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 .
Drawings
The drawings filed on February 28, 2024 are accepted.
Information Disclosure Statement
3. The Information Disclosure Statements filed on January 15, 2025 have been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Rejections - 35 USC§ 101
4. 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.
5. Claims 35-54 are rejected under 35 U.S.C. 101 because 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.
Subject Matter Eligibility Standard
Under the 35 U.S.C. §101 subject matter eligibility two-part analysis, Step 1 addresses whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP §2106.03. If the claim does fall within one of the statutory categories, it must then be determined in Step 2A [prong 1] whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). See MPEP §2106.04. If the claim is directed toward a judicial exception, it must then be determined in Step 2A [prong 2] whether the judicial exception is integrated into a practical application. See MPEP §2106.04(d). Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in Step 2B whether the claim recites "significantly more" than the abstract idea. See MPEP §2106.05.
Examiner’s note: The Office's 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) is currently found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), specifically incorporated in MPEP §2106.03 through MPEP §2106.07(c).
Under Step One: claims 35-46 are directed to service ticket translation module. Claims 47-54 are directed to a method (process). Each of the claims falls under one of the four statutory classes of invention.
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). Thus, the claims fall under one of the four statutory classes of invention under step One.
Representative claim 35 recites the limitations in the abstract idea highlighted in non-bold.
one or more processors; and
a computer readable storage medium storing program instructions that, when executed by the one or more processors cause the ticket translation module to:
select data of a sales opportunity for inclusion in a service ticket,
store the selected data of the sales opportunity into the service ticket; and
provide the service ticket to a service board.
The dependent claims:
Claim 36 further recites wherein the sales opportunity is generated based on at least one of:
comparing a number of times a sales lead has been contacted with a threshold;
determining a phone call has been completed with the sales lead;
determining an appointment is set up with the sales lead; and
determining that a quote is set up for the sales lead.
Claim 37 further recites wherein the instructions further cause the ticket translation module to:
select data of the sales opportunity by identifying a closed sales opportunity.
Claim 38 further recites wherein the instructions further cause the ticket translation module to:
select data of the sales opportunity by identifying a sales opportunity that includes a required data value.
Claim 39 further recites wherein selecting data of the sales opportunity further comprises performing a consistency test on a sales opportunity to identify consistent data.
Claim 40 further recites wherein storing the selected data further comprises obtaining historical values of the selected data.
Claim 41 further recites wherein the sales opportunity comprises one or more of a plurality of quotes associated with the sales opportunity, a plurality of documents associated with the sales opportunity, and a plurality of notes associated with the sales opportunity, and
wherein the instructions further cause the ticket translation module to:
translate the plurality of quotes associated with the sales opportunity into a plurality of quotes associated with the service ticket;
translate the plurality of documents associated with the sales opportunity into a plurality of documents associated with the service ticket; and
translate the plurality of notes associated with the sales opportunity into a plurality of notes associated with the service ticket.
Claim 42 further recites wherein the instructions further cause the ticket translation module to:
create a change data structure based on a change to the sales opportunity; and
translate the change data structure into a change to the service ticket corresponding to the change to the sales opportunity.
Claim 43 further recites the instructions further cause the ticket translation module to:
analyze a close date to estimate a service start time;
analyze line items in a quote to determine promises to customers;
analyze inventory availability to estimate procurement delay; and
generate a service ticket deadline based on the analyses.
Claim 44 further recites the instructions further cause the ticket translation module to:
analyze products within a forecast of the sales opportunity to determine whether an email server is included; and
in response to determining an email server is included, generate multiple service tickets including:
a first service ticket to install hardware for the server;
a second service ticket to install an operating system on the server; and a third service ticket to install and configure email server software.
Claim 45 further recites the instructions further cause the ticket translation module to:
analyze revenue associated with the sales opportunity;
analyze a history of sales stages associated with the sales opportunity; and
increase a priority of the service ticket based on at least one of the revenue exceeding a threshold or the history of sales stages indicating the sales opportunity was expedited.
Claim 46 further wherein the service ticket includes at least the selected data of the sales opportunity.
Claim 47 recites:
selecting data of a sales opportunity included in a sales lead data structure for inclusion in a service ticket;
storing the selected data of the sales opportunity into the service ticket; and providing the service ticket to a service board.
Claim 48 further recites wherein identifying the sales lead as a sales opportunity comprises at least one of:
comparing a number of times the sales lead has been contacted with a threshold;
determining a phone call has been completed with the sales lead;
determining an appointment is set up with the sales lead; and
determining that a quote is set up for the sales lead.
Claim 49 further recites wherein selecting data of the sales opportunity comprises identifying a closed sales opportunity.
Claim 50 further recites wherein selecting data of the sales opportunity comprises identifying a sales opportunity that includes a required data value.
Claim 51 further recites wherein selecting data of the sales opportunity further comprises performing a consistency test on a sales opportunity to identify consistent data.
Claim 52 further recites wherein storing the selected data further comprises obtaining historical values of the selected data.
Claim 53 recites wherein the sales opportunity comprises a plurality of quotes associated with the sales opportunity, a plurality of documents associated with the sales opportunity, and a plurality of notes associated with the sales opportunity, and the method further comprises:
translating the plurality of quotes associated with the sales opportunity into a plurality of quotes associated with the service ticket;
translating the plurality of documents associated with the sales opportunity into a plurality of documents associated with the service ticket; and
translating the plurality of notes associated with the sales opportunity into a plurality of notes associated with the service ticket.
Claim 54 further recites wherein the sales lead data structure is received from a sales opportunity module.
Regarding independent claim 35 and 47, the limitations of “select/selecting”, “store/storing”, and “provide/providing” are a process that, under its broadest reasonable interpretation, covers organizing human activity concepts, but for the recitation of generic computer components.
Independent claims 35 and 47 recite the abstract idea of various data observations, evaluations, judgements, and/or opinions analyzing the asset data and generating the asset management data based on the analyzing, which is considered Mental processes - concepts performed in the human mind (including an observation, evaluation, judgement, opinion. See MPEP §2106.04(a)(2)(11).
Dependent claims 36-46, and 48-52 when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because they recite the same abstract ideas.
Step 2A, Prong One:
Regarding claims 35, and 47, applicant is to be noted that the steps or functions of “select or selecting", involve mental processes and/or generic computer functions. The steps or functions of “store or storing”, are considered as data gathering functions. The steps or functions of “provide or providing”, involve mental processes and/or generic computer functions. ”
Claims 35, and 47 are found to include at least one judicial exception, that the resent claims recite steps that can be performed using the human mind, pen, and paper. According to the 2019 Revised Guidance, concepts performed in the human mind (including an observation, evaluation, judgement, or opinion) fall into the category of mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Step 2A, Prong Two of the eligibility analysis evaluates whether the claims as a whole integrate the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55. In particular, the claims recite the following bolded limitations understood to be additional limitations:
In addition to the abstract ideas recited in claims 35, and 47, the claimed method recites additional elements including a one or more processors; and a computer readable storage medium storing program instructions that, when executed by the one or more processors cause the ticket translation module (Claim 35). See Page 2 second paragraph of applicant’s specification].
When considered in view of the claims as a whole, the recited computer elements do not integrate the abstract idea into a practical application because the computer elements are generic computer elements that are merely used as a tool to perform the recited abstract idea. As a result, claims 35, and 47 does not include additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
Performing steps or functions by a communication device, a processor or a computing system merely limits the abstraction to a computer field by execution by generic computers. See MPEP 2106.05.
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to insignificant extra-solution activity, and limitations which amount to generally linking to a particular technological environment do not integrate a practical exception into a practical application.
Consideration of these steps as a combination does not change the analysis as they do not add anything compared to when the steps are considered separately. The claims recite a particular sequence of functions of selecting data of a sales opportunity for inclusion in a service ticket.
Performance of these steps or functions technologically may present a meaningful limit to the scope of the claim does not reasonably integrate the abstraction into a practical application.
Dependent claims 36-46, and 48-54 merely incorporate the additional elements recited above, along with further embellishments of the abstract idea of independent claims 35, and 47. Further, merely using/applying in a computer environment such as merely using the computer as a tool to apply instructions of the abstract idea do nothing more than provide insignificant extra-solution activity since they amount to data gathering, analysis and outputting. Furthermore, they do not pertain to a technological problem being solved in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, and/or the limitations fail to achieve an actual improvement in computer functionality or improvement in specific technology other than using the computer as a tool to perform the abstract idea.
Therefore, the additional elements recited in the claimed invention individually, and in combination fail to integrate the recited judicial exception into any practical application.
Regarding Step 2B
Claims 35-54 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional element(s) as described above with respect to Step 2A Prong 2, the additional element of claims 35, and 47 include one or more processors; and a computer readable storage medium storing program.
. The processor merely amounts to a general purpose computer used to apply the abstract idea(s) (MPEP 2106.05(f)) and/or performs insignificant extra-solution activity, e.g. data retrieval and storage, as described above (MPEP 2106.0S(g)) which are further merely well-understood, routine, and conventional activities as evidenced by MPEP 2106.06(05)(d)(II) (describing conventional activities that include transmitting and receiving data over a network, electronic recordkeeping, storing and retrieving information from memory, electronically scanning or extracting data from a physical document, and a web browser's back and forward button functionality). Therefore, similarly the combination and arrangement of the above identified additional elements when analyzed under Step 2B also fails to necessitate a conclusion that the claims amount to significantly more than the abstract idea directed to facilitate the efficient handoff of a closed sales opportunity to other parts of an organization (Paragraph 0048).
As a result of the above analysis, claim 35, as well as claim 47, do not appear to be patent eligible under 101.
With regards to the dependent claims, the dependent claims when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
Claim Rejections - 35 USC§ 102
6. In the event the determination of the status of the application as subject to AIA 35
U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
7. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(a)(l) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
8. Claims 35-41 and 46-54 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson (U.S. Patent No. 7,941,341 B2, hereinafter Johnson).
Regarding claims 35, and 47, Johnson teaches:
Select/selecting data of a sales opportunity for inclusion in a service ticket (column 14 line 30 through column 15 line 36, and column 38, lines 26-50);
Store/storing the selected data of the sales opportunity into the service ticket (Column 38, lines 26-50); and
Provide/providing the service ticket to a service board (Column 32, lines 6-64).
Regarding claim 36 and 48, Johnson further teaches wherein the sales opportunity is generated based on at least one of:
comparing a number of times a sales lead has been contacted with a threshold;
determining a phone call has been completed with the sales lead;
determining an appointment is set up with the sales lead; and
determining that a quote is set up for the sales lead (Fig. 4 and Column 20, lines 57-67).
Regarding claims 37 and 46, Johnson further teaches wherein the instructions further cause the ticket translation module to:
select data of the sales opportunity by identifying a closed sales opportunity (Fig. 21C).
Regarding claim 38 and 50, Johnson further teaches select/selecting data of the sales opportunity by identifying a sales opportunity that includes a required data value (Column 32, lines 17-26).
Regarding claims 39 and 51, Johnson further teaches wherein selecting data of the sales opportunity further comprises performing a consistency test on a sales opportunity to identify consistent data. Note abstract of Johnson
Regarding claims 40 and 52, Johnson further teaches wherein storing the selected data further comprises obtaining historical values of the selected data (Column 23 line 55 to Column 24, line 7) .
Regarding claims 41 and 53, Johnson further teaches wherein the sales opportunity comprises one or more of a plurality of quotes associated with the sales opportunity, a plurality of documents associated with the sales opportunity, and a plurality of notes associated with the sales opportunity, and wherein the instructions further cause the ticket translation module to:
translate the plurality of quotes associated with the sales opportunity into a plurality of quotes associated with the service ticket (Fig. 4; Column 8, line 55 to Column 9, line 3);
translate the plurality of documents associated with the sales opportunity into a plurality of documents associated with the service ticket (Column 8, line 55 to Column 9, line 3); and
translate the plurality of notes associated with the sales opportunity into a plurality of notes associated with the service ticket (Column 8, line 55 to Column 9, line 3);
Regarding claims 46 and 54, Johnson further teaches wherein the service ticket includes at least the selected data of the sales opportunity (Column 32, lines 17-26).
Regarding claim 49, Johnson further recites wherein selecting data of the sales opportunity comprises identifying a closed sales opportunity (Fig. 21C, the closing of a sale is linked to all steps of the sales process).
9. Claim 42-45 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Double Patenting
10. The non-statutory 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 claims at issue 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); and /n 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The USPTO internet Web site contains terminal disclaimer forms which may be
used. Please visit http:/Awww.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim 35-54 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. US 11/429,913). Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963).
Claims 35-54 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12/223450 . Although the conflicting claim is not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963).
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. As per attached PTO 892 form.
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/ROMAIN JEANTY/Primary Examiner, Art Unit 3624
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