DETAILED ACTION
This Final Office action is in response to Applicant’s Amendment filed on 02/20/2026. Claims 1-22 are pending; claims 12-22 are withdrawn; and, claims 1-11 are examined below. The effective filing date of the claimed invention is 02/11/2019.
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “retrieving, from the database, current versions of . . . .” in line 27 and “wherein the current versions of the installation instruction sections for the selected transit components of the digital order include the at least one updated installation instruction section” in lines 30-32. The examiner has been unable to find “current versions” or the like in Applicant’s originally-filed Specification. There is no distinction between a current version and an older version. This “current version” term is therefore new matter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “one installation instruction section” in lines 18-19 and “installation instruction sections” in line 27-28. The examiner notes that claim 1, line 3 recites “installation instruction sections.” Therefore, the claim is rendered indefinite because the latter recitations do not refer to the former recitation of “installation instruction sections.” The examiner recommends adding “the” before the latter recitations. Appropriate correction is required.
Claim 1 recites “current version” in line 27. This is a relative term as there is no distinction between a current version and older versions in the claims or Specification, so it is unclear what is meant by a current version. This renders the claim indefinite. Appropriate correction is required.
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 1-11 are rejected under 35 U.S.C. 101 because claims 1-11 are directed to abstract idea.
Step 1 – Claims 1-11 include process claims, and thereby pass step 1.
Step 2A, Prong 1 – Claim 1 recites the abstract idea of:
A computerized method of producing a customized digital installation guide for a cable, pipe or wire transit, the method comprising:
providing a database of transit components and installation instruction sections, wherein each transit component is associated with a unique component identifier in the database and each installation instruction section is associated with a unique instruction identifier in the database (see e.g. MPEP 2106.04(a)(2)(III)(B); the examiner finds that providing an ID for a item and an ID for a document/instructions is a fundamental economic practice under MPEP 2106.04(a)(2)(II)(A));
providing in the database a mapping between each of the unique component identifiers and at least one of the unique instruction section identifiers (see e.g. MPEP 2106.04(a)(2)(II)(B) citing Credit Acceptance Corp, where data of one source and another source are combined, and the relatedness between the two are determined in a mapping tabular manner);
generating a digital order for a customizable transit comprising selected transit components (see e.g. MPEP 2106.04(a)(2)(II)(A)(v) local processing of payments for remotely purchased goods, Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017));
assigning an order identity to the generated digital order (see e.g. MPEP 2106.04(a)(2)(III); MPEP 2106.04(a)(2)(II)(C) Other examples of following rules or instructions recited in a claim include: i. assigning hair designs to balance head shape, In re Brown, 645 Fed. Appx. 1014, 1015-16 (Fed. Cir. 2016) (non-precedential));
storing in the database an association between the order identity and the unique component identifiers associated with the selected transit components of the digital order (see e.g. MPEP 2106.04(a)(2)(II)(C) An example of a claim reciting managing personal behavior is Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015); see e.g. MPEP 2106.04(a)(2)(B) citing Credit Acceptance Corp, The patentee claimed a “system for maintaining a database of information about the items in a dealer’s inventory, obtaining financial information about a customer from a user, combining these two sources of information to create a financing package for each of the inventoried items, and presenting the financing packages to the user.” 859 F.3d at 1054, 123 USPQ2d at 1108. The Federal Circuit described the claims as directed to the abstract idea of “processing an application for financing a loan” and found “no meaningful distinction between this type of financial industry practice” and the concept of intermediated settlement in Alice or the hedging concept in Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108.);
generating a machine-readable code representing said order identity (see MPEP 2106.04(a)(2)(II)(A));
causing a delivery of the selected transit components in accordance with said digital order to an installation site (see e.g. MPEP 2106.04(a)(2)(II)(A)(vi); MPEP 2106.04(a)(2)(III)(C)(2));
associating the generated machine-readable code with the delivery (see e.g. MPEP 2106.04(a)(2)(II)(A)(vi); MPEP 2106.04(a)(2)(III));
after generating the digital order, receiving an update to at least one installation instruction section, wherein the update includes changing instruction section data associated with the at least one installation instruction section (see e.g. MPEP 2106.04(a)(2)(II)(C) Another example of a claim reciting social activities is Interval Licensing LLC, v. AOL, Inc., 896 F.3d 1335, 127 USPQ2d 1553 (Fed. Cir. 2018). The social activity at issue was the social activity of “’providing information to a person without interfering with the person’s primary activity.’” 896 F.3d at 1344, 127 USPQ2d 1553 (citing Interval Licensing LLC v. AOL, Inc., 193 F. Supp.3d 1184, 1188 (W.D. 2014)). The patentee claimed an attention manager for acquiring content from an information source, controlling the timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content. 896 F.3d at 1339-40, 127 USPQ2d at 1555. The Federal Circuit concluded that “[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,” observing that the district court “pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.” 896 F.3d at 1344-45, 127 USPQ2d at 1559; MPEP 2106.04(a)(2)(III) claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016););
after the delivery of the selected transit components to the installation site (see MPEP 2106.04(a)(2)(II)(C) citing Interval Licensing, The patentee claimed an attention manager for acquiring content from an information source, controlling the timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content. 896 F.3d at 1339-40, 127 USPQ2d at 1555. The Federal Circuit concluded that “[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,” observing that the district court “pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.” 896 F.3d at 1344-45, 127 USPQ2d at 1559 (emphasis added).), receiving a digital installation guide request comprising the order identity as being derived by a remote computing device reading the machine-readable code associated with the delivery (see e.g. MPEP 2106.04(a)(2)(III));
upon receiving the digital installation guide request (see MPEP 2106.04(a)(2)(II)(C) citing Interval Licensing, The patentee claimed an attention manager for acquiring content from an information source, controlling the timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content. 896 F.3d at 1339-40, 127 USPQ2d at 1555. The Federal Circuit concluded that “[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,” observing that the district court “pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.” 896 F.3d at 1344-45, 127 USPQ2d at 1559 (emphasis added); in other words, the abstract idea is doing something upon receiving request): determining the unique component identifiers associated with the derived order identity based on the stored association in the database (see MPEP 2106.04(a)(2)(B) and (C));
retrieving, from the database, current versions of the installation instruction sections for the selected transit components of the digital order based on the mapping between the unique component identifiers associated with the derived order identity and the unique instruction section identifiers, wherein the current versions of the installation instruction sections for the selected transit components of the digital order include the at least one updated installation instruction section (see e.g. see e.g. MPEP 2106.04(a)(2)(II)(C) Another example of a claim reciting social activities is Interval Licensing LLC, v. AOL, Inc., 896 F.3d 1335, 127 USPQ2d 1553 (Fed. Cir. 2018). The social activity at issue was the social activity of “’providing information to a person without interfering with the person’s primary activity.’” 896 F.3d at 1344, 127 USPQ2d 1553 (citing Interval Licensing LLC v. AOL, Inc., 193 F. Supp.3d 1184, 1188 (W.D. 2014)). The patentee claimed an attention manager for acquiring content from an information source, controlling the timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content. 896 F.3d at 1339-40, 127 USPQ2d at 1555. The Federal Circuit concluded that “[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,” observing that the district court “pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.” 896 F.3d at 1344-45, 127 USPQ2d at 1559; MPEP 2106.04(a)(2)(III)); and
compiling the retrieved installation instruction sections into a customized digital installation guide for building a sealed installation of one or more cables, pipes or wires by assembling the delivered transit components to form the transit (compiling information in digital form, for transfer or storage is abstract idea of MPEP 2106.04(a)(2)(II)(A) and (B) - An example of a claim reciting business relations is found in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The business relation at issue in Credit Acceptance is the relationship between a customer and dealer when processing a credit application to purchase a vehicle. The patentee claimed a “system for maintaining a database of information about the items in a dealer’s inventory, obtaining financial information about a customer from a user, combining these two sources of information to create a financing package for each of the inventoried items, and presenting the [created/compiled] financing packages to the user.” 859 F.3d at 1054, 123 USPQ2d at 1108. The Federal Circuit described the claims as directed to the abstract idea of “processing an application for financing a loan” and found “no meaningful distinction between this type of financial industry practice” and the concept of intermediated settlement in Alice or the hedging concept in Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108.; see e.g. MPEP 2106.04(d)(III) In Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 2019 USPQ2d 281076 (Fed. Cir. 2019), the claims were to methods for electronically processing paper checks, all of which contained limitations setting forth receiving merchant transaction data from a merchant, crediting a merchant’s account, and receiving and scanning paper checks after the merchant’s account is credited. In part one of the Alice/Mayo test, the Federal Circuit determined that the claims were directed to the abstract idea of crediting the merchant’s account before the paper check is scanned. The court first determined that the recited limitations of “crediting a merchant’s account as early as possible while electronically processing a check” is a “long-standing commercial practice” like in Alice and Bilski. 931 F.3d at 1167, 2019 USPQ2d 281076, at *5 (Fed. Cir. 2019). The Federal Circuit then continued with its analysis under part one of the Alice/Mayo test finding that the claims are not directed to an improvement in the functioning of a computer or an improvement to another technology. In particular, the court determined that the claims “did not improve the technical capture of information from a check to create a digital file or the technical step of electronically crediting a bank account” nor did the claims “improve how a check is scanned.” Id. This analysis is equivalent to the Office’s analysis of determining that the exception is not integrated into a practical application at Step 2A Prong Two, and thus that the claims are directed to the judicial exception (Step 2A: YES).).
When viewed alone and in ordered combination, exemplary claim 1 is found to recite abstract idea.
Step 2A, Prong 2 – Claim 1 is not found to integrate the identified abstract idea into practical application. Claim 1 recites the additional limitations of a database that is provided and stores data, data is retrieved from the database; and compiling data into a digital file.
For the database limitation, the examiner refers to MPEP 2106.04(a)(2)(III)(C)(3) - 3. Using a computer as a tool to perform a mental process. An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of “anonymous loan shopping”, which was a concept that could be “performed by humans without a computer.” 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53. In other words, without an improvement to the database itself, this is just abstract idea, and does not integrate the abstract idea with practical application.
For the compiling limitation, this is also abstract idea as shown compiling information in digital form, for transfer or storage MPEP 2106.04(a)(2)(II)(A) and (B) - An example of a claim reciting business relations is found in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The business relation at issue in Credit Acceptance is the relationship between a customer and dealer when processing a credit application to purchase a vehicle. The patentee claimed a “system for maintaining a database of information about the items in a dealer’s inventory, obtaining financial information about a customer from a user, combining these two sources of information to create a financing package for each of the inventoried items, and presenting the financing packages to the user.” 859 F.3d at 1054, 123 USPQ2d at 1108. The Federal Circuit described the claims as directed to the abstract idea of “processing an application for financing a loan” and found “no meaningful distinction between this type of financial industry practice” and the concept of intermediated settlement in Alice or the hedging concept in Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108.; see e.g. MPEP 2106.04(d)(III) In Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 2019 USPQ2d 281076 (Fed. Cir. 2019), the claims were to methods for electronically processing paper checks, all of which contained limitations setting forth receiving merchant transaction data from a merchant, crediting a merchant’s account, and receiving and scanning paper checks after the merchant’s account is credited. In part one of the Alice/Mayo test, the Federal Circuit determined that the claims were directed to the abstract idea of crediting the merchant’s account before the paper check is scanned. The court first determined that the recited limitations of “crediting a merchant’s account as early as possible while electronically processing a check” is a “long-standing commercial practice” like in Alice and Bilski. 931 F.3d at 1167, 2019 USPQ2d 281076, at *5 (Fed. Cir. 2019). The Federal Circuit then continued with its analysis under part one of the Alice/Mayo test finding that the claims are not directed to an improvement in the functioning of a computer or an improvement to another technology. In particular, the court determined that the claims “did not improve the technical capture of information from a check to create a digital file or the technical step of electronically crediting a bank account” nor did the claims “improve how a check is scanned.” Id. This analysis is equivalent to the Office’s analysis of determining that the exception is not integrated into a practical application at Step 2A Prong Two, and thus that the claims are directed to the judicial exception (Step 2A: YES). Additionally, i. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
When these additional limitations are viewed alone and in ordered combination (as a whole), the examiner finds that claim 1 is directed to abstract idea.
Step 2B - Claim 1 does not appear to recite significantly more. The analysis of the additional limitations in Step 2A, Prong 2 is equally applied to Step 2B. Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional (WURC) activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis. See MPEP 2106.05(d). 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) or as insignificant extra-solution activity.
For the limitations relating to receiving, transmitting - see MPEP 2106.05(d)(II) i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added));
For the limitations relating to recordkeeping, changing stored data, compiling data, and the like - see MPEP 2106.05(d)(II) iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
For the limitations relating to storing and retrieving data - see MPEP 2106.05(d)(II) iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
All of these limitations have been found to be WURC activities by the Federal Circuit. Accordingly, the examiner relies on these findings to show that the associated limitations are also found to be WURC activity.
Accordingly, the examiner finds that claim 1 does not recite significantly more, and is therefore directed to abstract idea.
Dependent claims – Claims 2-4 are more abstract idea, encoded data (MPEP 2106.04(2)(A)(2) - See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract”)). Claim 5 is more abstract idea as shown in MPEP 2106.04(a)(2)(II)(A) vi. using a marking affixed to the outside of a mail object to communicate information about the mail object, i.e., the sender, recipient, and contents of the mail object, Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 911, 124 USPQ2d 1502, 1506 (Fed. Cir. 2017). Claim 6 recites the additional limitation of the remote computing device in an “apply it” manner to perform the recited abstract idea. Claim 7 recites sending digital information to remote device, where this is not sufficient to integrate into practical application. See MPEP 2106.05(d)(I)(2) - 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) or as insignificant extra-solution activity i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added)). Claim 8 recites more “apply it” of the remote computing device to the claimed abstract idea. Claims 9-11 recite more abstract idea as found above. Accordingly, claims 1-11 are found to be ineligible under 35 USC 101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Roxtec Group (Dec. 22, 2016) Getting started with Roxtec Transit Designer, retrieved by the examiner on 02/28/2025 at https://www.youtube.com/watch?v=N7cLNl3r0y8 (hereinafter referred to “Roxtec Transit Designer”)(downloaded by examiner) in view of U.S. Pat. Pub. No. 2012/0292383 to Leinicke (“Leinicke”) in further view of U.S. Pat. No. 4,916,637 to Allen et al. (“Allen”).
With regard to claims 1, 9, Roxtec Transit Designer discloses the claimed computerized method of producing a customized digital installation guide for a cable, pipe or wire transit, the method comprising:
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providing a database of transit components and associated installation instruction sections for the respective transit components (see e.g. point of video (POV) at 0:20 add transit shows access to database of transit components; see also 1:40; 2:00 showing direct access to provided database), where each transit component is associated with a unique component identifier in the database (see e.g. POV 1:28 1:38, where cable transit component, for instance, has ID, Name, Type, Category) and each installation instruction section is associated with a unique instruction section identifier in the database (see POV 4:06, where user clicks on installation instructions, and the system creates tailor-made installation instructions for this ID, type a, frame installation
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The examiner refers to POV 2:23 to show that each part of the process of designing the transit includes “installation instructions”, which are then put together at e.g. 4:05 4:18 where the custom-tailored install instructions are compiled then exported from the database to the user);
generating a digital order for a customizable transit comprising selected transit components (see e.g. 0:34 generation of order when clicked “NEXT”);
assigning an order identity to the generated digital order (e.g. 1:34 give the transit a name);
storing in the database an association between the order identity and the selected transit components of the digital order (see e.g. 1:23);
causing a delivery of the selected transit components in accordance with said digital order to an installation site (see e.g. 4:26);
after generating the digital order (the digital order was generated at e.g. 0.34 at the click of NEXT), receiving an update to at least one installation instruction section, wherein the update includes changing instruction section data associated with the at least one installation instruction section (see e.g. ~2:27, where when the using selects e.g. the configure frame, this automatically updates the installation instructions, such as when the user selected Mild Steel as Solution Material, this changes the installation materials as the install is different for different solution materials; see ~4:06 where the system has generated tailor-made installation instructions for this type of installation and this frame. The examiner notes that the installation instructions are generated throughout the process of selecting the specifics of the project, thereby changing the instructions when the user makes tailor-made selections in the transit selections, and the final install instructions are ready to export);
receiving a digital installation guide request comprising the order identity as being derived by a remote computing device reading the machine-readable code associated with the delivery (see e.g. 4:02);
upon receiving the digital installation guide request (see POV ~4:09)
determining the unique component identifiers associated with the derived order identity based on the stored association in the database (see e.g. 4:14);
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retrieving, from the database, current versions installation instruction sections for the selected transit components of the digital order based on the mapping between the unique component identifiers associated with the derived order identity and the unique instruction section identifiers, wherein the current versions of the installation instruction sections for the selected transit components of the digital order include the at least one updated installation instruction section (see e.g. 4:05, final version of installation instructions include all updates/modification included by user, as these are tailor-made installation instructions for this type of installation and this frame; 4:14; for the specifics of the mapping see Allen below); and
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compiling the retrieved installation instruction sections into a customized digital installation guide for building a sealed installation of one or more cables, pipes or wires by assembling the delivered transit components to form the transit (see POV 4:08-14, just click download and then the system compiles your selected documents including the tailor-made installation instructions for your specific transit).
However, Roxtec Transit Designer does not appear to disclose the limitation(s):
associating the generated machine-readable code with the delivery;
generating a machine-readable code representing said order identity.
The examiner has reviewed the prior art relating to generating a QR code/barcode that is placed on the product, such as in case of Roxtec Transit Designer, the QR code could be either attached to the drawings and other documents, or could be attached to the actual wires and pipes, and the like, that are ordered. This is common in the product information communication arts, such as communicating instruction manuals, data about the product, or anything else that may be pertinent for the user to have access to by scanning a quick code.
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Leinicke teaches at e.g. abstract, [0010-12], [0021, 24] Figs. 1, 2, 3, etc. that it would have been obvious to one of ordinary skill in the audio/video instructional packaging art to include the ability to
associating the generated machine-readable code with the delivery (see Leinicke at [0021] and Fig. 1);
generating a machine-readable code representing said order identity (see e.g. Fig. 1, [0021] [0024] where the specific QR code generated relates specifically to the ordered items, e.g. paper towels). For claim 9 - The examiner notes that the QR code in Leinicke is not only provided on the packaging of the product being delivered, but the QR code, as shown in abstract, when scanned with a handheld device provides access to a website with instructions and a training video describing proper use and/or safe use of the product. (emphasis added).
Therefore, it would have been obvious to one of ordinary skill in the product delivery art before the effective filing date of the claimed invention to modify Roxtec Transit Designer with the ability to have the actual product ordered and delivered, and where the product ordered is delivered with a QR code that provides information about the ordered products and additionally provides an instructional video specifically tailored to the ordered products, where this is beneficial in that it communicates safe use and visual training and education about how to use, install and learn the device (Leinicke at e.g. abstract, [0010-12].
Applicant has added “after the delivery of the selected transit components to the installation site, [receiving a document request].” Roxtec Transit Designer does not discuss the actual delivery of the components to the installation site. Roxtec discusses that the transit is made, and throughout the process the system discusses that when at the install site, this is how it would be installed. In other words, Roxtec indirectly indicates that when ordered the transit will be delivered to the install site. The user would then be able to request the documents (at any time) as shown in Roxtec TOV ~4:08. See also MPEP 2144.01 implicit disclosure - “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda; further see MPEP 2144.04(VI)(C) Rearrangement of Parts. The rearrangement of parts is simply that instead of clicking the link to download the install manual at the time from the transit design and build, but waiting until the transit is at the install site and then clicking the link to download, or access, the install manual and/or other documents. Therefore, it would have been obvious to one of ordinary skill in the product service art, before the effective filing date of the claimed invention, to modify Roxtec with the ability to click the button at Roxtec TOV ~4:02 at any time, and especially when installed the product in the field as this is when the “installation instructions” are needed by the installer.
The combination of Roxtec and Leinicke does not explicitly teach “providing in the database a mapping between each of the unique component identifers and at least one of the unique instruction section identifiers.” However, Allen teaches at e.g. col. 16, ln. 1-50, particularly line 30, and published claim 1, that it would have been obvious to one of ordinary skill in the installation instruction generation art to include such ability to provide a database mapping between the item and installation instruction code, where the item confirmation can change and the installation instruct code(s) based on the item components selected for install, sequence, and the like. See Allen at published claim 1:
1. A system for generating installation instructions for a device made up of a variable number of components, comprising:
means for specifying desired components for a device;
sorting means coupled to the specifying means for identifying a plurality of installation tasks dependent on the components specified;
sequencing means for sequencing the tasks in a desired order for installation of the components;
memory means for storing individual assembly instructions corresponding to each task; and
instruction generation means coupled to the sequencing means and to the memory means for assembling the individual assembly instructions for installation of the components, said assembled instructions being different dependent on the particular components specified.
Further, Allen shows where files can be updated based on a modified device for each modified rack, See Allen, col. 12, ln. 35-53; patented claim 30
Therefore, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Roxten and Lienecke, to include the created customized installation instructions based on the correlation in the table between the selected components and the installation instructions, as shown in Allen. The motivation to combine Allen with the combination of Roxtec and Lienecke is shown in Allen, col. 16, ln. 30-50, “The customized installation instructions, as can be seen in Appendix V are very detailed, and provide even an installer with little technical experience sufficient guidance to install a system very quickly. By customizing the instructions to the particular system to be installed, an installer need not make any cross references to other manuals, thus reducing the chance for confusion and error. Detailed graphics of the components of the system are provided, clearly illustrating each step of the installation process. The line drawings are effectively utilized to give the installer positional information for installing specific components. In some cases, the graphic views are rotated dependent on which view more clearly illustrates the installation steps. Once the system is installed a rack configuration list, and cable list are provided for future reference, and the installation instructions are thrown away, as they only relate to the installation of the system they were generated for. Further upgrades, modifications, and even system moves will result in a new customized set of instructions detailing the steps involved in adding and removing components or moving the system.” While not required, Allen even relates to a rack configuration with a cable list, similar to the claimed invention relating to transit components, as shown in prior art Roxtec.
With regard to claims 2-6, 8, Roxtec Transit Designer does not disclose these limitations. However, Leinicke does. For claim 2, see Leinicke at Fig. 1, [0021]. For claim 3, see Leinicke at Fig. 1. For claim 4, see e.g. [0034] where the code is not optically readable, and will not read, and is electrically created. For claim 5, see Fig. 1 and [0021]. For claims 6 and 8, Roxtec Transit Designer discloses the remote computing device that derives the order identity, sending the digital install guide request, and presents the documents to the user, as shown above. Roxtec does not disclose the QR code generation and placed on the package, and Leinicke does teach that as shown above. Therefore, it would have been obvious to one of ordinary skill in the product delivery art before the effective filing date of the claimed invention to modify Roxtec Transit Designer with the ability to have the actual product ordered and delivered, and where the product ordered is delivered with a QR code that provides information about the ordered products and additionally provides an instructional video specifically tailored to the ordered products, where this is beneficial in that it communicates safe use and visual training and education about how to use, install and learn the device (Leinicke at e.g. abstract, [0010-12].
With regard to claim 7, Roxtec Transit Designer further discloses sending a digital message containing the generated electronically readable code to said remote computing device (see e.g. POV 4:15 where the digital message is sent and this includes several codes and numbers).
With regard to claims 10-11, Roxtec Transit Designer further discloses interfacing with development server functionality to update transit components and/or installation instruction sections in the database where the update to the at least one install instruction section is received from the server functionality (see e.g. POV 3-4, where all changes comes from selections of the user by interacting with the development server functionality, and then all of the changes to the tailor-made install instructions are received from the server later on).
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
The examiner has reviewed the arguments under 101. Applicant appears to argue that the claims provide a technical solution to many technical problems such as waste of resource (printing out unnecessary pages of install instructions). See e.g. Applicant’s published Spec. at [0009] [0020] [0082-84]. The examiner has reviewed these portions of the published Specification (PG PUB) and does not agree. The examiner does not find a technical solution to technical problem, as argued by Applicant. The examiner refers Applicant to the updated 101 rejection above. Step 2A, Prong 2 includes an analysis of the various additional limitations, and how the examiner does not find them to provide practical application, thereby directing the claims to abstract idea. Further, in Step 2B, the examiner has applied the same analysis from Step 2A, Prong 2, and further analyzed the claims under the well-understood, routine, conventional analysis, as required by MPEP 2106.05(d). “Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis.”
As for the 103 arguments, the examiner has addressed the added limitations above. The examiner refers to Applicant’s Specification which provides no disclosure relating to these added limitations. See the 112(a) and (b) rejections above.
Conclusion
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/PETER LUDWIG/Primary Examiner, Art Unit 3627