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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on May 27, 2026, has been entered.
Response to Arguments
A Declaration under 37 CFR 1.132 was filed including statements from James Kunc, inventor and employee of Assignee. Mr. Kunc includes three observations regarding improvements offered by the claimed invention. As Examiner understands, these observations are presented as evidence of improvements to be considered under Step 2A, Prong 2 of the eligibility analysis under 35 USC 101.
First in section 8, Mr. Kunc asserts the invention results in reduced downtime overall across all endpoints that are maintained and for the individual endpoints. This occurred because repair/maintenance technicians are not forced to take time to make subjective value judgments about the expected remaining life of any component. Examiner asserts that these assertions do not present an improvement to any technology or technical field. The data analysis steps that allow technicians to make such judgments are abstract ideas. As explained in the Patent Board Decision on March 31, 2026; In order to be directed to patent-eligible subject improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself. The claim is directed to providing service to endpoints, not to improving computer functionality or another technology. The Declaration, at section 8, describes an improvement resulting from the abstract idea itself. The judicial exception alone cannot provide the improvement.
At section 9, Mr. Kunc describes additional improvements including increasing the accuracy in the identification of the proper technicians to be sent to a service endpoint and reducing costs of maintaining endpoints. Identifying proper technicians to be sent to a service endpoint is an abstract idea. Similar to above, the increased accuracy describes an improvement realized by the abstract idea itself. The judicial exception alone cannot provide the improvement.
At section 10, Mr. Kunc asserts the invention allows for more accurate identification of components that require replacement before the components fail unexpectedly. Identifying components that require replacement is an abstract idea. As above the more accurate identification describes an improvement resulting from the abstract idea itself. The judicial exception alone cannot provide the improvement.
In sections 11-13, Mr. Kunc asserts the claimed invention requires evaluating combinations of module types, error codes, and prior maintenance tasks as a volume and rate that, could not feasibly be performed in a human mind. Examiner notes, the claims do not include any limitations that reflect the above statement and further use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). Further, the Patent Board Decision (p7-8), established the specification itself suggests people can perform claim 11’s steps of correlating and determining, based on the correlating in the mind or by using pen and paper. See Spec [0022] and Board Decision p7-8.
In response to Applicant’s comments on p 7-8 of the Remarks, Examiner notes the purported list of improvements are not technical improvements. Each are outcomes of the claimed abstract ideas which do not integrate the abstract idea into any practical application. As asserted by the Board, the feature[s] is an improvement to the abstract idea itself. The judicial exception along cannot provide the improvement.
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.
Claim(s) 11 and 14-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) 11 and 14-16 is/are directed to a method, system and CRM. Thus, all the claims are within the four potentially eligible categories of invention (a process, an article of manufacture and a machine, respectively), satisfying Step 1 of the Subject Matter Eligibility (SME) test.
As per Prong One of Step 2A of the §101 eligibility analysis provided in the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), the Examiner notes that the claims are directed to a judicial exception since they are directed to mental processes and certain methods of organizing human activity.
More specifically,
the plurality of maintenance technicians is able to perform and parts available for each of the plurality of maintenance technicians;
determining,
selecting,
causing,
wherein the selected maintenance technician is a maintenance technician from the plurality of maintenance technicians that is nearest to the selected endpoint having the first part and the second part for completing the first task and the second task is a mental process. The limitations recite observations and evaluations that can be practically performed by a human using pen and paper and also certain methods of organizing human activity. The claims recite data analysis steps to provide service to automated banking machines. The concept of data analysis is a fundamental business practice long prevalent in our system of commerce. The use of data analysis is also a building block of ingenuity in corporate planning. Thus, data analysis, like hedging, is an "abstract idea" beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356.
Regarding Prong Two of Step 2A, a claim directed to an abstract idea must be analyzed to determine if the claim recites additional elements that integrate the judicial exception into a practical application. Limitations that are indicative of integration into a practical application include: Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a); Applying or using a judicial exception to effect a particular treatment or prophylaxis for disease or medical condition – see Vanda Memo; Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b); Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP 2106.05(e) and the Vanda Memo issued in June 2018.
In this case, the claims do not include limitations that meet the criteria listed above, thus the abstract idea is not integrated into a practical application. Independent claim 11 is an apparatus with a data engine for communication to receive data and maintain data, and a controller operable to perform other data processing steps and data transmission. This amounts to using a computer as a tool to perform the abstract idea and does not integrate the abstract idea into a practical application. The dependent claims further limit the abstract idea and recite additional elements that do not integrate the abstract idea into a practical application. Dependent claims 14-16 are directed to further details of the abstract idea and the additional elements including a data engine, and a controller for data processing and transmission amount to using a computer as a tool to perform the abstract idea.
Further, the claims do not include limitations beyond generally linking the use of the abstract idea to a particular technological environment. When considered individually, the system and software claim elements only contribute generic recitations of technical elements to the claims. It is readily apparent, for example, that the claims are not directed to any specific improvements of these elements. The invention is not directed to a technical improvement. When the claims are considered individually and as a whole, the additional elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense.
Lastly and in accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instruction to apply the exception using generic computer component. Mere instruction to apply an exception using generic computer components cannot provide an inventive concept.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHNNA LOFTIS whose telephone number is (571)272-6736. The examiner can normally be reached M-F 7:00am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Epstein can be reached at 571-270-5389. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOHNNA LOFTIS
Primary Examiner
Art Unit 3625
/JOHNNA R LOFTIS/Primary Examiner, Art Unit 3625
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