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
Claims 1-16 are pending. Claims 13-16 are newly added by Applicant.
Examiner Notes
Examiner cites particular paragraphs and/or columns and lines in the references as applied to Applicant’s claims for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. The prompt development of a clear issue requires that the replies of the Applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06.
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-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Applicant’s Reply Not Fully Responsive
The reply filed on 08/19/2026 is not fully responsive to the prior Office action because of the following omission(s) or matter(s): Applicant’s arguments fail to comply with 37 CFR 1.111(b)-(c) because they amount to a general allegation that the dependent claims are 35 U.S.C. 101 patent eligible without specifically pointing out how the language of the dependent claims makes the dependent claims eligible in view of the rejections made. Further, they do not show how the amendments avoid such rejections. Applicant’s Remarks are only directed to the independent claims and fail to address any of the abstract idea rejections to the dependent claims. Even if an independent claim is deemed eligible then it does not necessarily mean that all of the dependent claims are also eligible. The response appears to be bona fide, but through an apparent oversight or inadvertence, consideration of some matter or compliance with some requirement has been omitted. Applicant is required to supply the omission or correction to thereby provide a full response to the prior Office action.
Allowable Subject Matter
Claims 1-16 would be allowable over the prior art of record if rewritten to overcome the applicable rejections and objections set forth in this Office action because the examiner found neither prior art cited in its entirety, nor based on the prior art, found any motivation to combine any of the said prior art.
The primary reason for allowance for the independent claims is creating an asset registry, the asset registry comprising a list of computing assets with ontology metadata and provenance metadata for each computing asset, the provenance metadata for each computing asset comprising at least information about the origin, ownership, custody, validity, trustworthiness, and bias of each respective computing asset and its constituent components; loading, from the asset registry, a semantic ontology of computing assets represented by the ontology metadata, each computing asset comprising one or more data resources and one or more processing workflows that can be applied to the one or more data resources to perform data processing tasks producing a result; creating a list of computing assets usable for the computing use case, the list comprising computing assets that are determined to be ontologically related to the computing use case based on the ontology; converting the ontology metadata and the provenance metadata into a directed provenance-ontology graph; for each of the computing assets in the list, for each of the computing assets in the list, traversing the directed provenance-ontology graph to determine a semantic fit of the computing asset in the ontology to produce the result produced by that computing asset for the computing use case based on the provenance metadata; calculating a reliability of results for each of the computing assets in the list of computing assets usable for the computing use case using the provenance metadata; and displaying the list of computing assets usable for the computing use case with the calculated reliability of the result for each computing asset in the list in conjunction with the rest of the limitations set forth in the claim. The remaining claims, not specifically mentioned, are allowed because they are dependent upon one of the independent claims mentioned above.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more.
Step 1: The claim is a process, machine, manufacture, or composition of matter:
Claim 1. A computing system for universal computer asset normalization and configuration management employing an asset registry platform, comprising.
Step 2A Prong One: The claim recites an abstract idea because it includes limitations that can be considered mental processes (concepts performed in the human mind including an observation, evaluation, judgment, and/or opinion). If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the human mind or via pen and paper, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea:
creating an asset registry, the asset registry comprising a list of computing assets with ontology metadata and provenance metadata for each computing asset, the provenance metadata for each computing asset comprising at least information about the origin, ownership, custody, validity, trustworthiness, and bias of each respective computing asset and its constituent components (abstract idea mental process);
creating a list of computing assets usable for the computing use case, the list comprising computing assets that are determined to be ontologically related to the computing use case based on the ontology (abstract idea mental process);
converting the ontology metadata and the provenance metadata into a directed provenance-ontology graph (abstract idea mental process);
for each of the computing assets in the list, traversing the directed provenance-ontology graph to determine a semantic fit of the computing asset in the ontology to produce the result produced by that computing asset for the computing use case based on the provenance metadata (abstract idea mental process);
calculating a reliability of results for each of the computing assets in the list of computing assets usable for the computing use case using the provenance metadata (abstract idea mental process).
Step 2A Prong Two: The abstract idea is not integrated into a practical application because the abstract idea is recited but for generically recited additional computer elements (i.e. data storage, processor, memory, computer readable medium, etc.) which do not add meaningful limitations to the abstract idea amounting to simply implementing the abstract idea on a generic computer using generic computing hardware and/or software (e.g. generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The generic computing components are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using the recited generic computer components. 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:
one or more hardware processors configured for (generic computing components):
loading, from the asset registry (generic computing components), a semantic ontology of computing assets represented by the ontology metadata, each computing asset comprising one or more data resources and one or more processing workflows that can be applied to the one or more data resources to perform data processing tasks producing a result (generic computing components performing extra-solution activity of retrieving data/information);
receiving a request from a user; wherein the request comprises any combination of: a computing use case selection; a request to share data, lists, or datasets, with other users; and a request to delegate ownership of data, lists, or datasets, to another user or users (generic computing components performing extra-solution activity of receiving data/information);
displaying the list of computing assets usable for the computing use case with the calculated reliability of the result for each computing asset in the list (generic computing components performing extra-solution activity of displaying/presenting/outputting data/information).
Step 2B: The claim includes limitations which can be considered extra-solution activity (see MPEP 2106.05(g)) insufficient to amount to significantly more than the abstract idea because the additional limitations only perform at least one of collecting, gathering, displaying, generating, modifying, updating, storing, retrieving, sending, and receiving data/information data which are well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d)II. The claim further includes limitations that do not integrate the judicial exception into a practical application because they merely recite 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). Therefore, the claim, and its limitations when considered separately and in combination, is directed to patent ineligible subject matter:
loading, from the asset registry, a semantic ontology of computing assets represented by the ontology metadata, each computing asset comprising one or more data resources and one or more processing workflows that can be applied to the one or more data resources to perform data processing tasks producing a result (extra-solution activity of retrieving data/information);
receiving a request from a user; wherein the request comprises any combination of: a computing use case selection; a request to share data, lists, or datasets, with other users; and a request to delegate ownership of data, lists, or datasets, to another user or users (extra-solution activity of receiving data/information);
displaying the list of computing assets usable for the computing use case with the calculated reliability of the result for each computing asset in the list (extra-solution activity of displaying/presenting/outputting data/information).
Claim 2. The system of claim 1, wherein the one or more hardware processors are further configured for tracking the provenance of each new computing asset added to the asset registry by adding the provenance metadata to the new computing asset in the asset registry (abstract idea mental process).
Claim 3. The system of claim 1, wherein the one or more hardware processors are further configured for allowing the purchase, sale, or licensing of computing assets (extra-solution activity of 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 the computer as a tool to perform the abstract idea).
As per claim 4, it has similar limitations as claim 1 and is therefore rejected using the same rationale.
As per claim 5, it has similar limitations as claim 2 and is therefore rejected using the same rationale.
As per claim 6, it has similar limitations as claim 3 and is therefore rejected using the same rationale.
As per claim 7, it has similar limitations as claim 4 and is therefore rejected using the same rationale.
As per claim 8, it has similar limitations as claim 2 and is therefore rejected using the same rationale.
As per claim 9, it has similar limitations as claim 3 and is therefore rejected using the same rationale.
As per claim 10, it has similar limitations as claim 4 and is therefore rejected using the same rationale.
As per claim 11, it has similar limitations as claim 2 and is therefore rejected using the same rationale.
As per claim 12, it has similar limitations as claim 3 and is therefore rejected using the same rationale.
Claim 13. The system of claim 1, wherein the directed provenance-ontology graph is stored in a hybrid graph and time-series structure that tracks the provenance metadata for each computing asset over time (extra-solution activity of saving/storing data/information).
As per claim 14, it has similar limitations as claim 13 and is therefore rejected using the same rationale.
As per claim 15, it has similar limitations as claim 13 and is therefore rejected using the same rationale.
As per claim 16, it has similar limitations as claim 13 and is therefore rejected using the same rationale.
Claims 10-12 and 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter because the claims do not fall within at least one of the four categories of patent eligible subject matter.
As per claim 10, it is directed to a signal directly or indirectly by claiming a non-transitory computer-readable storage media and the Specification recites evidence where the non-transitory computer-readable storage media can be interpreted as a signal or wave (see the instant Specification [0087]: “Because such information and program instructions may be employed to implement one or more systems or methods described herein, at least some network device aspects may include nontransitory machine-readable storage media, which, for example, may be configured or designed to store program instructions, state information, and the like for performing various operations described herein. Examples of such nontransitory machine-readable storage media include, but are not limited to, magnetic media such as hard disks, floppy disks, and magnetic tape; optical media such as CD-ROM disks; magneto-optical media such as optical disks, and hardware devices that are specially configured to store and perform program instructions, such as read-only memory devices (ROM), flash memory (as is common in mobile devices and integrated systems), solid state drives (SSD) and “hybrid SSD” storage drives that may combine physical components of solid state and hard disk drives in a single hardware device (as are becoming increasingly common in the art with regard to personal computers), memristor memory, random access memory (RAM), and the like.” (emphasis added by the examiner to highlight the open-ended language).
In other words, [0087] of the instant specification appears to redefine “non-transitory” to actually include transitory embodiments by using open-ended language to define “non-transitory”. A transitory signal, while physical and real, does not possess concrete structure that would qualify as a device or part under the definition of a machine, is not a tangible article or commodity under the definition of a manufacture (even though it is man-made and physical in that it exists in the real world and has tangible causes and effects), and is not composed of matter such that it would qualify as a composition of matter (see Nuijten, 500 F.3d at 1356-1357, 84 USPQ2d at 1501-03). As such, a transitory, propagating signal does not fall within any statutory category (see Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1294, 112 USPQ2d 1120, 1133 (Fed. Cir. 2017); Nuijten, 500 F.3d at 1356-1357, 84 USPQ2d at 1501-03). The BRI of machine readable media can encompass non-statutory transitory forms of signal transmission, such as a propagating electrical or electromagnetic signal per se (see In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007)). In that event, the claim is directed to a form of energy which does not fall into a category of invention.
To overcome the rejection, it is suggested that Applicant restore the language of [0087] of the instant specification to its previous form as originally filed and include the statement “wherein the non-transitory, computer-readable storage media expressly excludes transitory, propagating signals” in claim 10.
As per claims 11-12 and 16, they are dependent on claim 10 and do not overcome the 35 U.S.C. 101 deficiency of claim 10. Therefore, they are rejected using the same rationale.
Response to Amendment
The amendment filed on 08/19/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure at [0087]. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the amendments made to [0087] of the instant specification. Applicant is required to cancel the new matter in the reply to this Office Action.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
In the Remarks on pg. 3, Applicant argues that the Office Action’s characterization compresses each limitation to a short phrase and drops the technical content that follows it. The examiner respectfully traverses. Applicant relies on [0046] of the instant specification for a definition of ontology. However, [0046] does not provide any details explaining why creating a list of computing assets with ontology metadata cannot be performed mentally or via pen and paper. Rather, [0046] merely states that ontology refers to a formal naming and definition of the types, properties, and interrelationships of the entities that exist in a particular domain of discourse. Ontologies are a method of classification of things and their relationships with other things. The examiner contends that creating a list of computing assets with ontology metadata can indeed be performed mentally or via pen and paper. For example, Applicant’s own drawings in at least fig. 8 illustrates how a provenance ontology graph can be drawn using pen and paper. Hence, Applicant’s own disclosure shows an example of how a provenance ontology graph can be constructed mentally or via pen and paper illustrating a method of classification of things and their relationships with other things. Thus, for at least the reasons provided above, Applicant’s arguments are unpersuasive and the rejections are sustained.
On pg. 3-5 of the Remarks, Applicant alleges that the instant claims are similar to the USPTO Examples 37 and 39. The examiner respectfully disagrees. Example 37 is concerned with a method of rearranging icons on a GUI, however, the instant claims are directed to universal computer asset normalization and configuration management employing an asset registry platform. Therefore, Example 37 and the instant claims are distinct and dissimilar. There is no limitation in the instant claims that is equivalent to the “determining…” limitation recited in Example 37. Applicant fails to explain how Example 37 in any way applies to the instant claims. Example 39 is concerned with creating a first training set comprising the collected set of digital facial images, the modified set of digital facial images, and a set of digital non-facial images, however, the instant claims are directed to universal computer asset normalization and configuration management employing an asset registry platform. Therefore, Example 39 and the instant claims are distinct and dissimilar. In Example 39, the creating step involves creating a first training set comprising digital facial images and digital non-facial images. However, the first training set in Example 39 is different than the asset registry of the instant claims because the first training set includes images whereas the asset registry includes data/information in non-image form. Applicant fails to explain how Example 39 in any way applies to the instant claims. Hence, for at least the rationale provided above, Applicant’s arguments are not persuasive and the rejections are maintained.
In the Remarks on pg. 5-6, Applicant argues that the “converting…” and “for each of…” limitations of the claims cannot be performed mentally. The examiner respectfully disagrees. Again fig. 8 of Applicant’s own drawings illustrates how the aforementioned steps can be performed mentally or via pen and paper. In fact, [0024] of the instant specification states: “Fig. 8 is an exemplary provenance-ontology graph demonstrating how the ontological metadata may be converted to a directed graph and used to determine a possible use of a computing resource outside of the context in which the computing resource was created.” A semantic fit can be determined using/traversing fig. 8. Thus, for at least the reasons provided above, Applicant’s arguments are unpersuasive and the rejections are sustained.
On pg. 7-8 of the Remarks, Applicant alleges that the improvement in the instant claims can be found in the “converting…” limitation of the instant claims. The examiner respectfully traverses. Here, Applicant is alleging that the supposed improvement is in “the ability to determine, before deployment, whether a composite computing asset will produce a reliable result in a context other than the one it was built for (emphasis added by the examiner). Hence, Applicant is alleging that the supposed improvement is directed to an abstract idea of determining or making a determination. Applicant’s attempt to show that the recited abstract idea itself is the improvement is not persuasive. An “improved” abstract idea is still an abstract idea nonetheless and is not eligible for patent protection without significantly more recited in the claim. The examiner respectfully submits that an improvement in computer functionality is a reason for supporting the significance of the additional elements in a claim (Step 2A Prong Two and Step 2B, and not Step 1 or Step 2A Prong One). In other words, the “improvement” rationale is reserved for evaluating whether the additional elements and not the abstract idea itself amount to significantly more than the abstract idea itself (see MPEP 2106.05). Applicant is reminded that the abstract idea itself cannot be directed to an improvement in computer functionality (Step 2A Prong One). Rather only the additional elements can qualify as significantly more (i.e., the improvement) than the abstract idea itself (Step 2A Prong Two and Step 2B). Contrary to Applicant’s assertion, the claims are not directed to a specific asserted improvement in computer capabilities because no capability of the computer is being improved in any way. Applicant further alleges that the “converting…”, “for each of…”, and “calculating a reliability…” limitations provide the supposed improvement. However, as explained above, the improvement cannot be properly found in any of the abstract idea limitations themselves. Hence, for at least the rationale provided above, Applicant’s arguments are not persuasive and the rejections are maintained.
In the Remarks on pg. 8-9, Applicant argues that the recited hardware processing performing the claimed steps of “loading…”, “receiving…” and “displaying…” are not generic computing components performing extra-solution activity. The examiner respectfully disagrees. Applicant is reminded of In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (“expert’s opinion on the ultimate legal conclusion must be supported by something more than a conclusory statement”). It appears that Applicant is merely making a conclusory statement. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection (see MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art). The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. Applicant fails to provide any explanation whatsoever regarding why the aforementioned steps should not be considered generic computing components performing extra-solution activity. Applicant’s US PG PUB of the instant specification (US 2024/0231909) discloses numerous examples stating that the claimed hardware is generic (i.e., see [0127] “QUALCOMM SNAPDRAGON™ or SAMSUNG EXYNOS™ CPU as are becoming increasingly common in the art”, [0129] “independent processor (such as a dedicated audio or video processor, as is common in the art for high-fidelity A/V hardware interfaces)”, [0132] “flash memory (as is common in mobile devices and integrated systems), solid state drives (SSD) and “hybrid SSD” storage drives that may combine physical components of solid state and hard disk drives in a single hardware device (as are becoming increasingly common in the art with regard to personal computers”, [0133] “typical exemplary architecture known in the art”, [0134] “network topology known in the art” “known network protocols”, and [0138] “many other devices and modifications that are well known but are not applicable to the specific novel functions of the current system and method disclosed herein”). Finally, Applicant states that “the graph created in this process improves computer technology by allowing for improved allocation of computing assets”. However, the instant claims include no such statement. Thus, for at least the reasons provided above, Applicant’s arguments are unpersuasive and the rejections are sustained.
On pg. 9 of the Remarks, Applicant alleges that the claims provide something more that is non well-understood, routine, or conventional. The examiner respectfully traverses. Applicant is reminded that the lack of prior art (i.e. novelty) does not avoid the problem of abstractness. While § 101 subject matter eligibility is a threshold test that typically precedes the novelty or obviousness inquiry (Bilski v. Kappos, 561 U.S. 593, 602 (2010)), it is a requirement separate from those other patentability inquiries (see Return Mail, Inc. v. USPS, 123 USPQ2d 1813, 1827 (Fed. Cir. 2017) and Mayo Collaborative Servs v. Prometheus Labs, Inc., 566 U.S. 66, 90 (2012)). It is important to recognize that the 35 U.S.C. 101 inquiry and other patentability inquiries might sometimes overlap. However, shifting the 35 U.S.C. 101 patent-eligibility inquiry entirely to the 35 U.S.C. 102 and 103 sections risks creating significantly greater legal uncertainty, and assumes that those sections can do work that they are not equipped to do. While material may be relevant to a novelty and obviousness analysis it may be the case where the material is not relevant to a determination of eligible subject matter. Eligibility and novelty are separate inquiries (see Affinity Labs of Tex., v. DirecTV, LLC, 120 USPQ2d 1201, 1208 Fed. Cir. 2016 and Synopsys, Inc. v. Mentor Graphics Corp., 120 USPQ2d 1473, 1483 Fed. Cir. 2016). Even assuming that a particular claimed feature was novel does not avoid the problem of abstractness. The search for an inventive concept under 35 U.S.C. 101 is thus distinct from demonstrating 35 U.S.C. 102 novelty. The novelty and nonobviousness of the claims under 35 U.S.C. 102 and 103 does not bear on whether the claims are directed to patent-eligible subject matter under 35 U.S.C. 101 (see 2016 U.S. Dist. LEXIS 107478, [WL] and *4). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103) is further discussed in MPEP § 2106.05(d). A prior art search should not be necessary to resolve the inquiry as to whether an additional element (or combination of additional elements) is well-understood, routine, conventional activity. The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. The Supreme Court’s cited rationale for considering even "just discovered" judicial exceptions as exceptions stems from the concern that "without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’" Myriad, 133 S. Ct. at 2116, 106 USPQ2d at 1978-79 (quoting Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also Myriad, 133 S. Ct. at 2117, 106 USPQ2d at 1979 ("Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry."). The process itself, not merely the mathematical algorithm, must be new and useful. Indeed, the novelty of the mathematical algorithm is not a determining factor at all. Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the “basic tools of scientific and technological work,” see Gottschalk v. Benson, *592 409 U.S., at 67, it is treated as though it were a familiar part of the prior art. If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory (see In re Richman, 563 F. 2d 1026, 1030 (1977)). Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 ("the novelty of the mathematical algorithm is not a determining factor at all"). Hence, for at least the rationale provided above, Applicant’s arguments are not persuasive and the rejections are maintained.
In the Remarks on pg. 9-11, Applicant argues that the claimed non-transitory, computer-readable storage media does not include transitory embodiments. The examiner respectfully disagrees. The term “non-transitory” is a well-defined and well-understood term that does not need or require any further definition. However, [0087] attempts to provide open-ended examples of “non-transitory” which is not only unnecessary, but also problematic. The term “non-transitory” was provided to Applicants as a way to claim a statutory embodiment for a computer readable storage medium without any definition of the term in the specification. Therefore, when Applicant provides an open-ended definition of an already well-defined term, then it is interpreted as redefining the term to include transitory embodiments. To overcome the rejection, it is suggested that Applicant restore the language of [0087] of the instant specification to its previous form as originally filed and include the statement “wherein the non-transitory, computer-readable storage media expressly excludes transitory, propagating signals” in claim 10. Thus, for at least the reasons provided above, Applicant’s arguments are unpersuasive and the rejections are sustained.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Warner et al. (US 2015/0286969) disclose a system for providing a scalable semantic mechanism for policy-driven assessment and action taking on dynamically changing data includes a policy context that is a collection of ontologies that capture policies of the enterprise in a semantic, declarative grammar, in a semantic database, a performance context that receives and stores sensor data output monitoring managed assets persisted in a time-series database, a workflow context that determines the workflow process necessary to manage the managed asset based on the governance policies and sensor data, implemented using a workflow engine that supports a declarative workflow language, a decision context that contains business rules encoded in a declarative grammar, implemented using a business rule engine and in which the business rules define conditions under which an asset is corrected, and an adjudication context that defines all associations between the four contexts that are necessary to monitor and manage the enterprise managed assets.
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 Adam Lee whose telephone number is (571) 270-3369. The examiner can normally be reached on M-TH 8AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pierre Vital can be reached on 571-272-4215. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/Adam Lee/Primary Examiner, Art Unit 2198 August 28, 2026
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