Notice of Pre-AIA or AIA Status
The present application 19/242,231, filed on 6/18/2025 (or after March 16, 2013), is being examined under the first inventor to file provisions of the AIA (First Inventor to File).
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 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.
This application is a CON of 17/948,902 filed 09/20/2022 is now US PAT 12360783 17/948,902 has PRO 63/246,098 filed 09/20/2021
DETAILED ACTION
Claims 1-20 are pending in this application.
Drawings
The Drawings filed on 6/18/2025 are acceptable for examination purpose.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/18/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner
Priority
Acknowledgment is made of applicant’s claim for domestic priority application
U.S. Provisional Patent application serial number # 63/246,098 filed 09/20/2021
under 35 U.S.C. 119 (e)
Specification
At para 0001 (as filed 6/18/2025), applicant incorporated US Patent Application & provisional application #, applicant is hereby required to update the status of the US application(s) in response to this office action.
in the specification, at para 001 (as filed 6/18/2025), applicant incorporated US Patent Application & provisional application # Examiner notes that incorporation by reference of an application in a printed United States patent constitutes a special circumstance under 35 U.S.C. § 122 warranting that access of the original disclosure of the application be granted. The incorporation by reference will be interpreted as a waiver of confidentiality of only the original disclosure as filed, and not the entire application file, In re Gallo, 231 USPQ 496 (Comm'r Pat. 1986). If Applicant objects to access to the entire application file, two copies of the information incorporated by reference must be submitted along with the objection. Failure to provide the material within the period provided will result in the entire application (including prosecution) being made available to petitioner. The Office will not attempt to separate the noted materials from the remainder of the application. Compare In re Marsh Engineering Co., 1913 C.D. 183 (Comm'r Pat. 1913).
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application.
Claim 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance, Federal Register (84 FR 50) on January 7, 2019 hereinafter 2019 PEG
Step 1. In accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is noted that the method of claim 1,8,15, directed to one of the eligible categories of subject matter and therefore satisfy Step 1.
Step 2A. In accordance with Step 2A prong one of the 2019 PEG, the limitations reciting the abstract idea are highlighted, and the limitations directed to additional elements are highlighted, as set forth in exemplary claim 1
Claim 1,8,15. “A method of providing governance enforcement for a plurality of application program interfaces (APIs) provided by a cloud computing environment, comprising:
providing a user interface configured to execute commands that perform validation functions for APIs associated with nodes of the cloud computing environment, the commands including a validate command configured to test a specified API associated with a node;
generating a validation profile that includes a corresponding severity level and rules applicable to the specified API, the rules including a specification of test data for the specified API independent of one or more data formats supported by the specified API;
storing the validation profile among a plurality of validation profiles available for use in validating the APIs;
generating a first set of data in the one or more data formats supported by the specified API based on the validation profile;
validating the specified API using the first set of data in the one or more data formats supported by the specified API; and
generating a validation report that indicates a validation status of the specified API including a severity indication”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, in the context of this claim, this limitation encompasses the user thinking of validating, generation data collection
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas set forth in the 2019 PEG. Accordingly, the claim recites an abstract idea.
With respect to Step 2A prong two of the 2019 PEG, the judicial exception is not integrated into a practical application. The additional elements are directed to method steps, however, these elements fail to integrate the abstract idea into a practical application because they fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular data structure of validate commands, validate profiles, storing, generating data set(s) to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Furthermore, although these elements have been fully considered, they are directed to the use of generic computing elements (fig 7, 0069-0081, of the instant specification make it clear that the disclosed functionality is implemented on well-known computing systems and general purpose computing devices) to perform the abstract idea, which is not sufficient to amount to a practical application (as noted in the 2019 PEG) and is amount to simply saying "apply it" using a general purpose computer, which merely serves to tie the abstract idea to a particular technological environment computer based operating environment) by using the computer as a tool to perform the abstract idea.
Since the analysis of Step 2A prong one and prong two results in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
Step 2B. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional method limitations are directed to a generic computer, at a very high level of generality and without imposing meaningful limitations on the scope of the claim. In addition fig 7, 0069-0081 of the instant specification describe generic off-the-shelf computer-based elements for implementing the claimed invention which does not amount to significantly more than the abstract idea and is not enough to transform an abstract idea into eligible subject matter. Such generic, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible, as noted at pg. 74624 of Federal Register/Vol. 79, No. 241, citing Alice, which in turn cites Mayo. Further, See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) ("Just as Diehr could not save the claims in Alice, which were directed to 'implement[ing] the abstract idea of intermediated settlement on a generic computer', it cannot save O/P's claims directed to implementing the abstract idea of price optimization on a generic computer.") (citations omitted). See also, Affinity Labs of Texas LLC v. DirecTV LLC, 838 F.3d 1253, 1257-1258 (Fed. Cir. 2016) (mere recitation of a GUI does not make a claim patent-eligible); Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("the interactive interface limitation is a generic computer element".)
The additional elements are broadly applied to the abstract idea at a high level of generality ("similar to how the recitation of the computer in the claims in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer,") as explained in MPEP § 2106.05(f)) and they operate in a well-understood, routine, and conventional manner.
MPEP § 2106.05 (d)(II) sets forth the following:
The courts have recognized the following computer functions as well-understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g. at a high level of generality) as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec...; TLI Communications LLC v. AV Auto. LLC...; OIP Techs., Inc., v. Amazon.com, Inc... ; buySAFE, Inc. v. Google, Inc...;
Performing repetitive calculations, Flook ... ; Bancorp Services v. Sun Life...;
Electronic recordkeeping, Alice Corp...; Ultramercial... ;
Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc...;
Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank...; and
A web browser's back and forward button functionality, Internet Patent Corp. v. Active Network, Inc.
Courts have held computer-implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking).
Claim 2,9,16, further elaborates “performing a notification operation based on the validation report”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 3,10,17, further elaborates “wherein the notification operation includes transmitting a notification to different individuals based on the severity indication”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 4,11,18, further elaborates “wherein the specified API includes an API specification document”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 5,12,19, further elaborates publishing, to a cloud storage, a plurality of validation profiles that are selectable to run against the APIs”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 6,13,20, further elaborates “determining that a set of the APIs are associated with a first validation profile, the first validation profile comprising a rule set applicable to an API specification type”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 7,14, further elaborates “wherein the different individuals for notification are defined within a notification profile associated with the specified API”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 of US Application No. 19/242,231 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,360,783. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims perform the same steps as the claims in the instant application.
Instant US application: 19/242,231
US Patent No. 12,360,783
Claim 1,8,15. A method of providing governance enforcement for a plurality of application program interfaces (APIs) provided by a cloud computing environment, comprising:
providing a user interface configured to execute commands that perform validation functions for APIs associated with nodes of the cloud computing environment, the commands including a validate command configured to test a specified API associated with a node;
generating a validation profile that includes a corresponding severity level and rules applicable to the specified API, the rules including a specification of test data for the specified API independent of one or more data formats supported by the specified API;
storing the validation profile among a plurality of validation profiles available for use in validating the APIs;
generating a first set of data in the one or more data formats supported by the specified API based on the validation profile;
validating the specified API using the first set of data in the one or more data formats supported by the specified API; and
generating a validation report that indicates a validation status of the specified API including a severity indication.
Claim 1,5, 12, A method, comprising:
providing a command line interface configured to provide commands that execute validation functions of a system, the commands including a validate command configured to cause the system to perform validation of a node, and a test command configured to cause the system to test an impact of a new profile invoking batch validation;
generating, by one or more computing devices, a validation profile that defines rules applicable to an application program interface (API) node for verifying that data sent to an API associated with the API node is appropriate and valid for use by the API, wherein each of the rules have a corresponding severity level;
retrieving rule associations from a database based on the validation profile;
validating, by a validation service, the API node based on the stored validation profile and the rule associations;
generating validation reports based on the validating that indicate a status of the rules;
retrieving the validation reports associated with the API node from the validation service that indicate whether the node passed the rules included within the validation profile;
storing the validation report in the database for later access; and
performing a notification operation based on the validation reports, the notification operation including:
determining, for a validation report from among the validation reports, the status of each of the rules;
determining a severity for each rule that did not receive a pass status;
accessing a notification profile associated with the API node under test; and
transmitting a notification to one or more individuals defined by the notification profile based on the severities of the rules that did not receive a pass status,
wherein the validation profile is in a common format and represents the API node programmed using one of a plurality of standard API programming languages.
It would have been obvious to a person of ordinary skill was made to modify and/or to omit the additional elements of claim 1-17 of U.S. Patent No. 12,360,783 to arrive at the claims 1-20 of the instant application 19/242,231 because the ordinary skilled person would have realized that the remaining element(s) would perform the same function as before and the only difference particularly claim 1,8,15 instant application 19/242,231 generating a validation profile that includes a corresponding severity level and rules applicable to the specified API, the rules including a specification of test data for the specified API independent of one or more data formats supported by the specified API while claim 1 of U.S. Patent No. 12,360,783, generating, by one or more computing devices, a validation profile that defines rules applicable to an application program interface (API) node for verifying that data sent to an API associated with the API node is appropriate and valid for use by the API, wherein each of the rules have a corresponding severity level is/are absent of the limitation from instant application 19/242,231 claim 1,8,15, Omission and/or addition of elements and its function in combination is obvious expedient if the remaining elements perform same functions as before, as such instant application claim 1,8,15 are broader
It would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify, add or omit the additional elements of claims 1,5,12 to arrive at the claims 1,8,15 of the instant application because the person would have realized that the remaining element would perform the same functions as before. "Omission of element and its function in combination is obvious expedient if the remaining elements perform same functions as before." See In re Karlson (CCPA) 136 USPQ 184, decide Jan 16, 1963, Appl. No. 6857, U. S. Court of Customs and Patent Appeals.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kung et al., (hereafter Kung), US Pub. No. 2013/0166515 published Jun,2013 in view of Gogineni et al., (hereafter Gogineni), US Pub. No. 2019/0179934 published Jun, 2019
As to Claim 1,8,15, Kung teaches a system which including “a method of providing governance enforcement for a plurality of application program interfaces (APIs) (Kung: 0033) provided by a computing environment (Kung: fig 2, 0024 – Kung teaches data source systems, computer(s), data warehouses and BI tools are connected in a network environment), comprising fig 5, 0035 – Kung teaches both software and hardware particularly hardware components including both input and output such as storage, display and like, further console supports displaying reports such as visual information to users, fig 2, element 270):
“providing a user interface configured to execute commands that perform validation functions for APIs associated with the computing environment, the commands including a validate command configured to test a specified API associated” (Kung: Abstract, 0014,0018, 0021,0023 – Kung teaches validation rules created in the form of expressions and combination of various functions particularly associated with the modeling tolls, ETL tools, Business Intelligence (BI) tool and table 2 teaches automatically generates a corresponding validation rules; Kung teaches defining profile schema for example profiling data having one or more fields and generating profiling attributes associated with the respective validation rule generation, the prior art of Kung teaches validation rule based on the selection of profiling attributes for example validation rules include data type validation rule, field size validation rule, record validation rule and like as detailed in 0018 are part of the data schema and/or data structure stored in a database);
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“generating a validation profile that includes a corresponding level and rules applicable to the specified API, the rules including a specification of test data for the specified API independent of one or more data formats supported by the specified API” (Kung: 0032 – Kung teaches generating validation rules, and validating the syntax of the generated rule(s) corresponds to validation profile is identical to instant specification para 0023 syntax based validation profile, Kung: fig 2, table 1-2, 0021,0023 – Kung teaches defining the data structure of data profile associated with the validation rules, further as shown in the table 2, validation rules retrieved to apply on various fields to ensure it satisfies overall data structure free from error because values provided in the field or column executes profile program to identify and characterize the format of data distributed in the fields of a record(s);
“storing the validation profile among a plurality of validation profiles available for use in validating the APIs” (Kung: fig 2, 0027-0028,0032, 0036 - Kung teaches graphical user interface allows selection of profile attributes, while processor generates validation rule based functions that is tested on to the fields of the record i.e, profile element 233, validation rule based function(s) corresponds to validation service); “and to generate validation reports based on the validating rules” (Kung: fig 2, 0024-0025 – Kung teaches validation reports based on the validating rules integrated with the intelligence tool in generating standard reports, queries, and other analytical applications as shown in fig 2)
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“generating a first set of data in the one or more data formats supported by the specified API based on the validation profile” (Kung: 0022-0023 – Kung teaches generating data based on defined validation rule(s) applied to data particularly rule expression associated with the data format for example as detailed in para 0022 such as data format “mmm” specifies the month name , “dd” specifies the day and like
“validating the specified API using the first set of data in the one or more data formats supported by the specified API” (Kung: 0018-0020 – Kung teaches profiling attributes, generating validation rules based on specific parameters defined by the APIs, applying respective validation rules for example table 1 shows the selection of a profiling attribute, creation rule and respective data format(s) ; and
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“generating a validation report that indicates a validation status of the specified API including a indication” (Kung: 0025,0028, fig 2 – Kung teaches data source system supporting multiple data sources where BI tools to not only create and supply validation reports, but also transformation and integration, as such Kung teaches automatically generat[ing], validation rule(s) applied to the field and/or table(s) on set of data.
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It is however, noted that Kung does not teach “cloud computing environment”, validation profile that includes a corresponding severity level”, although Kung teaches validation rules (table 1 and 2) and generating statistical data reports (fig 2) in a network environment. On the other hand, Gogineni disclosed “cloud computing environment” (Gogineni: 0012 – Gogineni teaches cloud based validation engine used in validating the structured data from multiple clients, while each client create one or more custom validation rules as detailed in 0012, fig 1), validation profile that includes a corresponding severity level (Gogineni: 0024,0028-0029, fig 3A-3B – Gogineni teaches validation engine associated with application programing interface or APIs particularly REST API enables client 120A, 120 B interact with the structured data validation engine and the table 1 illustrates various functionalities of data validation engine and respective validation rules. The prior art of Gogineni teaches creating custom validation rule associated with type of documents and respective error code(s) with statusrepresents error severity level displayed via user interface as detailed in fig 3A-3B
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It would have been obvious to one of the ordinary skill in the art before the
effective filing date of applicant’s claimed invention cloud based validation engine, particularly defining validation rules associated with respective error status of Gogineni et al., into generating validation rules for data report based on profiling the data report of Kung et al., because both Kung, Gogineni teaches validation rules (Kung: Abstract, fig 2; Gogineni: fig 1A, element 110). Because both Kung, Gogineni teaches validation rules based on the selected parameters, it would have been obvious to one skilled in the art substitute and/or modify one method for the other particularly validation rules associated with respective error and their status allows to analyze errors, updating validation rules with respective to method(s) (Gogineni: table 1, 0021-0022) thereby testing of REST APIs, automatically extract parameters and validating consistency of the APIs (Gogineni: 0025), thus ijproves overall quality and reliability of the structured data validation in a cloud environment (Gogineni: Abstract).
As to Claim 2,9,16, the combination of Kung, Gogineni disclosed “ further comprising performing a notification operation based on the validation report” (Kung: fig 2, 0024-0025).
As to Claim 3,10,17, the combination of Kung, Gogineni disclosed “wherein the notification operation includes transmitting a notification to different individuals based on the severity indication” (Gogineni: 0029-0030).
As to Claim 4,11,18, the combination of Kung, Gogineni disclosed “wherein the specified API includes an API specification document” (Gogineni: 0020,0025-0026).
As to Claim 5,12,19. The method of claim 1, further comprising publishing, to a cloud storage, a plurality of validation profiles that are selectable to run against the APIs.(Gogineni: 0025 -0026)
As to Claim 6,13,20, the combination of Kung, Gogineni disclosed “determining that a set of the APIs are associated with a first validation profile, the first validation profile comprising a rule set applicable to an API specification type” (Kung: 0030, 0032-0033).
As to Claim 7,14, the combination of Kung, Gogineni disclosed “wherein the different individuals for notification are defined within a notification profile associated with the specified API” (Kung: 0018,0024-0025,0032-0033).
Conclusion
The prior art made of record
a. US Pub. No. 2013/0166515
b. US Pub. No. 2019/0179934
Examiner's Note: Examiner has cited particular columns and line numbers in the references 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 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 entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
SEE MPEP 2141.02 [R-5] VI. PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) In re Fulton, 391 F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004). >See also MPEP §2123.
In the case of amending the Claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record, listed on form PTO-892, and not relied upon, if any, is considered pertinent to applicant's disclosure
Authorization for Internet Communications
The examiner encourages Applicant to submit an authorization to communicate with the examiner via the Internet by making the following statement (from MPEP 502.03):
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
Please note that the above statement can only be submitted via Central Fax (not Examiner's Fax), Regular postal mail, or EFS Web using PTO/SB/439.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Srirama Channavajjala whose telephone number is 571-272-4108. The examiner can normally be reached on Monday-Friday from 8:00 AM to 5:30 PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gorney, Boris, can be reached on (571) 270- 5626. The fax phone numbers for the organization where the application or proceeding is assigned is 571-273-8300 Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free)
/Srirama Channavajjala/Primary Examiner, Art Unit 2154