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 .
Status of Claims
This Office Action is in response to the application filed on July 18, 2024. Claims 1-20 are pending. Claims 1, 11 and 20 are independent.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
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 significantly more.
The determination of whether a claim recites patent ineligible subject matter is a 2 step inquiry.
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), see MPEP 2106.03, or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis: see MPEP 2106.04
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon? see MPEP 2106.04(II)(A)(1)
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? see MPEP 2106.04(II)(A)(2)
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? see MPEP 2106.05
101 Analysis – Step 1
Claim 1 is directed to a computer system for maintaining IT assets (i.e., a machine). Therefore, claim 1 is within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes. see MPEP 2106(A)(II)(1) and MPEP 2106.04(a)-(c)
Independent claim 1 includes limitations that recite an abstract idea (emphasized below [with the category of abstract idea in brackets]) and will be used as a representative claim for the remainder of the 101 rejection. Claim 1 recites:
A computer system for maintaining IT assets [mental process/step], the computer system comprising:
a processor; and
a non-transitory memory storing one or more sets of instructions that when executed by the processor, causes the system to:
access or receive asset data for a plurality of IT assets located in a plurality of physical locations;
determine, based on the asset data, a plurality of assets due for maintenance from the plurality of IT assets [mental process/step];
access or receive, in real time, map data for physical locations associated with the plurality of assets due for maintenance;
determine a cost matrix for scheduling a route plan for visiting the physical locations associated with the plurality of assets due for maintenance [mental process/step];
compute the route plan based on the cost matrix and the map data for the physical locations associated with the plurality of assets due for maintenance [mental process/step];
generate signals for displaying, at a display of a user device, the route plan; and
transmit said signals to the user device for displaying the route plan.
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind. For example, “determine, based on the asset data, a plurality of assets …”, “determine a cost matrix …” and “compute the route plan …” in the context of this claim encompasses a person looking at data collected and forming a simple judgement. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. see MPEP 2106.04(II)(A)(2) and MPEP 2106.04(d)(2). It must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” [with a description of the additional limitations in brackets], while the bolded portions continue to represent the “abstract idea”.):
A computer system for [applying the abstract idea using generic computing module] maintaining IT assets [mental process/step], the computer system comprising:
a processor [applying the abstract idea using generic computing module component]; and
a non-transitory memory storing one or more sets of instructions that when executed by the processor, causes the system to [applying the abstract idea using generic computing module component]:
access or receive asset data for a plurality of IT assets located in a plurality of physical locations [pre-solution activity (data gathering)];
determine, based on the asset data, a plurality of assets due for maintenance from the plurality of IT assets [mental process/step];
access or receive, in real time, map data for physical locations associated with the plurality of assets due for maintenance [pre-solution activity (data gathering)];
determine a cost matrix for scheduling a route plan for visiting the physical locations associated with the plurality of assets due for maintenance [mental process/step];
compute the route plan based on the cost matrix and the map data for the physical locations associated with the plurality of assets due for maintenance [mental process/step];
generate signals for displaying, at a display of a user device, the route plan [insignificant post-solution activity (presenting/dispatching results of the mental process) using generic computing module component]; and
transmit said signals to the user device for displaying the route plan [insignificant post-solution activity (presenting/dispatching results of the mental process) using generic computing module component].
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitations of “access or receive asset data”, “access or receive, in real time, map data”, “generate signals for displaying” and “transmit said signals to the user device for displaying” the examiner submits that these limitations are insignificant extra-solution activities that merely use a computer (a computer system) to perform the process. In particular, the “computer system” is recited at a high-level of generality (i.e., as a computer system performing a generic computer function of “maintaining IT assets”) such that it amounts no more than mere instructions to apply the exception using generic computer components.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or 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 not more than a drafting effort designed to monopolize the exception. see MPEP § 2106.05. Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the Revised Guidance, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer system to perform maintaining IT assets amounts to nothing more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. And as discussed above, the additional limitations of “access or receive asset data”, “access or receive, in real time, map data”, “generate signals for displaying” and “transmit said signals to the user device for displaying” the examiner submits that these limitations are insignificant extra-solution activities. In addition, these additional limitations (and the combination, thereof) amount to no more than what is well-understood, routine and conventional activity. Hence, the claim is not patent eligible.
Dependent claims 2-10 do not recite any further limitations that cause the claims to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application [provide concise explanation]. Therefore, dependent claims 2-10 are not patent eligible under the same rationale as provided for in the rejection of claim 1.
Regarding claims 11-19, independent claim 11 is a computer-implemented method for maintaining IT assets, the method performing the identical function of the computer system for maintaining IT assets of independent claim 1, and similarly, dependent claims 12-19 of independent claim 11 are also performing identical functions corresponding to dependent claims 2-5 and 7-10 of independent claim 1, respectively, therefore, claims 11-19 are also rejected under 35 USC § 101 for the same respective rationale as claims 1-5 and 7-10.
Regarding claim 20, independent claim 20 is a non-transitory computer readable medium storing machine interpretable instructions, which when executed by a processor, cause the processor to perform the identical function of the computer system for maintaining IT assets of independent claim 1, therefore, claim 20 is also rejected under 35 USC § 101 for the same rationale as claim 1.
Therefore, claims 1-20 are ineligible under 35 USC §101.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see the attached form PTO-892.
Conclusion
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/P.Y.N./Examiner, Art Unit 3661
February 3, 2026
/PETER D NOLAN/Supervisory Patent Examiner, Art Unit 3661