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 .
This Office Action is in response to preliminary amendment filed on July 23, 2024.
Claims 1-9 are pending.
Claims 1-9 have been amended.
Claims 10-11 have been canceled.
Claim Objections
Claims 1-9 are objected to because of the following informalities:
Claims 1 and 6 recite “the OT domain” in lines 7 and 8 respectively. There is insufficient antecedent basis for this limitation in the claim. In the interest of compact prosecution, the Examiner subsequently interprets this limitation as reading “an OT domain” for the purpose of further examination.
Claims 1-4 and 6-7 recite “the working unit”. In the interest of consistency, it is recommended that this limitation be amended to “the one working unit” as introduced in claims 1 and 6.
Claims 2-5 and 7-9 depend on the objected to claims and do not resolve the deficiencies and thus, are objected to for at least the same reasons.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a micro-service generator to receive/generate and a working unit controller to receive in claim 6, a runtime to activate in claim 7 and an interface generator to generate in claim 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim limitations “a micro-service generator to receive/generate”, “a working unit controller to receive”, “a runtime to activate” and “an interface generator to generate” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed function. There is no disclosure of any particular structure, either explicitly or inherently, to perform the above functions of receive, generate and activate. The use of the term “receive”, “generate” and “activate” are not adequate structure for performing the function because it does not describe a particular structure for performing the function. As would be recognized by those of ordinary skill in the art, the functions can be performed in any number of ways in hardware, software or a combination of the two. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which filter structure or structures perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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, 5-6 and 8-9 are rejected under 35 U.S.C. 101 because the claimed invention recites a judicial exception, is directed to that judicial exception, an abstract idea, as it has not been integrated into practical application and the claims further do not recite significantly more than the judicial exception. Examiner has evaluated the claims under the framework provided in the 2019 Patent Eligibility Guidance published in the Federal Register 01/07/2019 and has provided such analysis below.
Step 1: Claims 1 and 5 are directed to methods and fall within the statutory category of processes; and Claims 6 and 8-9 are directed to a system and fall within the statutory category of machines. Therefore, “Are the claims to a process, machine, manufacture or composition of matter?” Yes.
In order to evaluate the Step 2A inquiry “Is the claim directed to a law of nature, a natural phenomenon or an abstract idea?” we must determine, at Step 2A Prong 1, whether the claim recites a law of nature, a natural phenomenon or an abstract idea and further whether the claim recites additional elements that integrate the judicial exception into a practical application.
Step 2A Prong 1:
Claims 1, 6 and 9: The limitation “generating a micro-service corresponding to the first workflow used for defining an operation to be performed by one working unit in the domain”, as drafted, is a process that, but for the recitation of generic computing components, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, a person can think and observe, judge and evaluate a first workflow and mentally generate, with or without the use of pen and paper, a micro-service corresponding to the first workflow used for defining an operation to be performed by one working unit in the domain. The limitation “generating a second workflow based at least in part on the parameter value of the micro-service configured by the IT domain code development platform, so each OT device connected to the working unit performs an operation according to the second workflow”, as drafted, is a process that, but for the recitation of generic computing components, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, a person can think and observe, judge and evaluate a parameter value of a micro-service and mentally generate, with or without the use of pen and paper, a second workflow based at least in part on the parameter value of the micro-service configured by the IT domain code development platform, so each OT device connected to the working unit performs an operation according to the second workflow.
Therefore, Yes, claims 1, 6 and 9 recite judicial exceptions.
The claims have been identified to recite judicial exceptions, Step 2A Prong 2 will evaluate whether the claims are directed to the judicial exception.
Step 2A Prong 2:
Claims 1, 6 and 9: The judicial exception is not integrated into a practical application. In particular, the claim recites the following additional elements –“a micro-service generator”, “a working unit controller” and “at least one memory storing computer readable codes and at least one processor to call the computer readable codes to perform…” which are merely recitations of generic computing components and functions being used as a tool to apply the abstract idea (see MPEP § 2106.05(f)) which does not integrate a judicial exception into practical application. Further, claim 1, 6 and 9 recite the following additional elements – “receiving a first workflow generated by an operational technologies (OT) domain low code development tool” and “receiving a parameter value of the micro-service configured by an information technologies (IT) domain code development platform” which are merely a recitation of insignificant data gathering activity (see MPEP § 2106.05(g)) which does not integrate a judicial exception into practical application and will also be addressed below in Step 2B as also being Well-Understood, Routine and Conventional.
Therefore, “Do the claims recite additional elements that integrate the judicial exception into a practical application? No, these additional elements do not integrate the abstract idea into a practical application and they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
After having evaluating the inquires set forth in Steps 2A Prong 1 and 2, it has been concluded that claims 1, 6 and 9 not only recite a judicial exception but that the claims are directed to the judicial exception as the judicial exception has not been integrated into a practical application.
Step 2B:
Claims 1, 6 and 9: The claims do not include additional elements, alone or in combination, that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than generic computing components and mere instructions to apply an exception which do not amount to significantly more than the abstract idea. Moreover, the recitations of insignificant data gathering activity as also Well-Understood, Routine and Conventional. See at least MPEP § 2106.05(d)(II) “The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. i. Receiving or transmitting data over a network, e.g., using the Internet to gather data”. That is, in the instant claims these limitations merely receive or transmit/provide data which is Well-Understood, Routine and Conventional.
Therefore, “Do the claims recite additional elements that amount to significantly more than the judicial exception? No, these additional elements, alone or in combination, do not amount to significantly more than the judicial exception.
Having concluded analysis within the provided framework, Claims 1, 6 and 9 do not recite patent eligible subject matter under 35 U.S.C. § 101.
With regard to claims 5 and 8, they recite additional element of “after generating the micro-service corresponding to the first workflow, generating an interface recognizable by the IT domain code development platform” which is merely an insignificant data output activity (see MPEP § 2106.05(g)) which does not integrate a judicial exception into practical application and is also Well-Understood, Routine and Conventional. See at least MPEP § 2106.05(d)(II) “The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. i. Receiving or transmitting data over a network, e.g., using the Internet to gather data”. That is, in the instant claims these limitations merely receive or transmit/provide and/or outputs data which is Well-Understood, Routine and Conventional. Further, claims 5 and 8 do not recite any further additional elements and for the same reasons as above with regard to integration into practical application and whether additional elements amount to significantly more, claims 5 and 8 also fails both Step 2A prong 2, thus the claims are directed to the judicial exception as it has not been integrated into practical application, and fails Step 2B as not amounting to significantly more. Therefore, claims 5 and 8 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Therefore, Claims 1, 5-6 and 8-9 do not recite patent eligible subject matter under 35 U.S.C. §101.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma et al. (US 2022/0129283) in view of Hahn et al. (US 11,353,855).
With respect to Claim 1, Sharma et al. disclose:
receiving a first workflow generated by a [low code development tool]; (generate a business workflow (first workflow) using the developer tool(s) (low code development tool), Paragraph 42; Actions 410(x) may perform operations for: generating a new business workflow, (receiving a first workflow) adding a functional block (e.g., a function, a decision, and/or a transform) to a business workflow, editing the code underlying a functional block included in a business workflow, nesting a previously developed workflow into a more complex workflow, or terminating a business workflow, among other potential developer actions, Paragraph 42)
generating a micro-service corresponding to the first workflow (a configurable computer-executable file (microservice) corresponding to the selected operation (first workflow) is determined from among those stored at the microservices 25X′ and/or data stores 260, Paragraph 29; microservice is stored and thus must have been generated at one point) used for defining an operation to be performed by one working unit in the domain; (A user interface can be used to create functionality, such as changing a contact method, changing a delivery method, making information visible via a user interface that was previously not made visible, preventing display of information via a user interface that was previously made visible, renaming a variable, or specifying a field of information for manipulation among a plurality of fields of information (defining an operation). Once created, this functionality is re-usable according to embodiments of the present application—that is once published, every other developer in the system has access to and can utilize that same functionality. (performed by one working unit in the domain), Paragraph 12)
receiving a parameter value of the micro-service configured by an information technologies (IT) domain code development platform; (An alteration to the selected operation is received, via the user interface of business workflow generator 214, (IT domain code development platform) and a segment of computer-executable code in the computer-executable file corresponding to the operation is updated responsive to the alteration (receiving a parameter value), Paragraph 30; The updated operation can include changing a contact method, changing a delivery method, making information visible via a user interface that was previously not made visible, preventing display of information via a user interface that was previously made visible, renaming a variable, (parameter value) or specifying a field of information for manipulation (parameter value) among a plurality of fields of information. As an example, specifying a field of information may include updating a phone number or a mailing address corresponding to a user account. (receiving a parameter value), Paragraph 20)
and generating a second workflow based at least in part on the parameter value of the micro-service configured by the IT domain code development platform, (One or more updated workflows (second workflow) are then generated by business workflow generator 214 (IT domain code development platform) based on the updated segment of computer-executable code in the configurable computer-executable file. (parameter value of the micro-service), Paragraph 30) so each device connected to the working unit performs an operation according to the second workflow. (Developer tool 110 will then communicate with MOE 130 and data stores 150 again to publish this change, thus making it available to other users of system 100 (each device)., Paragraph 25; Once created, this functionality is re-usable according to embodiments of the present application—that is once published, every other developer in the system has access to and can utilize that same functionality. (each device performs an operation according to the second workflow), Paragraph 12)
Sharma et al. do not disclose:
[low code development tool] is an operational technologies (OT) domain low level development tool
However, Hahn et al. disclose:
[low code development tool] is an operational technologies (OT) domain low level development tool (An OT-IT (operational technology-information technology) service (OT domain low level development tool) allows developers to specify workflows, Abstract, lines 1-6)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Hahn et al. into the teaching of Sharma et al. to include an operational technologies (OT) domain low level development tool in order to help implement efficient and user-friendly techniques for operators to provide data to workflow developers and for the workflow developers to configure and deploy workflows. (Hahn et al., Column 2, lines 10-14)
With respect to Claim 2, all the limitations of Claim 1 have been addressed above; and Sharma et al. further disclose:
further comprising, after obtaining the second workflow, activating the second workflow when receiving a call instruction sent by the IT domain code development platform, so each OT device connected to the working unit performs the operation according to the second workflow. (Once created (obtaining the second workflow), this functionality is re-usable according to embodiments of the present application—that is once published, (receiving a call instruction sent by the IT domain code development platform) every other developer in the system has access to and can utilize that same functionality. (activating the second workflow), Paragraph 12)
With respect to Claim 5, all the limitations of Claim 1 have been addressed above; and Sharma et al. further disclose:
further comprising after generating the micro-service corresponding to the first workflow, generating an interface recognizable by the IT domain code development platform. (An alteration to the selected operation is received, via the user interface of business workflow generator 214, (generating an interface recognizable by the IT domain code development platform) and a segment of computer-executable code in the computer-executable file corresponding to the operation is updated responsive to the alteration. (must be after the micro-service has been generated), Paragraph 30)
Claims 6-8 are apparatus claims corresponding to the method claims above (Claims 1-2 and 5) and, therefore, are rejected for the same reasons set forth in the rejections of Claims 1-2 and 5.
With respect to Claim 9, all the limitations of Claim 1 have been addressed above; and Sharma et al. further disclose:
at least one memory storing computer readable codes; (see Figure 5; main memory 508, secondary memory 510 and/or removable storage unit 518/522)
and at least one processor (see Figure 5; processor 504) to call the computer readable codes to perform the method according to claim 1. (see rejection to claim 1 above)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sharma et al. (US 2022/0129283) in view of in view of Hahn et al. (US 11,353,855) and in further view of Chang et al. (US 9,736,199).
With respect to Claim 3, all the limitations of Claim 1 have been addressed above; and Sharma et al. and Hahn et al. further disclose:
further comprising after obtaining the second workflow, activating the second workflow in the runtime of the working unit when receiving a call instruction sent by the IT domain code development platform, so that each OT device connected to the working unit performs the operation according to the second workflow. (Sharma et al., Once created (obtaining the second workflow), this functionality is re-usable according to embodiments of the present application—that is once published, (receiving a call instruction sent by the IT domain code development platform) every other developer in the system has access to and can utilize that same functionality. (activating the second workflow in the runtime of a working unit), Paragraph 12)
Sharma et al. and Hahn et al. do not disclose:
backing up the second workflow to a runtime of the working unit;
However, Chang et al. disclose:
after obtaining the second workflow, backing up the second workflow to a runtime of the working unit; (As the primary user is editing the workflow, the workflow may be backed up in memory of local computing device (404, 406, 408, 410) and written to disk in cloud computing environment 50 periodically. (backing up the second workflow to a runtime of the working unit), Column 13, lines 18-21)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Chang et al. into the teaching of Sharma et al. and Hahn et al. to include backing up the second workflow to a runtime of the working unit in order to allow help promote a collaborative workflow development network. (Chang et al., Column 13, lines 1-25)
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sharma et al. (US 2022/0129283) in view of in view of Hahn et al. (US 11,353,855) in view of Wickman et al. (US 2013/0041980) and in further view of Visoky et al. (US 2023/0421615).
With respect to Claim 4, all the limitations of Claim 3 have been addressed above; and Sharma et al. and Hahn et al. do not disclose:
the first workflow comprises
a default parameter value and a preset parameter value range;
and activating the second workflow in the runtime of the working unit comprises
activating the runtime of the working unit within the preset parameter value range.
However, Wickman et al. disclose:
the first workflow comprises
a default parameter value and a preset parameter value range; (see Figure 9; the business administrator may then optionally edit workflow (first workflow) for the step or set various step options including the steps name, default value (default parameter value), range of numeric values or string lengths allowed, lists, and format (preset parameter value range), Paragraph 53)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Wickman et al. into the teaching of Sharma et al. and Hahn et al. to include a default parameter value and a preset parameter value range in order to give a business administrator greater control over editing a workflow and what values can be inputted/used.
Sharma et al., Hahn et al. and Wickman et al. do not disclose:
and activating the second workflow in the runtime of the working unit comprises
activating the runtime of the working unit within the preset parameter value range.
However, Visoky et al. disclose:
and activating the second workflow in the runtime of the working unit comprises
activating the runtime of the working unit within the preset parameter value range. (the operator may determine whether one or more parameter values (e.g., configurational parameter values, operational parameter values, or the like) of the digital twin (activating the runtime of the working unit) are within desirable threshold ranges (preset parameter value range), Paragraph 68)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Visoky et al. into the teaching of Sharma et al., Hahn et al. and Wickman et al. to include activating the runtime of the working unit within the preset parameter value range in order to ensure that changes to an operation of a device (digital twin/OT asset) has not interfered with the operation. (Visoky et al., Paragraph 68)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ranka et al. (US 2023/0034587) discloses a workflow error debugger.
Viswanathan et al. (US 2022/0261288) discloses managing custom workflows for domain objects defined within microservices.
Rangasamy et al. (US 2016/0124742) discloses microservice-based application development framework.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LANNY N UNG whose telephone number is (571)270-7708. The examiner can normally be reached Mon-Thurs 6:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bradley Teets can be reached at 571-272-3338. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LANNY N UNG/ Primary Examiner, Art Unit 2197
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