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 .
Response to Amendment
This office action is in response to applicant’s amendment received on 01/12/2026.
Claims1, 18, and 20 have been amended.
Claims 10 and 13 have been cancelled.
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 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1:
According to the first part of the analysis, in the instant case, claims 18-19 are directed to a method, claim 20 is directed to using an instrument support system to perform a method. Thus, each of the claims falls within one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter).
Regarding claim 18:
A method, executed by a processing device, for providing scientific instrument support, the method comprising:
receiving, via a data gathering layer, a configuration comprising identifying data related to an instrument that provides telemetry data, and a plurality of settings for the instrument regarding a set of the telemetry data provided by the instrument;
configuring, via the data gathering layer, a control layer for each of a plurality of instruments to provide the set of the telemetry data according to the plurality of settings and differently than a respective default setting, wherein the plurality of settings includes a communication protocol used by the data gathering layer to communicate with the control layer;
receiving, via the data gathering layer, from the control layer, telemetry data from the set of the telemetry data; and
providing, via the data gathering layer, the received telemetry data for further processing.
Step 2A Prong 1:
“receiving, via a data gathering layer, a configuration comprising identifying data related to an instrument that provides telemetry data, and a plurality of settings for the instrument regarding a set of the telemetry data provided by the instrument” is directed to mental step of data gathering.
“configuring, via the data gathering layer, a control layer for each of a plurality of instruments to provide the set of the telemetry data according to the plurality of settings and differently than a respective default setting” is directed to math because the control layer acts as a system that manages inputs (instrument configuration) and outputs (telemetry data). Setting different values for instruments often requires mathematical modeling of the desired system response. Modern telemetry system allow creating “calculated fields”, which are directed applications of algebra and arithmetic.
“wherein the plurality of settings includes a communication protocol used by the data gathering layer to communicate with the control layer” is directed to math because protocols often use mathematical algorithms such as Cyclic Redundancy Checks (CRC), checksums, or parity bits to verify the integrity of data transmitted between layers.
“receiving, via the data gathering layer, from the control layer, telemetry data from the set of the telemetry data” is directed to mental step of data gathering.
Each limitation recites in the claim is a process that, under BRI covers performance of the limitation in the mind but for the recitation of a generic “telemetry data and measurement” which is a mere indication of the field of use. Nothing in the claim elements precludes the steps from practically being performed in the mind. Thus, the claim recites a mental process.
Further, the claim recites the step of " configuring, via the data gathering layer, a control layer for each of a plurality of instruments to provide the set of the telemetry data according to the plurality of settings and differently than a respective default setting, wherein the plurality of settings includes a communication protocol used by the data gathering layer to communicate with the control layer” which as drafted, under BRI recites a mathematical calculation. The grouping of "mathematical concepts” in the 2019 PED includes "mathematical calculations" as an exemplar of an abstract idea. 2019 PEG Section |, 84 Fed. Reg. at 52. Thus, the recited limitation falls into the "mathematical concept" grouping of abstract ideas. This limitation also falls into the “mental process” group of abstract ideas, because the recited mathematical calculation is simple enough that it can be practically performed in the human mind, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889.
Note that even if most humans would use a physical aid (e.g., pen and paper, a slide rule, or a calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of this limitation. See October Update at Section I(C)(i) and (iii).
Additional Elements:
Step 2A Prong 2:
“A method, executed by a processing device, for providing scientific instrument support, the method comprising” recited in the preamble does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“receiving, via a data gathering layer, a configuration comprising identifying data related to an instrument that provides telemetry data, and a plurality of settings for the instrument regarding a set of the telemetry data provided by the instrument” does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“configuring, via the data gathering layer, a control layer for each of a plurality of instruments to provide the set of the telemetry data according to the plurality of settings and differently than a respective default setting, wherein the plurality of settings includes a communication protocol used by the data gathering layer to communicate with the control layer” does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“receiving, via the data gathering layer, from the control layer, telemetry data from the set of the telemetry data” does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“providing, via the data gathering layer, the received telemetry data for further processing” is directed to insignificant activity and does not integrate the judicial exception into a practical application. See MPEP 2106.05(g).
The claim is merely selecting data, manipulating or analyzing the data using math and mental process, and displaying the results.
This is similar to electric power: MPEP 2106.05(h) vi. Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).
Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The claim as a whole does not meet any of the following criteria to integrate the judicial exception into a practical application:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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.
Step 2B:
“A method, executed by a processing device, for providing scientific instrument support, the method comprising” recited in the preamble does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“receiving, via a data gathering layer, a configuration comprising identifying data related to an instrument that provides telemetry data, and a plurality of settings for the instrument regarding a set of the telemetry data provided by the instrument” does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“configuring, via the data gathering layer, a control layer for each of a plurality of instruments to provide the set of the telemetry data according to the plurality of settings and differently than a respective default setting, wherein the plurality of settings includes a communication protocol used by the data gathering layer to communicate with the control layer” does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“receiving, via the data gathering layer, from the control layer, telemetry data from the set of the telemetry data” does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“providing, via the data gathering layer, the received telemetry data for further processing” is directed to insignificant activity and does not amount to significantly more than the judicial exception in the claim. See MPEP 2106.05(g) and 2106.05(d)(ii), third list, (iv).
The claim is therefore ineligible under 35 USC 101.
Claim 20 cites an instrument support system, comprising: an instrument that provides telemetry data, the instrument having a control layer, a data gathering layer; and a processing device configured to perform a method as in claim 18. These additional elements fail to integrate the abstract idea into a practical application. These limitations are recited at a high level of generality and do not add significantly more to the judicial exception. These elements are generic computing devices that perform generic functions. Using generic computer elements to perform an abstract idea does not integrate an abstract idea into a practical application. See 2019 Guidance, 84 Fed. Reg. at 55. Moreover, "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. at 223; see also FairWarninglP, LLCv. latric SysInc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citation omitted) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter"). On the record before us, we are not persuaded that the hardware of claim 20 integrates the abstract idea into a practical application. Nor are we persuaded that the additional elements are anything more than well-understood, routine, and conventional so as to impart subject matter eligibility to claim 20.
Regarding claim 19, “before providing the received telemetry data for further processing, formatting the received telemetry data” is directed to math because mathematical rules and conversions are applied when changing a variable's data type, such as converting a raw integer sensor reading to a meaningful floating-point value in a specific unit of measure.
Hence the claims 18-20 are treated as ineligible subject matter under 35 U.S.C. § 101.
Response to Arguments
Applicant's arguments filed 01/12/2026 have been fully considered but they are not persuasive.
-Applicant argues that Claims 18 and 20 recite a specific software architecture in which the data gathering layer acts as a common interface that coordinates configuration, communication, and data standardization between a pre-defined protocol (e.g., a configuration) and instrument control layers. This architecture represents a technological improvement in computer technology, not merely the application of a computer to perform an abstract idea. Accordingly, Applicant respectfully requests withdrawal of the rejection under 35 § U.S.C. 101 with respect to claims 18 and 20 and the claims depending from these claims.
Response: The examiner respectfully disagrees.
The claims are merely selecting data, manipulating or analyzing the data using math and mental process, and displaying the results.
Regarding claim 18
Step 2A Prong 1:
“receiving, via a data gathering layer, a configuration comprising identifying data related to an instrument that provides telemetry data, and a plurality of settings for the instrument regarding a set of the telemetry data provided by the instrument” is directed to mental step of data gathering.
“configuring, via the data gathering layer, a control layer for each of a plurality of instruments to provide the set of the telemetry data according to the plurality of settings and differently than a respective default setting” is directed to math because the control layer acts as a system that manages inputs (instrument configuration) and outputs (telemetry data). Setting different values for instruments often requires mathematical modeling of the desired system response. Modern telemetry system allow creating “calculated fields”, which are directed applications of algebra and arithmetic.
“wherein the plurality of settings includes a communication protocol used by the data gathering layer to communicate with the control layer” is directed to math because protocols often use mathematical algorithms such as Cyclic Redundancy Checks (CRC), checksums, or parity bits to verify the integrity of data transmitted between layers.
“receiving, via the data gathering layer, from the control layer, telemetry data from the set of the telemetry data” is directed to mental step of data gathering.
Each limitation recites in the claim is a process that, under BRI covers performance of the limitation in the mind but for the recitation of a generic “telemetry data and measurement” which is a mere indication of the field of use. Nothing in the claim elements precludes the steps from practically being performed in the mind. Thus, the claim recites a mental process.
Further, the claim recites the step of " configuring, via the data gathering layer, a control layer for each of a plurality of instruments to provide the set of the telemetry data according to the plurality of settings and differently than a respective default setting, wherein the plurality of settings includes a communication protocol used by the data gathering layer to communicate with the control layer” which as drafted, under BRI recites a mathematical calculation. The grouping of "mathematical concepts” in the 2019 PED includes "mathematical calculations" as an exemplar of an abstract idea. 2019 PEG Section |, 84 Fed. Reg. at 52. Thus, the recited limitation falls into the "mathematical concept" grouping of abstract ideas. This limitation also falls into the “mental process” group of abstract ideas, because the recited mathematical calculation is simple enough that it can be practically performed in the human mind, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889.
Note that even if most humans would use a physical aid (e.g., pen and paper, a slide rule, or a calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of this limitation. See October Update at Section I(C)(i) and (iii).
Additional Elements:
Step 2A Prong 2:
“A method, executed by a processing device, for providing scientific instrument support, the method comprising” recited in the preamble does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“receiving, via a data gathering layer, a configuration comprising identifying data related to an instrument that provides telemetry data, and a plurality of settings for the instrument regarding a set of the telemetry data provided by the instrument” does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“configuring, via the data gathering layer, a control layer for each of a plurality of instruments to provide the set of the telemetry data according to the plurality of settings and differently than a respective default setting, wherein the plurality of settings includes a communication protocol used by the data gathering layer to communicate with the control layer” does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“receiving, via the data gathering layer, from the control layer, telemetry data from the set of the telemetry data” does not integrate the judicial exception into a practical application. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“providing, via the data gathering layer, the received telemetry data for further processing” is directed to insignificant activity and does not integrate the judicial exception into a practical application. See MPEP 2106.05(g).
The claim is merely selecting data, manipulating or analyzing the data using math and mental process, and displaying the results.
This is similar to electric power: MPEP 2106.05(h) vi. Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).
Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The claim as a whole does not meet any of the following criteria to integrate the judicial exception into a practical application:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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.
Step 2B:
“A method, executed by a processing device, for providing scientific instrument support, the method comprising” recited in the preamble does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“receiving, via a data gathering layer, a configuration comprising identifying data related to an instrument that provides telemetry data, and a plurality of settings for the instrument regarding a set of the telemetry data provided by the instrument” does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“configuring, via the data gathering layer, a control layer for each of a plurality of instruments to provide the set of the telemetry data according to the plurality of settings and differently than a respective default setting, wherein the plurality of settings includes a communication protocol used by the data gathering layer to communicate with the control layer” does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“receiving, via the data gathering layer, from the control layer, telemetry data from the set of the telemetry data” does not amount to significantly more than the judicial exception in the claim. This additional element is merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(h)).
“providing, via the data gathering layer, the received telemetry data for further processing” is directed to insignificant activity and does not amount to significantly more than the judicial exception in the claim. See MPEP 2106.05(g) and 2106.05(d)(ii), third list, (iv).
The claim is therefore ineligible under 35 USC 101.
Claim 20 cites an instrument support system, comprising: an instrument that provides telemetry data, the instrument having a control layer, a data gathering layer; and a processing device configured to perform a method as in claim 18. These additional elements fail to integrate the abstract idea into a practical application. These limitations are recited at a high level of generality and do not add significantly more to the judicial exception. These elements are generic computing devices that perform generic functions. Using generic computer elements to perform an abstract idea does not integrate an abstract idea into a practical application. See 2019 Guidance, 84 Fed. Reg. at 55. Moreover, "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. at 223; see also FairWarninglP, LLCv. latric SysInc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citation omitted) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter"). On the record before us, we are not persuaded that the hardware of claim 20 integrates the abstract idea into a practical application. Nor are we persuaded that the additional elements are anything more than well-understood, routine, and conventional so as to impart subject matter eligibility to claim 20.
Regarding claim 19, “before providing the received telemetry data for further processing, formatting the received telemetry data” is directed to math because mathematical rules and conversions are applied when changing a variable's data type, such as converting a raw integer sensor reading to a meaningful floating-point value in a specific unit of measure.
Allowable Subject Matter
Claims 1-9, 11-12, and 14-17 are allowed.
Claims 21-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 18 and 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, none of the prior art of record teaches or suggests wherein the instrument is configured to collect environment data related to a surrounding environment, and wherein the received telemetry data comprises the environment data, and a plurality of settings for the instrument regarding a set of the telemetry data provided by the instrument, wherein the plurality of settings for the instrument include an interval, a threshold, or an internal state of the instrument, and wherein the plurality of settings for the instrument include a configuration related to a condition related to an external event within the surrounding environment, and wherein the instrument is configured to collect the environment data in response to a trigger meeting the condition; second logic to configure a control layer of the instrument to provide the set of the telemetry data according to the plurality of settings, wherein the control layer is configured to provide the telemetry data from the set of the telemetry data based on the interval, the threshold, or the internal state of the instrument. It is these limitations as they are claimed in the combination with other limitations of claim, which have not been found, taught or suggested in the prior art of record, that make these claims allowable over the prior art.
Claims 2-9, 11-12, and 14-17 are considered allowable based on their respective dependence on allowed claim1.
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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN H LE whose telephone number is (571)272-2275. The examiner can normally be reached on Monday-Friday from 7:00am – 3:30pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelby A. Turner can be reached on (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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/JOHN H LE/Primary Examiner, Art Unit 2857