to a practical application. The examiner contends that the new amendments are still 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, 9-10 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, 9-10 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, 9-10, 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, 9-10.
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 20-23
Claims 20-23 contain limitations for a computer program product which is similar to the limitations for the methods specified in claims 1-4. As such, the analysis under Step 2A – Prong 1 and Step 2A – Prong 2 for claims 20-23 is similar to that presented above for claims 1-4.
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 “A non-transitory computer-readable 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
3. Applicant's arguments filed 7/13/26 have been fully considered but they are not fully persuasive.
As per the USC 101 non-statutory rejection, the applicant’s amendment has overcome the prior rejection.
As per the USC 101 “abstract idea” rejection, the applicant has amended and has argued the new language overcomes the rejection. The examiner respectfully disagrees.
The examiner has stated in the above rejection with the following:
The applicant has presently amended to include generating a heat map comprising of data elements with a highest usage rate using an algorithm and, wherein, the heat map can be adjusted. The examiner contends that this is more data collection and generating a mapping using the collected data and can be achieved via a mental process on paper or on a computer as a tool.
The applicant has further amended the claim wherein there is an initial data set and, using statistical learning or machine learning, generating an optimal set. Again, the examiner contends this can be achieved via a mental process, at most, using a generic AI model to calculate the optimal set from the original set.
The applicant has argued that the present claim language is similar to Desjardins and, as such, is allowable. The Desjardins decision states;
Indeed, enumerated improvements identified in the Desjardins specification included disclosures of the effective learning of new tasks in succession in connection with specifically protecting knowledge concerning previously accomplished tasks; allowing the system to reduce use of storage capacity; and the enablement of reduced complexity in the system. Such improvements were tantamount to how the machine learning model itself would function in operation and therefore not subsumed in the identified mathematical calculation.
The examiner contends that there is not a claimed improvement to the learning model nor what improvement is made to the system. The present claim language merely collects data and organizes it into further sets including an optimal set; however, the claims do not recite how the optimal set is used. The claims recite “debugging”, but the actual debugging using the newly organized data is not claimed. The applicant is urged to recite the specific problem and a specific remediation of said problem. Merely collecting data and organizing it, even with a generic AI model, is an abstract idea.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER S MCCARTHY/Primary Examiner, Art Unit 2113
Prosecution Insights