Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
2. Claims 2-25 were pending. Each of claims 2, 10, and 18-25 have been amended, claims 26-34 have been added, and no claims have been cancelled. Accordingly, claims 2-34 remain pending after inclusion of the present amendments.
3. This office action is in response to the Applicant Arguments/Remarks Made in an Amendment filed 04/29/2026.
4. Claims 2, 10 and 18 are independent claims.
5. The office action is made Final.
Information Disclosure Statement
6. Applicant’s IDS submissions are deemed excessive and not conforming to the best practices for IDS submissions, as detailed below.
Applicant has no "duty to submit information which is not material to the patentability of any existing claim", and information is material to patentability only "when it is not cumulative to information already of record or being made of record in the application". See 37 CFR 1.56(a) & (b). Further, applicant is requested to "eliminate clearly irrelevant and marginally pertinent cumulative information [and] if a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance". See MPEP 2004(14). An applicant’s duty of disclosure of material information is not satisfied by presenting a patent examiner with “a mountain of largely irrelevant data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real-world conditions under which examiners work.” Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1573, 220 U.S.P.Q. 289 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). An applicant has a duty to not just disclose pertinent prior art references but to make a disclosure in such way as not to “bury” it within other disclosures of less relevant prior art. See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 U.S.P.Q.2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc., 26 U.S.P.Q.2d 1889, 1899 (D. Del. 1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et al., 175 U.S.P.Q. 260, 272 (S.D. Fl. 1972).
MPEP 609 states that "consideration by the examiner of the information submitted in an IDS means nothing more than considering the documents in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search." Because applicant did not submit any explanatory remarks along with the IDS which provide an indication of how the IDS submissions are "material to the patentability of any existing claim" nor did applicant “highlight those documents [having the] most significance", given the volume of the submissions, the examiner has conducted only a cursory review and has not reviewed the documents thoroughly or in any particularized or individualized detail. Applicant is invited and requested to submit explanatory remarks “highlighting” those portion(s) of the document(s) that are of particular relevancy to the "patentability of any existing claim".
By signing the accompanying 1449 forms, Examiner is merely acknowledging the submission of the cited references and indicating that only a cursory review has been made. Finally, applicant should further note that nothing in this section is intended by the examiner to indicate a requirement for information for information under 37 CFR 1.105, but applicant is otherwise required to conform to other rules, requirements, and best practices regarding the submission of IDS documents, as noted above.
Claim Rejections – 35 USC § 101
7. 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.
8. Claims 2-34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category. See MPEP 2106.03.
Claim 2 recites the steps or acts…, and thus is a process (a series of steps or acts). A process is a statutory category of invention. (Step 1: YES).
Claim 10 recites a system comprising: The claim is directed to a physical circuit, which is a machine and/or manufacture, and falls within one of the statutory categories of invention. (Step 1: YES).
Claim 18 recites a non-transitory computer readable media encoded with instructions. a non-transitory computer readable media falls within the “manufacture” category of invention. (Step 1: YES).
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Claims 2, 10 and 18 recite in part the steps “requesting a report from an analytics system with access to a lineage index that stores a lineage between multiple files in a file system, including a first file requested in a user action and a temporary file generated by an application associated with the user action and responsive to the user action; and obtaining, from the analytics system using the lineage index, the report comprising at least one metric adjusted based on operation of the application associated with the user action, and a number of files in the file system queried by the analytics system, the number of files excluding the temporary file generated responsive to the operation of the application associated with the user action”.
Requesting a report from an analytics system with access to a lineage index is considered an abstract idea under 35 U.S.C. § 101. The Federal Circuit has frequently held that "requesting, transmitting, receiving, copying, deleting, and storing data records" are conventional, routine computer functions that do not constitute patent-eligible subject matter (Routine Data Processing).
Generating reports, even those mapping data lineage (tracking data from source to destination), is considered a type of record-keeping that humans have historically performed manually.
The above steps of claims 2, 10 and 18 appear to recite an abstract idea as a form of “a mental process”. One can mentally requesting, generating, or producing a report showing a count of the number of files excluding the temporary file by running a query or using a filter filtering the files by type, for example excluding the .tmp type. (Step 2A, Prong One: YES).
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
The claims 2, 10 and 18 recite the additional elements of “an analytics system”, “distributed file server comprising a plurality of file server virtual machines (FSVMs)”, “an analytics system”, “an analytics datastore”, “a user interface”, “processor”, “memory” and “non-transitory computer readable media”. is recited at a high level of generality and is used as a tool to perform an abstract idea, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f), and
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO), and the claim is directed to the judicial exception. (Step 2A: YES).
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole amount to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
As explained with respect to Step 2A, Prong Two, the additional elements were found to be mere instructions to apply the exception using a generic computer component in Step 2A, Prong Two.
Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer, which do not provide an inventive concept. (Step 2B: NO). The claim is not eligible.
The dependent claims merely incorporate additional elements that narrow the abstract idea without yielding an improvement to any technical field, the computer itself, or limitations beyond merely linking the idea to a particular technological environment.
Claims 26-34
Step 2A Prong 1:
Inherits the abstract idea of independent claims 2, 10 and 18 (recite an abstract idea as a form of “a mental process”).
Step 2A Prong 2:
This judicial exception is no integrated into a practical application. Aside from the limitations above, the claim recites:
There are no additional limitations.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. There are no additional limitations.
Claims 3, 4, 6, 7, 11, 12, 14, 15, 19, 20, 22 and 23
Step 2A Prong 1:
Inherits the abstract idea of independent claims 2, 10 and 18.
Step 2A Prong 2:
This judicial exception is not integrated into a practical application because the additional elements of the claims 3, 4, 6, 7, 11, 12, 14, 15, 19, 20, 22 and 23 amount to insignificant extra-solution activity.
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application.
Step 2B:
The conclusions from Step 2A Prong Two that additional elements were insignificant extra-solution activity should be re-evaluated in Step 2B.
this additional element is identified as insignificant extra-solution activity, when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in in MPEP 2106.05(d)(II), "Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); …”. Thus, this remains insignificant extra-solution activity that does not provide significantly more.
Even when considered in combination and viewing the claims as a whole, the additional elements do not provide an inventive concept. The claims are not eligible.
Claims 5, 8, 9, 13, 16, 17, 21, 24 and 25
Step 2A Prong 1:
Inherits the abstract idea of independent claims 2, 10 and 18.
Step 2A Prong 2:
This judicial exception is no integrated into a practical application. Aside from the limitations above, the recited claim (This amounts to linking the abstract idea to a field of user, see MPEP 2106.05(h)).
The additional elements as disclosed above alone or in combination do not integrate the judicial exception into practical application as they are mere generic computer hardware performing generic functions that are implemented to perform the disclosed abstract idea above and mere linking the abstract idea to a particular field of use.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional limitations which amount to linking the abstract idea to a field of use, see MPEP 2106.05(h).
The additional elements as disclosed above in combination of the abstract idea are not sufficient to amount to significantly more than the judicial exception as they are merely linking the abstract idea (mere instructions to apply the exception).
Respond to Amendments and Arguments
9. In the remarks received 04/29/2026, Applicant respectfully requests that the Double Patenting Rejection be held in abeyance until such time as all claims are found otherwise allowable.
10. The 35 U.S.C. § 101 rejection of claims 10-17 and 18-25 are withdrawn.
11. In the remarks received 04/29/2026, Each of claims 2, 10, and 18-25 have been amended, claims 26-34 have been added Applicant respectfully submits that the combination of the Gorelik and Weinstein references fails to disclose or suggest at least these features in the combination of amended independent claim 2, and reconsideration and withdrawal of the 35 U.S.C. § 103 rejection is respectfully requested.
Examiner presents the following responses to Applicant’s arguments:
- With respect to applicant’s arguments, applicant's arguments have been fully considered and are persuasive.
12. Subject Matter Eligibility: In the remarks received 04/29/2026, Applicant respectfully submits that the claims are eligible for patenting under 35 U.S.C. § 101 at least because the claims integrate any purported abstract idea into a practical application. Applicant notes that an improvement in the functioning of a computer system is indicative that the additional elements of the claim integrate the exception into a practical application. See MPEP 2106.04(d)(1).
Examiner presents the following responses to Applicant’s arguments:
- With respect to applicant’s arguments, applicant's arguments have been fully considered but they are not persuasive. Examiner expand the analysis of claims under 101 (see rejection above).
Requesting and generating reports, even those mapping data lineage (tracking data from source to destination), is considered a type of record-keeping that humans have historically performed manually. Requesting and generating a report from an analytics system with access to a lineage index is considered an abstract idea under 35 U.S.C. § 101. The Federal Circuit has frequently held that "requesting, transmitting, receiving, copying, deleting, and storing data records" are conventional, routine computer functions that do not constitute patent-eligible subject matter (Routine Data Processing).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. with respect to integration of the abstract idea into a practical application the additional element amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HICHAM SKHOUN whose telephone number is (571)272-9466. The examiner can normally be reached Normal schedule: Mon-Fri 10am-6:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Ng can be reached at 5712701698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HICHAM SKHOUN/Primary Examiner, Art Unit 2164
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