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 .
DETAILED ACTION
Claims 1-22 are pending in this application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/03/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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).
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Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,309,045. Although the claims at issue are not identical, they are not patentably distinct from each other because one of ordinary skill in the art would have known that all of the limitations in the current application are disclosed in patent 12,309,045 which includes extra features in the claim limitation.
Re claim 1, Patent ‘045 discloses a system that implements a data-driven, risk and activity-based dynamic audit application, the system comprising:
an interface that communicates with one or more users via a communication network;
an Activity Database that stores and manages one or more Activities wherein each Activity comprises an Input, an Action and an Output;
a Documentation Database that stores and manages client data, external data and previous output data wherein the Documentation Database and the Activity Database are linked in a manner where the Input of the Activity is based on data from the Documentation Database and the Output of the Activity is used to update the Documentation Database;
a Risk/Response Library Database that stores and manages standard risks, risk groups, risk responses and control objectives; and
a computer processor coupled to the interface, the Activity Database and the Documentation Database, the Risk/Response Library Database and further configured to perform the steps of:
performing an initial action that generates a corresponding one or more outputs wherein the initial action is part of an audit engagement;
based on the corresponding one or more outputs, dynamically generating a set of activity options;
for each activity option, determining a score that represents a relative ranking against other activity options;
from the set of activity options and based at least in part on the score, identifying an optimal activity;
performing a next action that comprises the optimal activity;
generating a set of procedures specific to the audit engagement; and
presenting one or more risk indicators within the Risk/Response Library Database using the output of one or more specific actions performed to assist the auditor in identifying one or more relevant risks (claim 1).
Re claim 2, Patent ‘045 discloses wherein the Action comprises one or more of: Inspection, Observation, Confirmation, Recalculation, Reperformance, Analytical Procedure, Inquiry, Concluding, Evaluating and Measuring (claim 2).
Re claim 3, Patent ‘045 discloses wherein the Action is developed by: determining one or more inputs necessary to complete the Action, determining one or more outputs and how the one or more outputs are subsequently used (claim 3).
Re claim 4, Patent ‘045 discloses wherein the set of procedures are used to generate an audit report (claim 4).
Re claim 5, Patent ‘045 discloses wherein the set of activity options comprise one or more Activity Groups based on the type of evidence each Activity is designed to elicit (claim 5).
Re claim 6, Patent ‘045 discloses wherein the score comprises an object score where an object represents a matter to resolve or a goal of the Activity and the object score represents a measure of evidence sufficiency in resolving the object (claim 6).
Re claim 7, Patent ‘045 discloses wherein the object comprises a set of attributes relating to evidence needed to satisfy each attribute and evidence accumulated (claim 7).
Re claim 8, Patent ‘045 discloses wherein the set of attributes comprises: personnel availability, time to complete, completion date, and availability of inputs (claim 8).
Re claim 9, Patent ‘045 discloses wherein the optimal activity is based on ranking the set of activity options by an efficiency determination (claim 9).
Re claim 10, Patent ‘045 discloses further comprising a higher order user documentation database that comprises an Activity Database (claim 10).
Re claim 11, Patent ‘045 discloses a method that implements a data-driven, risk and activity-based dynamic audit application, the method comprising the steps of:
storing and managing, via an Activity Database, one or more Activities wherein each Activity comprises an Input, an Action and an Output;
storing and managing, via a Documentation Database, client data, external data and previous output data wherein the Documentation Database and the Activity Database are linked in a manner where the Input of the Activity is based on data from the Documentation Database and the Output of the Activity is used to update the Documentation Database;
storing and managing, via a Risk/Response Library Database, standard risks, risk groups, risk responses and control objectives;
performing, via a computer processor, an initial action that generates a corresponding one or more outputs wherein the initial action is part of an audit engagement;
based on the corresponding one or more outputs, dynamically generating, via the computer processor, a set of activity options;
for each activity option, determining, via a scoring engine, a score that represents a relative ranking against other activity options;
from the set of activity options and based at least in part on the score, identifying, via the computer processor, an optimal activity;
performing, via the computer processor, a next action that comprises the optimal activity; generating, via the computer processor, a set of procedures specific to the audit engagement; and
presenting, via the computer processor, one or more risk indicators within the Risk/Response Library Database using the output of one or more specific actions performed to assist the auditor in identifying one or more relevant risks (claim 11).
Re claim 12, Patent ‘045 discloses wherein the Action comprises one or more of: Inspection, Observation, Confirmation, Recalculation, Reperformance, Analytical Procedure, Inquiry, Concluding, Evaluating and Measuring (claim 12).
Re claim 13, Patent ‘045 discloses wherein the Action is developed by: determining one or more inputs necessary to complete the Action, determining one or more outputs and how the one or more outputs are subsequently used (claim 13).
Re claim 14, Patent ‘045 discloses wherein the set of procedures are used to generate an audit report (claim 14).
Re claim 15, Patent ‘045 discloses wherein the set of activity options comprise one or more Activity Groups based on the type of evidence each Activity is designed to elicit (claim 15).
Re claim 16, Patent ‘045 discloses wherein the score comprises an object score where an object represents a matter to resolve or a goal of the Activity and the object score represents a measure of evidence sufficiency in resolving the object (claim 16).
Re claim 17, Patent ‘045 discloses wherein the object comprises a set of attributes relating to evidence needed to satisfy each attribute and evidence accumulated (claim 17).
Re claim 18, Patent ‘045 discloses wherein the set of attributes comprises: personnel availability, time to complete, completion date, and availability of inputs (claim 18).
Re claim 19, Patent ‘045 discloses wherein the optimal activity is based on ranking the set of activity options by an efficiency determination (claim 19).
Re claim 20, Patent ‘045 discloses further comprising the step of: providing a higher order user documentation database that comprises an Activity Database and interacts with a Higher Order Activity Database (claim 20).
Re claim 21, Patent ‘045 discloses wherein the computer processor is further configured to perform the steps of: storing and managing, via the Risk/Response Library Database, one or more standard risks, risk response procedures, risk groups and/or control objectives; generating one or more risk indicators that uses as inputs the outputs of one or more audit activities that have been performed for the audit engagement; generating one or more suggested risks from the Risk/Response Library Database using a predefined or system-learned linkage from the one or more risks indicators to one or more items in the Risk/Response Library Database; and generating one or more suggested risk response procedures from the Risk/Response Library Database using a predefined or system-learned linkage from the one or more risks added to the audit engagement to one or more items in the Risk/Response Library Database (claim 21).
Re claim 22, Patent ‘045 discloses further comprising the steps of: storing and managing, via the Risk/Response Library Database, one or more standard risks, risk response procedures, risk groups and/or control objectives; generating, via the computer processor, one or more risk indicators that uses as inputs the outputs of one or more audit activities that have been performed for the audit engagement; generating, via the computer processor, one or more suggested risks from the Risk/Response Library Database using a predefined or system-learned linkage from the one or more risks indicators to one or more items in the Risk/Response Library Database; and generating, via a computer processor, one or more suggested risk response procedures from the Risk/Response Library Database using a predefined or system-learned linkage from the one or more risks added to the audit engagement to one or more items in the Risk/Response Library Database (claim 22).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7, 9-17, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over King (US 2011/0119107) and in view of Holovacs (US 2024/0095637).
Re claim 1, King discloses a system that implements a data-driven, risk and activity-based dynamic audit application ([0006], tailor audits to satisfy risk management), the system comprising: an interface that communicates with one or more users via a communication network ([0070] The audit manager 305 is interfaced with a workflow-enabled project management application to enable collaboration between auditors by providing planning functions, task assignment functions, progress tracking functions, communication functions, and document management functions.); an Activity Database that stores and manages one or more Activities wherein each Activity comprises an Input, an Action and an Output (250 of FIG. 2; [0054], inputs and outputs of the business functions.); a Documentation Database that stores and manages client data, external data and previous output data (305 of FIG. 3; [0070]-[0072], audit manager can store and manage supporting documentation in a docket management system) wherein the Documentation Database and the Activity Database are linked in a manner where the Input of the Activity is based on data from the Documentation Database and the Output of the Activity is used to update the Documentation Database ([0070] the project templates for audit procedures are defined in a workflow-enabled project management application linked with the business process in the workflow system. In this embodiment, the project templates for auditing a business process are workflows defined by the workflow system.); a Risk/Response Library Database that stores and manages standard risks, risk groups, risk responses and control objectives (fig. 2, 255, 265; [0062], process controls associated with process risks and business process of the lirbrary); and a computer processor coupled to the interface, the Activity Database and the Documentation Database, the Risk/Response Library Database (Fig. 1, 130 [0049], web application server processes audit data and user computer requests, audit data can be stored or retrieved from database 135) and
further configured to perform the steps of: performing an initial action that generates a corresponding one or more outputs wherein the initial action is part of an audit engagement (Fig. 3, 305; [0071]-[0072], audit projects can be a scheduled activity or a trigger event); generating a set of procedures specific to the audit engagement (Fig. 2, 260; par [0064], [0070], set of process procedures with other data objects. Project templates defining standard audit procedures.); and presenting one or more risk indicators within the Risk/Response Library Database using the output of one or more specific actions performed to assist the auditor in identifying one or more relevant risks ([0174], [0189], survey results are aggregated to create risks assessments detailing the perceived risks to the survey. Survey results to predict when a control is to be rated ineffective. Determine if previous audit results can be used to assess the likelihood of failure). King does not explicitly disclose, however Holovacs discloses based on a corresponding one or more outputs, dynamically generating a set of activity options (Fig. 1, 1-12, 1-14; [0063], collect activity data and detect the patters in the activity data, rank the activities and provide a report); for each activity option, determining a score that represents a relative ranking against other activity options ([0063] it may be desired to provide an auditor with a report (e.g., step 1-18) of potential collusive activities, along with a ranking and/or score, to help the concentrate the activities posing the highest risks.); from the set of activity options and based at least in part on the score, identifying an optimal activity ([0063] it may be desired to provide an auditor with a report (e.g., step 1-18) of potential collusive activities, along with a ranking and/or score, to help the concentrate the activities posing the highest risks.);
performing a next action that comprises the optimal activity ([0063] it may be desired to provide an auditor with a report (e.g., step 1-18) of potential collusive activities, along with a ranking and/or score, to help the concentrate the activities posing the highest risks.). It would have been obvious to one of ordinary skill in the art to incorporate the teachings of King’s system of predictable results with Holovac’s activity scoring technique. One would be motivated to make the combination to provide the benefit of direction auditors’ attention towards more important activities so as to appropriately prioritize their work. A high likelihood of success is anticipated given that both Holovacs and King relate to computer-assisted auditing systems. Further, in view of this substantial similarity it would have been readily apparent to one of ordinary skill that various beneficial features of Holovacs could have been implemented within the King system with predictable results and a beneficial effect.
Re claim 2, King discloses wherein the Action comprises one or more of: Inspection, Observation, Confirmation, Recalculation, Reperformance, Analytical Procedure, Inquiry, Concluding, Evaluating and Measuring ([0056]-[0057], business process of procurement to payment business and requests business supplies, receipts of the business supplies, payables function are all analytical procedures).
Re claim 3, King discloses wherein the Action is developed by: determining one or more inputs necessary to complete the Action, determining one or more outputs and how the one or more outputs are subsequently used ([0054], [0190], business process is with defined inputs and results. Business functions are needed to complete the operation with inputs and output for subsequent audits.).
Re claim 4, one of ordinary level of skill in the art would have been compelled to make the proposed modification to King for the same reasons identified in the rejection of claim 1. In addition, Holovacs discloses the system of claim 1, wherein the set of procedures are used to generate an audit report ([0063], it may be desired to provide an auditor with a report (e.g., step 1-18) of potential collusive activities, along with a ranking and/or score, to help the concentrate the activities posing the highest risks.).
Re claim 5, King discloses wherein the set of activity options comprise one or more Activity Groups based on the type of evidence each Activity is designed to elicit ([0070]-[0072], [0107], Audit project template can include standard audit procedures, document templates, and standard deliverables needed for an audit of an associated business process.).
Re claim 6, King discloses, wherein the score comprises an object score where an object represents a matter to resolve or a goal of the Activity and the object score represents a measure of evidence sufficiency in resolving the object ([0101], each KPI has a desired objective value. The PFM monitors the KPI for deviations.).
Re claim 7, one of ordinary level of skill in the art would have been compelled to make the proposed modification to King for the same reasons identified in the rejection of claim 1. In addition, Holovacs discloses wherein the object comprises a set of attributes relating to evidence needed to satisfy each attribute and evidence accumulated ([0063], the ML model is applied to the collected data to detect one or more pattern anomalies in the collected data that may be indicative of collusive behavior of two or more individuals. Potential collusive activities, along with a ranking and/or score, to help the concentrate the activities posing the highest risks).
Re claim 9, one of ordinary level of skill in the art would have been compelled to make the proposed modification to King for the same reasons identified in the rejection of claim 1. In addition, Holovacs discloses wherein the optimal activity is based on ranking the set of activity options by an efficiency determination ([0063], potential collusive activities identified by the ML model can be ranked and/or scored).
Re claim 10, King discloses a higher order user documentation database that comprises an Activity Database ([0049], audit data and user computer requests. Database 312 can be store general audit data used by every user for every audit).
Re claim 21, King discloses wherein the computer processor is further configured to perform the steps of: storing and managing, via the Risk/Response Library Database, one or more standard risks, risk response procedures, risk groups and/or control objectives (Fig. 2, 255, 265; [0061]-[0063], business processes of the process library . Risks can result from a variety of sources and can be classified into categories, types of risk, and organizations affected by the risk.); generating one or more risk indicators that uses as inputs the outputs of one or more audit activities that have been performed for the audit engagement (Fig. 24, 2405, 2410, 2415 of FIG. 24; [0201], the results of the audits of the set of controls 2405 and the set of risks 2410 can be used to evaluate the set of processes 2415 of the organization); generating one or more suggested risks from the Risk/Response Library Database using a predefined or system-learned linkage from the one or more risks indicators to one or more items in the Risk/Response Library Database ([0090], The Risks selection 514 from within the Processes tab 506 displays the risks that relate to the each business process in a table); and generating one or more suggested risk response procedures from the Risk/Response Library Database using a predefined or system-learned linkage from the one or more risks added to the audit engagement to one or more items in the Risk/Response Library Database ([0090], each risk is classified according to its probability and impact).
With respect to claims 11-17, and 19-20 and 22, they are similar to claims 1-7, 9-10, and 21 and therefore are rejected for the same reasons above.
Claims 8 and 18 are rejected as being unpatentable over King et al. (US 2006/0105585), in view of Holovacs (US 2024/0095637), and further in view of Watson (US 2021/0019837).
Regarding claims 8 and 18, King discloses wherein the set of attributes comprises: personnel availability and availability of inputs ([0070], Task assignment functions enable the project management application to locate available people with the skill set to match assignments. [0172], one or more input fields for recording the company officer's certification and his or her comments).
King and Holovacs does not explicitly disclose, however Watson disclose time to complete and completion date ([0074], time taken to perform tasks, [0042]-[0042], timestamp when data collectors have completed their data collection). It would have been obvious to one of ordinary skill in the art to implement the time to complete and completion dates of Watson within the King and Holovacs system with predictable results. One would be motivated to make the combination to provide the predictable benefit of predicting how long particular auditing activities will take to complete so that activities can be planned and resources effectively allocated. A high likelihood of success is anticipated given that both Watson and King and Holovacs relate to performing computer-assisted audits. Further, in view of this substantial similarity it would have been readily apparent to one of ordinary skill that various beneficial features of Watson could have been implemented within the King-Holovacs system with predictable results and a beneficial effect.
Conclusion
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/HO T SHIU/Examiner, Art Unit 2443
HO T. SHIU
Examiner
Art Unit 2443
/NICHOLAS R TAYLOR/Supervisory Patent Examiner, Art Unit 2443
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