Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This communication is in response to Applicant’s amendment filed on 12 June 2026. Claims 1, 6 and 7 have been amended. Claims 1-7 are pending. The rejections are as stated below.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
Claim 1 (exemplary) recites a series of steps for allocating computer resources by adding or removing pods (see page 2 of Applicant’s specification and claims).
The claim is directed to a machine, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception.
Independent system claims 1, recites the limitations of executing instructions to realize one service by combining services which are provided using a plurality of pods, wherein realizing the one service comprises adding a pod to an arbitrary resource as one part of the plurality of pods, wherein the adding of the pod to the arbitrary smart resource is performed while maintaining a service in operation, and wherein the computer system separates a process performed by the application program according to process characteristics, the characteristics indicating which device is appropriate for the process.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation covers steps directed to organizing human activity, namely a fundamental economic practice of managing and allocating resources and assigning tasks. Under the Guidance, certain methods of organizing human activity, including fundamental economic practice (allocating equipment or assigning workers to perform certain tasks) or commercial interactions, represent an abstract idea. See Guidance, 84 Fed. Reg. at 52.
Therefore, it is clear that exemplary independent claim 1 recites limitations, under the Revised Guidance, fall under the category of abstract ideas related to “certain methods of organizing human activity” 2019 Revised Guidance, 84 Fed. Reg. at 52. See MPEP § 2106.04(a)(2). Accordingly, independent claim 1 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitations of memory, a processor, a control network, a data network and an arbitrary smart resource to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data (see Applicant’s specification, page 2). These generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. 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. See MPEP 2106.05(h). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application or provide an inventive concept. See MPEP 2106.05(h).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1, 6 and 7. Furthermore, dependent claims 2-5 do not add limitations that meaningfully limit the abstract idea. The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
Lastly, dependent claims 2-5 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor and is considered to amount to nothing more than requiring a generic server to merely carry out the abstract idea itself.
Accordingly, claims 1-7 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, el al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-7 are rejected under 103 as being unpatentable over Claims 1-7 are rejected over DOSHI et al (US 20210117249 A1), hereinafter “DOSHI” in view of An et al. (US 2021/0149745 A1), hereinafter “An”.
Regarding claims 1, 6 and 7, DOSHI et al. discloses a computer system and a corresponding method, comprising:
a memory configured to store instructions; and a processor configured to execute instructions to realize one service by combining services which are provided using a plurality of pods coupled via a control network which is a network for performing control and a data network which is a network for performing transmission and reception of data, wherein realizing the one service comprises adding a pod to an arbitrary smart resource as one part of the plurality of pods (figures 1-3, and ¶¶ 0058-0070).
DOSHI fails to teach wherein the adding of the pod to the arbitrary smart resource is performed while maintaining a service in operation, and wherein the computer system separates a process performed by the application program according to process characteristics, the characteristics indicating which device is appropriate for the process.
An teaches wherein the adding of the pod to the arbitrary smart resource is performed while maintaining a service in operation, and wherein the computer system separates a process performed by the application program according to process characteristics, the characteristics indicating which device is appropriate for the process (¶¶ [0008-0010], [0015-0017] and [0020-0025].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify DOSHI to include the teachings of AN wherein the adding of the pod to the arbitrary smart resource is performed while maintaining a service in operation, and wherein the computer system separates a process performed by the application program according to process characteristics, the characteristics indicating which device is appropriate for the process, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Further, since both references are directed to container/pod orchestration systems whose goal is high availability and elastic scaling, it avoids service downtime and maintains continuous availability for end users.
Regarding claim 2, DOSHI discloses the processor is configured to execute the instructions to: perform addition of a pod to the arbitrary smart resource under the control via the control network (figures 1-2, ¶¶ 0058-0065 and 0091).
Regarding claim 3, DOSHI discloses the processor is configured to execute the instructions to: remove the unnecessary pod from the plurality of pods when the added pod becomes unnecessary (figures 1-2, ¶¶ 0058-0065 and 0091).
Regarding claim 4, DOSHI discloses the processor is configured to execute the instructions to: perform exclusion of the unnecessary pod under the control via the control network (figures 1-2, ¶¶ 0058-0065 and 0091).
Regarding claim 5, DOSHI discloses the arbitrary smart resource includes at least one of a storage, a graphics processing unit (GPU) accelerator, an input/output (I/O) device which is a camera or a sensor, a memory, and a central processing unit (CPU) (¶¶ 0050-0060).
Response to Arguments
Applicant’s amendments/arguments with respect to the 35 U.S.C. § 102 rejection have been considered but are moot in view of the new grounds of rejection under 35 USC § 103. Applicants’ amendments/arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
Applicants’ arguments with respect to 35 USC § 101 directed to non-statutory subject matter have been fully considered but they are not persuasive.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include the above-mentioned steps. The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations as discussed above and in the previous office action rejections. The instant claims do not attempt to solve an unconventional technological solution but rather use the processor as a tool to implement the abstract idea.
Under Step 2A Prong 1, Applicant submits that the amended claims are eligible because they do not recite a judicial exception that “falls within any of the groupings of abstract ideas enumerated in Section I of the 2019 PEG certain methods of organizing human activity, “Applicant respectfully submits these features relate to a specific technical improvement that integrates any alleged judicial exception into a practical application.”.
Examiner respectfully disagrees. The claims are directed to the abstract idea of combining services provided by pods, adding a pod to a smart resource and separating processes according to characteristics that indicate device suitability, which is a high-level resource orchestration idea that can be performed with conventional computer components. These are improvements over a pure resource allocation on a computer, these features are still recited at a high level of generality, the claims describe what is done but provide no technical detail on how it is accomplished in a non-conventional way.
The claims here do not recite an improvement in computers. The claims do not improve the functioning of the computer or solve any technological problem. Rather, the claim simply “includes instructions to implement an abstract idea on a computer” and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use”. The claim uses generic computer components and generic computer functionality to allocate computer resources. The claims merely use instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitations do not integrate the judicial exception into a practical application.
The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem/internet-centric problem. Limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
In addition, Applicant submits that the claims show an integration of the technical improvement into a practical application.
Examiner respectfully disagrees that the claims are directed to an improvement computer technology. As found by the courts “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly . . ..” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Content Extraction, 2013 WL 3964909, at *12 (“the mere use of a computer to more quickly and efficiently . . . accomplish a given task does not create meaningful limitation on an otherwise abstract and wide-ranging concept”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency is inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f).
According to 2019 Patent Eligibility Guidelines (2019 PEG), limitations that are indicative of integration into a practical application include:
• Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition - see Vanda Memo
• Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
• Effecting a transformation or reduction of a particular article to a different state or thing -see MPEP 2106.05(c)
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e).
In the instant case, the judicial exception is not integrated into a practical application, because none of the above criteria is met. The amended limitations of the claims do not result in computer functionality improvement or technical/technology improvement when the underlying abstract idea is implemented using technology. All the features in the Applicant’s claims can at best be considered an improvement in the abstract idea. The advantages over conventional systems are directed towards improving the abstract idea. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). 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. Hence, the claims as a whole are not integrated into a practical application.
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The use of a machine learning model to find patterns and generate risk signals does not remove the claim from the abstract idea. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Applicants’ 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas, can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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