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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 9, and 17 recite the limitation "the other counters" in lines 5-6, 8 and 7, respectively. There is insufficient antecedent basis for this limitation in the claim. Claims 2-8, 10-16 and 18-20 are also rejected for their dependency on their respective claims.
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 1-7, 9-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
At step 1, independent claims 1, 9 and 17 recite a method, an apparatus, and an integrated circuit, respectively and are therefore statutory classes of invention.
At step 2A, prong one, the claim(s) recite(s):
responsive to receiving the first value, resetting the first counter and updating each of the other counters of the plurality of counters;
responsive to a reception of the first value, reset the first counter and update each of the other counters of the plurality of counters; and
determining one or both of a minimum value or a maximum value within a window of most recently received values of the plurality of values using the plurality of counters.
These limitations, under their broadest reasonable interpretation, cover a process that could be performed mentally. That is, other than reciting an apparatus, a plurality of counters, circuitry, an integrated circuit (IC), a first circuit, a second circuit and a third circuit to perform the resetting, updating, and determining, nothing in the claim elements preclude the steps from being performed mentally or by a human using pen and paper. For example, a user can receive a first value of a plurality of values bounded by a range of values, the first value corresponding to a first counter of a plurality of counters, wherein each counter of the plurality of counters corresponds to a respective value within the range of values; and responsive to receiving/a reception of the first value, mentally/with pen and paper reset the first counter and update each of the other counters of the plurality of counters; and mentally/with pen and paper determine one or both of a minimum value or a maximum value within a window of most recently received values of the plurality of values using the plurality of counters. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite a mental process.
At step 2A, prong two, this judicial exception is not integrated into a practical application because the claim recites the additional elements of an apparatus, a plurality of counters, circuitry, an integrated circuit (IC), a first circuit, a second circuit and a third circuit. These elements are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component (see MPEP 2106.05(f)). These limitations can also be viewed as an attempt to generally link the use of the judicial exception to the technological environment of a computer (see MPEP 2106.05(h)). Accordingly, 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 claims are directed to an abstract idea.
At step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of an apparatus, a plurality of counters, circuitry, an integrated circuit (IC), a first circuit, a second circuit and a third circuit amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The additional claim elements are:
receiving a first value of a plurality of values bounded by a range of values, the first value corresponding to a first counter of a plurality of counters, wherein each counter of the plurality of counters corresponds to a respective value within the range of values;
wherein each counter of the plurality of counters corresponds to a respective value within a range of values;
receive a first value of the plurality of values, the first value corresponding to a first counter of the plurality of counters.
The limitations “receiving a first value…” are well‐understood, routine, and conventional activities. The limitation “wherein each counter of the plurality of counters …” merely indicates a field of use.
As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity such as i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016); (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. See MPEP 2106.05(d) and 2106.05(g). Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) . See MPEP 2106.05(a). 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 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). Examples that the courts have indicated may not be sufficient to show an improvement to technology include: i. A commonplace business method being applied on a general purpose computer, Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48; and 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). See MPEP 2106.05(a), MPEP 2106.05(f) and MPEP 2106.05(h). Thus, the claims are not patent eligible.
Claims 2 and 10 recite wherein resetting the first counter comprises updating a first count of the first counter to a designated value. As disclosed, this limitation is directed to a mental process. There are no additional elements recited; thus, the claims do not provide a practical application and are not considered to be significantly more.
Claims 3 and 11 do not recite any additional abstract ideas, but do recite the additional element of wherein the designated value corresponds to a number of values within the window of the most recently received values. This additional element is recited at a high level of generality, does not integrate the judicial exception into a practical application, does not amount to significantly more, and is well-understood, routine, and conventional activity.
Claims 4, 12 and 19 recite wherein updating each of the other counters comprises decrementing a respective count of each of the other counters. As disclosed, this limitation is directed to a mental process. There are no additional elements recited; thus, the claims do not provide a practical application and are not considered to be significantly more.
Claims 5 and 13 recite wherein determining the minimum value comprises identifying the minimum value within the range of values corresponding to a second counter of the plurality of counters with a second count above a threshold count. As disclosed, this limitation is directed to a mental process. There are no additional elements recited; thus, the claims do not provide a practical application and are not considered to be significantly more.
Claims 6 and 14 recite wherein determining the maximum value comprises identifying the maximum value within the range of values corresponding to a second counter of the plurality of counters with a second count above a threshold count. As disclosed, this limitation is directed to a mental process. There are no additional elements recited; thus, the claims do not provide a practical application and are not considered to be significantly more.
Claims 7, 15 and 20 recite determining an average of the minimum value and the maximum value. As disclosed, this limitation is directed to a mental process. There are no additional elements recited; thus, the claims do not provide a practical application and are not considered to be significantly more.
Claim 18 recites wherein to reset the first counter, the first circuit is to update a first count of the first counter to a designated value. As disclosed, this limitation is directed to a mental process. The claim recites the additional element wherein the designated value corresponds to a number of values within the window of the most recently received values. This additional element is recited at a high level of generality, does not integrate the judicial exception into a practical application, does not amount to significantly more, and is well-understood, routine, and conventional activity.
Allowable Subject Matter
Claims 8 and 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Support for Amendments and Newly Added Claims
Applicants are respectfully requested, in the event of an amendment to claims or submission of new claims, that such claims and their limitations be directly mapped to the specification, which provides support for the subject matter. This will assist in expediting compact prosecution and reducing potential 35 USC § 112(a) or 35 USC § 112, 1st paragraph issues that can arise when claims are amended. MPEP 714.02 recites: “Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06. An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.” Amendments not pointing to specific support in the disclosure may be deemed as not complying with provisions of 37 C.F.R. 1.121(b), (c), (d), and (h) and therefore held not fully responsive. Generic statements such as “Applicants believe no new matter has been introduced” may be deemed insufficient. The examiner thanks the Applicant in advance for providing support for any amendments or newly added claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chen (US 8,134,934): tracking and monitoring of long-duration network-data flows in a network;
Guimarães (US 9,665,682): enhancing formal verification with counter acceleration for electronic designs;
Lee (US 2009/0312983): calculating performance metrics as an indication of how a load on a machine impacts performance;
Martin (US 2004/0109411): implementing flow control on a particular port of an Ethernet switch.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIEDRA M MCQUITERY whose telephone number is (571)272-9607. The examiner can normally be reached Monday - Thursday, 8 am - 6 pm (C.S.T.).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sanjiv Shah can be reached at (571)272-4098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Diedra McQuitery/Primary Examiner, Art Unit 2166
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