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 .
Response to Amendment
The following is a FINAL Office action in reply to the Amendments and Arguments received on May 31, 2026.
Status of Claims
Claims 1, 4-6, 8, 11-14 and 17-19 have been amended.
Claims 1-20 are currently pending and have been examined.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 14-20 are drawn to methods while claim(s) 1-13 is/are drawn to an apparatus. As such, claims 1-20 are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
Claim 14 (representative of independent claim(s) 1 and 8) recites the following steps:
obtaining, from a plurality of different data sources, a plurality of different data items
identifying linkages between two or more data items of the plurality of different data items, wherein the linkages are based on a confidence score associated with a same service of the one or more services and indicate that the two or more data items are associatedsame service;
identifying one or more schemas associated with the two or more data items, wherein the one or more schemas define relationships among one or more assets associated with the service;
generating an security graph associated with the service according to the one or more schemas, wherein the security graph captures the relationships among the one or more assets defined by the one or more schemas;
implementing one or more governance policies for the one or more services according to the security graph; and
performing a governance workflow to enforce the one or more Al governance policies for the one or more services according to the security graph
.Alternatively, these steps, under its broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) generating a graph according to the one or more schema (i.e., one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions), but for the recitation of generic computer components. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the "mental processes" subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 14 recites an abstract idea (Step 2A - Prong One: YES).
Independent claim(s) 1 and 8 are determined to recite an abstract idea under the same analysis.
Step 2A - Prong Two:
This judicial exception is not integrated into a practical application. The claim(s) recite the additional elements/limitations of:
artificial intelligence based (AI-based) services
AI security graph
Al governance policies
A system comprising: one or more processors to: obtain a plurality of data items from at least one data source implementing one or more artificial intelligence based (Al-based) services;
A processor comprising: one or more circuits to:
The requirement to execute the claimed steps/functions listed above is equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. This/these limitation(s) do/does not impose any meaningful limits on producing the abstract idea and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A -Prong Two: NO).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above in "Step 2A - Prong 2", the requirement to execute the claimed steps/functions listed above is equivalent to adding the words "apply it" on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as "significantly more" (see MPEP 2106.05 (f)).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Regarding Dependent Claims:
Dependent claims 2, 3, 7, 9, 10, 15, 16 and 20 fail to include any additional elements and are further part of the abstract idea as identified by the Examiner.
Dependent claims 4-6, 11-13 and 17-19 include additional limitations that are part of the abstract idea except for:
artificial intelligence based (AI-based) services
one or more processors
AI security graph
natural language querying
AI use case
AI tool
Al governance policies
The additional elements of the dependent claims are equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Response to Arguments
Applicant’s arguments with respect to the rejection under 35 USC 103 have been fully considered and are persuasive. The rejection has been withdrawn.
Applicant's arguments with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant Argues: Applicant asserts that the claims, including the proposed amendments, recite subject matter that covers more than a mental process, include additional elements amounting to significantly more than an abstract idea, and are integrated into a practical application in a technical field.
The Examiner notes that this claim of significantly more is not representative of an "actual" improvement to the technology itself, but at best is an improvement to the business method or abstract idea itself. In fact, Applicant can provide no tangible findings that there was actually anything different and/or improved in the instant system compared to prior "conventional systems", other than a mere allegation and unsubstantiated, conclusory statement that the instant invention improves existing systems and is significantly more than using a generically cited system or processor to identify relations patterns and implement policy. The Applicant cannot point to anything that was specifically done either in the claimed subject matter, the specification, or provided reasoning to show how this is significantly more or provides an improvement to the technology of the conventional system implementation. The broadly cited artificial intelligence based service does not represent any improvement and described in such a way that it is more than any other service or policy. Moreover, the Examiner respectfully notes that the needed "improvement" in terms of patent eligibility is not one resulting from programming a generic processor to perform a different (or even improved) function, but rather a specific and actual improvement to the machine itself is needed. Based on these findings of fact, the Examiner contends the claims are indeed directed towards an abstract idea and Applicant's arguments to the contrary are considered to be non-persuasive.
Applicant Argues: For instance, as discussed below Applicant's claimed subject matter is patent- eligible at least for reasons similar to those in Example 47 (claim 3) of The USPTO's Section IOI Examples for Subject Matter Eligibility, ( e.g., Applicant's claims provide specific computer solutions to implement and enforce AI governance policies)… As with Example 47 (claim 3) the claimed subject matter is integrated into a practical application to improve a technical field. As described in the specification, creating a usable and comprehensive picture of AI posture given challenges related to siloed data, varied and highly connected data, massive volume of data, confidence levels, use case diversity, and/or easy consumption poses significant problems related to creating, validating and implementing AI governance policies (see, at least paragraphs [0024-0028]).
Examiner respectfully disagrees. The instant claims do not possess the same eligibility features of Example 47 Claim 3. First, Example 47 Claim 3 recites an abstract idea in steps, (a)-(d). The claim is transformed at step (e) which converts the masked clusters into N separate speech signals in time domain, and step (f), which extracts spectral features from only one target source Sd of the N separate signals from the output of step (e) and generates a sequence of words from the spectral features to produce a transcript. A similar transformation does not occur in instant claims. Similar to Example 47 Claim 1, the instant claims invoke generic computing functions merely as a tool for executing the recited mental process rather than purporting to improve the technology or a computer. See MPEP 2106.05(f). Therefore, the limitation represents no more than mere instructions to apply the judicial exception on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of computers.
Applicant Argues: Additionally, implementation and enforcement of AI governance policies, as recited in Applicant's claims, is necessarily a machine-executed process, executed to address problems related to AI governance, security and usage.
Examiner respectfully disagrees. Examiner notes the following excerpt from DDR Holdings (pages 22-23 of Opinion):
"We caution, however, that not all claims purporting to address Internet-centric challenges are eligible for patent. For example, in our recently-decided Ultramercial opinion, the patentee argued that its claims were "directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before." 2014 WL 5904902, at *3. But this alone could not render its claims patent-eligible. In particular, we found the claims to merely recite the abstract idea of "offering media content in exchange for viewing an advertisement," along with "routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet." Id. at *5.
The '399 patent's claims are different enough in substance from those in Ultramercial because they do not broadly and generically claim "use of the Internet" to perform an abstract business practice (with insignificant added activity). Unlike the claims in Ultramercial, the claims at issue here specific how interactions with the Internet are manipulated to yield a desired result - a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. Instead of the computer network operating in its normal, expected manner by sending the website visitor to the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to the above-described hybrid web page that presents product information from the third-party and visual "look and feel" elements from the host website."
Based on even the DDR Holdings decision, it is clear that even if the claims address Internet-centric challenges (as purported by Applicant), the claims are not necessarily patent eligible. The Applicant has failed to provide evidence on how the instant claims are rooted in technology such that the routine and conventional sequence of events is manipulated to yield a desired result. In fact, similar to the Ultramercial decision cited by the court, the instant claims appear to offer nothing more than a generic system or processor to perform its abstract business practice.
Moreover, the Examiner reiterates that the implementing step is so highly recited that it does not constitute an actual improvement in updating governance policies to Applicant's assertions. The rejection is maintained.
Applicant Argues: In the instant case, the specification explains that the rapid advancement and widespread adoption of generative AI technologies has brought significant problems in areas like AI governance, compliance, security, cost management, and the responsible use of AI services. The claimed subject matter describes a solution to these problems.
Examiner respectfully disagrees. The relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea of identifying and updating governance policies (i.e. an idea of itself) on a generic computer. They do not.
Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. All of the recited computer functions (e.g. retrieve data, filter data, identify data) are well-understood, routine, conventional activities previously known to the industry. The use of artificial intelligence is recited in such a way that it merely describes the data/ service and doesn’t represent an actual improvement. In short, each step does no more than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of petitioner's method add nothing that is not already present when the steps reconsidered separately. Viewed as a whole, petitioner's method claims simply recite the obtain data and identifying linkages information and using that as the basis to implement a governance policy.
The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. That is not enough to transform an abstract idea into a patent-eligible invention.
Applicant Argues: Applicant notes that MPEP 2016.04(d) lists at least two factors that weigh in favor of a finding of practical application in this case. These include (a) improvement in the functioning of a computer, and (b) implementation of the claimed subject matter in conjunction with a particular machine that is integral to the claim.
Examiner respectfully disagrees. Applicant’s alleged improvement is not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem. The recitation of the use of artificial intelligence is not described in such a way that it represents more than just a label of the services, policies or graphs used in the claims. The AI is not actually performing any of the functions, the generic system and processor is responsible for the functions of the claims. As such, the rejection is maintained.
Applicant Argues: As with BASCOM, the claims of the instant case recite an inventive concept in the specific ordered combination of claim limitations.
Examiner respectfully disagrees. Examiner notes the following excerpt from Bascom (pages 12 and 14-17 of Opinion):
“We agree with the district court that filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding that "tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)" is an abstract idea that "is not meaningfully different from the ideas found to be abstract in other cases...involving methods of organizing human activity"); see also Content Extraction, 776 F.3d at 1347 (finding that "1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory" was an abstract idea because "data collection, recognition, and storage is undisputedly well-known" and "humans have always performed these functions"); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (finding that "a process of organizing information through mathematical correlations" is an abstract idea). An abstract idea on "an Internet computer network" or on a generic computer is still an abstract idea. See Intellectual Ventures I, 792 F.3d at 1368 n.2 (collecting cases).
“We agree with the district court that the limitations of the claims, taken individually, recite generic computer, network and Internet components, none of which is inventive by itself[…]However, we disagree with the district court's analysis of the ordered combination of limitations[…] the claims may be read to “improve[] an existing technological process.” Id. at 2358 (discussing the claims in Diehr, 450 U.S. 175).”
Based on the decision detailed above, it is clear that the claims in Bascom were deemed eligible exclusively on the fact that the claimed solution was the combination of elements, and it was how those elements were all used together in combination relative to the state of the prior art as of the filing date that sufficiently moved the claims beyond an abstract idea itself or merely applying the abstract idea (i.e. filtering content) on a computer.
Furthermore, any general allegation of patent eligibility because the instant claims may contain individual elements present in Bascom (e.g.. filtering, profile, ISP server) would be non-persuasive and insufficient to constitute eligible subject matter, as the Court was clear the individual elements were routine and conventional and thus not inventive, and it was the combination of those elements that was the deciding factor on eligibility.
Moreover, it is clear from the Bascom decision that the apparent improvement was not merely directed to the abstract idea itself (i.e. filtering content), but to the actual technology. However, such an improvement is not readily apparent in the instant case. In fact, the instant application does not parallel the fact patterns in Bascom at all, and more importantly Applicant has failed to provide evidence on how the instant claims, and particularly the combination of the instant claimed elements, provide an improvement or solution to an existing technological process that can be considered some more than routine or conventional.
Finally, generally speaking as it relates to Bascom, the Examiner notes that the ‘606 Patent of Bascom was directed towards technological processes of the late 1990's, and while the "inventive concept" was deemed patent eligible based on improving existing technological processes (as of the filing date), such an old and established improvement could now very well be considered routine and conventional relative to the current state of the art. Therefore, even if the instant case had an improvement paralleling that of Bascom (which the Examiner does not concede), the instant claims could still be deemed ineligible.
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 RASHIDA R SHORTER whose telephone number is (571)272-9345. The examiner can normally be reached Monday- Friday from 9am- 530pm.
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/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626
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