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 Objections
Claim 16, and consequently its dependent claims, objected to because of the following informalities: “with service” is understood to refer to “with the service”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 21 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Referring to claim 21, it is unclear where original support lies for “determine that additional problem analysis data, associated with an additional defect of the computing system, is to be deleted based on determining that the period of time exceeds the amount of time threshold; and prevent data loss of the additional problem analysis data to prevent receiving requests for additional information regarding the additional defect to resolve the additional defect, wherein the data loss is prevented based on determining that the period of time exceeds the amount of time threshold and based on determining that the additional problem analysis data is to be deleted.” Specifically, it is unclear where the specification discusses an “additional defect”, let alone one that is treated in the manner claimed.
Additionally, as now claimed, Applicant either intends for this to mean that preventing the deletion prevents a requestion for additional information or prevents resolution of the additional defect. The specification was not found to provide much detail as to what this limitation was intended to mean and Applicant has failed to supply a citation that corroborates this limitation. As best as examiner can determine, this is intended to correspond to paragraph 11 of the specification, where the prevention of deletion of a data collection implies that retrieval through a “more information” request would be possible which seems to contradict what is claimed: that a request for “additional” information is “prevented”. Either way, the claims as written are not present verbatim and it is unclear what is intended.
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 1-9, 11-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
At step 1, if no statutory category rejection was given above, then the claims have been determined to have a statutory category.
At step 2a, prong one, referring to claim 1, applicant claims executing a service, detecting a defect including an error associated with the service, collecting problem analysis data during execution of the service, determining a priority value based on various data, determining to include the problem analysis data based on the priority value, storing the problem analysis data in a collection, sending the collection to a server to determine a resolution, receiving information on the resolution, and performing steps of the resolution, as shown in claim 1, herein recited, “A method comprising: receiving problem analysis data associated with a defect of a computing system; determining a priority value of the problem analysis data based on usage data of previous problem analysis data associated with the defect, a size of the problem analysis data, and a confidence score associated with the previous problem analysis data; determining to include the problem analysis data in a data collection based on the priority value; storing the problem analysis data in the data collection; and sending the data collection to a server.” Claim 1 is recited as representative, “A method performed by a computing system, the method comprising: executing a service provided by the computing system; detecting a defect of the computing system, wherein the defect includes an error associated with the service provided by the computing system; collecting, during execution of the service, problem analysis data associated with the defect of the computing system; determining a priority value of the problem analysis data based on usage data of previous problem analysis data associated with the defect, a size of the problem analysis data, and a confidence score associated with the previous problem analysis data; determining to include the problem analysis data in a data collection based on the priority value to prevent requests for additional information to resolve the defect; storing the problem analysis data in the data collection to prevent the requests for the additional information to resolve the defect; sending the data collection to a server to prevent receiving the requests for the additional information from the server and to cause the server to determine a resolution of the defect based on sending the data collection; receiving information regarding the resolution of the defect based on sending the data collection to the server; and performing steps of the resolution to correct the defect based on the information.” Claims 11 and 16 are treated as similar.
The limitations of detecting, determining, determining, storing, and determining a resolution, as crafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of additional elements that do not integrate the judicial exception into a practical application. That is, nothing in these claim elements precludes the step from practically being performed in the mind, possibly with the aid pen and paper. For example, these steps perform steps of observation, evaluation, judgment, or opinion.
At step 2a, prong two, this judicial exception is not integrated into a practical application. In particular the claim additionally recites a generic computer (inclusive of executing a service), collecting data during executive of a service, sending and receiving data for the purpose of remote diagnostics, and performing steps of a resolution. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of additional elements that do not integrate the judicial exception into a practical application, then it falls within the "Mental Processes" grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Even when viewed in combination, the additional elements in this claim do no more than automate the mental processes a person may perform, using the computer components as a tool.
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 claim is directed to an abstract idea.
At step 2b, the claim does 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 element of a generic computer, collecting data, and sending and receiving data for the purpose of remote diagnostics amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
With respect to the generic computer, the courts have found limitations directed to generic computers, recited at a high level of generality, to be well-understood, routine, and conventional. See MPEP2106.05(d), for example TLI Communications, Flook, Alice Corp, and Versata.
With respect to collecting data, this is also well understood, routine, and conventional. See for example US 20010047510 A1 paragraph 124, US 20100042975 A1 paragraph 4, US 20120221949 A1 paragraph 3, US 20130263093 A1 paragraph 23, US 20150143182 A1 paragraph 2, US 20200218635 A1 paragraph 30, US 20220308982 A1 paragraph 7, US 20220413994 A1 paragraph 4.
With respect to the limitation of sending and receiving data, this is recited at a high level of generality. These elements amount to receiving or transmitting data over a network and are well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II.See MPEP 2106.05(g).
With respect to remote diagnostics, this is also well understood, routine, and conventional. See for example US 20060123302 A1 paragraph 3, US 20040078721 A1 paragraph 5, US 20050283661 A1 paragraph 6, US 20100266106 A1 paragraph 5, US 20030187999 A1 paragraph 5, US 20030204855 A1 paragraph 5, and US 20080235264 A1 paragraph 2.
With respect to performing steps of the resolution this represents insignificant extra-solution activity, equivalent to "apply it", that is necessary for use of the recited judicial exception as the implementation operation is an insignificant application of the abstract mental process of observation, evaluation, judgment, or opinion. Further, implementing is recited at a high level of generality. Implementing is therefore insignificant extra-solution activity (see MPEP 2106.05(f) and (g)).
Considering the additional elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. The claim is not patent eligible.
Further referring to claims 2-5, these merely further perform steps of observation, evaluation, judgment, or opinion.
Further referring to claims 6-9, these merely further describe data.
Further referring to claims 12-15 and 17-20, see rejection of claims 2-5 above.
Further referring to claim 21, these steps of timing and deletion (or not deleting as the case may be) merely further perform steps of observation, evaluation, judgment, or opinion, wherein deletion is simply the inverse of storage, be it a mental disregard or erasure in the case of pen and paper or otherwise. In this case, a time is observed and an action is (apparently) NOT taken. This is observation, evaluation, judgment, or opinion.
Response to Arguments
Applicant's arguments filed 12 January 2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument (page 9) that this is a technical solution for a technical problem of requesting more information, this is not a problem particular to technology but rather to the prioritization of information given limited retention. This problem is merely claimed as having a technical correspondence in the form of the subject matter of the information and the medium of retention (to the extent this is even claimed). So too can inadequate information be given in an initial round of any inquiry. This forms the basis of any dialogue, any further request for explanation, not just in the realm of technology. So too, had the initial explanation been adequate, this could or would “prevent” additional inquiry.
Applicant goes on to argue that this improves the “technology/technical field” of automated remote diagnostics. Again, while the processes used to prioritize information are claimed for use particularly in diagnostics, this is insignificant and extrasolution. Besides automating (through the use of a generic computer) and being remote (generic networking), Applicant should recognize that diagnostics itself is observation, evaluation, judgment, or opinion.
Applicant takes issue with examiner’s real life example of this correspondence serving to illustrate the process of dialogue and inquiry (page 13), dismissing it as “derision”. Instead of taking offense examiner suggests taking heed. Applicant goes on to argue (page 10-11) that requesting more information “consumes resources” and that NOT requesting “preserves resources”. Again, similarly, had Applicant simply accepted examiner’s response for technical solutions above then examiner would not have needed to repeat the response, thereby “preserving resources” by “preventing” examiner having to respond.
A step that is prevented is a step that is saved. This is true for any process.
Applicant argues (page 11) again that various limitations are additional and that they integrate. These do not align with examiner’s own identification of additional elements and again, Applicant has failed to supply any reasoning for identifying these as additional where examiner identified them as abstract.
Applicant argues (page 12) that executing a service and performing steps of the resolution cannot be performed in the mind. Examiner agreed, see the rejection above.
Applicant again argues (page 12) that various limitations of the claim are additional (and that they subsequently integrate), again without any reasoning. For example, how is “determining a priority value…” not a step of observation, evaluation, judgment, or opinion?
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 GABRIEL L CHU whose telephone number is (571)272-3656. The examiner can normally be reached weekdays 8 am to 5 pm.
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, Ashish Thomas can be reached at (571)272-0631. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GABRIEL CHU/ Primary Examiner, Art Unit 2114
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