DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a final office action in response to the application filed 24 June 2026.
Applicant’s amendments to 1, 2-6, 9-12, 16, 17, and 20 have been received and are acknowledged.
The applicant's claim for benefit of provisional applications: US 62540433 filed 8/2/2017; US 62613561 filed 1/4/2018; and US 62642818 filed 3/14/18; and as a CON of US 16046380 filed 7/26/2018 (US PAT 12217309) have been received and acknowledged.
Claims 1-20 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 24 June 2026 have been fully considered but they are not persuasive.
With regard to the Double Patenting rejection, Applicant request the rejection be held in abeyance until “at least one claim is found to be allowable.” (Applicant’s response, 10). Examiner maintains the rejection in view of Applicant’s response.
With regard to the rejections under 35 USC 101, Applicant argues: (1) With regard to Step 2A Prong 1, that the claims recite “numerous other limitations” than “…merely “ associating event records related to workflow (i.e. data processing). Therefore, Applicant disagrees with the characterization of the claims. (Applicant’s response, 11) (2) With regard to the Step 2A Prong 2, Applicant argues that the recited limitations of exemplary Claim 1 (and Claims 11 and 17) “… integrate any alleged abstract idea into a practical application…” (Applicant’s response, 11-12) (3) Applicant then analogizes the instant recited claims to patent eligible Claim 1 of Example 42 asserting that the recited instant features of Claims 1, 11, and 17 “…similarly provide an improvement by allowing for analysis an collation of data captured in different formats…” (Applicant’s response, 12) (4) Applicant further argues that the amended Claims 1, 11 and 17 recite “ a non-generic arrangement of features that amounts to significantly more than any alleged abstract idea…” and notes that the recited claim limitations are not “well known, routing and conventional functions.” (Applicant’s response, 12-13)
Examiner respectfully disagrees as noted in the rejection below and previously. Unlike the patent eligible claim 1 of Example 42, the instant recited claims merely describes how to generally capture data, generate records based on associating/matching the captured data and then ‘associating’ the matched data; in other words, the instant recited claims recite data processing using generic computing elements/technology. As such, the instant claims are analogous to patent ineligible claim 2 of Example 42 and thus, do not provide an integration of the abstract idea into a practical application; nor are these recited claims ‘significantly more’ than the abstract idea. (Applicant’s arguments 1-4).
With regard to the rejections under 35 USC 103, Applicant argues that the prior art of Lehman does not teach the “determining… an event type…” and “…generating.. a first event record…” as recited by amended claim 1. Applicant further asserts that the previous citation of “… email, VIN, policy number…” ( previously presented in Claim 6)… does not disclose “….“ a unique identifier indicating the event type [associated with a first interaction]” where the event type is determined "via the processor and based on the first event information [indicating a first interaction with the processor]," as recited by amended claim 1 and similar features of amended independent claims 11 and 17. During the interview, Applicant's representative understood the Examiner to agree that these features are not taught or suggested by Lehman…..” Applicant further argues that the dependent claims are also allowable for the reasons provided for the respective claims from which they depend. Further Applicant argues that the Lehman [33] fails to teach Claims 2 and 3. And as such, Applicant asserts that the rejections under 35 USC 103 should be withdrawn.
Examiner withdraws the rejections under 35 USC 103 in view of Applicant’s amendments and the rejections below.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 (original application claims 21-40) of U.S. Patent No. 12217309. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite substantially similar subject matter (including recited elements).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 11, and 17 includes the limitations of “determining a match between the first event record and the second event record …based on determining the match, generating, in a memory operably connected to the processor, a digital link between the first event record and the second event record…” However, the specification provides no support for “determining a match between the first event record and the second event record …..based on determining the match, generating, in a memory operably connected to the processor, a digital link between the first event record and the second event record….”Applicant is requested to provide reference from the original disclosure to support the amendments of "….. determining a match between the first event record and the second event record …..based on determining the match, generating, in a memory operably connected to the processor, a digital link between the first event record and the second event record……..”
Examiner will interpret the terms using broadest reasonable interpretation.
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-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, (1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so (2b), it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
The claimed invention is directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
(1) In the instant case, the claims are directed towards a method, non-transitory computer readable medium, and the system of associating event records related to workflow . In the instant case, Claims 1-10 are directed to a process. Claims 17-20 are directed to a system. Claims 11-16 are directed to a non-transitory computer readable medium.
(2a) Prong 1: Associating event records related to workflow (i.e. data processing) is categorized in/akin to the abstract idea subject matter grouping of: (methods of organizing human activity) [organizing human activity (commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)]. As such, the claims include an abstract idea.
The specific limitations of the invention are (a) identified to encompass the abstract idea include:
1. (Currently Amended) A … method for associating …event records related to a workflow, the method comprising:
capturing, … and in a first file having a first format, first event information;
determining, … and based on the first event information, an event type associated with the first interaction;
extracting, … and from the first file, first values characterizing the first interaction;
generating, …, a first event record including: the first values formatted according to a first …, and metadata indicating the first source application and a unique identifier indicating the event type;
capturing, …, and in a second file having a second format different from the first format, second values characterizing a second interaction between the processor and a second …;
generating, …, a second event record including the second values formatted according to the first …
determining, …a match between the first event record and the second event record; and
based on determining the match, generating, … and in a memory operably connected to the processor, a… link between the first event record and the second event record.
11. (Currently Amended) …… …for associating … event records related to a workflow that, when executed by at least…, causes the … to:
capture, in a first file having a first format, first event information indicative of a first interaction between the… and a first …;
determine, based on the first event information, an event type associated with the first interaction;
extract, from the first …, first values characterizing the first interaction;
generate a first event record including: the first values formatted according to a first …, and metadata indicating the first… and a unique identifier indicating the event type;
capture, in a second… having a second format different from the first format, second values characterizing a second interaction between the …and a second …;
generate a second event record including the second values formatted according to the first …
determine a match between the first event record and the second event record; and
based on determining the match, generate, in a …, a … link between the first event record and the second event record.
17. (Currently Amended) A… configured to associate …event records related to a workflow, the … comprising:
…… … …
capturing, in a first file having a first format, first event information indicative of a first interaction between the … and a first …;
determining, based on the first event information, an event type associated with the first interaction;
extracting, from the first file, first values characterizing the first interaction;
generating a first event record including: the first values formatted according to a first data structure, and metadata indicating the first …and a unique identifier indicating the event type;
capturing, in a second … having a second format different from the first format, second values characterizing a second interaction between the …and a second …;
generating a second event record including the second values formatted according to the first …;
determining a match between the first event record and the second event record; and
based on determining the match, generating, …, a…link between the first event record and the second event record.
As stated above, this abstract idea falls into the (b) subject matter grouping of: methods of organizing human activity .
Prong 2: When considered individually and in combination, the instant claims are do not integrate the exception into a practical application because the steps of capturing…, determining…extracting…, generating…, capturing… , generating… determining…generating…do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea).
The instant recited claims including additional elements (i.e. storing…) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05 (f) and (g))
(2b) In the instant case, Claims 1-10 are directed to a process. Claims 17-20 are directed to a system. Claims 11-16 are directed to a non-transitory computer readable medium.
Additionally, the claims (independent and dependent) do not include additional elements that individually or in combination are sufficient to amount to significantly more than the judicial exception of abstract idea (i.e. provide an inventive concept). As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of: ( computer-implemented… processor…source application… file…computer readable medium… digital…digital link…) merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d), (f) and (g)) (Specification, [0010] computing device may include one or more processing elements, transceivers, and/or memory elements [0120] computer system…processors, sensors, transceivers, and/or servers… [0127] “processing element” or equivalents… general purpose processor… [0128] computer hardware components …[0129] … processing elements... )
The dependent claims have also been examined and do not correct the deficiencies of the independent claims.
It is noted that claim (2-10, 12-16, 18-20) introduces the additional elements of: wherein clauses further describing elements such as: data field/field type (Claim 2)… format… (Claim 3)…type of communication channel… metadata… (Claim 4)… event type.. (Claims 5, 7, 13)…event record…(Claim 8); … format…metadata… (Claim 14, 18)…type of communication channel… (Claim 15) …type of communication channel…event… (Claim 19).and wherein clauses further describing steps: assigning… augmenting… (Claims 6, 12,); ….generating… wherein …event… storing.. (Claim 9); …providing.. determining.. outputting… (Claim 10)…providing…. output… (Claim 16)… assigning… augmenting… wherein the event type… (Claim 20). These elements are not a practical application of the judicial exception because these limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05 (f) and (g)) Further these limitations taken alone or in combination with the abstract do not amount to significantly more than the abstract idea alone because, ).the element(s) amount(s) to mere use of a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d), (f) and (g)) (Specification, [0010] computing device may include one or more processing elements, transceivers, and/or memory elements [0120] computer system…processors, sensors, transceivers, and/or servers… [0127] “processing element” or equivalents… general purpose processor… [0128] computer hardware components …[0129] … processing elements... )
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20090265385 A1, (insurance document imaging and processing system- document conversion system in which assigned document identification data may be automatically matched to (and/or associated with) insurance information.
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 ASHA PUTTAIA H whose telephone number is (571)270-1352. The examiner can normally be reached M-F 9 am to 5:30 pm.
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/ASHA PUTTAIA H/Primary Examiner, Art Unit 3691
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