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
This action is in response to the advisory action from 12/03/2025.
Claims 1-5, 8-12, 14-18, and 20 are pending.
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 1-5, 8-12, 14-18, and 20 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1, this claim is within at least one of the four categories of patent eligible subject matter as it is directing to a method claim under Step 1.
However, the limitations to “assigning, by an information handling system, an identification number to a plurality of files associated with an application, wherein the application comprises a gaming application and the plurality of files comprise texture files; and assigning, by the information handling system, a second identification number to a second plurality of files comprising texture files corresponding to a second portion of the gaming application”, as drafted, recite functions that, under its broadest reasonable interpretation, covers functions that could reasonably be performed in the mind, including with the aid of pen and paper, but for the recitation of generic computer components. That is, the limitation as drafted, is a function that, under its broadest reasonable interpretation, recite the abstract idea of a mental process. The limitations encompass a human mind carrying out the functions through observation, evaluation, judgment and /or opinion, or even with the aid of pen and paper. Thus, these limitations recite and fall within the “Mental Processes” grouping of abstract ideas under Prong 1 Step 2A.
Under Prong 2 Step 2A, this judicial exception is not integrated into a practical application. The claim recites the following additional elements “information handling system” and “storing, by the information handling system, the plurality of files in a non- volatile memory such that the plurality of files are stored in contiguous physical memory locations based on the identification number, wherein the plurality of files comprise texture files corresponding to a first portion of the gaming application and the identification number identifies the texture files corresponding to the first portion; storing, by the information handling system, the second plurality of files in the non-volatile memory such that the second plurality of files are stored in contiguous physical memory locations based on the second identification number; retrieving a second file of the second plurality of files from the non-volatile memory; and based on retrieving the second file, caching at least one other second file of the second plurality of files.” The “information handling system” is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component, or merely a generic computer or generic computer components to perform the judicial exception. The additional elements “storing, by the information handling system, the plurality of files in a non- volatile memory such that the plurality of files are stored in contiguous physical memory locations based on the identification number; storing, by the information handling system, the second plurality of files in the non-volatile memory such that the second plurality of files are stored in contiguous physical memory locations based on the second identification number; retrieving a second file of the second plurality of files from the non-volatile memory; and based on retrieving the second file, caching at least one other second file of the second plurality of files” do nothing more than add insignificant extra solution activity to the judicial exception of merely gathering and storing data. Accordingly, the additional elements do not integrate the recited judicial exception into a practical application, and the claim is therefore directed to the judicial exception. See MPEP 2106.05(g).
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of the “information handling system” is merely a generic computer or generic computer components to apply the judicial exception which cannot provide an inventive concept. Furthermore, the limitations “storing, by the information handling system, the plurality of files in a non- volatile memory such that the plurality of files are stored in contiguous physical memory locations based on the identification number, wherein the plurality of files comprise texture files corresponding to a first portion of the gaming application and the identification number identifies the texture files corresponding to the first portion; storing, by the information handling system, the second plurality of files in the non-volatile memory such that the second plurality of files are stored in contiguous physical memory locations based on the second identification number; retrieving a second file of the second plurality of files from the non-volatile memory; and based on retrieving the second file, caching at least one other second file of the second plurality of files” have been identified by the courts as mere data gathering and storing which are well-understood, routine and conventional activity. See MPEP 2106.05(d). Accordingly, the claims are not patent eligible under 35 USC 101.
Claim 2 recites “apply it” steps which are mere instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea and thus, not indicative of integration into a practical application nor amounts to significantly more. Claim 3 further recites insignificant extra solution activity akin to mere data gathering and storing data which is also not indicative of integration into a practical application nor amounts to significantly more. Claims 4-5 recite non-functional descriptive language that do not integrate the judicial exception into a practical application nor amount to significantly more than the judicial exception. Claims 8 further recites mental step and insignificant extra solution activity.
Claim set 9-12, 14 and claim set 15-18, 20 are also rejected under the same rationale as claim set 1-5, 8 for having similar limitations. Claim set 9-12, 14 further recites generic components including a processor and/or memory which do not integrate the judicial exception into a practical application nor amount to significantly more than the judicial exception.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
Regarding the remark with respect to inconsistencies with allowable subject matter in claims 7, 13, and 19 that were canceled, the examiner would like to point out that this was a typo in which the paragraph under allowable subject matter on pg. 6 of the office action dated 09/08/2025 should have been removed since the claims were canceled and integrated into the independent claims.
Next, regarding the remark that USPTO's own guidance on subject matter eligibility directed to memory management are patent eligible as shown in Example 1, the examiner would like to point out that the Subject Matter Eligibility Example 1 with respect to Removing Malicious Code from Email in July 2024 Subject Matter Eligibility Examples is Patent Eligible due to the fact that it does not recite an exception. However, with the instant application, the two assigning limitations are analyzed as an abstract idea in the mental process grouping. Thus, the instant application recites mental steps and does not include additional limitations that amount to significantly more than the judicial exception nor additional limitations that integrate the judicial exception into a practical application.
Finally, regarding the remark that the storing data and caching data are inextricably tied to computer technology with no analog in the human mind. The examiner would like to point out that only the assigning of the identification number limitations are being analyzed as mental steps while the remaining steps are analyzed as additional insignificant extra solution activity. Specifically, the storing and caching do not integrate the judicial exception nor are significantly more than the judicial exception. See MPEP 2106.05(d ).
Thus, the 101 remarks are maintained and the examiner is not persuaded by the remarks.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Noor Alkhateeb whose telephone number is (313)446-4909. The examiner can normally be reached Monday-Friday from 9:00AM ET to 5:00PM ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chat do, can be reached at telephone number (571) 272-3721. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOOR ALKHATEEB/Primary Examiner, Art Unit 2193
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