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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 25 June 2026 has been entered.
Response to Amendment
This communication is in response to the amendment filed on 25 June 2026.
Claims 21, 33, and 36 are amended.
Claims 21-40 have been examined.
Response to Arguments
In response to Applicant’s remarks filed on 25 June 2026:
a. Applicant's arguments with respect to the 35 U.S.C. 101 rejections of the pending claims have been fully considered but are not deemed persuasive.
On pages 1-2 of Applicant’s remarks, Applicant argues against the 35 U.S.C. 101 rejections of the pending claims. Applicant argues that claim 21 does not recite an abstract idea under Step 2A, Prong One and/or does recite a practical application under Step 2A, Prong Two.
The Office respectfully disagrees with the above remarks. Applicant reproduces almost the entirety of claim 21 and highlights certain limitations related to generic computing components such as “client computing device” and “memory.” Applicant is advised that “Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible,” MPEP 2106.05(f) citing Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. The claimed computing devices and memory are additional elements, beyond the abstract idea, that are analyzed at Steps 2A, Prong Two and 2B. As detailed below in the claim rejections under 35 U.S.C. 101, the claimed computing devices and memory are recited at a high level of generality, i.e. as generic computer components performing generic computing functions. 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. For a similar reason, these additional elements cannot be deemed an inventive concept. See MPEP 2106.05. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claims as a whole, looking at the additional elements individually and in combination, do not amount to a practical application nor an inventive concept. These claims are not patent eligible.
Claims 33 and 36 recite limitations similar to those of claim 21 and are ineligible under 35 U.S.C. 101 for the same reasons that claim 21 is ineligible, as set forth above.
Claims 22-32, 34-35, and 37-40 are ineligible under 35 U.S.C. 101 for the same reasons that claims 21, 33, and 36 are ineligible, as set forth above, and for the additional reasons detailed below in the claim rejections under 35 U.S.C. 101.
b. Rejections of the pending claims under 35 U.S.C. 103 are withdrawn in view of Applicant’s amendments and remarks.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 33, and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, and 18 of U.S. Patent No. 12,169,471 B2 in view of Barsness et al. (U.S. Patent Application Publication No. 20050044063 A1, hereinafter referred to as Barsness).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the examined application recites a method analogous to that of claim 1 the U.S. Patent but in broader, more general language. Claim 1 of the cited patent contains all the elements of claim 21 of the instant application except for the features related to the second search query. However, Barsness teaches the features of instant claim 21 related to the second search query, as detailed below in the claim rejections under 35 U.S.C. 103. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified claim 1 of the reference Patent to include the teachings of Barsness because it enables optimizing system resources for re-execution of queries (see Barsness para. 0028-0029 and 0049-0051). Instant claims 33 and 36 recite features analogous to those of instant claim 21, and instant claims 33 and 36 are not patentably distinct from claims 15 and 18 of the reference patent for the same reasons set forth above with regards to instant claim 21. Therefore, the examined application claims would have been obvious over the reference claims.
Claims 21, 33, and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14, and 22 of U.S. Patent No. 11,288,231 B2 in view of Barsness et al. (U.S. Patent Application Publication No. 20050044063 A1, hereinafter referred to as Barsness).
The examined application claims would have been obvious over the reference claims for the same reasons set forth above with regards to U.S. Patent No. 12,169,471 B2.
Claims 21, 33, and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14, and 22 of U.S. Patent No. 10,585,851 B2 in view of Barsness et al. (U.S. Patent Application Publication No. 20050044063 A1, hereinafter referred to as Barsness).
The examined application claims would have been obvious over the reference claims for the same reasons set forth above with regards to U.S. Patent No. 12,169,471 B2.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As to claims 21, 33, and 36, these claims recite “determining that the second portion of the dataset, as indicated in the second request, that satisfies the second triggering condition defining the second alert, is not stored in the memory in a manner associating the second portion of the dataset with an instance of the second alert.” The claimed “determining” amounts to no more than an evaluation/judgement, which can be mentally performed by a human with the aid of pencil and paper. The claimed “memory” serves only to provide generic computer implementation. However, the claimed “determining” has clear analogs outside of a computer. For example, consider the management of paper records held both in an office filing cabinet as well as in an archival warehouse. In this example, the office filing cabinet provides quick access to information that is frequently queried, analogous to a computer memory. The archival warehouse is for long term storage of data that has not been recently queried, analogous to a computer database. When a request for records comes in (analogous to the claimed “second search query”), a records management employee must determine whether the requested data is held in the filing cabinet (analogous to the claimed “memory”). This determination is an evaluation/judgement that the employee can perform in the mind with the aid of pencil and paper (e.g. a list written out on paper of the records held in the filing cabinet and in the archival warehouse). If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind (and/or with a pencil and paper) but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas.
These claims also recite “based on the determination that the second portion of the dataset is not stored in the memory, reproducing the second portion of the dataset that satisfies the second triggering condition defining the second alert by re-executing the second search query in view of a time window defined relative to a time parameter specifying a time of execution of the second search query that triggered the instance of the second alert.” This limitation can also be mentally performed by a human with the aid of pencil and paper. Continuing the filing cabinet and archival warehouse example set forth above, the records management employee may determine that the requested dataset is not stored in the nearby filing cabinet (analogous to the claimed memory) and hence must be reproduced by searching records in the archival warehouse (analogous to a computer database). It this illustrative example, it is fully conceivable that re-executing the second search query (i.e. searching for the dataset in the archival warehouse) is done in view of a time parameter (e.g. find records within the past year), as claimed. In this example, re-executing the second search query involves making a series of judgements/evaluations, i.e. for each record stored in the archival warehouse, does that record both satisfy the search query and satisfy the time parameter? Since it amounts to no more than a series of mentally performable evaluations/judgements, the claimed “reproducing” is also an abstract idea under the “Mental Processes” grouping. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. Other than the abstract idea, the claims recite the following:
a) “receiving, from a client computing device, a first request for a first portion of a dataset that satisfies a first triggering condition defining a first alert associated with a first search query”; and “receiving, from the client computing device, a second request for a second portion of the dataset that satisfies a second triggering condition defining a second alert associated with a second search query;”
b) “based on a determination that the first portion of the dataset is stored in memory, providing the first portion of the dataset;” and “providing the reproduced second portion of the dataset;”
c) “a client computing device” (claim 21);
d) “A computer system comprising: a memory; and one or more processor devices, coupled to the memory” (claim 33);
e) “A computer-readable non-transitory storage medium comprising executable instructions” (claim 36).
Limitation (a) amounts to no more than mere data gathering, which has been deemed by the courts to be insignificant extra-solution activity. See MPEP 2106.05(g). Limitation (b) amounts to no more than merely outputting a result, which has been deemed by the courts to be insignificant extra-solution activity. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). See MPEP 2106.05(g). Limitations (c) through (e) are recited at a high level of generality, i.e. as generic computer components performing generic computing functions. 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. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity and/or generic computer implementation. Hence, the claim as a whole, looking at the additional elements individually and in combination, does not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Limitation (a) amounts to no more than mere data gathering, which has been deemed by the courts to be insignificant extra-solution activity. See MPEP 2106.05(g). In addition, the courts have deemed receiving data to be well-understood, routine, and conventional activity, as in the following cases: Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) (storing and retrieving information in memory). See MPEP 2106.05(d)(II). Limitation (b) amounts to no more than merely outputting a result, which has been deemed by the courts to be insignificant extra-solution activity. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). See MPEP 2106.05(g). Applicant’s specification provides few details about the claimed “providing” or its functions (see para. 0060 and 0073 of Applicant’s published specification). This indicates that this feature is well known in the art. Cf Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that "a patent need not teach, and preferably omits, what is well known in the art"). As a result, the written description adequately supports that additional element (b) is conventional and performs well-understood, routine, and conventional activities. See MPEP § 2106.07(a)(III)(A)1. Hence, neither elements (a) nor (b) can provide an inventive concept. Furthermore, a person having ordinary skill in the art (PHOSITA) would recognize element (b) to be well-understood, routine, and conventional2. As discussed above with respect to integration of the abstract idea into a practical application, additional elements (c) through (e) amount to no more than mere field of use limitations and instructions to apply the exception using generic computer components. Mere instructions to apply an exception using conventional computer components and functions cannot provide an inventive concept. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claim as a whole, looking at the additional elements individually and in combination, does not amount to significantly more than the abstract idea. These claims are not patent eligible.
As to dependent claims 22 and 24, these claim amount to no more than insignificant extra solution activity in the form of mere data gathering (i.e. mere data storage). See MPEP 2106.05(g). In addition, the courts have deemed storing data to be well-understood, routine, and conventional activity, as in the following cases: Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) (storing and retrieving information in memory). See MPEP 2106.05(d)(II). Hence, these limitations cannot be deemed a practical application nor an inventive concept. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claims as a whole, looking at the additional elements individually and in combination, do not amount to a practical application nor an inventive concept. These claims are not patent eligible.
As to dependent claim 23, this claim recites implementation of a file retention policy. At the high level of generality recited in this claim, the claimed implementation of a file retention policy can be mentally performed by a human with the aid of pencil and paper. For example, a records management employee can maintain a list of a paper files and their associated dates, and the employee can make the mental judgements/evaluations necessary to decide whether to destroy files that are older than a certain date. The claimed “memory” in this claim serves only to provide generic computer implementation, and hence it cannot provide a practical application nor an inventive concept. See MPEP 2106.05(f).
As to dependent claims 25 and 34, the claimed execution of a search query is mentally performable by a human with the aid of pencil and paper, as detailed above in the records management example discussed in the parent claim. Hence, the claimed executing a search query is an abstract idea under the “Mental Processes” grouping. The claimed “time-stamped events having portions of raw machine data” amounts to no more than an attempt to link the abstract idea to a particular field of use and/or technological environment, which cannot provide a practical application nor an inventive concept. See MPEP 2106.05(h).
As to dependent claim 26, the claimed description of the client computing device as a desktop or mobile computing device amounts to no more than an attempt to link the abstract idea to a particular field of use and/or technological environment, which cannot provide a practical application nor an inventive concept. See MPEP 2106.05(h).
As to dependent claims 27, 35, and 38, the claimed execution of a search query is mentally performable by a human with the aid of pencil and paper, as detailed above in the records management example discussed in the parent claim. Hence, the claimed executing a search query is an abstract idea under the “Mental Processes” grouping. The claimed application of a late binding schema amounts to no more than an attempt to link the abstract idea to a particular field of use and/or technological environment, which cannot provide a practical application nor an inventive concept. See MPEP 2106.05(h).
As to dependent claims 28 and 39, the claimed execution of a search query is mentally performable by a human with the aid of pencil and paper, as detailed above in the records management example discussed in the parent claim. Hence, the claimed executing a search query is an abstract idea under the “Mental Processes” grouping. The claimed “machine data generated by at least one of a server, a database, an application, or a network” amounts to no more than an attempt to link the abstract idea to a particular field of use and/or technological environment, which cannot provide a practical application nor an inventive concept. See MPEP 2106.05(h).
As to dependent claim 29, the claimed execution of a search query based on a schedule is mentally performable by a human with the aid of pencil and paper, as detailed above in the records management example discussed in the parent claim. Hence, the claimed executing a search query is an abstract idea under the “Mental Processes” grouping.
As to dependent claims 30 and 37, these claims recite a particular type of triggering condition, i.e. a predetermined number of results. Given the high level of generality of this claim, the execution of the search remains mentally performable by a human, for the same reasons set forth above in the parent claims. Hence, these claims remain directed to an abstract idea without significantly more.
As to dependent claim 31, the claimed performance of an action such as sending an email, creating an RSS feed, or executing a script amounts to no more than an attempt to link the abstract idea to a particular field of use and/or technological environment, which cannot provide a practical application nor an inventive concept. See MPEP 2106.05(h).
As to dependent claims 32 and 40, the claimed displaying of the first alert in a graphical user interface (GUI) amounts to mere instructions to apply the abstract idea on a general purpose computer, which cannot provide a practical application nor an inventive concept. See MPEP 2106.05(f).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMAR MIAN whose telephone number is (571)270-3970. The examiner can normally be reached Monday to Friday, 10 am to 6:30 pm.
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/Umar Mian/
Primary Examiner, Art Unit 2163
1 MPEP § 2106.07(a)(III)(A) explains that a specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional ( or an equivalent term) or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)).
2 See the following:
Ross et al.; U.S. PGPub. No. 20080319991 A1; para. 0059-0062, 0096, and Figs. 1-2;
Barsness et al.; U.S. PGPub. No. 20050044063 A1; para. 0059 and Figs. 3-4.
Prosecution Insights