DETAILED ACTION
1. This Final Office Action is in response to Applicant’s Amendments filed 7/22/2026. Claims 1-7, 10-13, 15-17, and 19-24 are currently pending. Claims 8-9, 14, and 18 were cancelled. The earliest effective filing date of the present application is 5/8/2024.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-7, 10-13, 15-17, and 19-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed a judicial exception (i.e., an abstract idea) without significantly more.
Step 1 – Statutory Categories
As indicated in the preamble of the claim, the examiner finds the claim is directed to a process, machine, manufacture, or composition of matter. Claims 1-16 are processes (methods), and claims 17-20 are machines (systems or devices).
Step 2A – Prong 1: was there a Judicial Exception Recited
Claim 11 (similarly claims 1 and 17) recites the following bolded abstract concepts that are found to include “abstract idea”:
11. A computer-implemented method for creating an electronic inventory database for a plurality of assets and managing firmware updates for the plurality of assets, comprising:
generating, by a computer device, the inventory database structured to include a relational data structure corresponding to a plurality of physical locations, the relational data structure being hierarchically arranged to correspond to a hierarchical relationship of the plurality of physical locations in which the plurality of assets reside;
scanning, by the computer device, a Quick Response (QR) code associated with an installation location at least a first asset of the plurality of assets is to be associated with, wherein a computer network is commonly coupled to the first asset, the installation location, and other installation locations, wherein the scanned QR code provides location metadata indicative of the installation location and at least one other physical location hierarchically associated with the installation location;
scanning, by the computer device, a scanned asset QR code associated with the at least first asset to be included in the inventory database;
determining, by the computer device, asset metadata associated with the scanned asset QR code that is indicative of least descriptive information associated with the first asset (evaluation);
storing, by the computer device, the asset metadata and location metadata in the inventory database in association with each other (opinion);
scanning, by the computer device, the computer network to detect metadata and an IP address associated with the first asset on the computer network whereby when the detected metadata matches the asset metadata stored in the inventory database for the first asset, the detected IP address is indexed in the inventory database in association with the first asset; and
during a firmware update process for the first asset:
re-scanning, by the computer device, the scanned asset QR code to re-determine the asset metadata;
determining, by the computer device, authenticity of the scanned asset QR code by comparing the re-determined asset metadata to the asset metadata stored in the inventory database relating to the first asset;
after determining the scanned asset QR code is authentic, uploading, by the computer device, a firmware update to the first asset; and
after determining the scanned asset QR code is not authentic, generating, by the computer device, an alert.
Claim 11 (similarly claims 1 and 17) is directed to a series of steps for creating inventory database for a plurality of assets, which is a commercial/legal interaction (sales activity) and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions);thus, grouped as a certain method of organizing human interactions. Thus, the claim recites an abstract idea. See MPEP §2106.04(a).
Step 2A – Prong 2: Can the Judicial Exception Recited be integrated into a practical application
Limitations that are indicative of integration into a practical application:
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) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or 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)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
This judicial exception is not integrated into a practical application because computer device, computer network, processor, and memory are merely generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply the abstract idea on a generic computer. Accordingly, alone and in combination, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. See Specification pg. 12, l. 20-pg. 13, l. 5 discussing the multiple types of generic computing devices that could be used. The claim is directed to an abstract idea.
Step 2B – Significantly More Analysis
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and in combination the computer device, computer network, processor, and memory amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Thus, claims 1, 11, and 17 are not patent eligible.
Dependent claims 2-7, 10, 12-13, 15-16, and 19-24 fail to provide additional elements that are sufficient to amount to significantly more than the judicial exception. The dependent claims include additional elements such as a printing device, which do not amount to more than merely instructions to apply the exception using a generic computer component. Therefore, claims 2-7, 10, 12-13, 15-16, and 19-24 are rejected for the same reasons as stated in the rejection from independent claim from which they depend.
Allowable Subject Matter
5. The following is a statement of reasons for the indication of allowable subject matter:
The reason for allowable subject matter of claims 1-7, 10-13, 15-17, and 19-24 in the instant application is because the prior art of record fails to teach the overall combination as claimed. Therefore, it would not have been obvious to one of ordinary skill in the art to modify the prior art to meet the combination above without unequivocal hindsight and one of ordinary skill would have no reason to do so. In Remarks (7/22/2026), Applicant argues that the nearest art, Lew 2009/0070237 and Ozkan 9,218,586, does not teach the amended limitations, the examiner agrees. Neither Lew nor Ozkan teach specific firmware update process claimed. Upon further searching the examiner could not identify any prior art to teach these limitations. The prior art on record, alone or in combination, neither anticipates, reasonably teaches, not renders obvious the Applicant' s claimed invention.
Response to Arguments
6. Applicant’s arguments, see Remarks, filed 7/22/2026, with respect to §§112, 102, and 103 have been fully considered and are persuasive. These rejections have been withdrawn.
7. Applicant's arguments against §101 have been fully considered but they are not persuasive.
Applicant argues that under Step 2A Prong One the claim is eligible because it is a technical solution to a technical problem. Examiner disagrees mainly because Applicant has applied the wrong analysis to Prong One. Prong One ask, “Is an abstract idea claimed?” Applicant points example 1 of the 101 examples to argue eligibility, which is not analogous to what applicant is claiming. Further, cases like Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) had not been decided when example 1 was written, which clearly shows merely using a computer for its intended purpose of collecting data, analyzing data, and outputting data is not eligible. Example 47 (one of the more recent examples) would be a better analysis.
Applicant argues under Prong Two and 2B that the specific data structure when combined with the authentication and conditional firmware provides a technical improvement. Examiner disagrees. See Electric Power Group for a discussion on merely using computer technology to display/output data based on data collection and data analysis. Further, the data structure itself is part of the abstract idea and not a technical solution to a technical problem but an improvement in the abstract idea. As the additional elements did not invoke insignificant extra-solution activity, a Berkheimer analysis is not required.
Examiner maintains position.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Notice of References Cited, PTO form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JARED WALKER whose telephone number is (303)297-4407. The examiner can normally be reached Monday-Thursday 9:00 AM -5:00 PM CT.
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/MICHAEL JARED WALKER/Primary Examiner, Art Unit 3627 Michael.walker@uspto.gov
