DETAILED ACTION
Status of Claims
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 for Application #18/455,836, filed on 02/24/2026, has been entered. The following is a NON-FINAL OFFICE ACTION in response to the request for continued examination.
Claims 1-20 are now 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The rationale for this finding is explained below.
Per Step 1 of the analysis, the claims are analyzed to determine if they are directed to statutory subject matter. Claim 1 claims a method, or process. A process is a statutory category for patentability. Claim 11 claims a non-transitory machine-readable medium. Therefore, the claim is interpreted as an article of manufacture, which is a statutory category for patentability. Further, the claim is in conformity with the Kappos Memorandum of 2010 regarding medium claims, as it includes the phrase “non-transitory.” Claim 16 claims a system comprising a processor and hardware resources. Therefore, the claim is interpreted as an apparatus. An apparatus is a statutory category for patentability.
Per Step 2A, Prong 1 of the analysis, the examiner must now determine if the claims are directed to an abstract idea or eligible subject matter. In the instant case, the independent claims are directed towards an abstract idea. Specifically, the independent claims 1, 11, and 16 are directed to “identifying that a subscription limit of a subscription of a computer implemented service provided using a hardware bundle will be reached at a future point in time based on a report from a directly manageable hardware resource of the managed system, prior to the future point in time attempting to update the subscription limit to prevent interruption in the providing of the computer implemented services by the managed system,, and in a first instance of the attempting where the subscription limit is not updated, modifying workloads using the hardware bundle to prevent the subscription limit from being reached at the future point in time such that the managed system continues to provide the computer implemented service without interruption.” Therefore, the claims are directed to an abstract idea, namely “certain methods of organizing human activity,” specifically “commercial interactions, business relations.” The clams simply automate the management of subscriptions by analysis of the subscription limit information and a report and an attempt to update the subscription limit such as by making a request to update the limit, and if that is unsuccessful then modifying workloads assigned to the hardware bundle to prevent reaching the subscription limit. This could be done in any business or commercial setting in which hardware devices such as computers, printers, and other devices have subscription limits and decisions are made on moderating use of the device to not go over the subscription limit in order to save money or risk overage or to update the subscription to increase the ability to use the device. Such decisions routinely happen in an office setting with printers and in many other business settings. The claims only automate the abstract idea using a computer. Therefore, the claims are determined to be directed to an abstract idea, namely “certain methods of organizing human activity,” specifically “commercial interactions, business relations.”
Per Step 2A, Prong 2 of the analysis, the examiner must now determine if the claims integrate the abstract idea into a practical application. The additional elements of the claims include a “computer implemented service provided by the managed system,” “local subscription manager of the managed system,” “a hardware bundle “of the managed system,” a “hardware resource of the managed system,” a “local subscription manager of the managed system,” a “first processor,” and “a second processor.” However, these recited elements are considered generic recitations of technical elements as they are recited at a high level of generality. These elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)), and do not integrate the abstract idea into a practical application. They are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). The claims also include the limitation “the local subscription manager being an out of band management controller that is physically installed within a housing or chassis of the managed system, that comprises a first processor that is separate and operates independently of a second processor of the managed system.” However, the examiner points out that Figures 1C and 4A-4C as well as [0074], [0081]-[0082], and [0089]-[0090] of the filed specification clearly show the subscription manager as being part of the managed system and not some completely separate networked device or something that is installed on the user device side and communicates separately with the managed system, but the subscription manager is a “separate and independently operating device” in the same manner that many servers and systems in the computer arts have several components integrated within them that perform various functionalities. As written the examiner still interprets the use of the “subscription manager” as being the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea. Therefore, the subscription manager as recited in context of the specification and as written is not considered to integrate the abstract idea into a practical application. The claims also include the additional element of “transmitting instructions from the first processor to the second processor for the second processor to execute, the instructions when executed by the processor cause the second processor of the managed system to execute computer-implemented operations….” However, as written and absent further detail this additional element is considered “receiving and/or transmittal of data over a network,” and is considered extra-solution activity, as the subscription manager is described as a system comprising two processors, and one simply is transmitting subscription management instructions to the other ones, which is automating the abstract idea using the processors. Further, the MPEP 2106.05 (d) (II) (i) lists “receiving or transmitting data over a network” as an example of conventional computer functioning, citing Symantex, OIP Techs v Amazon.com, and buySAFE v Google. The transmittal from the first processor to the second is not any kind of technical improvement but only automates the subscription management decision of the abstract idea. Therefore, this additional element is not considered to integrate the abstract idea into a practical application.
Per Step 2B of the analysis, the examiner must now determine if the claims include limitations that are “significantly more” than the abstract idea by demonstrating an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The additional elements of the claims include a “computer implemented service provided by the managed system,” “local subscription manager of the managed system,” “a hardware bundle “of the managed system,” a “hardware resource of the managed system,” a “local subscription manager of the managed system,” a “first processor,” and “a second processor.” However, these recited elements are considered generic recitations of technical elements as they are recited at a high level of generality. These elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)), and do not integrate the abstract idea into a practical application. They are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). The claims also include the limitation “the local subscription manager being an out of band management controller that is physically installed within a housing or chassis of the managed system, that comprises a first processor that is separate and operates independently of a second processor of the managed system.” However, the examiner points out that Figures 1C and 4A-4C as well as [0074], [0081]-[0082], and [0089]-[0090] of the filed specification clearly show the subscription manager as being part of the managed system and not some completely separate networked device or something that is installed on the user device side and communicates separately with the managed system, but the subscription manager is a “separate and independently operating device” in the same manner that many servers and systems in the computer arts have several components integrated within them that perform various functionalities. As written the examiner still interprets the use of the “subscription manager” as being the equivalent of “apply it,” or using a computer as a tool to automate the abstract idea. Therefore, the subscription manager as recited in context of the specification and as written is not considered to integrate the abstract idea into a practical application. The claims also include the additional element of “transmitting instructions from the first processor to the second processor for the second processor to execute, the instructions when executed by the processor cause the second processor of the managed system to execute computer-implemented operations….” However, as written and absent further detail this additional element is considered “receiving and/or transmittal of data over a network,” and is considered extra-solution activity, as the subscription manager is described as a system comprising two processors, and one simply is transmitting subscription management instructions to the other ones, which is automating the abstract idea using the processors. Further, the MPEP 2106.05 (d) (II) (i) lists “receiving or transmitting data over a network” as an example of conventional computer functioning, citing Symantex, OIP Techs v Amazon.com, and buySAFE v Google. The transmittal from the first processor to the second is not any kind of technical improvement but only automates the subscription management decision of the abstract idea. Therefore, this additional element is not considered significantly more than the abstract idea itself but only automates the subscription management and updating using the two processors of the system.
When considered as an ordered combination, the claim is still considered to be directed to an abstract idea as the claims in the ordered combination simply recite the logical steps for identifying that a subscription limit will be reached at a future point in time, attempting to update the subscription limit, and then if that is unsuccessful managing the workloads of the hardware bundle resources to prevent reaching the limit. Therefore, the ordered combination does not lead to a determination of significantly more.
When considering the dependent claims, claims 2 and 3 are considered part of the abstract idea, as “initiating a subscription management session can be performed as part of the abstract idea using manual/verbal communication with a subscription management entity. The user device for initiation and the session being mediated “by a subscription management service that manages the managed system” are considered generic recitations of technical elements as they are recited at a high level of generality. These elements are being used as “tools to automate the abstract idea” (see MPEP 2106.05 (f)), and are therefore not considered significantly more than the abstract idea itself. They are not recitations of a special purpose computer or transformation (see MPEP 2106.05 (b) and (c)). Claim 4 is considered part of the abstract idea, as there is no actual recited technical interaction with the hardware bundle, but the claim only recites the identifying of the workload and the “reducing use of the hardware bundle” with no detail as to any technical process involved in the reducing. Claims 5-7 do not integrate the abstract idea into a practical application, because absent further detail it considered the equivalent of “apply it,” or merely uses a computer as a tool to perform an abstract idea.” The instructing of a hardware resource that supports the workload and is not a member of the hardware bundle to reduce the workload or to misreport handling capacity automates the process of manually reducing the workload by workflow management or misreporting capacity. Claim 8 is considered part of the abstract idea, as it simply repeats some of the steps of claim 1 and “monitoring,” absent further detail, can be done as part of the abstract idea. Claim 9 is considered part of the abstract idea, as it simply describes what parts of the bundle are manageable or unmanageable by various entities, and the use of a manager to manage the hardware components is considered the equivalent of “apply it,” or “using a computer as a tool to perform an abstract idea.” The other dependent claims mirror those already discussed above.
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. Vs. CLS Bank International et al., 2014 (please reference link to updated publicly available Alice memo at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf as well as the USPTO January 2019 Updated Patent Eligibility Guidance.)
Response to Arguments
Regarding the rejections based on 35 USC 112b:
The applicant’s amendments to the claims have overcome the rejection and the rejection has been withdrawn.
Regarding the rejections based on 35 USC 101:
Regarding the applicant’s argument on page 10 of the response that the claim limitations cannot be performed in the human mind:
The examiner responds by pointing out that the abstract idea identified is not a mental process, and therefore need not be shown to be performed in the human mind. The abstract idea identified to be recited is “certain methods of organizing human activity,” specifically “commercial interactions, business relations.”
Regarding the applicant’s argument on page 11 of the response that the examiner has not provided any explanation or support for how the claims are actually directed to a commercial interaction or business relation:
The examiner disagrees. It is stated in the Step 2A, Prong 1 analysis that “the clams simply automate the management of subscriptions by analysis of the subscription limit information and a report and an attempt to update the subscription limit such as by making a request to update the limit, and if that is unsuccessful then modifying workloads assigned to the hardware bundle to prevent reaching the subscription limit. This could be done in any business or commercial setting in which hardware devices such as computers, printers, and other devices have subscription limits and decisions are made on moderating use of the device to not go over the subscription limit in order to save money or risk overage or to update the subscription to increase the ability to use the device. Such decisions routinely happen in an office setting with printers and in many other business settings. The claims only automate the abstract idea using a computer.”
The applicant has put forth no argument or rebuttal to disagree with the examiner’s reasoning, but has only stated that the examiner gave no explanation or support.
Further, the examiner reminds the applicant that the claims reciting an abstract idea does not mean that each and every element of the claim must be fully encompassed by the abstract idea.
Regarding the applicant’s argument on page 11 of the response that “the claimed invention directly improves the computing functionalities of the manages system” and “the modification of workloads…directly improves the functionalities of the hardware components”:
The examiner responds by pointing out that there is no improvement to “the computer itself, another technology, or the technological field” (see MPEP 2106.05(f)). The computing functionalities are not improved. The only potential “improvement” is the MANAGEMENT of the subscription limits of the hardware bundles by as needed updating the limits based on the needs of the hardware and the report data. This is not a technical improvement but a computer(s) is/are used to implement the abstract idea.
Further, regarding the Enfish and McRo decisions, , the Enfish decision included the Courts pointing out that the claimed invention created a new type of database that was an improvement on databases that are found in or used by generic computers, and the specification laid out the improvements. So, each and every computer that uses this database literally functions faster and needs less memory and processing time when storing, accessing, and using the data.
In the McRo decision, the software rules do not simply automate known human animation processes, but they go beyond what could be done manually and the rules include a new and improved technical process for allowing an otherwise generic computer to match the audio to the animation during the animation process of the lip-sync game. Further, the claimed invention does not include elements that the examiner can point to that, as stated by the Court in the McRo decision, include an "improvement to computer-related technology" by use of a set of "rules." The "rules" in the claimed invention simply allow the computer to automate a process for determination of the likelihood of an event having occurred. In the McRo decision, the computer does not simply automate a known set of processes, but improves the known techniques for animation in such a manner that does not simply automate what a human operator could do manually.
Therefore, the arguments are not persuasive and the rejection is sustained.
The examiner is of the opinion that if the applicant will further amend the independent claims to include a separate communications interface (as in paragraphs [0092]-[0093] of the filed specification) and show more detail as to how it uses the report to then attempt to update the subscription limit and how it attempts to updated the limit it could move the claims to eligibility.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Luis A. Brown whose telephone number is 571.270.1394. The Examiner can normally be reached on M-F 8:30am-4:30pm EST. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, JESSICA LEMIEUX can be reached at 571.270.3445.
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/LUIS A BROWN/Primary Examiner, Art Unit 3626