DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-20 are pending.
Claims 1, 7, 8, 14, 15 and 20 were amended or newly added in the Applicant’s filing(s) on 3/16/2026.
This office action is being issued in response to the Applicant's filing(s) on 3/16/2026.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a method comprising:
responsive to instantiating the meter, simultaneously instantiating a first debit service at the first tier and a second debit service at the second tier, wherein the first debit service and the second debit service are coupled to the meter and configured to simultaneously access the usage monitored by the meter.
Method claims are defined by the method steps being actively performed, not method steps that may or may not be performed. Reciting a system element in a method claim is configured to perform a method step (i.e., configured to simultaneously access the usage monitored by the meter) does not mean that the method step is actually performed (i.e., simultaneously accessing the usage monitored by the meter).
Claim 4 recites a method wherein the billing rate is the price reduced by a discount at the second tier and increased by a markup at the second tier.
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., reduced and increased). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 7 recites a method wherein:
a first subscriber is subscribed to the first tier,
a second subscriber is subscribed to the third tier,
data of the second subscriber is accessible to the first subscriber, and
data of the first subscriber is not accessible to the second subscriber.
Method claims are defined by the method steps being actively performed (i.e., accessing data), not method steps that may or may not be performed. Reciting a system element in a method claim is configured to perform a method step (i.e., is capable of being accessed) does not mean that the method step is actually performed (i.e., accessing).
Claim 14 has similar claim interpretation issues, as Claim 14 does not recite that the computer-readable medium causes a processor to access or prevent access to data of a subscriber.
Claim 20 has similar claim interpretation issues, as Claim 20 does not recite that the system is configured to access or prevent access to data of a subscriber, or is executing instructions to access or prevent access to data of a subscriber
Appropriate correction is requested.
4. 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 an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system to perform a method and/or computer-readable medium containing instructions, when executed, causes a computer to perform a method comprising:
detecting a metered activity in a third tier of a tiered … framework, wherein:
the metered activity comprises usage of at least one … resource in the tiered … framework;
the tiered … framework further comprises a first tier, and a second tier, between the first tier and the third tier;
data at the first tier is not accessible at the second tier;
responsive to detecting the metered activity, instantiating a meter at the second tier to monitor usage;
responsive to instantiating the meter, simultaneously instantiating a first debit service at the first tier and a second debit service at the second tier, wherein the first debit service and the second debit service are coupled to the meter and configured to simulaltenously access the usage by the meter;
computing, by the first debit service, first usage credits of the usage;
debiting the first usage credits from a first … wallet at the second tier;
computing, by the second debit service, second usage credits of the usage; and
debiting the second usage credits from a second … wallet at the third tier.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to track, bill and charge customers for a metered activity which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that processing payments is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017).
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a software framework (Claim(s) 1, 8 and 15), a digital wallet (Claim(s) 1, 8 and 15), a processor (Claim(s) 8), a processing circuitry (Claim(s) 15), a memory (Claim(s) 15) and a communication circuitry (Claim(s) 15).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are 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. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 2-7, 9-14 and 16-20 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 8 and 15. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
No additional computer components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generically recited computer.
As such, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4, 7-11, 14-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuzkin (US PG Pub. 2018/0232786).
Regarding Claim 1, method for automatically enforcing trust in rebilling a metered activity in a tiered software framework, the method comprising:
detecting a metered activity in a third tier (end customer or subscriber) of a tiered (layered) software framework (SaaS platform). (see fig. 1; para. 3), wherein:
the metered activity comprises usage of at least one computing resources (on-demand software). (see para. 3);
the tiered software framework further comprises a first tier (L2 resellers) and a second tier (L3 resellers), between the first tier (L2 resellers) and the third tier (end customer or subscriber). (see fig. 1);
responsive to detecting the metered activity, instantiating a meter at the second tier (service vendor) to monitor. (para. 48);
responsive to instantiating the meter, instigating a first debit service at the first tier (L3 reseller) and a second debit service at the second tier (L2 reseller), wherein the first debit service and the second debit service are coupled to the meter and configured to access the usage monitor the usage (see para. 3-6 and 69);
computing, by the first debit service, first usage credits (charge owed to L2 reseller) of the usage. (see fig. 1; para. 3-6);
debiting (charging) the first usage credits (charge owed to L2 reseller) from a first wallet at the second tier (L3 reseller). (see fig. 1; para. 3-6);
computing, by the second debit service, second usage credits (charge owed to L3 reseller) of the usage. (see fig. 1; para. 3-6); and
debiting (charging) the second usage credits (charge owed to L3 reseller) from a second digital wallet at the third tier (end customer or subscriber). (see para. 3-6).
Kuzkin does not explicitly teach a method wherein data at the first tier is not accessible at the second tier. Kuzkin is silent regarding whether data at the first tier is accessible at the second tier.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to eliminate accessibility to data at the first tier, if there was accessibility, since it has been held that mere omission of an element and its function in a combination, without more, involves only routine skill in the art. see MPEP §2144.04 (II).
Kuzkin does not explicitly teach a method wherein the method steps are performed simultaneously.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Kuzkin by integrating two component claim elements contained in Kuzkin (i.e., two method steps) into one integrated claim element (i.e., one method step, the two method steps performed simulaneously) wherein each component claim element continues to serve the same function. In the integration, each component claim element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the integration were predictable. see MPEP §2144.04 (VI)(B).
Regarding Claim 2, Kuzkin discloses a method wherein the first usage credits are computed as a product of a billing rate times the usage (rate per usage), and the billing rate is a function of a price (rate per usage) assigned to the metered activity at the first tier (L1 layer). (see para. 3-6)
Regarding Claim 3, Kuzkin discloses wherein the second usage credits are computed as a product of a billing rate times the usage (rate per usage), and the billing rate is a function of a price (rate per usage) assigned to the metered activity at the second tier (L2 layer). (see para. 3-6).
Regarding Claim 4, Kuzkin discloses a method wherein the billing rate is the price reduced by a discount at the second tier and increased by a markup at the second tier (markups and discounts). (see para. 6).
Regarding Claim 7, Kuzkin discloses recites a method wherein:
a first subscriber (L3 reseller) is subscribed to the second tier. (see fig. 1; para. 3-6);
a second subscriber (end customer or customer) is subscribed to the third tier. (see fig. 1; para. 3-6);
data of the second subscriber is accessible to the first subscriber (via a user interface). (see para. 50 and 104).
Kuzkin does not teach a method wherein data of the first subscriber is not accessible to the second subscriber.
However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to eliminate data accessibility, since it has been held that mere omission of an element and its function in a combination, without more, involves only routine skill in the art. see MPEP §2144.04 (II).
Regarding Claims 8-11, 14-17 and 20, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Claim(s) 5-6, 12-13 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuzkin, as applied to Claims 1, 8 and 15 above, and further in view of Mimassi (US PG Pub. 2022/0270144).
Regarding Claims 5-6, Kuzkin does not teach a method comprising determining that available credits in the first/second digital wallet are below a predetermined threshold; retrieving, by a payment process executing in the first/second tier, information on a payment card in the second/third tier; purchasing, by the payment process, a predetermined number of credits using the information on the payment card; and adding, by a credit addition service at the first tier, the predetermined number of credits to the first/second digital wallet.
Mimassi discloses a method comprising:
determining that available credits (amount) in the first digital wallet (account) are below a predetermined threshold (account balance below the refill limit). (see fig. 8; para. 81);
retrieving, by a payment process executing in the first tier, information on a payment card (payment details, such as credit card and debit card details) in the second tier. (see fig. 8; para. 81);
purchasing, by the payment process, a predetermined number of credits (amount) using the information on the payment card. (see fig. 8; para. 81); and
adding, by a credit addition service at the first tier, the predetermined number of credits (amount) to the first digital wallet (account). (see fig. 8; para. 81).
Regarding Claims 12-13 and 18-19, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
6. Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered. Some arguments were persuasive, and the previously asserted rejection(s) have been withdrawn. However, some arguments were not persuasive, and the previously asserted rejection(s) remain relevant. Such arguments have been fully considered but are not persuasive and are addressed below.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, p. 2.
Specifically, the Applicant argues:
Step 2A is a two-prong inquiry: in prong 1, the claim is examined as to whether it recites a judicial exception, and if so, then in prong 2, whether the recited judicial exception is integrated into a practical application of that exception. MPEP §2106.04(II)(A). The Examiner alleges that Applicant's claims 1-20 cover one of the enumerated groupings that comprise the judicial exception, namely, a fundamental economic practice according to MPEP §2106.04(a)(2)(II)(A). See Office Action, page 3. To the contrary, Applicant's claims 1-20 recite, as a whole operations of utility computing, a technology that is not a fundamental economic principle or practice; a technical challenge in utility computing, namely trustworthiness; and a solution to meet the challenge, namely enforcing trust by use of a meter configured in a specific architecture (e.g., meter at a second tier coupled to a first debit service at a first tier and a second debit service at the second tier). See Arguments, p. 2 – emphasis added.
The Examiner respectfully disagrees.
Even if Applicant’s arguments are correct and the claimed invention “as a whole” pertains to utility computing, that does not negate a finding that the claimed invention recites a fundamental economic practice under Step 2A Prong One.
The claimed invention monitors usage of an asset (i.e., a computing resource) in a multi-tiered framework, computes usage credits owed for said asset usage and debits the usage credits from the accounts (i.e., digital wallets) of entities situated at different tiers for said asset usage. This is a fundamental economic practice.
Examiner notes that processing payments is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017). Computing the usage credits owed for asset usage and debiting the usage credits from the accounts of entities situated at different tiers for said asset usage is the processing of payments, payments of usage credits.
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 2-10.
Specifically, the Applicant argues:
As in Enfish, the plain focus of Applicant's claims is directed to a specific implementation of a solution (e.g., use of a meter to monitor usage of computing resources, with a first debit service and a second debit service coupled to the meter, etc.) to solve a problem (e.g., trustworthiness of rebilling) in the software arts (e.g., utility computing). See Enfish, LLC, 822 F.3d 1327. See Arguments, p. 2 – emphasis added.
As described in the remarks above refuting ineligibility under step 2A, prong 1, Applicant's claims recite a specific tiered software framework for utility computing as described in the Specification and provide a practical application implemented as a meaningful structural change that improves metering operations by enhancing trustworthiness in the software framework. Thus, it provides an improvement, namely enhanced trustworthiness, to computer functionality, technology or technical field, namely utility computing. The claims recite the specific improvement, namely instantiating a meter at the second tier to monitor the usage of computing resources and simultaneously instantiating a first debit service at the first tier and a second debit service at the second tier, both coupled to the meter and configured to simultaneously access the usage monitored by the meter (among other operations), thereby ensuring trustworthiness through a structural implementation in the architecture of the software framework. See Arguments, p. 5 – emphasis added.
The Examiner respectfully disagrees.
In DDR Holdings, LLC v. Hotels.com, the U.S. Court of Appeals stated:
As an initial matter, it is true that the claims here are similar to the claims in the cases discussed above in the sense that the claims involve both a computer and the Internet. But these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. See DDR Holdings, LLC v. Hotels.com, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) – emphasis added.
In the instant case, the problem that the claimed invention is designed to overcome, trustworthiness of rebilling, is not a problem specifically arising from the realm of computers. This problem is a standard business problem that exists outside the realm of computers and existed before the age of computers.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
The specification does not provide any evidence that there is a technical problem (i.e., a technology-based problem) to be solved. For example, the specification does not provide any evidence that existing and conventional technology was not capable of performing the claimed process but for the claimed technology-based solution.
Additionally, the specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, or an improvement to conventional technology or technological processes. For example, the specification does not provide any evidence that the functionality of a computer or conventional technology have been improved, or their technological capabilities have been expanded beyond their existing capabilities.
Examiner asserts that the claimed invention is analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016), wherein the court stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., trustworthiness of rebilling) that uses computers as tools.
Applicant further argues:
In addition to the elements already discussed above that amount to more than the judicial exception, Applicant's claims also recite a structure that provides computational efficiency vis-a-vis various existing architectures. See Arguments, p. 6 – emphasis added.
Unlike this complex system of various components keeping track of various subscribers and their respective service contracts, Applicant's claims disclose simplified architecture comprising a meter located in the second tier that monitors usage at the third tier; a second debit service at the second tier coupled to the meter; and a first debit service at the first tier coupled to the same meter. The first debit service and the second debit service compute respective usage credits separately and independent of each other. Thus, the meter is light-weight, as it does not handle any billing rules (e.g., which metered activity has how many usage credits, etc.); nor do the separate debit services keep track of billing rates that are not relevant to their respective tiers and accounts. Therefore, the architecture is light-weight, efficient, and thereby an improvement that amounts to an inventive concept, rendering Applicant's claims patent eligible. See figures below comparing the architecture disclosed in Applicant's claims with those disclosed in Kuzkin. For the foregoing reasons, Applicant's claims 1-20 are patent eligible under 35 U.S.C. §101. See Arguments, pp. 7-8 – emphasis added.
As to the indirect improvements to the technology (e.g., simplified architecture or computational efficiency) based upon performance of the claimed invention, any software can be argued to improve a computer. It can always be argued that the software runs the process more efficiently thereby reducing the demands placed upon the computer system.
In the claimed invention, the computer has not been improved. The non-technological process that the software is performing may have been improved but, according to Alice, improving the process without any technological innovation is not statutory. To be “directed to a patent-eligible improvement to computer functionality,” the claim “must be directed to an improvement to the functionality of the computer or network platform itself.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (citing Enfish, 822 F.3d at 1336-39).
The computer still operates according to its known and standard capabilities. A reduction of load on the computer does not bring about an improvement to the computer, it merely offers resources to other processes that are running on the computer.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f).
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use (i.e., utility computing).
Step 2B
Applicant argues that the additional elements amount to “significantly more” than the abstract idea and, as such, satisfies Step 2B of the §101 Guidelines. See Arguments, pp. 6-10.
The Examiner respectfully disagrees.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
§112(b) Rejection
Applicant’s arguments pertaining to the previously asserted §112(b) rejection of Claims 4 and 11 are persuasive. The §112(b) rejection of Claims 4 and 11 has been withdrawn.
Applicant’s arguments pertaining to the previously asserted §112(b) rejection of Claims 7, 14 and 20 are not persuasive. However, the previously asserted §112(b) rejection of Claims 7, 14 and 20 has been rewritten as a claim interpretation issue. In other words, it does not amount to a rejection (i.e., an error).
Examiner notes that Applicant argues:
Applicant respectfully points the Examiner to several parts in the Specification, where it is made amply clear that different components of the software framework access data for performing its various functions, and such data is accessible according to the tier. For example, see FIGS. 1-3 and descriptions thereof. The examiner's interpretation that there is no method step pertaining to subscribers accessing data is incorrect, as the limitations of the respective independent claims require access to data (e.g., digital wallet, usage credits) by the various components executing the method or operations, and the dependent claims limit such access according to the subscriber's tier. See Arguments, p. 11.
Although the argued elements are found in the specification, they were not claimed explicitly in the disputed claim(s). Nor were the words that are used in the claims defined in the specification to require these limitations. A reading of the specification provides no evidence to indicate that these limitations must be imported into the claims to give meaning to disputed terms. Therefore, although the claims are interpreted utilizing the broadest reasonable interpretation, in light of the specification, limitations from the specification are not read into the claims. See MPEP §2111 and §2111.01.
§103 Rejection
Applicant argues that the previously asserted prior art (Kuzkin) does not teach or suggest the claimed invention. See Arguments, pp. 12-13.
Specifically, the Applicant argues:
No combination of the cited references teaches or suggests such subject matter. For example, the architecture disclosed by Applicant's claims are entirely different from that of Kuzkin whose paragraphs 3-6 and fig. 1 are used by the examiner to reject claim 1. However, paragraphs 3-6 in Kuzkin merely disclose, at a very high level, different pricing schemes that exist in SaaS platforms and state that usage of certain resources may be metered, without disclosing what the meter is, or when or where it is instantiated. See, e.g., Kuzkin, 1113-6. Fig. 1 of Kuzkin discloses that the metering is by a service vendor, implying that the metering is at the service vendor level, not at any of the downstream levels. See, Kuzkin, 48 ("the service vendor(s) 102 is configured to monitor usage of their services by resellers and end customers"). On the other hand, in Applicant's claim 1, the meter is instantiated and executed at the second tier, between the first tier and the third tier; there is no analogous entity in Kuzkin in which the meter is instantiated thus. See Arguments, p. 12 – emphasis added.
The Examiner respectfully disagrees.
Examiner is uncertain what is meant by Applicant’s argument that the prior art fails to “disclos[e] what the meter is.” The meter in Kuzkin is a meter. See para. 48.
Examiner is uncertain what is meant by Applicant’s argument that the prior art fails to disclose “when or where [the meter] is instantiated.”
Examiner notes that the ordinary and common dictionary definition of “instantiated” is “represented.”
If the meter in Kuzkin is always instantiated (i.e., represented), then the claimed invention by instantiating (i.e., representing) a meter “in response to detecting the metered activity,” as recited in Claim 1, is instantiating the meter a subset of the time that it is instantiated in Kuzkin. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See §2144.05(I), citing In re Wertheim, 191 USPQ 90 (CCPA 1976).
Examiner notes that the claimed invention recites that certain functions are performed at certain tiers of a tiered software framework. A tiered software framework is not a physical structure.
For example, “the tiered software framework further comprises a first tier, and a second tier, between the first tier and the third tier.” Under the broadest reasonable interpretation, this is a billing structure or an organizational chart, not a physical structure.
“[T]he tiered software framework further comprises a first tier, and a second tier, between the first tier and the third tier” does not require interpretation as comprising three separate computing devices (i.e., a first server, and a second server, wherein the second server is physically located in between the first server and the third server).
However, the Applicant is arguing that claimed invention recites performing certain functions at certain physical locations (e.g., at the second tier) within the framework. And, if there is no physical structure, then there are no physical locations for certain functions to be performed.
Admittedly, the specification recites performance of various functions on computers (see para. 47 and 48) but neither the specification nor the claims imply that each tier is a separate computer system and, as such, a separate physical location for a meter to be instantiated (i.e., represented).
Kuzkin recites:
It will be appreciated that the transaction mediator 132 is further configured with a software agent to record transactions, indicative of individual billable provisioning operations of a cloud service, passing between an end customer(s) 112 and service vendor(s) 102. In at least one embodiment of the present disclosure, the information pertinent to the transactions is then processed and passed on to a central system (e.g. marketplace 122) where it could be extracted for billing purposes. It will be further appreciated that by monitoring the provisioning flow, the cloud broker 104 can provide real time billing information without the need to rely on the same billing rules imposed by service vendor(s) 102's data. See para. 69.
Kuzkin discloses a method wherein the metering is at the cloud broker level, downstream from the service vendor. See para. 69.
7. Conclusion
THIS ACTION IS MADE FINAL. 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 JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. DONLON can be reached at (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 July 16, 2026
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