DETAILED ACTION
1. Claims 1-20 are currently pending. The 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 § 112
3. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1 (similarly claims 11 and 17), the use of parentheses1 renders the claim indefinite because it is unclear whether the limitation(s) inside the parentheses are part of the claimed invention. See MPEP § 2173.05(d). For example, the limitation “assets to be included in the inventory database that is associated with installation at a certain location (installation location).” It is unclear whether applicant intended this as a short hand for the limitation (acronym), an example, or a definition. Appropriate corrections are needed.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 1-20 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, comprising:
generating, by a computer device, an inventory database structured to include a plurality of hierarchically associated physical locations (opinion);
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 associated with, wherein a computer network is commonly coupled to the first asset, the installation location and other installation locations and, wherein the scanned QR code provides metadata (location metadata) indicative of the installation location and at least one other physical location hierarchically associated with the installation location (observation);
scanning, by the computer device, a QR code associated with the at least first asset to be included in the inventory database (observation);
determining, by the computer device, metadata (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); and
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.
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 thus grouped as a certain method of organizing human interactions and/or a mental process (see above notations of mental processes being performed by each limitation and MPEP §2106.04(a)(2)(III)(C).). Further, a database, table or matrix could be done mentally with the aid of pen and paper. 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 2-10, 12-16, and 18-20 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 printing device, which do not amount to more than merely instructions to apply the exception using a generic computer component Therefore, claims 2-10, 12-16, and 18-20 are rejected for the same reasons as stated in the rejection from independent claim from which they depend.
Claim Rejections - 35 USC § 102
7. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
8. Claims 1, 5-7, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pat. Pub. No. 2009/0070237 to Lew et al. (“Lew”).
9. With regards to claim 1, Lew disclosed the limitations of,
obtaining, by a computer device, a unique identifier associated with at least a first asset of the plurality of assets to be included in the inventory database that is associated with installation at a certain location (installation location) wherein a computer network is commonly associated to the installation location, other installation locations and the computer device (See [0188] discussing operation 1812 represents examining asset tags reported by agents and that person may use a hand-held scanner or the like to scan this asset tag, which then appears within the TAM asset-tag listing, [0199] discussing the TAM containing a listing of assets, according to asset tags, along with a location of each asset and Fig.18 depicting operation 1812 is part of process 1800).);
determining, by the computer device, metadata associated with the unique identifier that is indicative of descriptive information associated with the first asset (asset metadata) (See [0199] discussing TAM comprises a managed inventory for the organization's assets and that the TAM may list an IP address, a type of device, a hostname, an asset tag, a location, and/or a serial number for each of these assets.);
storing, by the computer device, the asset metadata in the inventory database in association with the installation location the first the asset is operably associated with (See [0195]: discussing process 1800 also includes operation 2012, which represents sending the reconciled data to the GIW 122. ");
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 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 with the asset metadata and the installation location for the first asset (See [0184] discussing if an asset's reported locations match (and, hence, the asset's reported IP addresses, asset tags, hostnames, and secondary interface names match), then the asset is considered fully reconciled, [0185] discussing the scanning is performed as operation 1802, which represents generation of a SONAR IP report, SONAR attempts to connect to the active IP addresses and reach a login prompt for the corresponding asset (e.g., a server), and from the login prompt, SONAR attempts to determine one or more characteristics of the corresponding asset.).
10. With regards to claim 5, Lew disclosed the limitations of,
wherein the asset metadata includes one or more of: a serial no.; device name; device type; model no; MAC address; and firmware information relating to the first asset (See [0199] discussing TAM comprises a managed inventory for the organization's assets and that the TAM may list an IP address, a type of device, a hostname, an asset tag, a location, and/or a serial number for each of these assets.).
11. With regards to claim 6, Lew disclosed the limitations of,
wherein obtaining the unique identifier associated with the first asset to be included in the inventory database further includes determining, by the computer device, the installation location the first asset is to be installed at (See [0199] discussing TAM comprises a managed inventory for the organization's assets and that the TAM may list an IP address, a type of device, a hostname, an asset tag, a location, and/or a serial number for each of these assets.).
12. With regards to claim 7, Lew disclosed the limitations of,
further including determining, by the computer device, software update availability for the first asset included in the inventory database by detecting availability of a software and/or firmware update, from one or more databases external of the inventory database, relating to the first asset stored in the inventory database (See [0048] discussing the auto-updating inventory and [0156] discussing IT department to manage multiple inventories.).
13. With regards to claim 9, Lew disclosed the limitations of,
wherein the inventory database is structured to include a plurality of physical locations, wherein an installation location the first asset is associated with is hierarchically associated within at least one other physical location whereby the computer device hierarchically associates a plurality of physical locations the first asset is hierarchically associated with (See [0113] discussing the implementation of granular location information to generate a registry.).
Claim Rejections - 35 USC § 103
14. 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.
15. Claims 2-4, 8, and 10-20 are rejected under 35 U.S.C. 103 as being unpatenable by Lew in view of U.S. Pat. No. 9,218,586 to Ozkan (“Ozkan”).
16. With regards to claim 11 (Similarly claim 17), Lew disclosed the limitations of,
generating, by a computer device, an inventory database structured to include a plurality of hierarchically associated physical locations (See [0036] discussing the global inventory warehouse (GIW) 122 includes a GIW database 142 and is serviced by the GIW servers 112(1)-(N). The GIW 122 serves as a repository of data feeds from reconciliation and authoritative sources for the purposes of building a consolidated inventory of the organization's hardware, software, and telecommunications assets and [0113] discussing the implementation of granular location information to generate a registry.);
scanning, by the computer device, a…. associated with an installation location at least a first asset of the plurality of assets is to associated with, wherein a computer network is commonly coupled to the first asset, the installation location and other installation locations and, wherein the scanned … provides metadata (location metadata) indicative of the installation location and at least one other physical location hierarchically associated with the installation location (See [0188] discussing operation 1812 represents examining asset tags reported by agents and that person may use a hand-held scanner or the like to scan this asset tag, which then appears within the TAM asset-tag listing, [0199] discussing the TAM containing a listing of assets, according to asset tags, along with a location of each asset and Fig.18 depicting operation 1812 is part of process 1800).);
scanning, by the computer device, a … associated with the at least first asset to be included in the inventory database (See [0188] discussing operation 1812 represents examining asset tags reported by agents and that person may use a hand-held scanner or the like to scan this asset tag, which then appears within the TAM asset-tag listing, [0199] discussing the TAM containing a listing of assets, according to asset tags, along with a location of each asset and Fig.18 depicting operation 1812 is part of process 1800).);
determining, by the computer device, metadata (asset metadata) associated with the scanned asset … that is indicative of least descriptive information associated with the first asset (See [0199] discussing TAM comprises a managed inventory for the organization's assets and that the TAM may list an IP address, a type of device, a hostname, an asset tag, a location, and/or a serial number for each of these assets.);
storing, by the computer device, the asset metadata and location metadata in the inventory database in association with each other with (See [0195]: discussing process 1800 also includes operation 2012, which represents sending the reconciled data to the GIW 122. "); and
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 (See [0184] discussing if an asset's reported locations match (and, hence, the asset's reported IP addresses, asset tags, hostnames, and secondary interface names match), then the asset is considered fully reconciled, [0185] discussing the scanning is performed as operation 1802, which represents generation of a SONAR IP report, SONAR attempts to connect to the active IP addresses and reach a login prompt for the corresponding asset (e.g., a server), and from the login prompt, SONAR attempts to determine one or more characteristics of the corresponding asset.).
Lew does not teach using a QR code as an identifier.
However, Ozkan teaches that it would have been obvious to one of ordinary skill in the inventory art to include using a QR code as an identifier (See [Col. 7, l. 22-25] discussing using a QR code as visual indicia and [Col. 7, l. 45-54] discussing the use of a QR code as a tag or label.).
Therefore, it would have been obvious for one of ordinary skill in the inventory art before the effective filing date of the claimed invention to have modified the teachings of Lew to include using a QR code as an identifier, as disclosed by Ozkan. One of ordinary skill in the art would have been motivated to make this modification in order to asset recognition (Ozkan [Col. 7, l. 22-25]).
17. With regards to claim 2, Lew is silent on the limitations of,
wherein the unique identifier is a Quick Response (QR) code.
However, Ozkan teaches that it would have been obvious to one of ordinary skill in the inventory art to include using a QR code as an identifier (See [Col. 7, l. 22-25] discussing using a QR code as visual indicia and [Col. 7, l. 45-54] discussing the use of a QR code as a tag or label.).
Therefore, it would have been obvious for one of ordinary skill in the inventory art before the effective filing date of the claimed invention to have modified the teachings of Lew to include using a QR code as an identifier, as disclosed by Ozkan. One of ordinary skill in the art would have been motivated to make this modification in order to asset recognition (Ozkan [Col. 7, l. 22-25]).
18. With regards to claim 3, Lew is silent on the limitations of,
wherein the QR code is caused to be generated by a printing device coupled to the computer device.
However, Ozkan teaches that it would have been obvious to one of ordinary skill in the inventory art to include the QR code is caused to be generated by a printing device coupled to the computer device (See [Col. 2, l. 22-25] discussing using a QR code as visual indicia and [Col. 7, l. 45-54] discussing the user devices ability to print asset tags, labels, or indicia and [Col. 7, l. 22-25] discussing using a QR code as visual indicia.).
Therefore, it would have been obvious for one of ordinary skill in the inventory art before the effective filing date of the claimed invention to have modified the teachings of Lew to include the QR code is caused to be generated by a printing device coupled to the computer device, as disclosed by Ozkan. One of ordinary skill in the art would have been motivated to make this modification in order to asset recognition (Ozkan [Col. 7, l. 22-25]).
19. With regards to claim 4, Lew discloses the limitations of,
wherein the inventory database is generated …by the computer device (See [0184] discussing if an asset's reported locations match (and, hence, the asset's reported IP addresses, asset tags, hostnames, and secondary interface names match), then the asset is considered fully reconciled, [0185] discussing the scanning is performed as operation 1802, which represents generation of a SONAR IP report, SONAR attempts to connect to the active IP addresses and reach a login prompt for the corresponding asset (e.g., a server), and from the login prompt, SONAR attempts to determine one or more characteristics of the corresponding asset.).
Lew is silent on the limitations of,
by scanning one or more QR codes
However, Ozkan teaches that it would have been obvious to one of ordinary skill in the inventory art to include scanning one or more QR codes (See [Col. 2, l. 22-25] discussing scanning the asset tags, [Col. 7, l. 22-25] discussing using a QR code as visual indicia, and [Col. 7, l. 45-54] discussing the use of a QR code as a tag or label.).
Therefore, it would have been obvious for one of ordinary skill in the inventory art before the effective filing date of the claimed invention to have modified the teachings of Lew to include scanning one or more QR codes, as disclosed by Ozkan. One of ordinary skill in the art would have been motivated to make this modification in order to asset recognition (Ozkan [Col. 7, l. 22-25]).
20. With regards to claim 8 (similarly claim 14), Lew discloses the limitations of,
determining, by the computer device, authenticity of a … physically associated with the first asset by comparing metadata associated with the … physically associated with the first asset to the asset metadata stored in the inventory database relating to the first asset (See [0161]-[0162] discussing the system’s ability to compare data between a first data source and a second data source.).
Lew does not teach using a QR code as an identifier.
However, Ozkan teaches that it would have been obvious to one of ordinary skill in the inventory art to include using a QR code as an identifier (See [Col. 7, l. 22-25] discussing using a QR code as visual indicia and [Col. 7, l. 45-54] discussing the use of a QR code as a tag or label.).
Therefore, it would have been obvious for one of ordinary skill in the inventory art before the effective filing date of the claimed invention to have modified the teachings of Lew to include using a QR code as an identifier, as disclosed by Ozkan. One of ordinary skill in the art would have been motivated to make this modification in order to asset recognition (Ozkan [Col. 7, l. 22-25]).
21. With regards to claim 10 (similarly claims 15 and 16), Lew discloses the limitations of,
further including, generating by the computer device, a computer network diagram indicative of all hierarchically associated physical locations and each of the plurality of assets included in the hierarchically associated physical locations, and wherein generating the computer network diagram further includes generating pictorial representations associated with each respective physical location and each of the plurality of assets identified in the computer network diagram (See Figs. 7-11 depicting a small icon that provides a visual cue of the hierarchical logical data model, [0111]-[0119] discussing the web page overview of the hierarchical logical data model, and [0125] discussing visual cues being created for the webpage.) .
22. With regards to claim 12, Lew discloses the limitations of,
wherein the asset metadata includes one or more of: a serial no.; device name; device type; model no; MAC address; and firmware information relating to the first asset (See [0199] discussing TAM comprises a managed inventory for the organization's assets and that the TAM may list an IP address, a type of device, a hostname, an asset tag, a location, and/or a serial number for each of these assets.).
23. With regards to claim 13, Lew discloses the limitations of,
further including determining, by the computer device, software update availability for each of the plurality of assets in the inventory database by detecting availability of a software and/or firmware update, from one or more databases external of the inventory database, relating to each of the plurality of assets stored in the asset database (See [0048] discussing the auto-updating inventory and [0156] discussing IT department to manage multiple inventories.).
24. With regards to claim 18, Lew discloses the limitations of,
wherein the inventory database is structured to include a plurality of physical locations, wherein the installation location the first asset is associated with is hierarchically associated within at least one other physical location (See [0113] discussing the implementation of granular location information to generate a registry.).
25. With regards to claim 19, Lew discloses the limitations of,
wherein the processor is further configured to determine each hierarchically associated physical location the first asset is associated with (See [0113] discussing the implementation of granular location information to generate a registry.).
26. With regards to claim 20, Lew discloses the limitations of,
determine software update availability for each of the plurality of assets included in the inventory database by detecting availability of a software and/or firmware update, from one or more databases external of the inventory database, relating to one or more of the plurality of assets stored in the inventory database (See [0048] discussing the auto-updating inventory and [0156] discussing IT department to manage multiple inventories.); and
determine authenticity of a … physically associated with at least one of the plurality of assets stored in the database by comparing the metadata associated with the … physically associated with at least one of the plurality of assets to the asset metadata stored in the inventory database relating to that at least one of the plurality of assets (See [0161]-[0162] discussing the system’s ability to compare data between a first data source and a second data source.).
Lew does not teach using a QR code as an identifier.
However, Ozkan teaches that it would have been obvious to one of ordinary skill in the inventory art to include using a QR code as an identifier (See [Col. 7, l. 22-25] discussing using a QR code as visual indicia and [Col. 7, l. 45-54] discussing the use of a QR code as a tag or label.).
Therefore, it would have been obvious for one of ordinary skill in the inventory art before the effective filing date of the claimed invention to have modified the teachings of Lew to include using a QR code as an identifier, as disclosed by Ozkan. One of ordinary skill in the art would have been motivated to make this modification in order to asset recognition (Ozkan [Col. 7, l. 22-25]).
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fahd Obeid can be reached at (571)270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL JARED WALKER/Primary Examiner, Art Unit 3627 Michael.walker@uspto.gov
1 Examiner notes that the use of (QR) to provide a acronym is a correct use.
Prosecution Insights