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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 10, 2026, has been entered.
Status of Claims
Claims 1, 3, 4, 7, 8, 9, 11, 15, 17, 18 and 20 have been amended.
Claim 24 have been added.
Claims 2, 10, 16 and 19 have been cancelled.
Claims 1, 3-9,11-15,17-18 and 20-24 are currently pending and have been examined.
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, 3-9,11-15,17-18 and 20-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 18 and 20-24 are drawn to methods while claim(s) 1, 3-9,11-15 and 17 is/are drawn to an apparatus. As such, claims 1, 3-9,11-15,17-18 and 20-24 are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
Claim 18 (representative of independent claim(s) 1 and 15) recites the following steps:
A method comprising: monitoring an inventory of hardware and software components
detecting, based at least in part on said monitoring, one or more changes in the one or more hardware and software components
determining, based at least in part on the detected one or more changes in the one or more hardware and software components a subset of a set one or more certification standards that the information technology asset complies with;
identifying content for two or more versions of a device regulatory label for the information technology asset, the content comprising one or more certification marks for the determined subset of the set of one or more certifications;
generating the two or more versions of the device regulatory label for the information technology asset;
provisioning, the generated two or more version of the device regulatory label for the information technology asset; and
selecting a given one of the two or more versions of the device regulatory label to be output on the display of the information technology asset;
These steps, under its broadest reasonable interpretation, encompass a human manually (e.g., in their mind, or using paper and pen) identifying and generating a regulatory label for an asset (i.e., one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions), but for the recitation of generic computer components. If one or more claim limitations, under their broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components, then it falls within the "mental processes" subject matter grouping of abstract ideas.
Alternatively, these steps, under its broadest reasonable interpretation, describe or set-forth providing a label for an asset based on the configuration of the asset, which amounts to a “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” These limitations therefore fall within the "certain methods of organizing human activity" subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 18 recites an abstract idea (Step 2A - Prong One: YES).
Independent claim(s) 1 and 15 are determined to recite an abstract idea under the same analysis.
Step 2A - Prong Two:
This judicial exception is not integrated into a practical application. The claim(s) recite the additional elements/limitations of:
by a display controller for a display of an information technology asset,
one or more hardware and software components installed in the information technology asset;
digitized device regulatory label
by the display controller in a memory of the information technology asset,
by the display controller in response to the activation of the one or more physical interface features of the display controller,
wherein the method is performed by at least one processing device comprising a processor coupled to a memory
a display
A computer program product comprising a non-transitory processor-readable storage medium having stored therein program code of one or more software programs, wherein the program code when executed by at least one processing device causes the at least one processing device:
An apparatus comprising: at least one processing device comprising a processor coupled to a memory; the at least one processing device being configured:
The requirement to execute the claimed steps/functions listed above is equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. This/these limitation(s) do/does not impose any meaningful limits on producing the abstract idea and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
Additionally, “Step 2A - Prong 2”, the recited additional element(s) of "by the display controller, activation of one or more physical interface features of the display controller;" and “controlling, by the display controller, output of the given version of the digitized device regulatory label on the display of the information technology asset;” serve merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A -Prong Two: NO).
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above in "Step 2A - Prong 2", the requirement to execute the claimed steps/functions listed above is equivalent to adding the words "apply it" on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as "significantly more" (see MPEP 2106.05 (f)).
As discussed above in “Step 2A - Prong 2”, the recited additional element(s) of "by the display controller, activation of one or more physical interface features of the display controller;" and “controlling, by the display controller, output of the given version of the digitized device regulatory label on the display of the information technology asset” serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not qualify as “significantly more5' (see MPEP 2106.05(g, h)).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Regarding Dependent Claims:
Dependent claims 21 and 23 include additional limitations that are part of the abstract idea.
Dependent claims 3-9, 11-14, 17-18, 20, 22 and include additional limitations that are part of the abstract idea except for:
Display controller
One or more interface features
digitized device regulatory label
a dedicated display
electronic ink display
one or more hardware and software components installed in the information technology asset
one or more interface features of the display controller
The additional elements of the dependent claims are equivalent to adding the words ''apply it'' on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Prior Art
Examiner conducted a thorough search of the body of available prior art (see attached documents regards PTO-892 Notice of Reference Cited and PE2E Search History). Notably, Examiner discovered several patent literature documents that taught aspects of the invention, but no single disclosure taught “every element required by the claims under its broadest reasonable interpretation” [MPEP § 2131] to make a 35 USC § 102 rejection. Further, Examiner considered the individual elements of the recited claims taught across the prior art cited below, but did not find it obvious to combine such disclosures [MPEP § 2142] to make a 35 USC § 103 rejection. In particular, previously cited Grant U.S. Publication No. 2020/0251022 discloses updating an electronic label based on receiving a new configurations setting [detected changes in hardware/software], and is silent with respect to newly amended limitations stating, “the content to be displayed comprising one or more certification marks for the determined subset of the set of one or more certifications.”
Response to Arguments
Applicant's arguments with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant Argues: Applicant respectfully traverses on the ground that the previously-presented claims are not directed to an abstract idea, and even if one were to assume for purposes of argument that the previously-presented claims are so directed, the previously presented claims clearly integrate any such abstract idea into a practical application in the field of computer technology, in a manner that provides an improvement in computer technology.
Examiner respectfully disagrees and maintains the previous response. Applicant’s alleged improvement is not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem. A showing that a claim is directed to any improvement does not automatically mean a claim is patent eligible (e.g., an improved business function or an improved idea itself is not patent eligible). In this case, communicating with a digital label is an abstract idea, and an “improved” way of controlling the output to the digital label is, if anything, an improvement to the idea itself.
Furthermore, the claims recites elements: detect and determine changes and generate the digitized device regulatory label. The steps are recited at a high level of generality (i.e., as a general means of gathering data for use in the determining step), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The apparatus that performs the steps are also recited at a high level of generality, that 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 apparatus). The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer component (the apparatus). 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. The claim is directed to the abstract idea.
Applicant Argues: Applicant respectfully submits that previously-presented independent claims 1, 15 and 18 "when read as a whole" are instead directed to "a specific means or method that improves the relevant technology." See Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024), citing McRO, Inc., v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
Examiner respectfully disagrees. Examiner notes that the concept in McRO is entirely different from that of the instant application, and thus cannot be relied upon as a prima facie basis for patent eligibility simply because Applicant purports their invention is a specific means or method that improves the relevant technology. In McRO, the claims were drawn to a complex methodology of synchronizing audio files with lip movement and facial expressions in computer animation. In its ruling, the Federal Circuit noted that the claims did not simply disclose an automated task previously performed by humans, but instead recited a new computerized process that was not previously used by animators. In reaching this conclusion, the court looked to the pleadings to determine if the parties provided any evidence as to whether or not the process had been previously used in the animation.
In their answer, Defendants provided no evidence that the process previously used by animators was the same as the process required by the claims (McRO at 24). Conversely, the Plaintiffs substantiated their position by providing specific evidence that the method described in the claims was not previously used by animators, and that their process was distinguishable because it used "a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results." (McRO at 25).
Turning to the instant invention, it is clear that the claims are merely drawn to a method of updating labels based on detect changes to the asset or item that is performed in a routine and conventional manner via generic computer technology. Therefore, notwithstanding Applicant's insistence to the contrary, the claims of the instant invention are not triggered by the holding in McRO, but rather disclose a number of abstract ideas (as explained above) that are associated with generic computer technology. As such, the claims remain ineligible under section 101.
Applicant argues: Generating and controlling the output of a digitized device regulatory label on a display of an information technology asset, for example, cannot be said to be a mental process.
Examiner respectfully disagrees. Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer,” and that “courts have found requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind” (see p. 8 of the October 2019 Update: Subject Matter Eligibility). The Examiner also notes that “both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes (see p. 8 of the October 2019 Update: Subject Matter Eligibility).
Examiner maintains that the claims represent a mental process (i.e., one or more concepts performed in the human mind, such as one or more observations, evaluations, judgments, opinions).The instant claims are directed to the following abstract concepts: monitoring, detecting, determining, generating, provisioning, detecting, selecting and controlling. The “monitoring, detecting, determining, identifying and selecting” all fall under the mental process of observation techniques. The steps of “generating, provisioning and controlling” are updated above to reflect the business relations that fall under certain methods of human activity. The steps are considered to be abstract because a human can monitor items, detect changes, identify certification marks that are appropriate and update the display on the asset. The claims lack an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment and any improved way of updating asset labels using mere instructions to implement the abstract idea on a generic computer are considered to be an improvement to the idea itself.
Applicant Argues: The Examiner further alleges with regard to Step 2B of the above USPTO analysis framework that previously-presented independent claims 1, 15 and 18 do not include additional elements that are sufficient to amount to significantly more than the alleged abstract idea. Applicant traverses, and submits that previously-presented independent claims 1, 15 and 18 clearly recite arrangements providing an improvement in computer technology.
Examiner respectfully disagrees. The detected changes that trigger an update to the label are outline on Page 13 of the instant specification and repeated here for reference: “The one or more changes in the status of the IT asset 106 may comprise: detecting that the IT asset 106 has been sold to an end-user in a given geographic region; detecting one or more changes in at least one of hardware and software components of the IT asset 106; detecting one or more changes in one or more regulatory standards associated with at least 10 one certification mark to be included in the digitized device regulatory label for the IT asset 106; etc.” These changes are not necessarily rooted in technology. For example, an item arrives with a certain hardware configuration. Similar to TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48; which includes gathering and analyzing information using conventional techniques and displaying the result. The detecting step could easily be matching part numbers, detecting that part is missing and identifying if the certification mark is still appropriate to be represented on the item and displaying that result on the digitized label.
Applicant Argues: Illustrative embodiments of the claimed arrangements provide improvements in the functioning of a computer, and more particularly in the functioning of information technology assets through enabling automated content updates for regulatory product labels driven by flashable memory within the information technology assets, which eliminate the need for updating or changing physical labels on information technology assets, reducing costs and providing faster and more flexible implementations of device regulatory labels.
Examiner maintains the previous response. In combination, the steps disclose a sequence of operations that include monitoring data, receiving an update or change, and displaying the retrieved data. The only arguable inventive aspect of this set of steps is the particulars of the information processed (certification marks). Apart from such particulars as is known of those of ordinary skill, the claimed combination of operations amounts to a generic, routine and conventional sequence of generic, routine and conventional operations of a computer system. Further the combination of operations automates a mental process that could be performed by a “human analog.” For example, a human being could program the computer to update the data displayed on the label using generic computing communication means. Automation of a mental process has been held insufficient to add significantly more to an abstract idea. For that additional reason, in combination, the claimed operations of the computer system fail to add significantly more to the abstract idea.
None of the claims (independent or dependent) effects an improvement to another technology or technical field; nor does any of the claims amount to an improvement to the function of a client device configured to receive regulatory label information. Additionally, reducing cost is not a technical improvement and any claims to faster implementation of applying device labels are merely an inherent result of using the generic computing features such as digitized labels instead of labels that must be manually applied.
Accordingly, Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RASHIDA R SHORTER whose telephone number is (571)272-9345. The examiner can normally be reached Monday- Friday from 9am- 530pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at (571) 270-3445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RASHIDA R SHORTER/Primary Examiner, Art Unit 3626
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