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 .
Status of Claims:
Claims 1 and 11 are amended.
Claims 1-20 are pending.
Response to Remarks:
Regarding 101:
The Applicant argues that the mental process rejection cannot be sustained with the amendments. Although the amendments have greatly clarified the claims and have made the claims (pending the Objection and Rejection of 101 below) eligible subject matter, they do not overcome 101. The crux of the Applicant’s rationale, as understood by the Examiner, is that pen/paper and the human mind cannot complete the limitations of the amendments. However, the Applicant has failed to consider that the MPEP in MPEP 2106.04(a)(2) III C #2 performing a mental process in a computer environment. (See also, MPEP 2106.04(A)(2) III paragraph 3 citing Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding those claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Also see MPEP 2106.04(A)(2) III paragraph 2. 1st sentence: "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions")
Specifically, here, based on the MPEP 2106.04(a)(2) III paragraph 2 test above, all you have is computer aided observations and evaluations to come up to a judgement of reconstructing workflow events based on ranking and similarity. Thus, similar to the example of MPEP 2106.04(a)(2) III paragraph 2 the claims would set forth the abstract mental processes. Therefore, the rationale and rejection are maintained.
Regarding 103:
In light of the Applicant’s amendments, the rejection has been withdrawn. The Examiner has been unable to find within the capacity of a person of ordinary skill in the art at the time of the invention all the elements with the claim amendments within a reasonable use of references. Thus, a finding of hindsight would need to be used, which is not allowable. Therefore, the novelty of the invention is the invention as a whole rather than a single limitation.
Claim Objections
Claims 1-20 are objected to because of the following informalities: “platform URL” URL needs to be spelled out. Appropriate correction is required.
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 therefore, 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. Claims 1 and 11 are directed to a judicial exception (i.e., a law of nature, natural phenomenon, or abstract idea) without significantly more. Specifically, the claims recite the abstract idea of a mental process.
PART I. 2A-PRONG ONE (IDENTIFY THE ABSTRACT IDEAS)
The Alice framework, step 2A-Prong One (part 1 of Mayo test), here, the claims are analyzed to determine if the claims are directed to a judicial exception. MPEP §2106.04(a). In determining, whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong One of Step 2A), and whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong Two of Step 2A). See 2019 Revised Patent Subject Matter Eligibility Guidance (“PEG” 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7, 2019)).
Independent claims 1 and 11 when “taken as a whole” recite the abstract idea of a mental process. Specifically, generating a workflow (i.e., action guide) as a function of feasibility.
Under step 2A-Prong One (part 1 of Mayo test), here, the claimed invention in claims 1 and 11 are directed to non-statutory subject matter because the claims as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. Accordingly, the claims are directed to a mental process, and thus, the claims are directed to an abstract idea under the first prong of Step 2A.
PART I. 2A-PRONG TWO (ADDITIONAL ELEMENTS THAT INTEGRATE THE JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION)
Under step 2A-Prong two (part 1 of Mayo test), this judicial exception is not integrated into a practical application under the second prong of Step 2A.
In particular, the claims recite the additional elements beyond the recited abstract idea of, “processor…memory containing instructions…template…inference engine…websites…URL…”
However, pursuant to the broadest reasonable interpretation, as an ordered combination, each of the additional elements are computing elements recited at high level of generality implementing the abstract idea, and thus, are no more than applying the abstract idea with generic computer components. (See, MPEP 2106.05 (f))
Examiner asserts that the dependent claims of 2-10 and 12-20 are similarly directed to the abstract idea. They are merely narrowing the limitations and not adding any elements to be considered significantly more.
PART II. DETERMINE WHETHER ANY ELEMENT, OR COMBINATION, AMOUNTS TO “SIGNIFICANTLY MORE” THAN THE ABSTRACT IDEA ITSELF
The Alice framework, we turn to step 2B (Part 2 of Mayo) to determine if the claim is sufficient to ensure that the claim amounts to “significantly more" than the abstract idea itself. These additional elements recite conventional computer components and conventional functions of: “processor…memory containing instructions…template…inference engine….websites…url…”
Examiner asserts that these do not amount to significantly more than the abstract idea because it is a generic computing element performing generic computing functions. (See, MPEP 2106.05 (f))
This is evidenced by the Applicant’s Specification Fig. 1 disclosing implementing the software on a graphical user interface using generic implementing software in a routine and conventional manner. Furthermore, they do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
The dependent claims of 2-10 and 12-20 do not independently overcome 101 and are therefore rejected based on their dependency of claims 1 and 11. The dependent claims alone or in combination recite similar elements which have already been found to be non-patent eligible. Furthermore, they do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as discussed above.
Allowable Subject Matter
Claims 1-20 are allowable, if they are rewritten to overcome 101. See above under Remarks for further clarity.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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ZAHRA . ELKASSABGI
Examiner
Art Unit 3623
/RUTAO WU/Supervisory Patent Examiner, Art Unit 3623
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