DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/02/2026 has been entered.
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 .
§ 101 ELIGIBILITY ANALYSIS
Claim Reproduced and Parsed into Limitations
Claim 10: A method, comprising:
Receiving limitation: receiving, by one or more computers of a service provider via an application from the service provider, a request for a customer data import job, wherein the request specifies a customer location, a customer key, and an amount of data to be imported from the customer location to the service provider, and wherein the application is to, when executed at a customer computing device, discover a data transfer device connected to a customer network;
Provisioning limitation: provisioning, via the one or more computers of the service provider, a quantity of data transfer devices based on the customer data import job, each of the data transfer devices comprising a persistent storage medium configured to store data during shipment, wherein said provisioning comprises, for each of the quantity of data transfer devices, installing security information comprising:
one or more certificates that authenticate the data transfer device, and
one or more keys for encrypting customer data stored to the persistent storage medium on the provisioned data transfer device, and wherein the installation of the security information on the provisioned transfer device is performed at a storage service provider location for shipment of the data transfer devices to the customer location for the data import job to import data from the customer location to the service provider; and
Indicating/display limitation: for each of the provisioned quantity of data transfer devices located at the storage service provider location, indicating a shipping address of the customer via a label or display on an enclosure of the data transfer device, wherein the enclosure provides a self-contained shipping unit for the data transfer device, and wherein the data transfer device is configured for installation on a network at the customer location in the enclosure to transfer encrypted customer data to the persistent storage medium of the data transfer device in accordance with the data import job, the encrypted customer data encrypted in accordance with multiple layers of encryption keys comprising:
the customer key indicated in the request for a customer data import job received via the application from the service provider, and
the one or more keys of the security information installed during said provisioning.
Step 1: Statutory Category Determination
Finding: Claim 10 is drawn to a process (method).
Analysis: The claim explicitly recites “A method, comprising:” followed by a series of steps performed by computers and devices. The steps are temporal and ordered: receiving a request → provisioning devices → installing security information → indicating a shipping address. This satisfies the statutory category of a “process” under 35 U.S.C. § 101.
Conclusion on Step 1: Claim 10 passes Step 1 as it falls within a statutory category (process/method).
Step 2A, Prong 1: Identification of Judicial Exception(s)
Finding: Claim 10 recites a judicial exception — specifically, an abstract idea falling within the “methods of organizing human activity” grouping, combined with elements of data manipulation and generic computer implementation.
Offending Clauses and Analysis:
1. “Receiving…a request for a customer data import job”
This is a mental process and organizing human activity step. The claim recites receiving information (a request) and organizing it according to job parameters (customer location, customer key, amount of data).
Per PEG § II.A.1, “receiving” data or information, without technological context, is a mental process.
This step does not inherently require a computer; a human could receive a request and organize it.
2. “Provisioning…a quantity of data transfer devices based on the customer data import job”
This recites organizing human activity — specifically, resource allocation and job management.
The claim describes allocating physical devices to a job request, which is a fundamental business/organizational practice.
Per PEG § II.A.1(B), “managing” or “organizing” activities (here, allocating resources to jobs) is an abstract idea.
3. “Installing security information comprising…one or more certificates…and one or more keys”
While installing security information has a technological component, the claim recites this at a high level of abstraction: “installing security information.”
The claim does not specify how the installation occurs, what algorithm is used, or what technological improvement results from this installation.
This is generic computer implementation of a well-understood security practice (certificate and key management).
4. “Indicating a shipping address…via a label or display on an enclosure”
This recites organizing human activity — specifically, managing shipping logistics and displaying information.
The claim describes the abstract idea of “indicating” (communicating) a destination address, which is a fundamental commercial/logistical practice.
The phrase “via a label or display” suggests the method is indifferent to the medium; the abstract idea is the communication of the address, not the technological implementation.
5. “Transfer encrypted customer data to the persistent storage medium…encrypted in accordance with multiple layers of encryption keys”
This recites data manipulation and applying a mathematical concept (encryption).
The claim describes receiving encrypted data and storing it, which is a data-handling step.
While encryption is a mathematical operation, the claim does not recite a novel encryption algorithm, a specific improvement to encryption, or a technological problem solved by the encryption method.
The encryption is applied in a generic, conventional manner to secure data in transit.
Summary of Judicial Exception:
The claim recites a combination of abstract ideas:
Organizing human activity: receiving job requests, provisioning resources, managing logistics (indicating shipping addresses).
Data manipulation: receiving, encrypting, and storing data.
Generic computer implementation: performing these steps “by one or more computers” without specifying a technological improvement or non-conventional implementation.
Per Alice Corp. v. CLS Bank, 573 U.S. 208 (2014), and the PEG, these are classic abstract ideas. The claim is directed to a method of organizing a data transfer service and managing logistics, not to a technological improvement.
Step 2A, Prong 2: Integration into a Practical Application
Finding: Claim 10 fails to integrate the judicial exception into a practical application under Step 2A, Prong 2.
Analysis:
Alleged Technological Improvement: The specification and claim suggest that the device provides a “self-contained shipping unit” with an “updateable electronic display” that reduces shipping errors by integrating the storage, enclosure, and display into a unified whole. See Spec. ¶ [0023]: “because the persistent storage, the display and the enclosure are coupled as a self-contained whole, it may not be possible to mismatch persistent storage intended for one container in a different contained.”
Why This Does Not Constitute Integration into a Practical Application:
The Improvement is Not Claimed:
Claim 10 does not recite the specific technological improvement (the integrated enclosure with updateable display).
The claim recites only abstract steps: “receiving,” “provisioning,” “installing,” and “indicating.”
The claim does not require the display to be electronic, updateable, or integrated into the enclosure; it permits a “label or display,” which is generic.
Offending language: “indicating a shipping address…via a label or display” — this is indifferent to the technological implementation.
No Specific Technological Problem Solved:
The claim does not recite a specific technological problem or a technological solution.
The specification describes a business problem (shipping errors due to mislabeling) and a logistical solution (integrating the display into the device), but the claim does not capture this.
The claim is directed to the abstract process of managing a data import job, not to improving computer functionality or another technology.
Extra-Solution Activity, Not Integration:
The steps in the claim (receiving a request, provisioning devices, installing security information, indicating an address) are all extra-solution activity — steps that occur before or after the core technological operation (data transfer).
Per PEG § II.B.2(a), “insignificant extra-solution activity” does not constitute integration into a practical application.
The claim does not recite steps that improve the functioning of the computer or the data transfer device itself; it recites administrative and logistical steps.
Field-of-Use Limitation:
The claim is limited to “a customer data import job” and “a storage service provider,” but this is merely a field-of-use limitation.
Per PEG § II.B.2(a) and Bilski v. Kappos, 561 U.S. 593 (2010), limiting an abstract idea to a particular field or industry does not constitute integration into a practical application.
The claim is directed to applying abstract ideas (organizing, provisioning, indicating) in the field of data transfer services, not to a technological improvement.
Generic Computer Implementation:
The claim recites that the steps are performed “by one or more computers of a service provider” and “via an application from the service provider,” but this is generic computer implementation.
Per PEG § II.B.2(a), merely reciting that an abstract idea is performed on a computer does not constitute integration into a practical application.
The claim does not specify a particular machine, a particular algorithm, or a specific improvement to computer functionality.
Specification Support (Lack Thereof):
The specification describes the physical device (enclosure, display, persistent storage, network interface, sensors) and the overall system, but Claim 10 does not recite these specific technological elements. The claim is drafted at a high level of abstraction that omits the technological details that would constitute integration into a practical application.
Conclusion on Step 2A, Prong 2: Claim 10 fails to integrate the judicial exception into a practical application. The claim recites abstract ideas (organizing, provisioning, indicating) without reciting a specific technological improvement or a specific technological problem solved.
Step 2B: Significantly More Than the Exception (WURC Analysis)
Finding: The additional claim elements are not significantly more than the judicial exception; they are well-understood, routine, and conventional (WURC).
Analysis:
Additional Claim Elements Beyond the Abstract Idea:
“One or more computers of a service provider”
This is a generic reference to a computer system.
Per Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018), reciting a generic computer is WURC.
The claim does not specify a particular hardware configuration, a particular processor, a particular memory architecture, or any non-conventional computer element.
“Via an application from the service provider”
This recites a generic software application.
Per PEG § II.B.3(a), reciting that an abstract idea is performed “via” a generic computer or application is WURC.
The claim does not describe the application’s novel features, algorithms, or technological improvements.
“Persistent storage medium configured to store data during shipment”
Storage media (hard drives, SSDs, etc.) are well-understood and conventional.
The claim does not recite a novel storage technology, a specific improvement to storage, or a non-conventional storage configuration.
“Installing security information comprising…one or more certificates…and one or more keys”
Certificate and key management are well-understood, routine practices in computer security.
Per Alice and PEG § II.B.3(a), applying conventional security practices (certificates, encryption keys) is WURC.
The claim does not recite a novel cryptographic algorithm, a specific improvement to certificate management, or a non-conventional security implementation.
“Encrypted customer data…encrypted in accordance with multiple layers of encryption keys”
Multi-layer encryption is a well-understood, routine practice.
Per PEG § II.B.3(a), applying conventional encryption techniques is WURC.
The claim does not recite a specific encryption algorithm, a specific improvement to encryption, or a non-conventional encryption method.
“Enclosure…provides a self-contained shipping unit”
While the specification describes an integrated enclosure with a display, Claim 10 does not recite this specific technological element.
The claim permits a “label or display,” which is generic.
A shipping enclosure is a conventional, well-understood article.
Evidentiary Support (WURC):
No Specification Support for Non-Conventional Elements:
The specification does not provide technical comparisons, performance metrics, or implementation details that would demonstrate that any element of Claim 10 is non-conventional.
The specification describes the overall system and device, but does not explain how the provisioning, security installation, or address indication steps are non-conventional or provide a technological improvement.
Industry Standards and Common Practice:
Provisioning devices for data transfer is a routine, conventional practice in the data storage industry.
Installing security certificates and encryption keys is a well-understood, routine practice.
Indicating a shipping address is a conventional logistical practice.
Conclusion on Step 2B:
Claim 10 fails Step 2B. The additional claim elements (generic computers, conventional storage, routine security practices, conventional encryption) are well-understood, routine, and conventional. They do not amount to “significantly more” than the judicial exception.
STEP 2B CONCLUSION FOR CLAIM 10
Claim 10 does not satisfy Step 2B. The claim recites abstract ideas (organizing, provisioning, indicating) combined with generic computer implementation and conventional technological elements. No element is non-conventional or provides a technological improvement that would constitute “significantly more” than the exception.
OVERALL CONCLUSION FOR CLAIM 10
Claim 10 is INELIGIBLE under 35 U.S.C. § 101.
Reasoning:
Step 1: ✓ Passes (process/method)
Step 2A, Prong 1: ✗ Fails (recites judicial exception: abstract idea of organizing human activity, data manipulation, and generic computer implementation)
Step 2A, Prong 2: ✗ Fails (does not integrate exception into practical application; no specific technological improvement; field-of-use limitation; generic computer implementation; extra-solution activity)
Step 2B: ✗ Fails (additional elements are WURC; no non-conventional elements; no technological improvement)
Claim Reproduced and Parsed into Limitations
Claim 15: A method, comprising:
Receiving limitation: receiving, at a customer location comprising a customer network, from a storage service provider location, a shipment of a data transfer device in accordance with a data import job, wherein the data transfer device comprises an enclosure having an electronic display and a persistent storage medium configured to store data inside the enclosure, the persistent storage medium of the received data transfer device storing one or more certificates loaded onto the persistent storage medium at the storage service provider location;
Connecting limitation: connecting, via a wired or wireless connection through the enclosure, the data transfer device to the customer network;
Downloading limitation: downloading, to a customer computing device on the customer network, a proprietary application corresponding to the data transfer device, wherein the application is configured to, when executed by the customer computing device on which the proprietary application is installed, discover the data transfer device connected to the customer network;
Validating limitation: validating, via execution of the downloaded proprietary application installed on the customer computing device and based on the one or more certificates stored on the persistent storage medium, the data transfer device;
Loading limitation: loading encrypted customer data onto the validated data transfer device via the customer network, the encrypted customer data encrypted in accordance with multiple layers of encryption keys comprising:
a customer key received by the storage provider via the downloadable proprietary application of the service provider, and
one or more other keys; and
Indicating/display limitation: indicating, via a label or display, a shipping address on the enclosure of the data transfer device, wherein the enclosure provides a self-contained shipping unit for the data transfer device.
INELIGIBLE under 35 U.S.C. § 101
Summary of Rejection (see also claim 10 above for a full detailed analysis)
Claim 15 is directed to an abstract idea of organizing human activity (receiving a device, connecting it to a network, validating it, loading data, indicating a destination) combined with generic computer implementation. The claim recites mental processes and data manipulation steps without reciting a specific technological improvement or solving a technological problem.
Judicial Exception: The claim recites abstract ideas including:
Receiving a shipment and organizing it for use (organizing human activity)
Downloading an application and discovering a device (data communication/organizing human activity)
Validating a device based on certificates (applying a conventional security practice)
Loading encrypted data (data manipulation)
Indicating a shipping address (logistical communication)
Failure to Integrate (Step 2A, Prong 2): The claim does not integrate the exception into a practical application because:
The specific technological improvement (integrated enclosure with updateable electronic display) is not claimed
The claim permits a generic “label or display,” not a specific technological solution
The steps are abstract administrative activities, not technological improvements
No specific technological problem is solved
The claim contains only extra-solution activity and field-of-use limitations
Failure at Step 2B (WURC): All additional elements are well-understood, routine, and conventional:
Generic computers and applications
Conventional network connections
Routine certificate validation
Standard encryption practices
Conventional data loading procedures
CLAIM 21
INELIGIBLE under 35 U.S.C. § 101
Summary of Rejection (see also claim 10 above for a full detailed analysis)
Claim 21 is directed to an abstract idea of organizing human activity (providing a network interface, receiving export job requests, provisioning devices, installing security information, loading data, displaying a shipping address) combined with generic computer implementation. The claim recites high-level abstract steps without reciting a specific technological improvement.
Judicial Exception: The claim recites abstract ideas including:
Providing a network-based interface for receiving requests (organizing human activity/commercial practice)
Receiving job requests and organizing them by parameters (organizing human activity)
Provisioning devices based on job specifications (resource allocation/organizing human activity)
Installing security information (applying conventional security practices)
Loading encrypted data (data manipulation)
Displaying a shipping address (logistical communication)
Failure to Integrate (Step 2A, Prong 2): The claim does not integrate the exception into a practical application because:
The specific technological improvement (integrated enclosure with updateable electronic display) is not claimed
The claim permits a generic “label or electronic display,” not a specific technological solution
The steps are abstract administrative and logistical activities, not technological improvements
No specific technological problem is solved
The claim contains only extra-solution activity and field-of-use limitations
Failure at Step 2B (WURC): All additional elements are well-understood, routine, and conventional:
Generic computers and applications
Conventional network interfaces
Routine certificate and key management
Standard encryption practices
Conventional shipping displays
Dependent claims 11-14, 22, 24, 26-29 and 31 further describe the abstract idea of managing personal behavior through following instructions for provisioning a quantity of data transfer devices based on a customer data import job. Said dependent claims do not include additional elements to perform the respective functions of directing, receiving, displaying, obtaining, rerouting, sending, display, connecting, reading, decrypting, transferring, preparing, wiping, deleting, overwriting, authenticating or instructing beyond the technical elements disclosed at a high level of generality as data transfer devices, electronic display, wireless network, and as disclosed in independent claims 10 and 21 that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, said dependent claims are also not patent eligible. Further, the dependency of these claims on ineligible independent claims 10 and 21 also renders said dependent claims as not patent eligible.
Dependent claims 16-17, 19-20, 25 and 30 further describe the abstract idea of mental processes through observation, evaluation and judgement/ opinion by indicating, via a label or display, a shipping address. Said dependent claims do not include additional elements to perform the respective functions of receiving, updating, displaying, rerouting, authenticating, instructing, encoding, determining, discovering and validating beyond the technical elements disclosed at a high level of generality as disclosed in independent claim 15 that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, said dependent claims are also not patent eligible. Further, the dependency of these claims on ineligible independent claim 15 also renders said dependent claims as not patent eligible.
Response to Arguments
Applicant's arguments filed 01/02/2026 have been fully considered but they are not persuasive.
Rejection under 35 U.S.C. § 103:
In response to the applicant’s remarks concerning the previous rejection under 35
U.S.C. § 103, the previous rejection under 35 U.S.C. § 103 is withdrawn.
Claims 10-17, 19-22 and 24-31 are allowable over prior art because the examiner agrees with the applicant that the cited prior art combination of record, namely Calder, Goodall, Orsini and Throckmorton, fails to teach in an obvious manner, receiving, by one or more computers of a service provider via an application from the service provider, a request for a customer data import job, wherein the request specifies a customer location, a customer key, and an amount of data to be imported from the customer location to the service provider, and wherein the application is to, when executed at a customer computing device, discover a data transfer device connected to a customer network as required by amended independent claim 10 (and similarly claims 15 and 21). While Calder teaches a system for providing data transfer devices for data transfer jobs that are controlled by application programming interfaces running on customer devices to communicate with service providers to control said data transfer jobs (Calder ¶ [0028-0029]), after further consideration, Calder’s system does not teach that said application discovers a data transfer device connected to a customer network while said application is executed on a customer computing device. Goodall, Orsini and Throckmorton also fail to teach the application discovering a data transfer device connected to a customer network while said application is executed on a customer computing device in a manner that would be obvious to one of ordinary skill in the art to be used in combination with Calder. The most relevant other prior art is Moore et al. (US 2013/0104251 A1), which discloses a data transfer system that allows for service discovery through network applications. However, Moore also fails to teach an application discovering a data transfer device connected to a customer network while said application is executed on a customer computing device. No other combination of prior art references has been found to teach the inventive claim language of independent claims 10, 15 and 21, as amended, in an obvious manner. Therefore, the claimed invention disclosed in claims 10-17, 19-22 and 24-31 is considered allowable over prior art.
Rejection under 35 U.S.C. § 101:
In response to the applicant’s remarks concerning the previous rejection under 35
U.S.C. § 101, the previous rejection under 35 U.S.C. § 101 is maintained.
Contrary to the applicant’s assertion that recited subject matter in claims 10, 15 and 21 improves security in the technical field of provisioning quantity of devices capable of data transfer by relying upon a particular combination of security information applied in a particular manner along with a particular way of routing the one or more keys, said claims remain limited to being executed by technical elements disclosed at a high level of generality such that the claims merely reflect execution of the abstract ideas in a manner that is well-understood, routine and conventional as noted above in the current rejection under 35 U.S.C. § 101.
Contrary to the applicant’s assertion that the Office has ignored the additional elements of dependent claims 11-14, 16-17, 19-20, 22 and 24-31, these additional elements have been addressed in the previous and current rejections under 35 U.S.C. § 101, thereby showing a prima facie case of ineligibility for said claims. Further, these dependent claims also remain ineligible for their dependency on their respective ineligible independent base claims.
Below are examples/suggestion which may potentially overcome the 101 rejection:
REMEDIES — CLAIM DRAFTING STRATEGIES
To render Claims 10, 15, and 21 eligible under § 101, applicant should implement the following remedies:
Remedy 1: Claim the Specific Technological Improvement
Replace generic “label or display” with specific technological elements:
Current (Ineligible):
“indicating a shipping address…via a label or display on an enclosure”
Revised (Eligible):
“updating, via a processor and wireless network interface, an electronic ink display integrated into the enclosure with a new shipping address, wherein the electronic ink display is configured to consume minimal power during shipment and to refresh the displayed address in real-time based on GPS location data received by the device, thereby reducing shipping errors by preventing physical label mismatches and enabling in-flight rerouting without manual intervention”
Rationale: This recites a specific technological improvement (real-time electronic display update based on GPS location) that solves a technological problem (reducing shipping errors through automated, electronic address management rather than static physical labels).
Remedy 2: Add Claim Elements Showing Technological Problem and Solution
Add specific technological limitations:
Revised Claim Structure:
"A method for reducing shipping errors in data transfer operations, comprising:
receiving, by one or more processors of a service provider, a request for a customer data import job;
provisioning a data transfer device comprising:
a ruggedized enclosure meeting military standards for impact resistance;
a persistent storage medium;
a low-power electronic ink display integrated into the enclosure and coupled to the persistent storage medium such that the display and storage cannot be separated or mismatched;
a GPS sensor and wireless network interface;
installing security information on the device;
automatically updating the electronic ink display with a new shipping address based on GPS location data indicating the device has departed the customer location, wherein the automatic update prevents the display from showing the service provider destination address while at the customer site, thereby improving security by obfuscating the destination;
indicating the shipping address via the electronic ink display…"
Rationale: This recites specific technological elements (electronic ink display, GPS sensor, automatic location-based display update) and explains how these elements solve a technological problem (preventing shipping errors and improving security through automated, location-aware display management).
Remedy 3: Tie Abstract Steps to Specific Technological Implementation
Replace generic provisioning language with specific technological operations:
Current (Ineligible):
“provisioning…a quantity of data transfer devices based on the customer data import job, each of the data transfer devices comprising a persistent storage medium configured to store data during shipment, wherein said provisioning comprises…installing security information”
Revised (Eligible):
"provisioning…a quantity of data transfer devices, wherein said provisioning comprises:
establishing a secure cryptographic channel between the service provider network and each data transfer device via the device’s network interface;
generating device-specific encryption keys using a hardware security module (HSM) and storing the keys in a tamper-resistant secure enclave on the device’s persistent storage;
loading the device-specific keys and certificates onto the device’s secure enclave such that the keys are hardware-bound and cannot be extracted or transferred to another device;
configuring the device’s firmware to enforce multi-factor authentication (certificate + GPS location verification) before accepting data transfers, thereby preventing unauthorized data loading and improving security beyond conventional certificate-based authentication"
Rationale: This recites specific technological operations (HSM key generation, secure enclave storage, hardware-bound keys, multi-factor authentication) that constitute a non-conventional security implementation and solve a technological problem (preventing unauthorized data transfer through hardware-backed security).
Remedy 4: Add Specific Technological Improvements to Computer Functioning
Recite specific improvements to the data transfer device’s operation:
Add to claim:
"wherein the data transfer device is configured to:
monitor network bandwidth utilization via the network interface and automatically adjust encryption parameters to optimize throughput while maintaining security, thereby improving data transfer speed by 15-30% compared to conventional fixed-parameter encryption;
cache frequently accessed encryption keys in a dedicated high-speed memory buffer (distinct from main persistent storage) to reduce latency in the data encryption/decryption pipeline by 40-60% compared to conventional key retrieval from persistent storage;
implement adaptive power management that reduces display refresh rate based on GPS velocity data, extending battery life by 25-35% during shipment while maintaining real-time address updates at rest"
Rationale: This recites specific, measurable improvements to computer functioning (throughput optimization, latency reduction, power efficiency) with technical mechanisms (network monitoring, memory caching, adaptive power management) that constitute non-conventional implementations.
Remedy 5: Provide Specification Support for Non-Conventional Elements
Enhance specification with:
Technical comparisons: Compare the claimed security implementation (hardware-bound keys, multi-factor authentication) to conventional certificate-based approaches, demonstrating non-obviousness and non-conventionality.
Performance metrics: Provide benchmark data showing that the claimed electronic display update mechanism reduces shipping errors by X%, improves rerouting speed by Y%, or reduces power consumption by Z%.
Implementation details: Describe the specific algorithms, data structures, and hardware configurations used (e.g., “the secure enclave implements AES-256 encryption with hardware acceleration,” “the GPS-based location verification uses triangulation with sub-50-meter accuracy”).
Architectural diagrams: Include detailed block diagrams showing the integration of the electronic display, GPS sensor, wireless interface, and processor, demonstrating that this architecture is non-conventional.
Example specification addition:
“In conventional data transfer devices, shipping addresses are printed on static labels affixed to the enclosure. This approach is prone to human error: labels may be placed on the wrong device, or devices may be placed in the wrong box. The present invention improves upon this by integrating an electronic ink display into the enclosure such that the display and storage are mechanically coupled and cannot be separated. Furthermore, the display is updated in real-time via GPS location data, such that when the device departs the customer location, the display automatically updates to show the next destination address. This automatic, location-aware update eliminates the need for manual label changes and reduces shipping errors by 87% compared to conventional label-based approaches (see FIG. 11, performance comparison chart). The electronic ink display consumes only 0.5 mW during display updates, compared to 50 mW for conventional LCD displays, enabling extended battery life during multi-week shipments.”
Remedy 6: Limit Claim Scope to Avoid Field-of-Use Limitations
Replace generic field-of-use language with specific technological constraints:
Current (Ineligible):
“A method…for a customer data import job…for a storage service provider”
Revised (Eligible):
"A method for transferring multi-terabyte datasets via a ruggedized, network-attached data transfer device comprising an integrated electronic ink display, wherein the method comprises:
provisioning the data transfer device with a specific hardware configuration comprising: a 64-core processor, 256 GB of DRAM, 100 TB of NVMe persistent storage, and a GPS-enabled wireless interface capable of 5G connectivity;
encrypting customer data using a device-specific key stored in a tamper-resistant secure enclave, wherein the encryption pipeline achieves a throughput of 10 GB/s through hardware acceleration;
updating the electronic ink display via GPS location data with sub-50-meter accuracy, enabling automatic rerouting of the device in real-time without manual intervention"
Rationale: This recites specific technological elements (hardware configuration, encryption throughput, GPS accuracy) rather than merely limiting the claim to a particular field or use case. The technological specificity demonstrates that the claim is directed to a technological improvement, not merely an abstract idea applied in a particular industry.
Remedy 7: Eliminate Extra-Solution Activity
Remove abstract administrative steps that do not contribute to the technological improvement:
Current (Ineligible):
“receiving, by one or more computers of a service provider via an application from the service provider, a request for a customer data import job, wherein the request specifies a customer location, a customer key, and an amount of data to be imported”
Revised (Eligible):
“receiving, at the data transfer device via the wireless network interface, encrypted customer data from a customer network, wherein the data transfer device automatically adjusts its encryption parameters based on the received data size and network bandwidth, thereby optimizing throughput and reducing transfer time”
Rationale: This focuses on the technological operation (automatic parameter adjustment based on data size and bandwidth) rather than the abstract administrative step (receiving a job request). The technological operation solves a specific technological problem (optimizing throughput).
Suggestions summarized:
Applicant should amend all three independent claims to:
Recite the specific technological improvement (integrated electronic ink display with GPS-based automatic address updating)
Claim specific technological elements (electronic ink display, GPS sensor, secure enclave, hardware-backed encryption)
Describe the technological problem solved (reducing shipping errors, enabling real-time rerouting, improving security)
Provide measurable improvements (e.g., “reduces shipping errors by 87%,” “improves throughput by 15-30%”)
Support with specification details (performance metrics, technical comparisons, implementation details, architectural diagrams)
Eliminate generic language (“via a label or display” → “via an electronic ink display integrated into the enclosure”)
Focus on technological operations rather than abstract administrative steps
With these amendments, the claims can be drafted to recite a technological improvement to the data transfer device itself (or to computer functioning), thereby satisfying Step 2A, Prong 2 and achieving § 101 eligibility.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW S WERONSKI whose telephone number is (571)272-5802. The examiner can normally be reached M-F 8 am - 5 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fahd A. Obeid can be reached at 5712703324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW S WERONSKI/Examiner, Art Unit 3627
/FAHD A OBEID/Supervisory Patent Examiner, Art Unit 3627
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