DETAILED ACTION
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, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 January 2026 has been entered.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Per step 1 of the Subject Matter Eligibility Test (See MPEP 2106), claims 1 is directed to a method which is a process and claim 11 is directed to a non-transitory storage medium, which is a product. Both claims fall within a statutory category (See MPEP 2106.03).
Per step 2A, prong 1, claims 1 and 11 recites performing compression operations at a client on data using a prediction engine that includes a prediction model, the client comprising a processor, wherein the prediction model is configured to infer a compressor, from among a plurality of compressors, for compressing the data based on a chunk of the data, wherein the inferred compressor is a best compressor for satisfying a service level objective; compressing the data using the inferred compressor; performing a loss detection operation at the client; determining a loss in performance occurs when a compressor inferred by the prediction engine does not match a compressor inferred by a compressor selector, wherein the loss in performance occurs in the prediction engine or the compressor selector; and updating the prediction model and/or the prediction compressor selector; operating the prediction model to infer a new compressor; and resuming the compression operations to compress the data using the new compressor. Performing compression operations, compressing the data, performing loss detection, updating the prediction model, operating the prediction model and resuming the compression operations require mathematical relationships and calculations, which falls into the mathematical concepts grouping (See MPEP 2106.04(a)(2), I). Determining a loss in performance is disclosed as an observing a match between two compressors or it may be implemented with a mathematical calculation, so this step falls into the mathematical concepts grouping and the mental processes grouping (See MPEP 2106.04(a)(2), III).
Per step 2A, prong 2, the abstract idea is not integrated into a practical application because claims 1 and 11 do not recite any additional elements.
Per step 2B, claims 1 and 11 do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reason. No additional elements are recited, so the claims do not recite anything that is significantly more than the abstract idea.
Claims 2-10 and 12-20 depend from claims 1 and 11, respectively. Claims 2-10 and 12-20 only recite further details of the abstract idea, and are rejected for the same reason.
Response to Arguments
Applicant's arguments filed 12 January 2026 with regard to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant states that claim 1 relates to an application whose practical application is to select a compressor for compressing data. Applicant refers to a technical benefit of using less storage, more efficient compression, and the like because the correct compressor is being selected. However, all of the claim limitations are directed to an abstract idea. There are no additional elements cited in the claim. If there are no additional claim elements besides the judicial exception, that is insufficient to integrate the judicial exception into a practical application (See MPEP 2106.04(d), Subsection III).
As discussed during the interview, MPEP 2106.05 indicates that technologies such as digital data compression are patentable-eligible subject matter. See DDR Holdings, LLC. V. Hotels.com, L.P., 773 F.3d 1245, 1259, 113 USPQ2d 1097, 1107 (Fed. Cir. 2014); Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016). Applicant states that compressing data and selecting a compressor arises in the realm of computer networks and claim 1 overcomes a problem related to compressing data.
However, in considering whether a claim provides improvement to the functioning of the computer or any other technology or technical field, it is important to note, the judicial exception alone cannot provide the improvement; and the improvement can be provided by one or more additional elements. The claims of the present application only recite an abstract idea and do not recite any additional elements. Further, upon closer review of the DDR Holdings, LLC. v. Hotels.com L.P. and the Intellectual Ventures I v. Symantec Corp. cases cited MPEP 2106.05(a), subsection II court cases cited as the fourth example of that courts have indicated may be sufficient to show an improvement in existing technology, it is noted that neither of these court cases are directed to claims that are directed to a digital data compression method. Instead, these cases mention that an improved, particular method of digital data compression may be sufficient to show an improvement in existing technology. The claims in the present application are not directed to an improved, particular method of data compression. Instead the claims are directed to inferring a compressor from a plurality of compressors and updating the prediction model and/or compressor selector when a loss in performance occurs and no particular details of the compression method are claimed.
Applicant states that McRO, Inc. v. Bandai Namco Games 837 F.3d 1299 (Fed. Cir. 2016) stands for the proposition that using rules to automate animation is a specific technological improvement rather than an abstract process; and that McRo noted that the use of rules, not the computer improved the existing animation process. Applicant states that in claim 1, the improvement is not in simply using a computer, but in the rules or method steps of using a prediction engine, a compressor, and a loss. However, as discussed above, the claims do not recite any additional elements that provide the improvement.
Applicant states that the claim as a whole relates to a specific method for compressing data that involved the use of multiple components (prediction engine and compressor selector), the need to determine a loss that with respect to these two components, and then updates to resolve the loss. However, the prediction engine and compressor selector describe parts of an abstract idea that may be implemented in software (Fig. 7, prediction engine 700; pars. 42-44; Fig. 4, compressor selector 412; par. 35). While additional elements may be considered in combination with other claim elements, the claims do not recite any additional elements and only recite the abstract idea.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANUEL L BARBEE whose telephone number is (571)272-2212. The examiner can normally be reached M-F: 9-5:30..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelby A Turner can be reached at 571-272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MANUEL L BARBEE/Primary Examiner, Art Unit 2857
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