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 .
DETAILED ACTION
This office action is in response to communication filed 3/24/2026. Claims 1-31 are currently pending and claims 1, 12, 19, 22, are the independent claims.
Claim Objections
Claim 22 is objected to because of the following informalities:
As per claim 22 it recites “an auto-provisioning engine that detects…and allows at least one executable object corresponding to the at least one connected device to be installed and or introduced to a software system…an import module that receives…and allows the executable state to be imported to a management module…” which does not make clear that the installation/introduction and importing is actually occurring as the word “allows” may be taken to mean that they could/would occur if attempted and not necessarily that they are occurring now. As such, for clarity, the examiner would like to recommend the wording/phrasing “an auto-provisioning engine that detects…and installs and/or introduces at least one executable object corresponding to the at least one connected device to a software system…an import module that receives…and imports the executable state to a management module…”
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “…an auto-provisioning engine that detects…” and “an import module that receives…” in claim 22.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 22-31 are 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.
As per independent claim 22, it recites the limitations “…an auto-provisioning engine that detects…” and “an import module that receives…” thereby invoking 35 U.S.C. 112(f) and are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. However, while the specification describes the auto-provisioning engine and import module as software/application/programs/etc., the examiner was unable to find a description in the specification of a corresponding structure/hardware structure/etc. for the claimed auto-provisioning engine and import module, and therefore the claim(s) contains subject matter which was not described in the specification.
As per dependent claims 23-31, they incorporate the deficiencies of independent claim 21, upon which they depend, and fail to correct the deficiencies of claim 22. Therefore, claims 23-31 are rejected for similar reasoning as claim 22, above.
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 22-31 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.
As per independent claim 22, the claim limitations “…an auto-provisioning engine for detecting…” and “an import module for receiving…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. While the specification discloses that the “auto-provisioning engine” and “import module” may be software components/programs/application/etc. (ex: par. [0034] of the specification of this application recites “…Moreover, the auto-provisioning engine is a network service, a detection program, an application program, or a projected workspace…”, par. [0082] recites “…Moreover, the term "software module" used herein includes a class library, an object entity, a software component, a software agent, an application program or any program block that can be built, installed, introduced, generated, expanded and/or dynamically loaded to run in the software system….”, par. [0232] recites “…the startup module 15, the import module 17 and/or the management module 19 can be implemented as independent application programs…”, par. [0233] recites “…In the software system 131, the startup module 15, the import module 17 and/or the management module 19 can be implemented in the same software module. That is, the startup module 15, the import module 17 and the management module 19 can be directly integrated into the software module in the form of a software component or an executable program block….”), the specification does not disclose that the “auto-provisioning engine” and “import module” are hardware components/have hardware structure/etc., and as such the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
As per dependent claims 23-31, they incorporate the deficiencies of independent claim 22, upon which they depend, and fail to correct the deficiencies of claim 22. Therefore claims 23-31 are rejected for similar reasoning as claim 22, above.
Claims 1-11 and 19-31 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.
As per independent claims 1, 19, and 22 they recite “…wherein the executable object is in the form of a configuration file, a configuration object, or an app executable that is automatically generated by a code generator…” and as such recite the acronym “app” without first defining what “app” is intended to mean/stand for/without first defining “app” to mean “application”/etc., and therefore the examiner is unclear as to what is meant by “app”. Further, claims 1 and 19 additionally recite “…dynamically loading and running the volatile application program when an execution request for the executable object is issued, wherein the task of dynamically loading and running the volatile application program is triggered…” and while the claims previously recite “dynamically loading and running…”, they do not previously establish that it is “a task” and as such there is insufficient antecedent basis for the limitation “the task” in the claims. For the purpose of examination, the examiner will consider “app” to mean “application” and the claim limitation of claims 1, 19, and 22 to be “…or an application (app) executable that is automatically generated by a code generator…” and the claim limitations of claims 1 and 19 to be “…wherein dynamically loading and running the volatile application program is triggered”
As per claims 2-11, 20-21, and 23-31 , they incorporate the deficiencies of claims 1, 19, and 22, respectively, and fail to correct the deficiencies of claims 1, 19, and 22. Therefore claims 2-11, 20-21, and 23-31 are rejected for similar reasoning as claims 1, 19, and 22, above.
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 19-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because:
As per independent claim 19, it recites “A software system for dynamically integrating application programs, the software system comprising: a first software module…or a second software module…”. The examiner would like to point out that, with broadest reasonable interpretation, the claimed “software system” may be interpreted as a system comprising either the recited first software module or the recited second software module, which, with broadest reasonable interpretation, may be interpreted as software components/modules/programs/etc., and as such, with broadest reasonable interpretation, the claimed “software system” may be interpreted as software/programs/etc., which is software per-se, and software per-se is not patent eligible under 35 USC 101.
As per dependent claims 20-21, they incorporate the deficiencies of independent claim 19, upon which they depend, and fail to correct the deficiencies of claim 19. Therefore, claims 20-21 are rejected for similar reasoning as independent claim 19, above.
Allowable Subject Matter
Claims 1-31 are allowable over the prior art of record.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record (Venkatraman et al. US Patent 10,083,052 B1, Zhang et al. US PG Pub. 2021/0318893 A1, Duan et al. US Patent 10,509,631 B2) teaches that an executable/software/application/ program/etc. may be installed/introduced/etc. to a system in response to a received request, that there may be a binding relationship between the executable/software/ program/etc. and a volatile application program that is established by binding metadata of the volatile program/access link of metadata of the executable/software/etc., that software/application/executable may be automatically generated by a code generator, and that an application/program/volatile application/etc. may be dynamically loaded and run in response to an execution request.
However, the prior art of record fails to render an obviousness of an executable object/state in the form of a configuration file, configuration object, or an application executable, that is automatically generated by a code generator being dynamically installed/imported in response to a request from an auto-provisioning engine, when a software agent triggers dynamic loading and running of a volatile application program corresponding to/bound to/etc. the executable object/state according to an execution request for the executable object that has been issued, as required by the independent claims.
Response to Arguments
Applicant's arguments filed 3/24/2026 have been fully considered but they are not persuasive.
As per the 112(f) interpretation arguments on pg. 27 par. 1-pg. 28 par 2 of the remarks that claim 22 does not invoke 112(f) interpretations as the claim provides a detailed description of the technical aspects and implementation functions of the terms and the specification of this application provides specific embodiments of the terms, the examiner, respectfully, disagrees.
The examiner would first like to point out that 112(f) is an interpretation, not a rejection, and is being used to clarify that the specification is being used to interpret what is meant by the recited auto-provisioning engine and the import module that make up the claimed machine. The examiner would like to point out that claim 22 recites “A machine for…the machine comprising: an auto-provisioning engine that detects…or an import module that receives…” and as such, with broadest reasonable interpretation, uses generic placeholders “auto-provisioning engine” and “import module” as the claim language does not provide/specify a hardware structure of the engine and module/does not clarify what the engine and module are made of/etc., rather only provides clarification as to what they do, and this interpretation is supported as, as argued by the applicant, the specification of this application provides clarifications as to the specific embodiments of the engine and module. If applicant does not intend to invoke 112(f) then the examiner would recommend clarification as to what the hardware structure of the claimed machine is, ex: “A machine for…the machine comprising: a processor and a memory storing instructions which, when executed by the processor, cause the processor to: detect at least one connected device…receive an executable state from an application program…”.
Therefore, the examiner finds these arguments unpersuasive and maintains that the interpretation under 112(f) is proper.
As per the 112 arguments on pg. 28 par. 3-pg. 30 par. 11 that claim 22 does not lack a definite corresponding structure/hardware structure or fail to disclose the corresponding structure as the terms “auto-provisioning engine” and “import module” are not generic placeholders but rather are known to persons of ordinary skill in the art to be software components comprising executable instructions, which may be located in memory and implemented on processors and as such the terms “engine” and “module” can be understood in the art as a set of program instructions which can also be structured, and further that claim 22 lists the operational steps performed by the engine and module thereby providing structural and functional context as the disclosed operations constitute specific algorithmic structures that define how the claimed functions are performed, and as such claim 22 provides sufficient structure, the examiner, respectfully, disagrees.
The examiner would first like to point out that, with broadest reasonable interpretation, the actual wording/phrasing of claim 22 does not recite that the claimed machine includes any processor or memory, that the engine and module are stored in a memory, that a processor implements/performs/executes/etc. the software/engine/module/etc., rather it only recites “A machine for…the machine comprising: an auto-provisioning engine that detects…or an import module that receives…”. Additionally, as argued by the applicant, the engine and module are known to be software, not necessarily hardware, and as such do not provide the required hardware structure. Further, the examiner would like to point out that clarifying/providing/etc. the operations performed by the engine and module does not clarify what the engine and module are themselves, only what actions they perform, and as such this does not provide the required context. If applicant intended for the claims to be interpreted to include the required hardware structure/not invoke 112(f) interpretation leading to the 112 issues/etc. the examiner would like to recommend clarifying that hardware components are included in the claimed machine. Ex: “A machine for…the machine comprising: a processor and a memory storing instructions which, when executed by the processor, cause the processor to: detect at least one connected device…receive an executable state from an application program…”, “A machine for…the machine comprising: a processor, and a memory storing software and that is operatively coupled to the processor, the software stored in the memory including: an auto-provisioning engine that detects at least one connected device…an import module that receives an executable state from an application program…”, etc..
Therefore, the examiner finds these arguments unpersuasive and maintains that the rejection under 35 USC 112 is proper.
As per the 112 arguments on pg. 31 par. 1-pg. 36 par. 3 of the remarks that the amended claims are allowable under 35 USC 112(b) as they have been amended to address the 112(b) issues, the examiner would like to point out that the amendments to independent claims 1, 19, and 22, introduce new 112(b) issues, as seen in the rejection of claims 1, 19, and 22 under 35 USC 112(b), above.
Therefore, the examiner finds these arguments unpersuasive and maintains that the rejection under 35 USC 112(b) is proper.
As per the 101 arguments on pg. 37 par. 1-pg. 38 par. 3 that claims 19-21 are allowable under 35 USC 101 as the examiner’s interpretation of a software system is overly broad as the specification of this application (ex: par. [0082]) recites “the term ‘software system’ is not merely a software module or program, but rather refers to a software platform or operating system environment capable of being extended by application programs”, and as such a software system is distinct from software per-se as it necessarily requires a platform-level environment such as an operating system or extensible software platform and integration of application programs within that environment, which cannot reasonably be interpreted as a disembodied software program, but rather is directed to a structured software environment that supports dynamic installation, state importation, and runtime execution of application programs, which is qualitatively different from software per-se, and is therefore allowable under 35 USC 101, the examiner, respectfully, disagrees.
The examiner would like to point out that the actual wording/phrasing of claim 19 is “A software system for…the software system comprising: a first software module…or a second software module…”, and as such, the actual wording/phrasing of the claim itself defines the claimed software system to be/comprise/etc. the first or second software module, it does not recite/require any hardware/platform/etc. to be part of/included in/etc. the claimed system, and as such the claimed software system may be just the software module, which is software per-se. Additionally, while the specification of this application clarifies that the term ‘software system’ refers to a software platform or operating system environment capable of being extended by application programs, with broadest reasonable interpretation, an operating system environment may be an operating system that may programs/software/etc. may be integrated with, and an operating system is software/program/code/etc., and as such integrating software/applications/etc. (ex: the first or second software module) with an operating system may result in software/code/etc. integrated with other software/code/etc., which is still just software/code/etc.. The examiner would like to recommend that applicant consider clarifying that the system includes hardware components in addition to the software in order to overcome the 101 issues, Ex: A system for…the system comprising: a processor; and a memory storing: a first software module…or a second software module…”.
Therefore, the examiner finds these arguments unpersuasive and maintains that the rejection under 35 USC 101 is proper.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS M SLACHTA whose telephone number is (571)270-0653. The examiner can normally be reached Monday-Friday 6:30am-4pm.
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/DOUGLAS M SLACHTA/Examiner, Art Unit 2193
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