DETAILED ACTION
The following is a Final Office action in response to communications received 5/5/2026. Claim(s) 5 and 15-42 has(have) been canceled. Claim(s) 1-3 and 6-14 has(have) been amended. Claim(s) 43-45 has(have) been added. Therefore, claim(s) 1-4, 6-14, and 43-45 is(are) pending and addressed below.
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.
Claim(s) 1-4, 6-14, and 43-45 is(are) rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim(s) 1 recite(s) the limitation(s) of “identifying patterns in the first set of datasets with respect to the one or more monitored tax code parameters” and “determining whether a discontinuity exists in the second set of datasets with respect to the one or more monitored tax code parameters based on comparing values corresponding to the one or more monitored tax code parameters in the second set of datasets against the patterns identified in the first set of datasets”. This/These limitation(s), as drafted, is(are) a process (processes) that, under its (their) broadest reasonable interpretation, cover(s) performance of the limitation(s) in the mind but for the recitation of generic computer components. That is, other than reciting “a computer system” in claim 1, nothing in the claim elements precludes the steps from practically being performed in the mind. The mere nominal recitation of generic processing components does not take the claim limitation(s) out of the mental processes grouping.
The examiner notes that “identifying patterns in the first set of datasets with respect to the one or more monitored tax code parameters” involves subjective identification of patterns, which are subjectively chosen to be identified, with respect to subjectively monitored parameters and includes the concepts of observation, evaluation, judgment, and opinion and
“determining whether a discontinuity exists in the second set of datasets with respect to the one or more monitored tax code parameters based on comparing values corresponding to the one or more monitored tax code parameters in the second set of datasets against the patterns identified in the first set of datasets” involves subjective choices as to what comprises a “discontinuity”, “comparing values”, and the “monitored tax code parameters” and includes the concepts of observation, evaluation, judgment, and opinion in claim 1. Thus, the claim(s) recite(s) a mental process, concepts that may be performed in the human mind, in this case being observation, evaluation, judgment, and opinion. The examiner notes that the mental processes are those subjective choices such as the factors, indicia, weights, and threshold of what constitutes a “discontinuity” and not necessarily making a comparison of two groups of datasets that would require the use of a computer, especially because “a claim that requires a computer may still recite a mental process” (MPEP 2106.04(a)(2)(III)(C)).
This judicial exception is not integrated into a practical application because the additional elements recited including “receiving, via a network, a first set of datasets”,
“receiving, via the network, a second set of datasets”, and
“responsive to determining that the discontinuity exists in the second set of datasets with respect to the one or more tax code parameters, identifying whether the discontinuity is related to a change in one or more domain rules of the geographic domain” in claim 1 are recited at a high level of generality, i.e., as generic processor performing a generic computer function. Generic processor limitations are no more than mere instructions to apply the exception using a generic computer component.
The examiner notes that potentially performing “a reactive action” could potentially improve the functioning of a computer, it would not be a particular solution to a specific problem (An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome, see MPEP 2106.05(a), The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it", see MPEP 2106.05(f)), but instead a generic solution to any and all possible problems. In this case “a reactive action” could refer to any action (solution) in response to any possible discontinuity (problem), and would therefore be equivalent to the words “apply it”. 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 abstract idea. Therefore, the additional elements fail to improve the functionality of the computer itself.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology or effects a transformation or reduction of a particular article to a different state or thing. Their collective functions merely provide conventional computer implementation. Furthermore, the applicant’s own specification details the generic nature of the computing components, which also precludes them from presenting anything significantly more ([0028], fig. 1).
Claim(s) 2-4, 6-14, and 43-45 do(es) not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Claim(s) 2 and 3 simply include types of patterns and statistics and do(es) not provide a practical application and also do(es) not provide significantly more in that the computer system itself is not improved or even affected.
Claim(s) 4 simply trains the machine learning model to identify patterns and do(es) not provide a practical application and also do(es) not provide significantly more in that the computer system itself is not improved or even affected.
Claim(s) 8 and 43 simply list some types of reactive actions, none of which would improve the functioning of the computer, and do(es) not provide a practical application and also do(es) not provide significantly more in that the computer system itself is not improved or even affected.
Claim(s) 6 and 9-12 simply detail generic computer functionality and do(es) not provide a practical application and also do(es) not provide significantly more in that the computer system itself is not improved or even affected.
Claim(s) 7 simply determines a resource and transmits a notification and do(es) not provide a practical application and also do(es) not provide significantly more in that the computer system itself is not improved or even affected.
Claim(s) 13 simply generates and displays a user interface and do(es) not provide a practical application and also do(es) not provide significantly more in that the computer system itself is not improved or even affected.
Claim(s) 14 simply details receiving a third set of datasets, determining whether a discontinuity exists (which is a mental process), and refrains from performing a reactive action if the discontinuity if “pervasive” and do(es) not provide a practical application and also do(es) not provide significantly more in that the computer system itself is not improved or even affected.
Claim(s) 44 simply updates rules in response to the identification and do(es) not provide a practical application and also do(es) not provide significantly more in that the computer system itself is not improved or even affected.
Claim(s) 45 simply implements the updated rules for another dataset and do(es) not provide a practical application and also do(es) not provide significantly more in that the computer system itself is not improved or even affected.
Claim(s) 1-4, 6-14, and 43-45 is(are) therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Response to Arguments
Applicant's arguments filed 5/5/26 have been fully considered but they are not persuasive.
In response to applicant’s argument (see p. 7 of remarks) that the amendments to claim 1 overcome the 101 rejection by integrating the abstract idea into a practical application, the examiner respectfully disagrees.
The examiner notes that “identifying whether the discontinuity is related to a change in one or more domain rules of the geographic domain” does not solve any issue. After the “identifying” is performed, the computer is in the same state as before the identification was performed. Simply identifying a relationship between a discontinuity an da change in rules does not improve the functioning of the computer or integrate the abstract idea into a practical application.
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 JOSHUA P LOTTICH whose telephone number is (571)270-3738. The examiner can normally be reached Mon - Fri, 9:00am - 5:30pm.
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/JOSHUA P LOTTICH/ Primary Examiner, Art Unit 2113
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