DETAILED ACTION
Status of Claims
This action is in reply to the application filed on 07/11/2024.
Claims 1-10 are currently pending and have been examined.
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 .
Claim Objections
Claim 10, which recites: “The method of claim 9, wherein the color coded cell is based on the logic described in claim 7”, is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim can only refer to other claims in the alternative. See MPEP § 608.01(n). Accordingly, claim 10 has not been further treated on the merits.
Claims 2, 7 and 8 are objected to because of the following informalities: Claim 2: (Typo) “where the acceptable range for the cost of an instance is calculate relative to the…”; Claim 7: (Typo): “incompatible with the workload based on it's technical and configuration requirements”; Claim 8: (Typo) “where the spend tolerance policy us evaluated based”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-6 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites “the instance types and sizes”, “the acceptable range for that workload”, and “these assessments” which lack antecedent basis. In order to advance prosecution limitations have interpreted as being written: …identifying, instance types and sizes included in the catalog, at least one of…outsidea predetermined acceptable range for that workload…the instance types that are not ruled out by any of a), b), or c)
Claim 5 recites “A system visualizing the assessment of the method performed in claim 1.” It is unclear if the limitation is intended to continue the method of claim 1 or establish a new apparatus claim, it is further unclear what from claim 1 is intended to be incorporated as “the assessment” lacks antecedent basis (“where the format of making reference to limitations recited in another claim results in confusion, then a rejection would be proper under 35 U.S.C. 112(b)” 2173.05(f)).
Furthermore, as an apparatus, since the “system” recites no structure or components, it is unclear whether the limitation is intended use/preamble (“When applicant merely states an intended use of the claimed invention in the preamble (e.g., "A device for printing, comprising..."), the examiner should not construe such language as reciting a means-plus-function limitation”)” (MPEP 2181), or invokes 112(f), constituting “a single means” claim to be rejected under 112(a); “A rejection under 35 U.S.C. 112(b) may be appropriate…when it is unclear whether a claim limitation invokes 35 U.S.C. 112(f)…A claim may be indefinite when the 3-prong analysis for determining whether the claim limitation should be interpreted under 35 U.S.C. 112(f) is inconclusive because of ambiguous words in the claim.” (MPEP 2181).
Claim 6 recites “An API to respond to queries as to whether a specific instance type is suitable for hosting a specific workload used with the method of claim 1.” And is unclear for reasons substantially the same as those described for alim 5 above.
In order to advance prosecution, claims 5 and 6 are interpreted as reciting additional steps to the method of claim 1 and as essentially being written:
Claim 5: The method of claim 1, further comprising: visualizing, by a system, the identifying
Claim 6: The method of claim 1, further comprising: responding, using an API, to queries as to whether a specific instance type is suitable for hosting a specific workload
Any claim listed in the rejection heading not explicitly listed in the body is rejected for being dependent upon a rejected claim.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without integration into a practical application and without significantly more because the recited steps/operations fall within the “Mental Processes” grouping of abstract ideas.
Independent claims:
Step 1:
Regarding the independent claims, claims 1, 7 and 9 each fall under the “process” statutory categories of patentable subject matter. Claims 5 and 6 are interpreted here in the manner described in the 112 rejections above; see below for alternative interpretation(s).
Step 2A, Prong One:
Claims 1 and 7 each recite limitations directed to analyzing cloud VM instance type characteristics against characteristics of a workload, and claim 9 is directed to visual information, all of which encompass processes practically performed mentally or with pen and paper. The USPTO 2019 Revised Patent Subject Matter Eligibility Guidance, (Jan. 7, 2019) ("Guidance") explains that "mental processes" include acts that people can perform in their minds or using pen and paper, even if the claim recites that a generic computer component performs the acts. ("If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.").
Here, claims 1 and 7 recite analysing an existing cloud workload's configuration and utilization data against a cloud provider's catalog of available instance types which can be performed in the mind by reading the information, followed by a series of “identifying” limitations that can each be practically performed mentally, e.g. identifying the instance types in the catalog that have insufficient resources to host the workload based on the utilization characteristics of the workload and the resource capacity of the instance types. Each of the acts of identifying constitutes a mental process, involving observation and evaluation that can be practically performed in the human mind (solely from memory or by reading information and mentally comparing portions of the information e.g. instance memory size to workload memory requirement). Lastly, claim 7 recites either allowing a deployment to proceed, issuing a warning, or blocking the deployment of a cloud instance based on whether the instance type being deployed is suitable for that cloud workload based on this analysis which essentially describes outputting and/or displaying the analysis result (“selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes”) (Electric Power Group, LLC v. Alstom S.A., (Fed. Cir. 2016).
Thus, consistent with the Guidance and case law, Examiner concludes claims 1 and 7 are each directed to a mental process (i.e., concepts performed in the human mind, such as, an observation, evaluation, judgment, and opinion), which is an abstract idea. See e.g. Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (2014) (concluding claims reciting receiving two data sets, and combining those data sets into a single data set is "an ineligible abstract process of gathering and combining data"); Electric Power Group, LLC v. Alstom S.A., (Fed. Cir. 2016) (concluding claims directed to "collecting information, analyzing it, and displaying certain results of the collection and analysis" were abstract); SAP Am., Inc. v. InvestPic, LLC, (Fed. Cir. 2018) (concluding claims were directed to the abstract idea of "selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis").
Claim 9 recites A method of visualizing a 2-dimensional catalog map for a specific cloud instance, where said map has one dimension representing the instance families present in the cloud provider and another dimension representing the instance sizes, and for each family and size combination that exists in the catalog, a colour coded cell is depicted; the method includes a single step, “visualizing”, which by definition refers to a human mental process.
Additional Elements Analysis (Step 2A, Prong Two and 2B):
Claims 1, 7, and 9 do not recite any additional elements to integrate the judicial exception into a practical application; or amount to significantly more than the judicial exception.
“a claim whose entire scope can be performed mentally, cannot be said to improve computer technology.” (MPEP 2106.05(a)) “‘Methods which can be performed entirely in the human mind are unpatentable…because computational methods which can be performed entirely in the human mind are the types of methods that embody the “basic tools of scientific and technological work” that are free to all men and reserved exclusively to none.” Synopsys, Inc. v. Mentor Graphics Corp., (Fed. Cir. 2016).
Dependent Claims:
None of the dependent claims resolve the eligibility issues described above.
Claims 2-4 and 8 recite limitations which characterize information (“acceptable range for the cost”, “spend tolerance policy”, “technical criteria”) used in the abstract analyzing/identifying which does not preclude the analysis from being performed in the human mind.
Regarding claims 5 and 6, see rejections under 112 above. Claims 5 and 6 essentially recite steps to display/output the result of the analyzing/identifying recited in claim 1 which is an abstract mental process (“Examples of claims that recite mental processes include…a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” (MPEP 2106.04(a)(2)(III)). The additional elements of a “system” and “an API” are at most generic computer components recited at a high level of generality and their inclusion amounts to no more than mere instructions to apply the exception using a generic computer which does not integrate the judicial exception into a practical application nor amount to significantly more; “claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp” (MPEP § 2106.05(f); “The courts have also identified limitations that did not integrate a judicial exception into a practical application…Merely reciting the words "apply it" 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” (MPEP § 2106.04(d).
Regarding claim 10, as described in the claim objections above claim 10 is in improper form, but Examiner briefly notes generically combining two abstract ideas is still abstract idea.
Claims 5 and 6 are rejected under 35 U.S.C. 101 because the claimed invention(s) is directed to non-statutory subject matter that does not fall into any of the statutory categories of patentable subject matter.
Claim 5, if construed as establishing an independent claim (see rejections under § 112 above), recites a system, but the recited system does not include any physical components (hardware) to constitute a machine or manufacture. As such, the claim is directed to software per se which is not patent eligible under 35 USC § 101 (MPEP 2106.03).
Claim 6, if construed as establishing an independent claim (see rejections under § 112 above), is explicitly directed to software per se (“An API”). As such, the claim is directed to software per se which is not patent eligible under 35 USC § 101 (MPEP 2106.03).
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 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pai et al. (US 2016/0381128 A1).
Claim 1:
Pai discloses the limitations as shown in the following rejections:
A method for analyzing an application workload running in a cloud instance against a cloud provider's catalog (set of available instance types of computing resource service provider) (¶0014-0017, 0020).
identifying, instance types and sizes included in the catalog, at least one of: a) the instance types and sizes that are unable to host the workload because they have insufficient CPU, memory or other resources to properly service the workload; b) the instance types and sizes that are unable to host the workload because their technical characteristics and configurations are not suitable for the workload (see at least ¶0021-0024, 0027-0029, 0043-0044, 0054). Exemplary quotation:
“determine or suggest an alternative instance type or set of alternative instance types suitable for executing the customer workload or application (¶0021)…the alternative instance type or set of alternative instance types determined to be efficient, may not be allowed because it violates one or more weights and/or constraints provided by the customer or required to execute the customer workload or application. As mentioned herein, a number of factors may be used to determine the suitability…Such factors include, but may not be limited to, satisfying instance type weights (e.g., the customer may weight or prefer certain instance types over other instance types) and/or constraints, balancing of resources, bandwidth of connections, latency of connections, instance group complexity, business value of the alternative instance types, economic value of the alternative instance types and/or other such factors” (¶0022).
c) the instance types and sizes that are not suitable to host the workload because their cost is outsidea predetermined acceptable range for that workload
the instance types that are not ruled out by any of a), b), or c) (see at least ¶0022, 0049, 0075)
Claim 2:
Pai discloses the limitations as shown in the rejections above. Pai further discloses (¶0015, 0026-0029) where the acceptable range for the cost of an instance is calculate relative to the optimal (highest scoring) instance type for that workload, where the optimal instance type is determined using an optimization function (scoring) that factors in utilization, technical compatibility and cost where Pai discloses a scoring function to identify the optimal deployment configuration to host a workload with budget constraints and meeting technical requirements.
“the customer may have a maximum budget for the computing resources provided by the computing resource service provider or may have a particular interval of time in which the customer workload must be completed” (¶0015)
“select optimal configurations across one or more dimensions, for example, optimizing the configuration of instance types based on memory, benchmarks, and cost. The cost of a particular instance type may be fixed or may fluctuate according to a market for instance. For example, during periods of peak customer usage the price of various instance types may increase with demand for the various instance types. Alternatively, during periods of underutilization of computing resources of the computing resource service provided, the cost for a particular instance type may decrease according to demand. In various embodiments, a scoring algorithm is used to consolidate the various dimensions included in the table 200 to a single value. In addition, other values, such as the cost of a particular instance according to the mark as described above, may be included in the algorithm used to consolidate the various dimensions included in the table” (¶0026)
Claim 3:
Pai discloses the limitations as shown in the rejections above. Pai further discloses where the acceptable range for the cost relative to the optimal instance is defined by a spend tolerance policy (budget, cost constraint), which expresses the maximum acceptable cost in at least ¶0015, 0026-0029, 0032, 0033. Examiner notes that in Pai’s examples the cost constraint is expressed as an absolute value rather than as a multiple of the cost of the optimal/cheapest instance, but the manner the maximum cost is expressed does not functionally affect any steps or alter any structural limitations recited in the method of claim 3. Therefore, the recitation that it is expressed “as a multiple of the cost of the optimal instance" is non-functional descriptive material (NFDM) that does not distinguish the claim from the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) where the Board held that the nature of the information being manipulated by the computer does not lend patentability to an otherwise unpatentable computer-implemented product or process absent evidence that the information is functionally related to the process. ("[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.").
Claim 4:
Pai discloses the limitations as shown in the rejections above. Pai further discloses (¶0016, 0022, 0040-0042, 0074) the criteria include whether a given catalog instance has hardware accelerators or other features that will cause it to have a performance, security or cost advantage over other instance types for the specific software that is running in the workload being assessed disclosing at least that suitable instance types can by identified “based at least in part on user preference, popularity among users, features of the computing system instances, features of the computing system instances selected by the user, capacity requirements selected by the user, capacity of the instance types, benchmarks or other scores associated with the instance types, an administrator associated with the customer workload or application, or other information suitable for a set of equivalent instance types associated with a customer workload or application” (¶0042).
Claim 5:
Pai discloses the limitations as shown in the rejections above; Examiner refers to the rejections under 112 regarding the interpretation of claim 5. Pai further discloses visualizing, by a system, the identifying (FIG. 3-6; ¶0030, 0038-0041).
Claim 6:
Pai discloses the limitations as shown in the rejections above; Examiner refers to the rejections under 112 regarding the interpretation of claim 6. Pai further discloses responding, using an API, to queries as to whether a specific instance type is suitable for hosting a specific workload(¶0019-0020, 0043, 0062, 0072).
Claim 7:
Pai discloses the limitations as shown in the following rejections:
A method for controlling the deployment of cloud instances in a cloud computing environment, the method comprising: a) analysing an existing cloud workload's configuration and utilization data against a cloud provider's catalog of available instance types; b) identifying the instance types in the catalog that have insufficient resources to host the workload based on the utilization characteristics of the workload and the resource capacity of the instance types; workload (see at least ¶0021-0024, 0026, 0028, 0042)
c) identifying the instance types in the catalog that are technically incompatible (violate constraints) with the workload based on its technical and configuration requirements; (¶0022-0023, 0028).
identifying the instance types in the catalog that are too expensive based on a spend tolerance policy (budget, cost constraint); (¶0015, 0026-0029, 0032, 0033)
identifying the instance types in the catalog that are deemed suitable to host the workload, by virtue of them not having failed the resource, compatibility and cost checks; and either allowing a deployment to proceed, issuing a warning, or blocking the deployment of a cloud instance based on whether the instance type being deployed is suitable for that cloud workload based on this analysis (¶0021, 0024, 0037, 0047-0049).
Claim 8:
Pai discloses the limitations as shown in the rejections above. Pai further discloses the spend tolerance policy (cost constraint) [is] evaluated based on the…cost of the instance type being deployed in at least Pai ¶0015, 0025, 0028-0029. As described above in the rejection to claim 3, in Pai’s examples the cost constraint is expressed as an absolute value rather than as a multiple of the cost of the cheapest instance, and is accordingly compared to the flat cost of the instance type being deployed, but the manner the cost is expressed does not functionally affect any steps or alter any structural limitations recited in the method of claim 8. Therefore, the recitation that it is expressed “ratio of the cost" is non-functional descriptive material that does not distinguish the claim from the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) where the Board held that the nature of the information being manipulated by the computer does not lend patentability to an otherwise unpatentable computer-implemented product or process absent evidence that the information is functionally related to the process. ("[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.").
Claims 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bilal et al. (”Do the Best Cloud Configurations Grow on Trees? An Experimental Evaluation of Black Box Algorithms for Optimizing Cloud Workloads”, 2020)
Claim 9:
Bilal is directed to “Cloud configuration optimization is the procedure to determine the number and the type of instances to use when deploying an application in cloud environments, given a cost or performance objective” (Abstract). provides a number of visualizations showing instance comparisons amongst cloud instance configurations, and teaches (at least pg. 2564, Fig. 1 and pg. 2568, Table I; pg. 2571, Fig. 6-8) methods of visualizing a 2-dimensional catalog map for a specific cloud instance, where said map has one dimension representing the instance families present in the cloud provider (AWS) and another dimension representing the instance sizes, and for each family and size combination that exists in the catalog, a colour coded cell (heatmap) is depicted. Fig. 1:
PNG
media_image1.png
304
936
media_image1.png
Greyscale
Fig. 6(d) (zoomed in):
PNG
media_image2.png
220
248
media_image2.png
Greyscale
Examiner notes Bilal recognizes instance family and instance size as separate dimensions of the search space: “Formally, a cloud configuration can be denoted as a tuple x = (N, IF, IS) where N is the number of instances, IF is the instance family and IS is the instance size” (sect. 2.1), but combines them into one dimension in the visual representation of the search space. However, the only difference between the prior art and the claim is the manner in which the information is represented on a computer display (unclaimed); a limitation is directed to printed matter if it is “claimed for what it communicates.” .” In re Distefano, (Fed. Cir. 2015). Because the limitation of claim 9 is directed to a specific representation of data, the limitation is directed to printed material. If a claim in a patent application claims printed material, “one must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight.” Distefano. In this case, the disputed limitation is directed to how data is represented on a user interface (implicit). However, the claims do not require that anything is ever done with the data. That is, the claims do not require the data to be used in any way to produce a functional result, much less a functional result that is dependent on the manner of representation; and NFDM/printed material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any new and unobvious functional relationship between the printed matter and the substrate.’”) (citations omitted); see also Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process.”); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), affd, 191 Fed. App’x 959 (Fed. Cir. 2006) (“[Nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art.”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
The following are directed to methods of comparing cloud instance configurations: US 20180159727 A1, US 20210216351 A1, US 11245592 B1, US 11886932 B1, “Selecting the Best VM across Multiple Public Clouds: A Data-Driven Performance Modeling Approach”, “CloudMeter: A Tool to Evaluate and Select the Desired VMs”, “CherryPick: Adaptively Unearthing the Best Cloud
Configurations for Big Data Analytics”.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Paul Mills whose telephone number is 571-270-5482. The Examiner can normally be reached on Monday-Friday 11:00am-8:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, April Blair can be reached at 571-270-1014.
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) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/P. M./
Paul Mills
08/01/2026
/APRIL Y BLAIR/Supervisory Patent Examiner, Art Unit 2196
Prosecution Insights