DETAILED ACTION
Notice of 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 .
Response to Amendment
The amendment filed 2026-01-27 has been entered and fully considered.
Election/Restrictions
Applicant’s election without traverse of Invention XII (claims 24-26) in the reply filed on 2026-01-27 is acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2024-03-21 and 2024-03-27 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 24-26 and 31-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite scheduling unspecified computing tasks to computing systems that satisfy constraints of the task data object, which is both: i) mathematical relationships and thus grouped as mathematical concepts; and also ii) observation, evaluation, judgment, opinion, which is a concept performed in the human mind and thus grouped as mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of scheduling unspecified computing tasks to computing systems that satisfy constraints of the task data object, which is both: i) mathematical relationships and thus grouped as mathematical concepts; and also ii) observation, evaluation, judgment, opinion, which is a concept performed in the human mind and thus grouped as mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) 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
The Examiner notes that claim features of: scheduling unspecified computing tasks to computing systems that satisfy constraints of the task data object do not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use 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.
Instead of a practical application, the claim features of scheduling unspecified computing tasks to computing systems that satisfy constraints of the task data object merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g. computer readable medium and processor) that serves to perform generic computer functions (e.g. receiving data, creating data, task scheduling, creating metadata, deleting metadata, ...) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed workflow metadata, task data objects, constraints, unspecified computing task, data links, specified input-output relationships, parameters, and scheduled jobs metadata file are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Rather, the claims are merely directed towards scheduling unspecified computing tasks to computing systems that satisfy constraints of the task data object, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality. For example, receiving workflow metadata and transmitting a scheduled jobs metadata file is merely receiving or transmitting data over a network, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Further, creating a plurality of job data objects and deleting workflow data and the scheduled jobs metadata file is merely a form of storing and retrieving information in memory, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. Further, assigning computer systems to tasks is merely a form of performing repetitive calculations, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Further note that the abstract idea of scheduling unspecified computing tasks to computing systems that satisfy constraints of the task data object to which the claimed invention is directed has a prior art basis outside of a computing environment, e.g. a secretary that routes work based on the capabilities and workload of users.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it affect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
The dependent claims likewise incorporate the deficiencies of a claim upon which they ultimately depend and are also directed to non-patent-eligible subject matter.
Claim Rejections - 35 USC § 102
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.
Claims 24 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Popovic et al. (US Pre-Grant Publication No. 20180349183-A1, hereinafter “Popovic”).
With respect to independent claim 24, Popovic discloses a computing system for scheduling computing resources, comprising:
a non-transitory computer readable medium storing thereon at least executable instructions of a scheduler application {para. 0029: “computing device 100 may include a storage device 128” and “storage device 128 may include, without limitation, an operating system and software”}.
a processor system configured to execute the executable instructions to cause the computing system to perform operations {para. 0029: “computing device 100 includes a central processing unit 121”} including:
receiving workflow metadata {para. 0057: “workflow execution engine 220 … receives a workflow description 202 that is submitted for execution”}, the workflow metadata comprising:
a plurality of task data objects, each one of the plurality of task data objects comprising one or more constraints specifying at least a type of computing hardware resource to execute an unspecified computing task {paras. 0057-0060 and 0070-0083: “individual units of execution within the workflow … may be referred to as jobs” and there are “computational resource requirements associated with each job”}.
one or more data links between the plurality of task data objects specifying one or more input-output relationships between the plurality of task data objects {paras. 0054-0060: “a workflow description 310 represented as a job graph 320” where “nodes 322 have input ports 324 and output ports 326, which define discrete data elements, such as an input file 330, that are passed downstream along a set of edges 328 to generate a processed output 332.”}.
creating a plurality of job data objects corresponding to the plurality of task data objects {para. 0060: “job graph service 208 can transform the submitted task (e.g., the workflow description 202) into a job graph 204, such as a DAG in which nodes represent jobs and edges represent the flow of data elements”}.
assigning at least one computing system to the each one of the plurality of job data objects to execute, respectively, the unspecified computing task corresponding to the each one of the plurality of task data objects, and the at least one computing system satisfying, respectively, the one or more constraints corresponding to the each one of the plurality of task data objects {para. 0078: “selecting the highest priority (e.g., highest resource requirement) job and attempting to match, or fit, that job to an instance that can accommodate the job. Attempting to match the selected job to an instance can include determining whether the selected job will successfully execute on that instance, e.g. by comparing the computational resource requirements of the job with the amount of available or un-used computational resources on that instance”}.
assigning one or more parameters associated with the each of the at least one computing system assigned to the each one of the plurality of job data objects {paras. 0062-0067 and 0085: “the job may be assigned to the least expensive instance that can accommodate the resource requirements of the job”; parameter includes identifier for the “corresponding instances” of the “’pool’, of computational instances”}.
creating and transmitting a scheduled jobs metadata file comprising the plurality of job data objects, which comprises the at least one computing system assigned to the each one of the plurality of job data objects and the one or more parameters that are respectively associated therewith {para. 0071: “submitting the prioritized jobs for execution to the one or more provisioned computational instances”}.
deleting from the non-transitory computer readable medium workflow data and the scheduled jobs metadata file {para. 0084: “Finished jobs are removed from the list of pending jobs”}.
a communication system configured to at least receive the workflow metadata and transmit the scheduled jobs metadata file {para. 0035: “computing device 100 may include a network interface 118 to interface to the network 104”}.
With respect to claim 31, a corresponding reasoning as given earlier in this section with respect to claim 24 applies, mutatis mutandis, to the subject matter of claim 31; therefore, claim 31 is rejected, for similar reasons, under the grounds as set forth for claim 24.
Claim Rejections - 35 USC § 103
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 of this title, 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 25-26 and 32-38 are rejected under 35 U.S.C. 103 as being unpatentable over Popovic et al. (US Pre-Grant Publication No. 20180349183-A1, hereinafter “Popovic”) in view of Li et al. (US Pre-Grant Publication No. 20230297401-A1, hereinafter “Li”).
With respect to dependent claim 25, although Popovic teaches task objects and computing resources to execute those task objects, Popovic does not explicitly disclose that the task objects and computing resources may comprise both classical and quantum components; however, Li discloses wherein:
the plurality of task data objects in the workflow metadata comprises a quantum task data object {paras. 0037-0038: a “to-be-executed task” includes a “quantum computing task”}.
the executable instructions further comprise generating a quantum job data object that is part of the plurality of job data objects {paras. 0040-0043: “task division and resource scheduling platform” creates a schedule}.
the quantum job data object comprises a classical component and a quantum component {para. 0038: “obtain the quantum computing task and the classical computing task corresponding to the to-be-executed task”}.
the classical component comprises one or more parameters of a classical computing system {para. 0042: “the resource management and scheduling module will also determine how many classical servers are required for performing classical computing according to the classical computing task”}.
the quantum component comprises one or more parameters of a quantum computing device {para. 0042: “the resource management and scheduling module will determine how many classical servers are required for deploying the quantum virtual machines according to the quantum computing task”}.
the classical computing system is used to initiate the quantum computing device to execute an unspecified quantum task associated with the quantum task data object {para. 0072: “the quantum computing task is executed through the quantum virtual machine deployed on the first target classical server”}.
Popovic and Li are analogous art because they are from the same field of endeavor or problem-solving area of task scheduling and execution. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Popovic and Li before him or her, to modify/develop the tasks and resources of Popovic’s system to utilize classical and quantum properties. The suggestion and/or motivation for doing so would have been because it is merely combining prior art elements according to known methods to yield predictable results, e.g., enables a hybrid platform that can execute mixed requirements. Therefore, it would have been obvious to combine the tasks and resources in Popovic’s system with classical and quantum properties to obtain the invention as specified in the instant claim(s). The Examiner notes that this motivation applies to all dependent and/or otherwise subsequently addressed claims.
With respect to dependent claim 26, Popovic discloses wherein the classical component further comprises one or more metrics associated with the classical computing system {para. 0055: the “workflow is… with Metrics”}.
With respect to claims 32-38, a corresponding reasoning as given earlier in this section with respect to claims 25-26 applies, mutatis mutandis, to the subject matter of claims 32-38; therefore, claims 32-38 are rejected, for similar reasons, under the grounds as set forth for claims 25-26.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491