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 .
Priority
The Instant Application, filed 08/16/2024, is a continuation of 17/550583, filed 12/14/2021, now U.S. Patent No. 12,068,940 which claims priority from Provisional Application 63/132193, filed 12/30/2020.
Election/Restrictions
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/20/2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,068,940. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claims are anticipated by the reference claim(s). Claim 1 of the Patent contains every element of claim 1 of the instant application as shown in the table below and as such anticipate(s) the claim of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Instant Application
Patent No. 12,068,940
1. A method, comprising: receiving customer information in a service request, wherein the customer information includes at least a desired computing service and customer location data for a customer site; determining provider location data for a plurality of provider computing sites; determining a rough estimate of latency for each of the plurality of provider computing sites based on the customer location data and the provider location data; providing a list of the provider computing sites based on the rough estimate of latency for each of the provider computing sites;
receiving a selection of one of the provider computing sites; and
providing the computing service to the customer site from the selected provider computing site.
1. A method, comprising: receiving customer information in a service request, wherein the customer information includes at least a desired computing service and customer location data for a customer site; determining provider location data for a plurality of provider computing sites; determining a rough estimate of latency for each of the plurality of provider computing sites based on the customer location data and the provider location data; providing an ordered list of the provider computing sites based on the rough estimate of latency for each of the provider computing sites; determining a first fine estimate of latency for a first provider computing site; determining a second fine estimate of latency for a second provider computing site of the plurality of computing sites; determining a redetermined ordered list of the plurality of provider computing sites based at least on the first fine estimate and the second fine estimate; providing the redetermined ordered list of the plurality of provider computing; receiving, from a client device associated with the customer site, a selection of one of the provider computing sites; providing the computing service to the customer site from the selected provider computing site.
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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 and 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is drawn to method (i.e., a process) and claim 11 is drawn to a system (i.e., a machine/manufacture). As such, claims 1 and 11 are drawn to one of the statutory categories of invention.
Claims 1 and 11 are directed to providing a computing service to a customer site. Specifically, the claims recite the steps of, receiving customer information in a service request, wherein the customer information includes at least a desired computing service and customer location data for a customer site; determining provider location data for a plurality of provider computing sites; determining a rough estimate of latency for each of the plurality of provider computing sites based on the customer location data and the provider location data; providing a list of the provider computing sites based on the rough estimate of latency for each of the provider computing sites; receiving a selection of one of the provider computing sites; and providing the computing service to the customer site from the selected provider computing site, which is grouped within Mental Processes and is similar to the concept of (concepts performed in the human mind (including an observation, evaluation, judgement, opinion) grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
These limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components. This judicial exception is not integrated into a practical application because the combination of additional elements fails to integrate the judicial exception into a practical application. The claims are directed to an abstract idea with generic computer elements and these 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 claim(s) do not include any additional elements that are sufficient to amount to significantly more than the judicial exception.
Thus, the claims fail to be patent eligible when analyzed under the prongs of step 2A and step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)).
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.
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.
Claims 1, 8, 11 and 18 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.
The terms “rough estimate” in claims 1, 8, 11 and 18 are relative terms which render the claims indefinite. The terms “rough estimate” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore the claims are vague and indefinite.
Claim Rejections - 35 USC § 102
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 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-7, 9, 11-12 and 14-17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Parulkar et al. (10,979,534).
As per claim 1, Parulkar et al. teaches a method, comprising: receiving customer information in a service request, wherein the customer information includes at least a desired computing service and customer location data for a customer site [col. 21, ll. 42-col. 22, ll. 7];
determining provider location data for a plurality of provider computing sites [col. 23, ll. 54-col. 24, ll. 15];
determining a rough estimate of latency for each of the plurality of provider computing sites based on the customer location data and the provider location data [col. 23, ll. 54-col. 24, ll. 15];
providing a list of the provider computing sites based on the rough estimate of latency for each of the provider computing sites [col. 24, ll. 47-60];
receiving a selection of one of the provider computing sites [col. 24, ll. 61-col. 25 ll. 27]; and
providing the computing service to the customer site from the selected provider computing site [col. 24, ll. 47-60].
As per claim 2, Parulkar et al. teaches the method of claim 1, further comprising: receiving a latency requirement; and determining, based on the latency requirement, a service radius; wherein providing the list of the providing computing sites comprises including on the list only provider computing sites that are located within the service radius of the customer site [col. 3, ll. 23-48].
As per claim 4, Parulkar et al. teaches the method of claim 1, further comprising: determining a first fine estimate of latency for a first provider computing site; and determining a second fine estimate of latency for a second provider computing site of the plurality of computing sites [col. 4, ll. 42-60].
As per claim 5, Parulkar et al. teaches the method of claim 4, further comprising: providing a client agent to a client device; causing the client agent to perform a first latency test between the client device and the first provider computing site to determine the first fine estimate; and causing the client agent to perform a second latency test between the client device and the second provider computing site to determine the second fine estimate [col. 6, ll. 14-25].
As per claim 6, Parulkar et al. teaches the method of claim 5, further comprising: causing a first latency test server to be instantiated at the first provider computing site; causing a second latency test server to be instantiated at the second provider computing site; wherein the first latency test is performed between the client device and the first latency test server and the second latency test is performed between the client device and the second latency test server [col. 11, ll. 20-46].
As per claim 7, Parulkar et al. teaches the method of claim 3, wherein the selected provider computing site is the first provider computing site and the first provider computing site does not include available resources necessary to provide the computing service, further comprising: automatically causing the additional resources to be added to the first provider computing site [col. 13, ll. 34-47].
As per claim 9, Parulkar et al. teaches the method of claim 5, wherein at least the first latency test is a traceroute between the client device and the first provider computing site [col. 18, ll. 42-67].
Claims 11-12 and 14-17 have similar limitations as to the rejected claims above therefore they are being rejected under the same rationale.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 3, 8, 10, 13 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Parulkar et al. (10,979,534) in view of Dunsmore et al. (2022/0061059).
As per claim 3, Parulkar et al. teaches the limitations of claim 1 as above and further teaches determining whether a first provider computing site of the plurality of computing sites includes available resources necessary to provide the computing service; when the first provider computing site does include available resources necessary to provide the computing service, including the first provider computing site on the list [Parulkar et al., col. 21, ll. 7-17].
But Parulkar et al. fails to explicitly teach, however, Dunsmore et al. in the same field of endeavor teaches when the first provider computing site does not include available resources necessary to provide the computing service: determining whether additional resources can be added to the first provider computing site to provide the computing service; when the additional resources can be added to the first provider computing site to provide the computing service, including the first provider computing site on the list along with an indication of when the additional resources can be added; when the additional resources cannot be added to the first provider computing site, excluding the first provider computing site from the list [Dunsmore et al., paragraph 0062].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Parulkar et al. with Dunsmore et al. in order to utilize one or more different networks (optionally including one or multiple different cellular networks) to analyze network connectivity characteristics between the test devices and other resources.
As per claim 8, Parulkar-Dunsmore teaches the method of claim 1, wherein the customer location data comprises a street address of the customer site, further comprising: translating the street address to a global positioning satellite (GPS) location; and determining a distance between the GPS location and each of the provider computing sites; wherein determining the rough estimate of latency is based on the distance and a speed of light [Dunsmore et al., paragraph 0106].
As per claim 10, Parulkar-Dunsmore teaches the method of claim 4, further comprising: providing a client agent to a client device; determining whether the client device is at the customer site; when the client device is not at the customer site, sending a query to the client device to determine an internet protocol (IP) address of a second client device at the customer site; receiving the IP address of the second client device; performing a first latency test between the second client device and the first provider computing site to determine the first fine estimate; performing a second latency test between the second client device and the second provider computing site to determine the second fine estimate; and providing a redetermined list of the plurality of provider computing sites based at least on the first fine estimate and the second fine estimate Dunsmore et al., paragraphs 0021, 0025 and 0111].
Claims 13 and 18-19 have similar limitations as to the rejected claims above therefore they are being rejected under the same rationale.
There are prior art made of record not relied upon but is considered pertinent to applicant's disclosure. See attached.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANODHI N SERRAO whose telephone number is (571)272-7967. The examiner can normally be reached Monday to Friday 8:00 am to 4:00 pm.
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Ranodhi N. Serrao
/RANODHI SERRAO/
Primary Examiner, Art Unit 2444