DETAILED ACTION
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-20 have been subject to restriction.
Claims 11-15 have been elected without traverse, remain pending, and are rejected.
Claims 1-10 and 16-20 are non-elected, and are withdrawn.
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 11-15 are rejected under 35 U.S.C. 101 because the claims are directed to a judicial exception without significantly more.
Step 1:
Claims 11-15 are directed to a method, which is a process. Therefore, claims 11-15 are directed to one of the four statutory categories of invention.
Step 2A (Prong 1):
Claim 11 recites the following limitations reciting the abstract idea of identifying hardware configurations based on an application set:
identifying a plurality of first configurations that are associated with an institution;
identifying a plurality of application sets;
clustering the plurality of application sets to produce a plurality of clusters;
combining the application sets in any of the clusters to produce a composite application set;
identifying a second configuration based on the composite application set;
completing an action based on the second hardware configuration.
The recited limitations above set forth the process for identifying hardware configurations based on an application set. These limitations amount to certain methods of organizing human activity, including commercial or legal transactions (e.g. agreements in the form of contracts, advertising, marketing or sales activities or behaviors, etc.). The claims are directed to identifying configurations associated with an institution, identifying, clustering, and combining application sets, and determining a second hardware configuration based on the composite application set to complete an action (see specification [0001] disclosing the identifying of computer systems that satisfy customer requirements), which is a sales and marketing activity.
Such concepts have been identified by the courts as abstract ideas (see: 2106.04(a)(2)).
Step 2A (Prong 2):
Returning to representative claim 11, Examiner acknowledges that claim 1 recites additional elements, such as:
hardware configuration;
each of the application sets being executed on a different one of the plurality of first hardware configurations;
Taken individually and as a whole, claim 11 does not integrate the recited judicial exception into a practical application of the exception. The additional elements do no more than apply the judicial exception on a general purpose computer.
Furthermore, this is also because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
While the claims recite hardware configurations, the hardware configurations are recited with a very high level of generality. There is no functional language associated with the hardware configurations, and they are merely a configuration of existing products. As disclosed in specification paragraph [0030], the hardware refers to a model number of a product composed of existing products, such as processors and memory. Any technical functionality is not recited in the claims, and the hardware configuration is merely a technical product that is in the commercial activity.
In view of the above, under Step 2A (prong 2), claim 11 does not integrate the recited exception into a practical application (see: MPEP 2106.04(d)).
Step 2B:
Returning to claim 11, taken individually or as a whole, the additional elements of claim 11 do not provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). As noted above, the additional elements recited in claim 11 are recited in a generic manner with a high level of generality and only serve to implement the abstract idea on a generic computing device. The claims result only in an improved abstract idea itself and do not reflect improvements to the functioning of a computer or another technology or technical field. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process ultimately amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Even when considered as an ordered combination, the additional elements of claim 11 do not add anything further than when they are considered individually.
In view of the above, claim 11 does not provide an inventive concept under step 2B, and is ineligible for patenting.
Dependent claims 12-15 recite further complexity to the judicial exception (abstract idea) of claim 11, such as by further defining the algorithm of identifying hardware configurations based on an application set. Thus, each of claims 12-15 are held to recite a judicial exception under Step 2A (Prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 12-15 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, dependent claims 12-15 rely on at least similar elements as recited in claim 1. Further additional elements (e.g., a type of processor and a random-access memory size (claim 12); a data structure (claim 13)) are also acknowledged; however, the additional elements of claims 12-15 are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, this is also because the claims fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Taken individually and as a whole, dependent claims 12-15 do not integrate the recited judicial exception into a practical application of the exception under step 2A (prong 2).
Lastly, under step 2B, claims 12-15 also fail to result in “significantly more” than the abstract idea under step 2B. The dependent claims recite additional functions that describe the abstract idea and use the computing device to implement the abstract idea, while failing to provide an improvement to the functioning of a computer, another technology, or technical field. The dependent claims fail to confer eligibility under step 2B because the claims merely apply the exception on generic computing hardware and generally link the exception to a technological environment.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
Taken individually or as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2B for at least similar rationale as discussed above regarding claim 11. Thus, dependent claims 12-15 do not add “significantly more” to the abstract idea.
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, 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.
Claims 11-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable by Bhandari (US 20180336619 A1) in view of Keller (US 20070038737 A1).
Regarding Claim 11: Bhandari discloses a method comprising:
identifying a plurality of first hardware configurations; (Bhandari: [0119] – “a product or service category table associated with the first and second user-defined functional requirements may be identified. As described above, associating a product or service category table with a plurality of preset functional requirement definitions may allow the customer need-based recommendation management system to only prompt the user to purchase sale items falling into product or service categories the user will likely need”).
identifying a plurality of application sets, each of the application sets being executed on a different one of the plurality of first hardware configurations; (Bhandari: [0060] – “Each product or service category table may also be associated with one or more preset functional requirement definitions in an embodiment. For example, as shown in the top row of the memory devices product or service category table 200 in FIG. 2, the memory devices product or service category table 200 may be associated with a plurality of preset functional requirement definitions describing the user's industry, including education, healthcare, finance, and engineering. As another example, and as also shown in the top row of the memory devices product or service category table 200 in FIG. 2, the memory devices product or service category table 200 may also be associated with a plurality of preset function requirement definitions”; Bhandari: [0120] – “each sale item listed within a product or service category table may be associated with one or more preset functional requirement definitions in order to identify the optimal sale item for a given customer. An optimal sale item may be determined by identifying one or more sale items within a product or services category table associated with both the first and second user-defined functional requirements”). In summary, various types of applications and the devices tied to their category are identified.
clustering the plurality of application sets to produce a plurality of clusters; (Bhandari: [0048] – “The customer-need based recommendation management system in an embodiment may associate each industry with only the memory devices that would likely be needed by a user in that industry. For example, as shown in the second row from the bottom of the memory devices product or services category table 200, the customer-need based recommendation management system in an embodiment may associate the engineering industry with a large memory device including 16 GB of memory, costing $260. This association may be based on a determination that users in the engineering industry are likely to require high-powered information handling systems with quick processing speeds and large storage capabilities. For example, operation of CAD systems or engineering simulations and design programs may require substantial computing power. In contrast, as another example, and as shown in the eighth row from the bottom of the memory devices product or service category table 200, the customer-need based recommendation management system in an embodiment may associate the education industry with a smaller memory device including 4 GB of memory, costing only $40. This association may be based on a determination that users in the education industry are not as likely to require high-powered information handling systems with large storage capabilities, and that a less expensive memory device will likely meet such a user's needs. For example, education needs may be more heavily used for web-based teaching programs or online course or tutorial streaming and the like”). In summary, the types of applications are categorized with a pre-defined functional requirement.
combining the application sets in any of the clusters to produce a composite application set; (Bhandari: [0120] – “identifying one or more sale items within a product or services category table associated with both the first and second user-defined functional requirements. By identifying one or more sale items associated with both of these first and second user-defined functional requirements”). In summary, the requirements and set of uses for the first and second user-defined functional requirement are combined.
identifying a second hardware configuration based on the composite application set; (Bhandari: [0120] – “An optimal sale item may be determined by identifying one or more sale items within a product or services category table associated with both the first and second user-defined functional requirements. By identifying one or more sale items associated with both of these first and second user-defined functional requirements, the customer need-based recommendation management system in an embodiment may identify the optimal sale item within that product or service category for that specific user”).
completing an action based on the second hardware configuration. (Bhandari: [0122] – “the user may be prompted to select for purchase the identified sale item via the GUI. For example, as described in greater detail above, the customer need-based recommendation management system in an embodiment may receive user input indicating the user has chosen to purchase a new OptiPlex 3040 Small Form Factor information handling system”).
Bhandari does not explicitly teach that are associated with an institution. Notably, however, Bhandari does disclose identifying items that understand the needs of the user (Bhandari: [0021]).
To that accord, Keller does teach that are associated with an institution. (Keller: [0050] – “the system enables a sponsor such as a university to engage a service provider on behalf of a group of students, or a corporation to engage a service provider on behalf of their employees, based on criteria included in a service level agreement”).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the invention of Bhandari disclosing the system for identifying computer configurations meeting user-defined functional requirements with the devices being associated with an institution as taught by Keller. One of ordinary skill in the art would have been motivated to do so in order to engage a service provider on behalf of a group of people (Keller: [0013]).
Regarding Claim 12: Bhandari in view of Keller discloses the limitations of claim 11 above.
Bhandari further discloses wherein the second hardware configuration identifies at least one of a type of processor and a random-access memory size. (Bhandari: [0048] – “the customer-need based recommendation management system in an embodiment may associate the engineering industry with a large memory device including 16 GB of memory, costing $260. This association may be based on a determination that users in the engineering industry are likely to require high-powered information handling systems with quick processing speeds and large storage capabilities. For example, operation of CAD systems or engineering simulations and design programs may require substantial computing power. In contrast, as another example, and as shown in the eighth row from the bottom of the memory devices product or service category table 200, the customer-need based recommendation management system in an embodiment may associate the education industry with a smaller memory device including 4 GB of memory”).
Regarding Claim 13: Bhandari in view of Keller discloses the limitations of claim 11 above.
Bhandari further discloses wherein completing the action based on the second hardware configuration includes updating a data structure to include an indication of the second hardware configuration, the data structure being used by a sales system to complete a purchase of the second hardware configuration. (Bhandari: [0027] – “if the user purchases the recommended sale item, customer need-based recommendation management system may increase by an increment of one the accuracy counter variable assigned to the association between the recommended sale item and the preset functional requirement description associated with the need-based category selected by the user”; Bhandari: [0080] – “Each of the products or services to be combined in an embodiment to create a single product or service configured especially for customers falling within a selected preset functional description may be presented within a configuration list. For example, as shown in FIG. 6, the Intel® Core™ i5-6500 Processor component and 16 GB 1600 MHz DDR3L Memory component, as well as other components or services (not shown) may be combined within a configuration list that includes all components or services that combine to create an OptiPlex 3040 desktop customized for use in the engineering industry. The full configuration list for a product configured especially for customers falling within a selected preset functional description may include a plurality of sale items, each from a different product or services category table, and each associated with the selected preset functional description. For example, as shown in FIG. 6, the full configuration list for an OptiPlex 3040 desktop especially configured for use in the engineering industry may include the Intel® Core™ i5-6500 Processor sale item found in a processor product and services category table, the 16 GB 1600 MHz DDR3L optimal sale item 608 found in the memory device product and services category table, and several other sale items, each of which are found in separate product and services category tables and are associated with the preset functional description requirement identifying the user's industry as engineering”).
Regarding Claim 15: Bhandari in view of Keller discloses the limitations of claim 11 above.
Bhandari further discloses wherein the institution includes one of a university or a corporation. Notably, however, Bhandari does disclose identifying items that understand the needs of the user (Bhandari: [0021]).
To that accord, Keller does teach wherein the institution includes one of a university or a corporation. (Keller: [0050] – “the system enables a sponsor such as a university to engage a service provider on behalf of a group of students, or a corporation to engage a service provider on behalf of their employees, based on criteria included in a service level agreement”).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the invention of Bhandari disclosing the system for identifying computer configurations meeting user-defined functional requirements with the institution being a university or a corporation as taught by Keller. One of ordinary skill in the art would have been motivated to do so in order to engage a service provider on behalf of a group of people (Keller: [0013]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable by the combination of Bhandari (US 20180336619 A1) and Keller (US 20070038737 A1), in view of Albinger (US 20180150885 A1).
Regarding Claim 14: The combination of Bhandari and Keller discloses the limitations of claim 1 above.
The combination does not explicitly teach wherein the completing the action based on the second hardware configuration includes adding the second hardware configuration to a shopping cart. Notably, however, Bhandari does disclose prompting the user to purchase the sale item (Bhandari: [0122]).
To that accord, Albinger does teach wherein the completing the action based on the second hardware configuration includes adding the second hardware configuration to a shopping cart. (Albinger: [0052] – “The system may additionally provide links whereby the customer can add product(s) to their shopping cart and complete their purchase online”; Albinger: [0049] – “the system outputs the recommended products that meet the user's needs (or at least are the closest fit to the user's needs based on the determined calculation score). The output may then show the user how to more efficiently mow his yard with different products (e.g., 15 minutes less with replacement blades, 15 minutes less with a mower with more horsepower, etc.), how much horsepower the user really needs, etc.’).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the invention of the combination of Bhandari and Keller disclosing the system for identifying computer configurations meeting user-defined functional requirements with the completing the action including adding the hardware configuration to a shopping cart as taught by Albinger. One of ordinary skill in the art would have been motivated to do so in order to complete the purchase online (Albinger: [0052]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chu (US 20210103831 A1) discloses [0081] – “it may be determined which computing devices, of one or more computing devices, and which applications, of one or more applications, best accomplish the task. Applications may be compared to step requirements to determine which applications best perform the tasks, then computing devices may be selected which have specifications that best fit the application resource requirements”.
Moyal (US 20230196450 A1) discloses [0042] – “system 200 may include product recommendation component 240 configured to determine one or more product recommendations corresponding to one or more electronic devices based on the product specification data, wherein the one or more product recommendations are configured to satisfy the user specified requirements”.
PTO-892 Reference U discloses a system for analyzing computer hardware to provide recommendations based on user requirements, including identifying user clusters and critical operational components to generate an array of computer component choices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY J KANG whose telephone number is (571)272-8069. The examiner can normally be reached Monday - Friday: 8:30am - 7:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria-Teresa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.J.K./Examiner, Art Unit 3689
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 6/18/2026
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