DETAILED ACTION
This action is in response to the application filed 18 June 2025, claiming benefit back to 14 October 2022.
Claims 31 – 60 are pending and have been examined.
This action is Non-Final.
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 .
Continuation
This application is a continuation application of U.S. application no. 18/625,561 filed on 3 April 2024, now U.S. Patent 12,361,356 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 31 – 60 are rejected on the ground of nonstatutory double patenting as being unpatentable over corresponding claims of U.S. Patent No. U.S. 12,361,356 (‘356).
Claim 31 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. U.S. 12,361,356 (‘356). Although the claims at issue are not identical, they are not patentably distinct from each other because, as shown in the comparison of the claims below, claim 1 of the ‘356 patent would anticipate claim 31 of the Instant Application.
U.S. 12,361,356
1. A system for performing an item workflow, the system comprising:
a database storing:
a hierarchical data structure comprising a parent node and child nodes linked to the parent node, a child node of the child nodes being associated with an item; and
a workflow template for defining a workflow comprising one or more tasks and one or more variables, the item comprising a part and the one or more tasks comprising testing or manufacturing of the part; and
a data engine comprising non-transitory computer readable storage medium comprising program instructions stored thereon that are executable by a processor to perform the following operations:
receiving, via a user interface, user input comprising:
a user selection to log the workflow with the item; and
a data value;
in response to receiving the user input:
generating, based on the workflow template, a workflow instance node comprising:
the data value; and
a status of the one or more tasks of the workflow; and
linking, in the hierarchical data structure, the workflow instance node as a child of the child node associated with the item;
presenting, via a user interface, an indication of the workflow, the data value and the status of the one or more tasks of the workflow in association with the item;
receiving, via a user interface, a user selection to initiate the workflow for the item; and
executing, in response to the user selection to initiate the workflow for the item, one or more tasks of the workflow to cause the performing of the testing or manufacturing of the part.
Instant Application
31. A system for performing an item workflow, the system comprising:
a database storing:
a hierarchical data structure comprising a parent node and child a node linked to the parent node, a child node node being associated with an item; and
a workflow template for defining a workflow comprising one or more tasks and one or more variables
a data engine comprising non-transitory computer readable storage medium comprising program instructions stored thereon that are executable by a processor to perform the following operations:
receiving
receiving a request to log the workflow with the item; and
generating, based on the request to log the workflow with the item and the workflow template, a workflow instance node comprising:
a data value corresponding to at least one of the one or more variables; and
a status of the one or more tasks of the workflow; and
linking, in the hierarchical data structure, the workflow instance node as a child of the child node associated with the item;
receivinga request to initiate the workflow for the item; and
executing, in response to the request to initiate the workflow for the item, .
Claim 32 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. U.S. 12,361,356 (‘356). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the ‘356 patent would anticipate claim 32 of the instant Application.
Claim 33 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. U.S. 12,361,356 (‘356). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the ‘356 patent would anticipate claim 33 of the instant Application.
Claim 34 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. U.S. 12,361,356 (‘356). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of the ‘356 patent would anticipate claim 34 of the instant Application.
Claim 35 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. U.S. 12,361,356 (‘356). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the ‘356 patent would anticipate claim 35 of the instant Application.
Claim 36 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. U.S. 12,361,356 (‘356). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of the ‘356 patent would anticipate claim 36 of the instant Application.
Claim 37 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. U.S. 12,361,356 (‘356). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘356 patent would anticipate claim 37 of the instant Application.
Claims 38 – 45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 – 14 of U.S. Patent No. U.S. 12,361,356 (‘356), using the same rationale as discussed above in respect to claims 31 – 37.
Claims 46 – 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 – 21 of U.S. Patent No. U.S. 12,361,356 (‘356), using the same rationale as discussed above in respect to claims 31 – 37.
Claims 53 – 60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23 – 29 of U.S. Patent No. U.S. 12,361,356 (‘356), using the same rationale as discussed above in respect to claims 31 – 37.
Claims 31 – 60 are rejected on the ground of nonstatutory double patenting as being unpatentable over corresponding claims of U.S. Patent No. U.S. 11,823,108 (‘108 patent).
Claim 31 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,823,108 (‘108 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because, as shown in the comparison of the claims below, claim 1 of the ‘108 patent would anticipate claim 1 of the instant application.
U.S. 11,823,108
1. A system for performing an item workflow, the system comprising:
a database storing:
a hierarchical data structure comprising a parent node and child nodes linked to the parent node, a child node of the child nodes being associated with an item; and
a workflow template for defining a workflow comprising one or more tasks and one or more variables; and
a data fusion engine comprising non-transitory computer readable storage medium comprising program instructions stored thereon that are executable by a processor to perform the following operations:
receiving, via a user interface, user input comprising:
a user selection to log the workflow with the item; and
a data value;
in response to receiving the user input:
generating, based on the workflow template, a workflow instance node comprising:
the data value; and
a status of the one or more tasks of the workflow; and
linking, in the hierarchical data structure, the workflow instance node as a child of the child node associated with the item;
presenting, via a user interface, an indication of the workflow, the data value and the status of the one or more tasks of the workflow in association with the item; receiving, via a user interface, a user selection to initiate the workflow for the item;
executing, in response to the user selection to initiate the workflow for the item, one or more tasks of the workflow;
updating, in response to execution of the one or more tasks of the workflow, the status of the one or more tasks of the workflow instance node to reflect execution of the one or more tasks of the workflow; and
presenting, via a user interface based on the updating of the status of the one or more tasks of the workflow instance node, an indication of the workflow, the data value and the updated status of the one or more tasks of the workflow in association with the item.
Instant Application
31. A system for performing an item workflow, the system comprising:
a database storing:
a hierarchical data structure comprising a parent node and child node linked to the parent node, the child node
a workflow template for defining a workflow comprising one or more tasks and one or more variables; and
a data
receiving,
receiving a request to log the workflow with the item; and
generating, based on the request to log the workflow with the item and the workflow template, a workflow instance node comprising:
a data value corresponding to at least one of the one or more variables; and
a status of the one or more tasks of the workflow; and
linking, in the hierarchical data structure, the workflow instance node as a child of the child node associated with the item;
receivinga request to initiate the workflow for the item; and
executing, in response to the request to initiate the workflow for the item, .
Claim 32 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. U.S. 11,823,108 (‘108 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the ‘356 patent would anticipate claim 32 of the instant Application.
Claim 33 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. U.S. 11,823,108 (‘108 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the ‘356 patent would anticipate claim 33 of the instant Application.
Claim 34 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. U.S. 11,823,108 (‘108 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of the ‘356 patent would anticipate claim 34 of the instant Application.
Claim 35 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. U.S. 11,823,108 (‘108 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the ‘356 patent would anticipate claim 35 of the instant Application.
Claim 36 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. U.S. 11,823,108 (‘108 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of the ‘356 patent would anticipate claim 36 of the instant Application.
Claim 37 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. U.S. 11,823,108 (‘108 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘356 patent would anticipate claim 37 of the instant Application.
Claims 38 – 45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 – 15 of U.S. Patent No. U.S. 11,823,108 (‘108 patent) (‘356), using the same rationale as discussed above in respect to claims 31 – 37.
Claims 46 – 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 – 23 of U.S. Patent No. U.S. 11,823,108 (‘108 patent), using the same rationale as discussed above in respect to claims 31 – 37.
Claims 53 – 60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23 – 29 of U.S. Patent No. U.S. 12,361,356 (‘356), using the same rationale as discussed above in respect to claims 31 – 37.
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 33 – 36, 38 – 44, 46 – 51, and 53 – 59 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention, when the claims are taken as a whole, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A – 1: The claims recite a Judicial Exception. Exemplary independent claim 38 recites the limitations of :A method comprising:
[a] storing, in database: a hierarchical data structure comprising a parent node and a child node linked to the parent node, the child node being associated with an item; and a workflow template for defining a workflow comprising one or more tasks and one or more variables [i.e., generic computer structure performing generic computer functionality of storing data];
[b] receiving a request to log the workflow with the item [i.e., generic computer structure performing generic computer function of receiving input];
[c] generating, based on the request to log the workflow with the item and the workflow template, a workflow instance node comprising: a data value corresponding to at least one of the one or more variables; and a status of the one or more tasks of the workflow [i.e., generating new data from existing data using, e.g., observation, evaluation, judgment, and opinion]; and
[d] linking, in the hierarchical data structure, the workflow instance node as a child of the child node associated with the item [i.e., action that can be performed in the human mind to modify stored data];
[e] receiving a request to initiate the workflow for the item [i.e., generic computer structure performing generic computer function of receiving input]; and
[f] executing, in response to the request to initiate the workflow for the item, one or more tasks of the workflow [i.e., the performance of a task in the human mind or by a human using a computer].
These limitations (bolded and italicized), as drafted, are a process that, under its broadest reasonable interpretation, fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and opinion1, but for the recitation of generic computer components. As noted above, step [c] recites the step of generating a workflow instance based on a workflow template, which may be practically performed in the human mind using observation, evaluation, judgment, and opinion. Step [d] recites the step of linking nodes in a data structure, which again may be practically performed in the human mind, as it is merely labeling stored data, e.g., labeling one node as a child of another. Step [f] recites the step of performing the workflow task, which again may be practically performed in the human mind.
Step 2A – 2: This judicial exception is not integrated into a practical application, and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception The claim recites the additional limitations of: [a] storing, in database: a hierarchical data structure comprising a parent node and child nodes linked to the parent node, a child node of the child nodes being associated with an item; and a workflow template for defining a workflow comprising one or more tasks and one or more variables , which amounts to generic computer structure performing generic computer functionality of storing data2; [b] receiving a request to log the workflow with the item, however this is recited at a high level of generality and amounts to generic computer structure as a tool to perform receiving of input, which is mere data gathering, and thus are insignificant extra-solution activity3; and (e) receiving a request to initiate the workflow for the item, however this is recited at a high level of generality and amounts to generic computer structure as a tool to perform receiving of input, which is mere data gathering, and thus are insignificant extra-solution activity. Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application.
Further, the claims do not provide for or recite any improvements to the functioning of a computer, or to any other technology or technical field; applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; applying the judicial exception with, or by use of, a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; or applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO). The claim is directed to the abstract idea. (Step 2A: YES).
The dependent claims have the same deficiencies as their parent claims as being directed towards an abstract idea, as the dependent claims merely narrow the scope of their parent claims, and it has been held that “[i]n defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow.” (buySAFE, Inc. v. Google, Inc., 765 F.3d 1350. )
Turning to the dependent claims, none of the claimed features of the dependent claims further limit the claimed invention in such a way to direct the claimed invention to statutory subject matter (e.g. change the scope of the claimed invention as to no longer be directed towards an abstract idea, or include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements or combination of elements in the claims other than the abstract idea per se), nor do they add limitations that, when taken as a combination, result in the claim as a whole amounting to significantly more than the judicial exception. In respect to exemplary dependent claims 39 – 44:
Claim 39 recites additional data gathering and mental processes;
Claim 40 merely further describes workflow data;
Claim 41 merely recites additional mental processes;
Claim 42 recites additional data gathering and mental processes;
Claim 43 merely further describes the child node, i.e., data;
Claim 44 merely recites additional mental processes and data outputting;
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, explained with respect to Step 2A, Prong Two, the additional elements or combination of elements in the claims other than the abstract idea per se amount to no more than mere instructions to implement the idea on a computer, or the recitation of generic computer structure that serves to perform generic computer functions previously known to the industry4 [e.g. performing repetitive calculations; receiving, processing, and storing data; electronically scanning or extracting data from a physical document; electronic recordkeeping; automating mental tasks; receiving or transmitting data over a network, e.g., using the Internet to gather data] .
Applicant’s specification, at, e.g., paragraphs [0046]-[0049] and FIG. 1, provides evidence of generic computer hardware performing generic, well-known, computer functions.
Viewed as a whole, these additional claim elements, both individually and in combination, do not provide meaningful limitations to transform the above identified abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more (e.g. improvements to another technology or technical fields, improvements to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment) than the abstract idea itself. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation5.
Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. No. 13–298.
Conclusion
The prior art made of record and not relied upon considered pertinent to Applicant’s disclosure.
Altare; Giampiero et al. US 20160154910 A1 Common Plant Model For Modeling Of Physical Plant Items Of A Production Plant
Fiszman; Sergio Adrian et al. US 6115646 A Dynamic and generic process automation system
Ishimitsu, Michael Kazuo et al. US 20040205711 A1 System and method for creation of an object within an object hierarchy structure
Nagar; Ajay R. et al. US 8738414 B1 Method and system for handling program, project and asset scheduling management
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN S MILLER whose telephone number is (571)270-5288. The examiner can normally be reached on M-F 10am-6pm. Examiner’s fax phone number is (571) 270-6288.
Examiner interviews are available via telephone 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, Beth Boswell can be reached at (571) 272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAN S MILLER/Primary Examiner, Art Unit 3625
1 See MPEP 2016.04(a)(2) III; see also See July 2024 Subject Matter Eligibility Examples, Example 47, claim 2.
2 See MPEP 2106.04(d).
3See MPEP 2106.05(g).
4 “It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “‘well understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)”. Id, pages 10-11. “Likewise, the server fails to add an inventive concept because it is simply a generic computer that “administer[ s]” digital images using a known “arbitrary data bank system.” Id. at col. 5 ll. 45–46. But “[f]or the role of a computer in a computer-implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Content Extraction, 776 F.3d at 1347–48 (quoting Alice, 134 S. Ct at 2359). “These steps fall squarely within our precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea. Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and a ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”); Content Extraction, 776 F.3d at 1345, 1348 (“storing information” into memory, and using a computer to “translate the shapes on a physical page into typeface characters,” insufficient confer patent eligibility); Mortg. Grader, 811 F.3d at 1324–25 (generic computer components such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Intellectual Ventures I, 792 F.3d at 1368 (a “database” and “a communication medium” “are all generic computer elements”); BuySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”)”. TLI Communications LLC v. AV Automotive L.L.C., (No. 15-1372, (Fed. Cir. May 17, 2016)), at *12-13.
See additionally MPEP 2106.05(d).
5 “Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted))”. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 U.S.P.Q.2d 1636 (Fed. Cir. 2015).
Prosecution Insights