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 § 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 1-10, 12-17, 19-25, 27, 29-32
Claims 1-10. 12-17, 19-25, 27, 29-32 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. The claims fall within at least one of the four categories of patent eligible subject matter. However, the claimed invention is directed to performing a mental process with generic computing devices and off-the-shelf AI applications without significantly more.
The following is an analysis of the claims regarding subject matter eligibility in accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG):
Subject Matter Eligibility Analysis
Step 1: Do the Claims Specify a Statutory Category?
Claims 1-10, 12-17, 31-32 describe a method/process, claims 19-25, 27, 29 describe a system, and claim 30 describe a non-transitory computer-readable storage medium, therefore satisfying Step 1 of the analysis.
Step 2 Analysis for Claims 1-18
Step 2A – Prong 1: Is a Judicial Exception Recited?
Independent claim 1 recites receiving data from devices, comparing data, determining a fault from comparing result, displaying result, and performing enhanced diagnostics. The limitations describe processes that, under their broadest reasonable interpretation, covers performance of the limitations in the human mind but for the recitation of generic computer components (i.e., use of a processor or a generic computer). That is, nothing in the claim elements preclude the steps from practically being performed in the mind using a generic computing system. The limitations involve making evaluations of the collected data to compare to determine differences, thereby describing an observation and/or evaluation of data. Such an observation and/or evaluation of data can be performed by a human and recites a mental process.
If a claim limitation, under its broadest reasonable interpretation, covers the practical performance of the limitation in the human mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. See the 2019 Revised Patent Subject Matter Eligibility Guidance. Accordingly, the claim recites an abstract idea.
The claims include performing, using the apparatus, enhanced diagnostics. While the examiner does find support for said enhanced diagnostics, the term is not defined in the Specification to as to what the term performs. In light of the absence of any definition, the examiner contends that “enhanced diagnostics” can be interpreted as a mental process using a computer as a tool (apparatus), such as monitoring a device, emailing an admin, creating a ticket, etc. Performing further diagnostics on a device can also merely be collecting further data, which is an abstract idea. The claim also cites displaying data. The collecting and displaying are precedented as abstract, as cited in the following:
An example of claims that recite mental processes cited in the October 2019 Update to the 2019 PEG includes “a 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, LLC v. Alstom, S.A.” 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. See MPEP 2106.04(a)(2)(III)(A, B, and C).
Claims 2-3, 5 recites a machine learning model for training with datasets. The limitations in the claims merely describe the use of machine learning without any specification of details pertaining to how the associated machine learning model is trained and/or how the actual machine learning is performed. Such details would include description of specific algorithms used in training the machine learning model. As currently written, the limitations in the claims describe merely recite the comparison of data and using historical data in the model. The data evaluations describe mathematical concepts that can be performed by a human (i.e., as a mental process and/or by using pen/paper) and are therefore directed to the identified judicial exception. See MPEP 2106.05(f). There is no indication that the combination of elements solves a technological problem other than merely taking advantage of the inherent advantages of using existing artificial intelligence technology (i.e., machine learning) in its ordinary, off-the-shelf capacity to apply the identified judicial exception. Simply implementing the abstract idea(s) on a general purpose processor or other generic computer component is not a practical application of the abstract idea(s).
Claims 4, 6-10, 12, 14, 16-17, 32 recites types of data being collected, as well as how, when, and from where they are collected. These claims contain no additional elements which would integrate the abstract idea(s) into a practical application. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the identified abstract idea(s).
Claims 13, 31 recite further mental processes of comparing data and determining results using a computer as a tool. See above rejection of claim 1.
Claim 15 further recites displaying data, see claim 1 rejection re: Electric Power Group.
Step 2B: Do the Claims Provide an Inventive Concept?
When evaluating whether the claims provide an inventive concept, the presence of any additional elements in the claims need to be considered to determine whether they add “significantly more” than the judicial exception.
In the instant case, as detailed in the analysis for Step 2A-Prong 2, claim 1 contains additional elements which require evaluation as to whether they provide an inventive concept to the identified abstract idea. The GUI and devices recited in the claim describe a generic computing components at a high level and do not represent “significantly more” than the judicial exception.
The limitations pertaining to gathering of data, evaluating the data and the display of results describe insignificant extra-solution activity and are written at a high level in a generic manner without providing any details regarding a specific problem being solved or specific remedial actions being taken.
The claims recite to perform enhanced diagnostics, which is not defined (see above rejection). The examiner interprets this amendment as equivalent to the court identified limitation of “Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea” see MPEP 2106.05(f).
Therefore, these limitations recite no additional elements that would amount to significantly more than the abstract ideas defined in the claim.
Claims 1-10, 12-17, 31-32, as amended, recite limitations regarding the use of machine learning and the training of a machine learning model. As discussed above in the Step 2A - Prong 2 analysis regarding integration of the abstract idea into a practical application, the limitations, as currently written, describe evaluations and mathematical concepts that can be performed by a human (i.e., as a mental process and/or by using pen/paper) and are therefore directed to the identified judicial exception. The dependent claims recite the machine learning actions which describe a mental process and/or mathematical concepts is equivalent to merely specifying instructions to apply the judicial exception using unsupervised learning. See MPEP 2106.05(f). There is no indication that the combination of elements solves a technological problem other than merely taking advantage of the inherent advantages of using existing artificial intelligence technology (i.e., machine learning) in its ordinary, off-the-shelf capacity to apply the identified judicial exception. Simply implementing the abstract idea(s) on a general purpose processor or other generic computer component, or utilizing generic artificial intelligence technology to apply the identified judicial exception, does not describe an inventive concept.
Conclusion
In light of the above, the limitations in claims 1-10, 12-17, 31-32 recite and are directed to abstract ideas and recite no additional elements that would amount to significantly more than the identified abstract idea(s). Claims 1-10, 12-17, 31-32 are therefore not patent eligible.
Step 2 Analysis for Claims 19-25, 27, 29
Claims 19-25, 27, 29, as amended, contain limitations for a system which are similar to the limitations for the methods specified in claims 1-10, 12-17, 31-32, respectively. As such, the analysis under Step 2A – Prong 1, Step 2A – Prong 2, and Step 2B for claims 19-25, 27, 29, 29 is similar to that presented above for claims 1-10, 12-17, 31-32.
In light of the above, the limitations in claims 19-25, 27, 29 recite and are directed to an abstract idea and recite no additional elements that would amount to significantly more than the identified abstract ideas(s). Claims 19-25, 27, 29 are therefore not patent eligible.
Step 2 Analysis for Claims 30
Claim 30, as amended, contain limitations for a non-transitory computer-readable medium which are similar to the limitations for the methods specified in claims 1-12, respectively. As such, the analysis under Step 2A – Prong 1 and Step 2A – Prong 2 for claim 30 is similar to that presented above for claims 1-12.
Step 2B: Do the Claims Provide an Inventive Concept?
When evaluating whether the claims provide an inventive concept, the presence of any additional elements in the claims need to be considered to determine whether they add “significantly more” than the judicial exception.
Claim 30 contains additional elements which require evaluation as to whether they provide an inventive concept to the identified abstract idea.
Claim 30 recites the additional elements of a “non-transitory computer-readable storage medium”. The computer-readable storage medium cited in the claim describe generic computer components at a high level and do not represent “significantly more” than the identified judicial exception. The enabling of the processors to troubleshoot a performance problem recites intended use of the claimed limitations and does not represent “significantly more” than the identified judicial exception.
Conclusion
In light of the above, the limitations in claim 30 recite are directed to an abstract idea and recite no additional elements that would amount to significantly more than the identified abstract ideas(s). Claims 30 are therefore not patent eligible.
Response to Arguments
Applicant's arguments filed 9/19/25 have been fully considered but they are not fully persuasive.
The applicant’s amendment of the original, objected matter of claim 13 as moved into the independent claims has overcome the USC 103 rejection.
The applicant has not addressed the USC 101 rejection other than to state it is in a practical application and, if not, then significantly more. The examiner disagrees and has stated in the rejection as to reasons why.
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER S MCCARTHY whose telephone number is (571)272-3651. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/CHRISTOPHER S MCCARTHY/Primary Examiner, Art Unit 2113