DETAILED ACTION
This action is responsive to papers filed on 9/17/2026.
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 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, 4, 7, 10, 12, 13, 16, and 18 are rejected under 35 U.S.C. 101 because, while the claims herein are directed to a method and/or system, which could be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes), 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.
Regarding claims 1, 10, 16, the claims recite, in part, obtaining a request for asset analysis of a computing asset, wherein the computing asset is owned and operated by a client and wherein the computing asset comprises hardware components of a computing device operating within a computing environment of the client, wherein the computing environment provides services to users using applications executing on the computing environment; in response to obtaining the request: performing an asset analysis on the computing asset to identify a historical classification of the computing asset, wherein the asset analysis is performed using current conditions of the computing asset and hardware information of the computing asset wherein the current conditions of the computing asset are data structures calculated using historical data of at least the computing asset, and wherein the hardware information is obtained from the computing asset and comprises hardware telemetry specifying a current state of the hardware components, information about prior failures of the computing asset, a type of the computing asset, and a sales history of the computing asset; applying a algorithm on a set of computing assets using the hardware information and the current conditions of each computing asset of the set of computing assets to obtain a set of historical classifications that group computing assets based on longevity and warranty history, and wherein the set of historical classifications comprises at least the historical classification; identifying a failure coefficient and a failure duration value each corresponding to the historical classification, wherein the failure coefficient corresponds to a mean value of lifetime before computing assets in the historical classification fail and wherein the failure duration value corresponds to a value used to determine a probability of failure between two failures; making a determination that the computing asset meets a condition of having a history of no major failures, damage, or crashes, and, if the computing asset does not meet the condition, setting a competitive price index (CPI) of the computing asset to zero; based on the determination, applying a hardware healthiness prediction function on the computing asset using a current lifetime of the computing asset, the failure coefficient, and the failure duration value to obtain an asset health prediction, wherein the hardware healthiness prediction function is a gamma distribution functions wherein the hardware healthiness prediction function is a gamma distribution function that takes, as an input: the failure coefficient, the failure duration value, and the current lifetime of the computing asset, and wherein the asset health prediction is an output to the gamma distribution function and is represented as a probability that the computing asset will remain functional for the current lifetime; generating a competitive price index (CPI) based on the asset health prediction, wherein the CPI is associated with a numerical value that quantifies a reliability of the computing asset, and wherein the CPI is generated by calculating a percentage difference between the asset health prediction and a generic health prediction for a generic computing device based on the historical classification; and performing a warranty remediation using the CPI to manage the degradation of the computing environment, wherein the warranty remediation comprises performing a warranty upgrade or extension on the computing asset, and wherein the warranty upgrade or extension is performed by the client to extend an operational availability of the computing environment comprising the computing asset, wherein the operational availability comprises providing the services to the users using computing resources of the computing asset.
The limitations, as drafted and detailed above, recites performing a warranty remediation for an asset based on an analysis of the asset, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and more specifically commercial interactions including sales activities or behaviors and business relations. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of warranty optimization system (claims 1, 10, 16), non-transitory computer readable medium (claim 10), computer readable program code (claim 10), computer processor (claim 10), processor (claim 16)¸ memory (claim 16), and k-nearest neighbor (KNN) machine learning algorithm (claims 1, 10, 16). The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of obtaining, performing, identifying, making a determination, applying, and generating) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. There are no additional functional limitations to be considered under prong two. EXAMINER NOTE: the “computing asset” and “computing environment comprising the computing asset” of the claim language is not considered an additional element as it is merely an object that is purchased by a user and subject to a warranty. It does not have any functional usage within the claim language.
Accordingly, the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (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), (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)), or (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).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the
judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using warranty optimization system (claims 1, 10, 16), non-transitory computer readable medium (claim 10), computer readable program code (claim 10), computer processor (claim 10), processor (claim 16)¸ memory (claim 16), and k-nearest neighbor (KNN) machine learning algorithm (claims 1, 10, 16) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent- eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat' l Ass' n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computer (see Applicant specification Paragraphs 0030-0031); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
The dependent claims 4, 7, 12, 13, and 18 appear to merely limit specifics of the historical classifications and extending a warranty of the computing asset, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The warranty optimization system (claims 1, 10, 16), non-transitory computer readable medium (claim 10), computer readable program code (claim 10), computer processor (claim 10), processor (claim 16)¸ memory (claim 16), and k-nearest neighbor (KNN) machine learning algorithm (claims 1, 10, 16) are each functional generic computer components that perform the generic functions of obtaining, performing, identifying, making a determination, applying, and generating, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the warranty optimization system (claims 1, 10, 16), non-transitory computer readable medium (claim 10), computer readable program code (claim 10), computer processor (claim 10), processor (claim 16)¸ memory (claim 16), and k-nearest neighbor (KNN) machine learning algorithm (claims 1, 10, 16) are anything other than generic, off-the-shelf computer components. Therefore, the claims do not amount to significantly more than the abstract idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1, 4, 7, 10, 12, 13, 16, and 18 are not patent eligible.
Novel/Non-Obvious Subject Matter
Claims 1, 4, 7, 10, 12, 13, 16, and 18 as currently written are novel/non-obvious over prior art. However the rejection under 35 U.S.C. 101 is currently pending and represents a barrier to allowability. Examiner notes that any amendments made to the claims in an attempt to correct pending rejections could drastically alter the claim scope and could open up the possibility of prior art being applied in a future action.
Prior art references Sethi (U.S. Pub No. 2021/0303378), Sethi (U.S. Pub No. 2022/0207415), Dinh (U.S. Pub No.2021/0126845), An (U.S. Pub No. 2018/0276061), Zhang (CN 116894658), Valvassori (WO 2020/055386), and Ghosh (U.S. Pub No. 2023/0129649) each teach different ways of determining a device lifespan or predicting device failure and follow-up actions based on the result. However, none of these references identify a failure coefficient and failure duration value corresponding to a historical classification to be used in the prediction.
Prior art references Mohanty (U.S. Pub No. 2023/0169515), Gallego (U.S. Pub No.2013/0013517), Olander (U.S. Pub No. 2024/0393776), Qian (CN 117272078), Vanga (U.S. Pub No. 2020/032053), Ganesan (U.S. Patent No. 11,978,058), and Drew (U.S. Pub No. 2011/0295756) each teach warranty pricing or extended warranty coverage decisions based on the product and condition. However, none of these references identify a failure coefficient and failure duration value corresponding to a historical classification to be used in a prediction of a device lifespan or failure that can be used to make warranty-related decisions.
Response to Arguments
Applicant argues “Applicant respectfully asserts that there is no such description of an abstract idea present in any independent claim”. However, the entirety of the claim is directed towards performing steps in order to administer a warranty remediation, which is indeed a commercial interaction, which is an abstract idea. Further, the instant claims recite collecting information, analyzing it, and displaying certain results of the collection and analysis, which was found to be ineligible in the Electric Power Group decision.
Applicant argues “As a result of the accumulation of steps, the method, as a whole, cannot be performed by a human mind without the use of a computer. See MPEP § 2106.04(a)(2)(II). Subsequently, because the claims, as amended, cannot be performed in the human mind or by a human using pen and paper, the amended claims fail to recite a mental process (i.e., an abstract idea), and the analysis under the Mayo/Alice Test should end with a conclusion that the claims are directed to patent eligible subject matter, and the independent claims should be considered patent eligible”. Rather, just because a process might be slow doesn’t mean it wouldn’t be possible to perform in the human mind. The computer elements of the claim may automate the process and speed up the calculations and determinations, however any speed in the process comes solely from the capabilities of the general-purpose computing elements.
Applicant argues “These are computational operations performed on machine-derived data, not the organization of human commercial activity. They are not the sort of long-standing economic or commercial practice the Supreme Court has identified as the abstract-idea touchstone for this exception category”. However, the current claimed invention is similar to other Federal decisions such as Electric Power Group (Collecting information, analyzing it, and displaying certain results of the collection and analysis), Classen (Collecting and comparing known information), and Versata (Determining a price using organizational and product group hierarchies). Further, determining warranty information is irrefutably a commercial interaction.
Applicant argues “Specifically, the amended claims integrate any recited exception into a practical application by reciting a specific multi-step technical pipeline that is not generic computer functionality. The integration is carried by particular operative claim limitations, each tied to concrete technical detail in the Specification”. However, the operations that take place occur on a general purpose computing system. Any computer system could be programmed to apply the abstract idea. Just because the programming is a multi-step process using a machine learning algorithm does not mean that the programming integrates the abstract idea into a practical application. Rather, the programming still merely applies the abstract idea.
Applicant argues “It is not the post-hoc addition of generic computers to an abstract idea, but a particular technical mechanism described in the Specification and reflected in the claim language. The Specification expressly identifies the improvement: addressing "the problem of inefficient use of computing resources" and improving "the operation of one or more computing devices" via awareness of asset health. See Spec [0060]-[0062]”. Paragraph 0061 merely discusses competitive pricing on warranty upgrades, which is the abstract idea. An improvement to “warranty management” is merely, at most, an improvement to the abstract idea. In the SAP decision (See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)), the courts found that an improvement made to the abstract idea is not patent eligible. SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because there are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract. With regard to Paragraphs 0060 and 0062, there is mention of improvement to the operation of one or more computing devices as well as a problem of inefficient use of computing resources. However, there is no discussion about how these improvements actually occur. The claim recites generating a CPI and performing a warranty remediation based on the CPI. There is no improvement to any computer system based on these steps, and there is no discussion in the specification about how these steps would lead to an improvement to the operation of one or more computing devices or a solution to a problem of inefficient use of computing resources.
Applicant cites Ex Parte Desjardins and argues “The amended claims do exactly that; they recite a particular application of a KNN classifier and a gamma-distribution prediction function to the technological field of computing-asset reliability and warranty management”. However, in the Desjardins case, the invention was deemed patent-eligible since the specification discussed how the machine learning itself was improved. This represents an improvement to an additional element beyond the abstract idea. No such improvement to an additional element exists in the present invention.
Applicant argues “In Example 47, the Office identified Claim 3 as eligible at Prong Two while finding Claim 2 ineligible. The dispositive difference was particularity: unlike Claim 2, which stopped at detecting anomalies using the trained model, Claim 3 coupled the model's output to further specific operations that reflected the improvement described in the specification. The amended claims are eligible for the analogous reason-they do not stop at classifying assets or predicting health, but add identification of class-specific failure parameters, a gamma-distribution health prediction, and generation of a per-classification CPI, each tied to concrete technical detail in the Specification. Applicant does not contend that these operations mirror the real-time network-security actions recited in Example 47; the shared, dispositive feature is a specific, specification-supported way of achieving the outcome rather than a claim to the outcome itself”. However, claim 3 of Example 47 is not similar to the instant claimed invention because it was found to integrate the abstract idea into a practical application. Specifically, according to the background section of Example 47, existing systems use various detection techniques for detecting potentially malicious network packets and can alert a network administrator to potential problems. The disclosed system detects network intrusions and takes real-time remedial actions, including dropping suspicious packets and blocking traffic from suspicious source addresses. The background section further explains that the disclosed system enhances security by acting in real time to proactively prevent network intrusions. The claimed invention reflects this improvement in the technical field of network intrusion detection. The current invention does not include any such technical improvement in the instant specification.
Applicant argues “The amended claims here are anchored to hardware telemetry of physical computing assets, namely, CPUs, RAM, GPUs, storage devices, motherboards, and network interface cards (see Spec [0016]), and govern the operational availability of those physical assets through warranty remediation. The improvement is not an improvement to an abstract financial calculation; it is an improvement to how the operational lifecycle of physical computing assets is managed using machine-derived telemetry”. However, the claims are not anchored to hardware telemetry. Rather, the claimed invention merely collects data to perform an analysis, that data being hardware information of a computing asset. No actual governing of operational availability takes place, as the system merely performs a warranty remediation, which in and of itself has no impact on the actual operations of the computing asset.
Applicant argues “This non-conventional arrangement improves the overall operability of the computing environment. Under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and MPEP § 2106.04(d), a finding that such an ordered combination is well-understood, routine, and conventional must be supported by evidence directed to the combination as a whole, not merely to its individual generic components; although the Action states in conclusory fashion that the ordered combination "adds nothing that is not already present when looking at the elements taken individually" (Office Action p. 6), it cites no evidence directed to the combination as a whole as Berkheimer requires, and the bare assertion that the combination is conventional is therefore unsupported”. However, Examiner never stated in the rejection above that anything in the claim was “well-understood, routine, and conventional”, and therefore, no documentary evidence is required under Berkheimer. The rejection merely states that the ordered combination of claimed steps represents an abstract idea that is applied by general purpose computer functionality, which is supported by the instant specification at paragraphs 0030-0031.
Applicant argues “The Examiner has failed to consider the additional elements as a whole”. However, the additional elements merely equate to a general purpose processor, as outlined in Figure 1, Reference 110. As explained in the rejection, the client environment is not an active part of the invention, but merely a target of the warranty remediation. Therefore, the only additional elements to be considered as a whole is the warranty optimization system, which is merely general purpose.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL BEKERMAN whose telephone number is (571)272-3256. The examiner can normally be reached 9PM-3PM EST M, T, TH, F.
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/MICHAEL BEKERMAN/Primary Examiner, Art Unit 3621
