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 .
Continuation
This application is a continuation application of U.S. application no. 16/145,510 filed on 09/28/2018 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
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 non-patentable subject matter. The claims are directed to an abstract idea without significantly more.nn,m5ftu8d
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the method (claims 9-15), computer program product (claims 16-20), and system (claims 1-8) are directed to potentially eligible categories of subject matter (i.e., process, machine, and article of manufacture respectively). Thus, Step 1 is satisfied.
With respect to Step 2, and in particular Step 2A Prong One, it is next noted that the claims recite an abstract idea by reciting concepts performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “Mental Process” group within the enumerated groupings of abstract ideas. The mere nominal recitation of a generic computer does not take the claim limitation out of the mental process grouping.
The limitations reciting the abstract idea (mental process), as set forth in exemplary claim 9, are: receiving a request… wherein the request is associated with a first industrial automation project, identifying…a first cross-platform file associated with the first industrial automation project, inferring… ideal project design goals for the first industrial automation project from contextual data obtained from the first cross-platform file…identifying similar industrial automation projects based at least in part on explicit project design goals of the similar industrial automation projects using their associated cross-platform files in the database, generating, based at least on the ideal project design goals of the first industrial automation project and the explicit project design goals of the similar industrial automation projects, a design recommendation comprising a missing project design goal for the first industrial automation project, modifying a master project design of the first industrial automation project in the first cross-platform file to reflect the design recommendation, and providing an indication of the modification and the design recommendation... Independent claims 1 and 17 recite the CRM and system for performing the method of independent claim 9 without adding significantly more. Thus, the same rationale/analysis is applied.
With respect to Step 2A Prong Two, the judicial exception is not integrated into a practical application. The additional elements are directed to: via a virtual assistant … in a database… using a machine learning model… wherein the machine learning model receives the first cross-platform file as input…; one or more processors; and one or more memories having stored thereon instructions that, upon execution by the one or more processors, cause the one or more processors to…; A non-transitory, computer-readable medium having stored thereon instructions that, upon execution by one or more processors, cause the one or more processors to… (as recited in claims 1, 9, and 17). However, these elements fail to integrate the abstract idea into a practical application because they fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
The additional elements have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment (generic computing environment). See MPEP 2106.05(f) and 2106.05(h).
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional limitation(s) is/are directed to: via a virtual assistant … in a database… using a machine learning model… wherein the machine learning model receives the first cross-platform file as input…; one or more processors; and one or more memories having stored thereon instructions that, upon execution by the one or more processors, cause the one or more processors to…; A non-transitory, computer-readable medium having stored thereon instructions that, upon execution by one or more processors, cause the one or more processors to… (as recited in claims 1, 9, and 17) for implementing the claim steps/functions. These elements have been considered, but merely serve to tie the invention to a particular operating environment (i.e., computer-based implementation), though at a very high level of generality and without imposing meaningful limitation on the scope of the claim.
In addition, Applicant’s Specification (paragraph [0045]) describes generic off-the-shelf computer-based elements for implementing the claimed invention, and which does not amount to significantly more than the abstract idea, which is not enough to transform an abstract idea into eligible subject matter. Such generic, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible, as noted at pg. 74624 of Federal Register/Vol. 79, No. 241, citing Alice, which in turn cites Mayo. See, e.g., Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); 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).
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrate the abstract idea into a practical application. Their collective functions merely provide conventional computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that the ordered combination amounts to significantly more than the abstract idea itself. Further, the courts have found the presentation of data to be a well-understood, routine, conventional activity, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 (see MPEP 2106.05(d)).
The dependent claims (2-8, 10-16, and 18-20) are directed to the same abstract idea as recited in the independent claims, and merely incorporate additional details that narrow the abstract idea via additional details of the abstract idea. For example claims 10-16 “generating a ranked list of the ideal project design goals; surfacing the ranked list via a graphical user interface; receiving, via the graphical user interface, a user modification of the ideal project design goals; and modifying the ideal project design goals with the user modification; identifying user specific information associated with the request; and surfacing, via a graphical user interface, the plurality of recommendations in an order personalized to a user based on the user specific information; wherein the contextual data comprises at least one of company information, project design components, and a user; wherein the virtual assistant is further configured to translate, via a natural language process, the request into a search query; wherein the requests received by the virtual assistant include requests for an initial design, an expert review, or a component inquiry; surfacing the design recommendation via a graphical user interface; determining component lifecycle durability based at least in part on analyzing repair records within multiple cross-platform files in the database”, without additional elements that integrate the abstract idea into a practical application and without additional elements that amount to significantly more to the claims. The remaining dependent claims (1-8 and 18-20) recite the CRM and system for performing the method of claims 10-16. Thus, the same rationale/analysis is applied. Thus, all dependent claims have been fully considered, however, these claims are similarly directed to the abstract idea itself, without integrating it into a practical application and with, at most, a general purpose computer that serves to tie the idea to a particular technological environment, which does not add significantly more to the claims.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are 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. Accordingly, the subject matter encompassed by the dependent claims fails to amount to significantly more than the abstract idea itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Rothermel; Gunther.. System Supported Optimization Of Event Resolution, .U.S. PGPub 20060143034 A system being monitored generates alerts directed at participants as events to be resolved occur. As a participant resolves an alerted event, the system logs the steps taken by the participant to resolve the event and stores the event resolution log associated with the event. From that event resolution log, a template for a workflow process can be automatically generated.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arif Ullah, whose telephone number is (571) 270-0161. The examiner can normally be reached from Monday to Friday between 9 AM and 5:30 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Beth Boswell, can be reached at (571) 272-6737. The fax telephone numbers for this group are either (571) 273-8300 or (703) 872-9326 (for official communications including After Final communications labeled “Box AF”)./Arif Ullah/Primary Examiner, Art Unit 3625