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 .
Acknowledgements.
Claims 1-39, 43, and 53 are cancelled.
Claims 40-42, 44-52 and 54-59 are pending.
Applicant’s amendments on 8/11/2026 merely provided details in the preamble, further details about the first value, and expanded on the meaning of “IT” to state information technology.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/11/2026 has been entered.
Response to Arguments
35 USC 101
Applicant's arguments filed 8/11/2026 have been fully considered but they are not persuasive. The rejection is maintained.
Applicant argues on page 12
Thus, the claims do not merely request that a computer determine where information should be stored. They recite a particular interaction among primary digital data, secondary digital data, multiple category-specific object metrics, first and second sets of storage characteristics of a first and second electronic storage device, respectively, and a resulting selection of the second electronic storage device for storage of the first digital object.
Examiner respectfully disagrees.
The Examiner interprets the electronic storage devices as additional elements. Additional elements are not used in step 2A prong 1 of identifying the abstract idea. In addition, the Applicant merely restated the claims when making an argument and did not point to which specific claim limitations are not abstract. In addition, the restated claims do include limitations that fall in the abstract idea grouping of a mental process such as collecting, calculating, generating, and comparing data.
Applicant argues on page 12
Applicant also respectfully asserts that amended Claim 40 does not recite a certain method of organizing human activity. Amended Claim 40 does not recite fundamental economic practices, commercial or legal interactions, advertising or sales activity, management of personal behavior, or management of interpersonal relationships. Instead, Claim 40 recites optimizing storage of heterogenous digital objects in a multi-volume storage system that includes multiple electronic storage devices, where the optimization is based on system calculated category specific object metrics and characteristics of the electronic storage devices.
Examiner respectfully disagrees.
Claim 40 recites calculating a comparing value for objects. These values correspond to dollars as seen on page 3 of the Specification. These values also correspond to business values with respect to a business. The claims also deal with document management which include protecting documents of value (See page 1-2 in Specification). This makes the claims fall in the abstract idea grouping of certain methods of organizing human activity (mitigating risk, fundamental economic principles or practices; business relations).
Applicant argues on page 12
Instead, Claim 40 recites optimizing storage of heterogenous digital objects in a multi-volume storage system that includes multiple electronic storage devices, where the optimization is based on system calculated category specific object metrics and characteristics of the electronic storage devices.
Examiner respectfully disagrees.
The improvement here is nested in the abstract idea step of storing. Storing data can be done without a computer and the multi-volume storage system is an additional element that is merely used as a tool to carryout this step. This is not the same as a technical improvement as seen in the court case of McRO. The patents in McRO were an improvement on 3-D animation wherein the prior art comprised that "for each keyframe, the artist would look at the screen and, relying on her judgment, manipulate the character model until it looked right — a visual and subjective process." Thus, the patents in McRO aimed to automate a 3-D animator's tasks, specifically, determining when to set keyframes and setting those keyframes.
Applicant argues on page 13
Claim 40 constitutes an abstract idea, that alleged exception is integrated into a
practical application… Therefore, the alleged exception is applied to optimize storage of the first digital object within the particularly claimed multi-volume storage system.
Examiner respectfully disagrees.
The claims are not solving a technical problem but a business problem. Applicant’s specification states the business problem of data management. The business problem also includes determining the value of the data in order to make the correct business decisions. (See pages 1-3).
A technical problem is seen in the court case of McRO. The patents in McRO were an improvement on 3-D animation wherein the prior art comprised that "for each keyframe, the artist would look at the screen and, relying on her judgment, manipulate the character model until it looked right — a visual and subjective process." Thus, the patents in McRO aimed to automate a 3-D animator's tasks, specifically, determining when to set keyframes and setting those keyframes.
Applicant argues on page 14 and 15
A general observation that processors, networks, or electronic storage devices were individually known does not establish that the claimed combination of operations was well-understood, routine, and conventional. Berkheimer v. HP Inc., 881 F.3d 1360, 1368-69 (Fed. Cir. 2018). USPTO guidance requires factual support for a well-understood, routine, and conventional finding and requires consideration of the additional elements in combination, not merely one at a time.
Examiner respectfully disagrees.
Examiner did not use the language well understood, routine, or conventional when rejecting the claims under 35 USC 101 from the 8/4/2023 office action. The 101 rejection was not on the basis of step 2b being well understood, routine, or conventional but rather in the manner of "apply it.” Accordingly, Berkheimer evidence is not required.
Applicant argues on page 16
Therefore, amended Claim 50 is also directed to patent-eligible subject matter, for at least the reasons provided above with respect to amended Claim 40.
Examiner respectfully disagrees.
The arguments for claim 50 have already been addressed as seen above. Claim 50 is still rejected under 35 USC 101 rejection.
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 40-42, 44-52 and 54-59 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 than the judicial exception itself.
Regarding Step 1 of the Subject Matter Eligibility Test for Products and Processes (See MPEP 2106.03), claims 40-42, 44-52 and 54-59 are directed to a method and system.
Regarding step 2A-1, Claims 40-42, 44-52 and 54-59 recite a Judicial Exception. Exemplary independent claim 40 and similarly claims 50 recite the limitations of
…collecting primary…data indicative of a first… document corresponding to a first…object…providing…access…generating secondary…data indicative of a…storing…data… calculating a first value of said first… object, said first value of said first…object being calculated based at least in part on said primary data and said secondary data; comparing said first value of said first…object with said first set of storage characteristics and said second set of storage characteristics; selecting, based at least in part on said step of comparing…said second… storage… for storing said first…object; removing…object…storing said first… object…providing a notification
These limitations, as drafted, are a process that, under its broadest reasonable interpretation cover concepts of collecting, generating, calculating, comparing, selecting, removing and storing data. The claims also recite providing a notification. The claim limitations fall under the abstract idea grouping of mental process, because the limitations can be performed in the human mind, or by a human using a pen and paper. For example, but for the language of a system and electronic storage device, the claim language encompasses simply collecting data regarding an object, providing access to a document, generating secondary data, storing data, calculating a first value for the object, comparing the first value with storage characteristics, selecting a storage, and storing the first object. The claims also include removing data and providing a notification. These are clear data manipulation steps. Determining where to store an object does not require a computer. For example, a user would be able to receive and determine data regarding an object, determine the best place to store the object, and then store the object. A user is also capable of calculating a first value. A user is also able to remove data and provide a notification.
The claims further recite calculating and comparing value for objects. These values correspond to dollars as seen on page 3 of the Specification. These values also correspond to business values with respect to a business. The claims also deal with document management which include protecting documents of value (See page 1-2 in Specification). These makes the claims fall in the abstract idea grouping of certain methods of organizing human activity (mitigating risk, fundamental economic principles or practices; business relations). It is clear the limitations recite these abstract idea groupings, but for the recitations of generic computer components. The mere nominal recitations of generic computer components do not take the limitations out of the mental process and certain methods of organizing human activity grouping. The claims are focused on the combination of these abstract idea processes.
Regarding step 2A-2- This judicial exception is not integrated into a practical application, and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The claim recites the additional elements of multi-volume storage system, digital object, network connection, plurality of user devices, providing electronic storage devices, system, electronic document, and hardware processor.
These components are recited at a high level of generality and merely automate the steps. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component.
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components or software. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Further, the claims do not provide for recite any improvements to the functioning of a computer, or to any other technology or technical field; applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; applying the judicial exception with, or by use of, a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; or 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.
The dependent claims have the same deficiencies as their parent claims as being directed towards an abstract idea, as the dependent claims merely narrow the scope of their parent claims. For example, the dependent claims further describe details about the storage device such as altering IT policies. In addition, the dependent claims further describe additional steps such as altering access permissions. In addition, the dependent claims further recite prioritizing notifications based on value of the object.
Regarding step 2B the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because claim 40 recites
Method, however method is not an additional element.
Claim 40 further recites multi-volume storage system, providing electronic storage device, digital object, electronic document, system, network connection, user devices
Claim 50 recites multi-volume storage system, electronic storage device, electronic document, digital object, hardware processor, network connection, user devices
When looking at these additional elements individually, the additional elements are purely functional and generic the Applicant specification states general purpose computer configurations on page 29.
When looking at the additional elements in combination, the computer components add nothing that is not already present when the steps are considered separately. See MPEP 2106.05
Looking at these limitations as an ordered combination and individually adds nothing additional that is sufficient to amount to significantly more than the recited abstract idea because they simply provide instructions to use generic computer components, recitations of generic computer structure to perform generic computer functions that are used to "apply" the recited abstract idea. Thus, the elements of the claims, considered both individually and as an ordered combination, are not sufficient to ensure that the claim as a whole amounts to significantly more than the abstract idea itself.
Since there are no limitations in these claims that transform the exception into a patent eligible application such that these claims amount to significantly more than the exception itself, claims 40-42, 44-52 and 54-59 are rejected under 35 U.S.C. 101.
Conclusion
The prior art made of record and not relied upon considered pertinent to Applicant’s disclosure
Dotan-Cohen (US20160248865A1) Discloses personalized notifications.
Luchene (US20070192279A1) Discloses a database, such as a patent database, including a plurality of electronic documents, such as patents and patent applications, is described. The databases includes private and public databases.
Wilbrink (20070265854) Discloses electronic publishing and, more particularly, to management of rights to materials which may be subject to copyright that may be provided over the Internet or other electronic media.
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/MUSTAFA IQBAL/Primary Examiner, Art Unit 3625
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