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
This action is response to the communication filed on March 31, 2026. Claims 19-38 are pending.
Preliminary Amendment
The claims amendment has been filed on March 31, 2026 as preliminary amendment has entered. Claims 1-18 has been canceled and new claims 19-38 has been added by the preliminary amendment.
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.
Claim 19-38 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12061577 (similarly patent 11249958).
Comparing the claims of the current application (applicant # 19/238,476) with the patented claims (patent 12061577 and 11249958) side by side, it can be seen the instant application substantially recite the limitations of claims of the cited U.S Patent No. 12061577 (similarly patent 11249958).
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims of the instant application substantially recite the limitations of claims of the cited U.S Patent No. 12061577 (similarly patent 11249958). The claim merely omits/add certain limitations. Even though the claims omit some limitations, that does not change the scope of the invention and would perform same functionality.
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
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 19-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Regarding the claim 1, it recites causing display, on a client device, of an issue tracking interface comprising an issue view including issue details for a particular issue managed by an issue tracking system; receiving, at the issue tracking system and from the client device, a workflow discovery request including runtime context information that references at least one of user details for a user account authenticated with respect to the client device or issue details for the particular issue; comparing, by the issue tracking system, the runtime context information with stored workflow context information to identify a set of available workflows, each available workflow of the set of available workflows having an applicable context that corresponds to the runtime context information; causing display of the set of available workflows on a user interface of the client device; in response to a selection of a workflow from the set of available workflows displayed the user interface, causing display, on the client device, of the selected workflow applicable to the runtime context information, the display of the workflow including workflow configuration information issue data corresponding to the particular issue; and executing, by the issue tracking system, the selected workflow, the executing comprising causing one or more operations defined by the workflow to be automatically executed in relation to the particular issue.
The claim recited the limitation of comparing ….. as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. User can compare the received information in mind as recited in the claimed limitation which is a mental process. Further, executing --- as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. User can mentally select information and execute in mind in relation to particular issues which is mental process.
The claim recited four additional elements: three instances of causing display ---, and receiving ---. The receiving step as recited amounts to mere data gathering, which is a form of insignificant extra-solution activity, (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362(utilizing an intermediary computer to forward information)). Further, the causing display step as recited is nothing but data manipulation and outputting which is an insignificant extra-solution activity. Further, the limitation can be done with help of a physical aid such as pencil and paper. Hence, the limitation is a mental process. See MPEP 2106.04(a)(2) III, B, If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."). Accordingly, even in combination, the additional element does not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
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 of causing display and receiving steps amounts to no more than mere instructions to apply the exception using a generic computer component. The courts have recognized these functions as well‐understood, routine, and conventional as they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (see 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)). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Claim 20 is dependent on claim 19 and includes all the limitations of claim 19. Therefore, claim 20 recites the same abstract idea of issue tracking of a workflow management. The claim recites the limitations of wherein comparing the runtime context information with stored workflow context information to identify the set of available workflows comprises accessing a workflow data store to determine whether stored workflows have context information that matches the runtime context information and at least one secondary trigger of the workflow is satisfied, which can be done mentally with or without the use of a physical aid (e.g., pen and paper) or with a generic computer and is not an inventive concept that meaningfully limits the abstract idea. Therefore, the limitation is a mental process.
Claim 21 is dependent on claim 19 and includes all the limitations of claim 19. Therefore, claim 21 recites the same abstract idea of issue tracking of a workflow management. The claim recites the limitations of in response to receiving the user selection of the workflow, checking compatibility of the workflow with respect to the particular issue, which can be done mentally with or without the use of a physical aid (e.g., pen and paper) or with a generic computer and is not an inventive concept that meaningfully limits the abstract idea. Therefore, the limitation is a mental process.
Claim 22 is dependent on claim 19 and includes all the limitations of claim 19. Therefore, claim 22 recites the same abstract idea of issue tracking of a workflow management. The claim recites the limitations of wherein the runtime context information further includes an issue status, an issue assignee, an issue creation context, an issue detail context or an issue summary context, which can be done mentally with or without the use of a physical aid (e.g., pen and paper) or with a generic computer and is not an inventive concept that meaningfully limits the abstract idea. Therefore, the limitation is a mental process.
Claim 23 is dependent on claim 19 and includes all the limitations of claim 19. Therefore, claim 23 recites the same abstract idea of issue tracking of a workflow management. The claim recites the limitations of wherein the selected workflow defines: a trigger condition comprising interaction context information defining one or more conditions that cause the workflow to be performed, wherein the one or more conditions are automatically evaluated; and an action input defining one or more operations that are performed in response to the trigger condition being satisfied, which can be done mentally with or without the use of a physical aid (e.g., pen and paper) or with a generic computer and is not an inventive concept that meaningfully limits the abstract idea. Therefore, the limitation is a mental process.
Claim 24 is dependent on claim 23 and includes all the limitations of claim 23. Therefore, claim 24 recites the same abstract idea of issue tracking of a workflow management. The claim recites the limitations of wherein a first condition of the one or more conditions corresponds with a type of a user action with respect to the particular issue, and a second condition of the one or more conditions corresponds with content of the user action with respect to the particular issue, which can be done mentally with or without the use of a physical aid (e.g., pen and paper) or with a generic computer and is not an inventive concept that meaningfully limits the abstract idea. Therefore, the limitation is a mental process.
Claim 25 is dependent on claim 19 and includes all the limitations of claim 19. Therefore, claim 25 recites the same abstract idea of issue tracking of a workflow management. The claim recites the limitations of wherein executing the selected workflow comprises at least one of an issue lifecycle state transition action, an issue comment action, an issue alert action, an issue creation action, or an issue field edit action, which can be done mentally with or without the use of a physical aid (e.g., pen and paper) or with a generic computer and is not an inventive concept that meaningfully limits the abstract idea. Therefore, the limitation is a mental process.
Claim 26 is dependent on claim 25 and includes all the limitations of claim 25. Therefore, claim 26 recites the same abstract idea of issue tracking of a workflow management. The claim recites the limitations of executing the selected workflow, storing a new workflow instance in association with a workflow execution record comprising a summary of one or more workflow actions, which can be done mentally with or without the use of a physical aid (e.g., pen and paper) or with a generic computer and is not an inventive concept that meaningfully limits the abstract idea. Therefore, the limitation is a mental process.
As to claims 27-38, they have similar limitations as of claims 19-26 above. Hence, they are rejected under the same rational as of claims 19-26 above.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 19-38 are rejected under 35 U.S.C. 103 as being unpatentable over Eisler et al. (Pub. No. : US 20130246345 A1) in the view of Okita et al. (Patent No. : US 7739325 B1)
As to clam 19 Eisler teaches a computer implemented method comprising:
causing display, on a client device, of an issue tracking interface comprising an issue view including issue details for a particular issue managed by an issue tracking system (paragraph [0049]: a workflow creation interface 200);
receiving, at the issue tracking system and from the client device, a workflow discovery request that references at least one of user details for a user account authenticated with respect to the client device or issue details for the particular issue (paragraphs [0039], [0050]: FIG. 2 provides a depiction of a workflow creation interface 200 in accordance with an embodiment of the invention, from which a user can create workflows. As can be seen, the workflow creation interface 200 of this embodiment includes an input selection panel 202, an action selection panel 204, an output selection panel 206, a description panel 210, and an application search/selection panel 212, wherein the server API provides data services such as fetching user-specific data to a particular workflow instance (e.g. to authenticate a user executing an application));
causing display of the set of available workflows on a user interface of the client device (paragraph [0100]: any search results satisfying the search criteria are identified (block 508), these are displayed);
in response to a selection of a workflow from the set of available workflows displayed the user interface, causing display, on the client device, of the selected workflow applicable to the runtime context information, the display of the workflow including workflow configuration information issue data corresponding to the particular issue (paragraph [0101]: If a user identifies a workflow they wish to execute (e.g. from the default list of workflows displayed at 502 or the search results displayed at 510)); and
executing, by the issue tracking system, the selected workflow, the executing comprising causing one or more operations defined by the workflow to be automatically executed in relation to the particular issue (paragraph [0047]: When associated with a particular directory an automation automatically executes a specified workflow and processes).
Eisler does not explicitly disclose but Okita teachers receive including runtime context information and comparing, by the issue tracking system, the runtime context information with stored workflow context information to identify a set of available workflows, each available workflow of the set of available workflows having an applicable context that corresponds to the runtime context information (Column 13 line 16-67, column 9 lines 14-16: query the workflow engine for the execution context, which contains a snapshot of the contents of the variables during the current step and extracts runtime statistics for the specified workflow(s) and compared to prior workflow server engines). It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify Eisler by adding above limitation as taught by Okita to provide a transaction processing system which is extensible so that new kinds of events can be handled without changing the core workflow execution method (Okita, column 1 lines 39-41).
As to claim 20 Eisler together with Okita teaches a method according to claim 19. Okita teaches wherein comparing the runtime context information with stored workflow context information to identify the set of available workflows comprises accessing a workflow data store to determine whether stored workflows have context information that matches the runtime context information and at least one secondary trigger of the workflow is satisfied (column 9 lines 14-16).
As to claim 21 Eisler together with Okita teaches a method according to claim 19. Eisler teaches in response to receiving the user selection of the workflow, checking compatibility of the workflow with respect to the particular issue (paragraph [0056]).
As to claim 22 Eisler together with Okita teaches a method according to claim 19. Eisler teaches wherein the runtime context information further includes an issue status, an issue assignee, an issue creation context, an issue detail context or an issue summary context (Column 13 line 16-67).
As to claim 23 Eisler together with Okita teaches a method according to claim 19. Eisler teaches wherein the selected workflow defines: a trigger condition comprising interaction context information defining one or more conditions that cause the workflow to be performed, wherein the one or more conditions are automatically evaluated and an action input defining one or more operations that are performed in response to the trigger condition being satisfied (paragraph [0100]).
As to claim 24 Eisler together with Okita teaches a method according to claim 23. Eisler teaches wherein a first condition of the one or more conditions corresponds with a type of a user action with respect to the particular issue, and a second condition of the one or more conditions corresponds with content of the user action with respect to the particular issue (paragraph [0061]-[0063]).
As to claim 25 Eisler together with Okita teaches a method according to claim 19. Eisler teaches wherein executing the selected workflow comprises at least one of an issue lifecycle state transition action, an issue comment action, an issue alert action, an issue creation action, or an issue field edit action (paragraph [0066]).
As to claim 26 Eisler together with Okita teaches a method according to claim 19. Eisler teaches after executing the selected workflow, storing a new workflow instance in association with a workflow execution record comprising a summary of one or more workflow actions (paragraph [0111]).
As to claims 27-38, they have similar limitations as of claims 19-26 above. Hence, they are rejected under the same rational as of claims 19-26 above.
Examiner's Note: Examiner has cited particular columns and line numbers or paragraphs in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in its entirety as potentially teaching of all or part of the claimed invention, as well as the context.
Conclusion
The prior art made of record, listed on form PTO-892, and not relied upon, if any, is considered pertinent to applicant's disclosure.
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/MD I UDDIN/Primary Examiner, Art Unit 2169
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