DETAILED ACTION
1. 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 .
2. Election/Restrictions
Applicant's election with traverse of Claims 1, 5-9 and 21-23 in the reply filed on 6/01/2026 is acknowledged. The traversal is on the ground(s) that “the vast majority of the elements of the three claims are the same, and in particular, because many of the elements Applicant considers to be inventive (e.g., the data structure) is the same, the Examiner will not be unduly burdened by examining the claims of Group II (Claims 11 and 14-20) along with the claims of Group I (Claims 1, 5-9, and 21-23).” See Arguments filed 6/01/2026, pp. 3-4.
This is not found persuasive because, while there might be significant similarity between Groups I and II, there are also patentably distinct claim elements differentiating the two claim sets. As the patentably distinct claim elements require a different field of search and/or different search queries, Examiner asserts that proper examination would create a serious search and/or examination burden
The requirement is still deemed proper and is therefore made FINAL.
3. Status of Application and Claims
Claims 1, 5-9 and 21-23 are pending.
This office action is being issued in response to the Applicant's filing(s) on 11/03/2025 and 6/01/2025.
4. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternative interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a system wherein asset data for each of said physical assets comprises:
wherein said asset data for each of said physical assets comprises:
i) the unique universal identification code of the asset tag associated with each physical asset;
ii) one or more of an asset identification information, asset configuration information, other unique IDs used by manufacturer, maintainer, operator, or owners, and asset activity history information;
iii) an asset type, said asset type being selected from a harmonization table stored in said memory, the harmonization table providing a concordance between a determined list of types of assets and names for the asset provided by manufacturers and/or asset certifying authorities, wherein the asset type for each asset is selected from the asset harmonization table;
iv) a quality assurance schedule providing the cadence for compliance and/or preventative maintenance activities, including one or more of testing, calibrating, maintaining, and/or servicing each asset;
v) operational availability, maintenance and/or repair history and/or testing/calibration history; and
vi) usage category or operability status.
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claims 7-9 have similar issues.
Claim 1 recites a system wherein asset data for each of said physical assets comprises:
i) the unique universal identification code of the asset tag associated with each physical asset;
ii) one or more of an asset type, asset identification information, asset configuration information, other unique IDs used by manufacturer, maintainer, operator, or owners, and asset activity history information;
iii) an asset type, said asset type being selected from a harmonization table stored in said memory, the harmonization table providing a concordance between a determined list of types of assets and names for the asset provided by manufacturers and/or asset certifying authorities, wherein the asset type for each asset is selected from the asset harmonization table;
A system claim is defined the method steps that the structural elements of said system are configured to perform or, when the system is executing stored instructions, the method steps to be performed by the structural elements of said system.
However, method steps performed outside the recited system have no patentable weight. The structural elements are not configured to perform the method steps (i.e., system is not configured to select from a harmonization table …) nor are the structural elements of said system performing the method steps (i.e., selecting from a harmonization table) when the system is executing the stored instructions.
Claim 1 recites a system wherein:
said data structure comprisinq a plurality of distinct and separate data substructures, each data substructure comprisinq for each asset the universal identification code and a subset of said asset data, there beinq an individual data substructure associated with each stakeholder of the asset information system and wherein the data for any one asset is distributed amonq the data substructures of the stakeholders for the particular asset, such that no single data substructure contains all the data related to a single asset, and wherein one stakeholder cannot access a data substructure of another stakeholder.
Under the broadest reasonable interpretation, there is only one stakeholder. As such, there is one individual data substructure associated with each stakeholder (of a group consisting of one stakeholder) of the asset information system.
Claim 1 recites a system:
enablinq said user to enter or modify asset data for the record for said selected asset without giving said user access to data substructures of other users;
Under the broadest reasonable interpretation, the system enables a user to enter or modify asset data for the record for said selected asset without giving said user access to data substructures of other users. The claims, as written, do not recite preventing a user from obtaining access to data substructure of other users, just that a user can enter or modify asset data without having to obtain user access to data substructures of other users.
5. 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, 5-9 and 21-23 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
Claim 1 recites a system comprising:
asset tags adapted to be applied to the physical assets, each said asset tag comprising a unique human or machine-readable universal identification code which identifies the particular asset with which it is associated;
a user … to receive the universal identification code of the asset tag and to transmit the universal identification code;
… managing the compliance activities of the physical assets … access a data structure comprising asset data and the universal identification code for the physical assets, and to store asset data in said data structure … wherein said data for each of said physical assets comprises:
i) the unique universal identification code of the asset tag associated with each physical asset;
ii) one or more of an asset identification information, asset configuration information, other unique IDs used by manufacturer, maintainer, operator, or owners, and asset activity history information;
iii) an asset type, said asset type being selected from a harmonization table stored in said memory, the harmonization table providing a concordance between a determined list of types of assets and names for the asset provided by manufacturers and/or asset certifying authorities, wherein the asset type for each asset is selected from the asset harmonization table;
iv) a quality assurance schedule providing the cadence for compliance and/or preventative maintenance activities, including one or more of testing, calibrating, maintaining, and/or servicing each asset;
v) operational availability, maintenance and/or repair history and/or testing/calibration history; and
vi) usage category or operability status; and
said data structure comprising a plurality of distinct and separate data substructures, each data substructure comprising for each asset the universal identification code and a subset of said asset data, there being an individual data substructure associated with each stakeholder … and wherein the data for any one asset is distributed among the data substructures of the stakeholders for the particular asset, such that no single data substructure contains all the data related to a single asset, and wherein one stakeholder cannot access a data substructure of another stakeholder;
…
receive from said user … the unique identification code for a selected asset contained on the asset tag for the selected asset;
upon receipt of a unique identification code from said user … and based on the user’s permissions access said data substructures to:
obtain the asset data for the requested asset;
generate an asset record viewable by the user; and
display the asset record so generated to the user …, whereby the user does not have access to data substructures of other users;
enabling said user to enter or modify asset data for said selected asset without giving said user access to data structures of other users;
receive from said user, and save in said data structure;
(a) asset data for said selected asset, including information regarding a change in usage category and/or the operability the status of said selected asset; and/or
(b) information regarding a change in a usage category and/or the operability the status of selected asset;
… update the quality assurance schedule for said selected asset in response to the receipt of information regarding testing, calibration, maintenance, or servicing for said selected asset; and
… send … notifications to stakeholders at appropriate times to all effected stakeholders regarding (i) upcoming or overdue quality assurance activities or (ii) changes in category or operability status for an asset due to the asset data entered by said user.
These limitations, as drafted, under their broadest interpretation, cover a series of steps instructing how to perform asset management which is a method that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’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” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of an asset information system (Claim(s) 1), computer system (Claim(s) 1), a user device (Claim(s) 1), a communication module (Claim(s) 1), a processor/processing unit (Claim(s) 1), a non-volatile memory (Claim(s) 1), programming/computer instructions (Claim(s) 1) and performing functions automatically (Claim(s) 1).
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 5-9 and 21-23 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of electronically receiv[ing] updated asset information (Claim(s) 6).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
6. Claim Rejections - 35 USC § 112(b)
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, 5-9 and 21-23 are 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.
Claim 1 recites a system wherein:
said data structure comprisinq a plurality of distinct and separate data substructures, each data substructure comprisinq for each asset the universal identification code and a subset of said asset data, there beinq an individual data substructure associated with each stakeholder of the asset information system and wherein the data for any one asset is distributed amonq the data substructures of the stakeholders for the particular asset, such that no single data substructure contains all the data related to a single asset, and wherein one stakeholder cannot access a data substructure of another stakeholder.
The claim recites a stakeholder of the asset information system and stakeholders of the particular asset. Are stakeholders being defined based upon their relationship to the asset information system or being defined based upon their relationship to the assets being managed by the asset information system?
Claim 1 recites a system whereby, the user does not have access to the data substructure of any other stakeholder.
Are users equivalent to stakeholders? Because the claim recites appears to indicate that users and stakeholders are interchangeable terms.
Claim 1 recites a system configured to:
automatically send provide electronic notifications at appropriate times to all effected stakeholders regarding (i) upcoming or overdue quality assurance activities or (ii) changes in category or operability status for an asset due to the asset data entered by said user.
Claim 1, as written, contain terms that are subjective or determinations of whether the claim limitations are satisfied are subjective. Specifically, said claims contain terminology such as “at appropriate times to all effected stakeholders.” Claims are indefinite in circumstances where a claim contains a term that is completely dependent on a person’s subjective opinion. See MPEP §2173.05(b)(IV). As such, claims containing the cited claim limitations are rejected under §112, 2nd paragraph.
Appropriate correction is requested.
7. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 5-9 and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over McNutt (US PG Pub. 2005/0258241) in view of Ballew (US PG Pub. 2008/0084334).
Regarding Claim 1, McNutt discloses an asset management system for managing compliance activities, including the monitoring, servicing, and maintaining, for a plurality of physical assets, the asset management system comprising:
asset tags (data tag) adapted to be applied to the physical assets, each said asset tag comprising a unique human or machine-readable universal identification code (unique asset data tag identification) which identifies the particular asset with which it is associated. (see 31);
a user device (access device) adapted to receive the universal identification code of the asset tag (data tag) and transmit the universal identification code (to an asset information system). (see para. 39);
a computer system (asset information center or system) adapted and configured for managing the compliance activities of the physical assets. (see para. 47);
the computer system (asset information center or system) comprising (i) a communication module (network adapter) adapted to communicate with the said user device (access device), (ii) a processor (CPU) and (iii) a non-volatile memory in which is stored computer program instructions executable by said processor. (see para. 37, 39, 46 and 58-60);
wherein, when executed by said processor said computer program instructions causes the processor (of the asset information system) to access a data structure comprising asset data and the universal identification code (asset information) for the physical assets and to store asset data (asset information) in said data structure (in format defined by NAFEM), said data structure being stored in said non-volatile memory (of the asset information system). (see para. 41);
wherein said asset data for each of said physical assets comprises:
i) the unique universal identification code (unique asset data tag identification or serial number) of the asset tag associated with each physical asset. (see para. 29-31);
ii) one or more of an asset identification information, asset configuration information, other unique IDs used by manufacturer, maintainer, operator, or owners, and asset activity history information (a model number, a serial number, a date of manufacture, a date of installation, an asset protocol version, an asset owner name, and an asset location). (see para. 29-31);
iii) an asset type (equipment classification), said asset type being selected from a harmonization table stored in said memory, the harmonization table providing a concordance between a determined list of types of assets and names for the asset provided by manufacturers and/or asset certifying authorities (North American Association of Food Equipment Manufactures), wherein the asset type for each asset is selected from the asset harmonization table. (see para. 29-30);
iv) a quality assurance schedule (identification of one or more operating actions or events that may prompt the user to initiate a service call) providing the cadence for compliance and/or preventative maintenance activities, including one or more of testing, calibrating, maintaining, and/or servicing each asset. (see para. 29);
v) operational availability, maintenance and/or repair history and/or testing/calibration history (data related to a service action, service information, service performed or upgrades or changes made to asset). (see para. 29 and 45); and
vi) usage category or operability status (failure). (see para. 29); and
said data structure (asset information) comprising a plurality of distinct and separate data substructures (data elements), each data substructure (data element) comprising for each asset the universal identification code and a subset of said asset data (e.g., name of manufacturer, equipment classification …), there being an individual data substructure associated with each stakeholder (owner) of the asset information system and wherein the data for any one asset is distributed among the data substructures (data elements) of the stakeholders (owners) for the particular asset, such that no single data substructure (data element) contains all the data related to a single asset. (see para. 29).
wherein said computer program instructions, when executed, further cause the processor to:
receive from said user device (access device) the unique identification code for a selected asset contained on the asset tag (data tag) for the selected asset. (see para. 33-35 and 40);
upon receipt of a unique identification code access said data substructures. (see para. 33-35);
obtain the asset data (asset information) for the requested asset. (see para. 40);
generate an asset record viewable by the user (at a data display). (see para. 40);
display the asset record so generated to the user using the user device. (see para. 40);
enabling said user to enter or modify (update) asset data for said selected asset. (see para. 45);
receive from said user, and save in said data structure:
(a) asset data for said selected asset including information (updates) regarding testing, calibration, maintenance and/or servicing (service performed) of said selected asset (see para. 45); and/or
(b) information regarding a change in usage category and/or the operability (upgrades or changes) the status of selected asset. (see para. 45).
McNutt does not teach a system wherein one stakeholder cannot access a data substructure of another stakeholder; not giving user access to data substructures of other users; automatically updating the quality assurance schedule for said selected asset in response to the receipt of information regarding testing, calibration, maintenance, or servicing for said selected asset; or automatically sending electronic notifications at appropriate times to all effected stakeholders regarding (i) upcoming or overdue quality assurance activities or (ii) changes in category or operability due to the status for an asset.
Ballew discloses a system wherein:
one stakeholder (company C1) cannot access a data substructure of another stakeholder (company C2). (see para. 300-302); and
not giving user (company C1) access to data substructures of other users (company C2). (see para. 300-302).
Ballew discloses computer system configured to:
automatically update (add) the quality assurance schedule (maintenance schedule) for said selected asset in response to the receipt of information regarding testing, calibration, maintenance, or servicing (maintenance schedule) for said selected asset. (see para. 475); and
automatically send electronic notifications (report or alert) at appropriate times to all effected stakeholders regarding (i) upcoming (closing in on scheduled maintenance call) or overdue quality assurance activities (missed maintenance event) or (ii) changes in category or operability status (status information) for an asset due to the asset data entered by said user. (see para. 180-181, 192, 460 and 462-465).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McNutt by incorporating a maintenance notification system, as disclosed by Ballew, thereby ensuring users are kept informed of an assets’ maintenance needs and schedule.
Regarding Claim 5, McNutt does not teach a system wherein said quality assurance schedule includes one or more testing/calibrating schedules and one or more maintenance schedules for each said asset; or wherein said system is configured to notify said stakeholders if scheduled testing/calibrating or scheduled maintenance has been missed.
Ballew discloses a system wherein:
said quality assurance schedule includes one or more testing/calibrating schedules and one or more maintenance schedules for each said asset. (see para. 101); and
said system is configured to notify said stakeholders if scheduled testing/calibrating or scheduled maintenance has been missed (missed maintenance event notice). (see para. 470).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McNutt and Ballew by incorporating a maintenance notification system, as disclosed by Ballew, thereby ensuring users are kept informed of an assets’ maintenance needs and schedule.
Regarding Claim 6, McNutt does not teach a system comprising activity information comprising one or more of the following: status data, testing data, calibration data, repair data, and maintenance data (service performed). (see para. 45).
McNutt does not teach a system configured to electronically receive updated asset information regarding the assets from asset manufacturers or their representatives and to electronically distribute said updated information to users; or provide asset information and aggregated activity information regarding assets to the asset manufacturers.
Ballew discloses a system configured to:
electronically receive updated asset information regarding the assets from asset manufacturers or their representatives (manufacturers schedule maintenance) and to electronically distribute said updated information to users (buyers); and
provide asset information and aggregated activity information regarding assets to the asset manufacturers (manufacturers track the asset), the activity information comprising one or more of the following status data (asset operating schedule), testing data, calibration data, repair data, and maintenance data. (see para. 104-105).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McNutt and Ballew by incorporating a manufacturer communication system, as disclosed by Ballew, thereby ensuring that the system had the most up-to-date manufacturers’ information pertaining to the asset.
Regarding Claim 7, McNutt discloses a system wherein said asset identification information includes one or more of the following: the manufacturer name, asset model, serial number, certification documents, purchase date, and installation date. (see para. 29).
Regarding Claim 8, McNutt discloses a system wherein said asset configuration information includes one or more of the following hardware version and system software version (asset protocol version), standards obtained, detection algorithm, related auxiliary hardware, and qualifications and certificates. (see para. 29).
Regarding Claim 9, McNutt discloses a system wherein said asset data further includes for each asset: location of the asset (asset location), and one or more of the following: asset manufacturer, manufacturer make, model and serial number, software version, hardware version firmware version), supported auxiliary hardware, installation date, end of life date, and manuals for the asset. (see para. 29).
Regarding Claim 21, McNutt discloses a system wherein said system being adapted to receive input from a user containing asset data and a quality assurance cadence for a new asset, the quality assurance cadence including a schedule (identification of one or more operating actions or events that may prompt the user to initiate a service call) for at least one of status checks, testing, and maintenance for the new asset whereby a user can add (initialize) a new physical asset to the database structure. (see para. 29 and 45).
Regarding Claim 22, McNutt does not teach system wherein said system is adapted to generate work order tickets based on said quality assurance cadence and to receive data regarding a work order for unscheduled or corrective maintenance or service; and, upon generation of a work order, to notify necessary stakeholders of the workorder.
Ballew discloses a system wherein said system is adapted to generate work order tickets (work orders) based on said quality assurance cadence and to receive data regarding a work order for unscheduled or corrective maintenance or service; and, upon generation of a work order, to notify stakeholders of the workorder (via issuance of the work order). (see para. 393, 397-399 and 408).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McNutt and Ballew by incorporating a work order system, as disclosed by Ballew, thereby ensuring maintenance is performed on the physical asset.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over McNutt and Ballew, as applied to Claims 1 above, and further in view of Weaver (US PG Pub. 2009/0115609).
Regarding Claim 23, McNutt does not teach a system adapted to determine the location of a user who is updating asset information relating to the status, testing, calibration, maintenance and/or servicing of an asset, to compare the location of the user relative to the location of the physical asset, and to include an indication in the record for the physical asset if the user is not within a predetermined distance of the asset when modifying the record.
Weaver discloses a system adapted to determine the location of a user (worker) who is updating asset information relating to the status, testing, calibration, maintenance and/or servicing of an asset, to compare the location of the user (worker) relative to the location of the physical asset (target), and to include an indication (alert) in the record for the physical asset if the user is not within a predetermined distance (minimum distance) of the asset (for the required amount of time) when modifying the record. (see para. 58-59).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McNutt and Ballew by incorporating location data, as disclosed by Weaver, thereby ensuring that complete and accurate information is added to the record.
8. Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered. Some arguments have been rendered moot based upon new references utilized in the current rejection. However, some arguments remain relevant, as they apply to a reference and/or rejection still utilized in the current rejection. Such arguments have been fully considered but are not persuasive and are addressed below.
Claim Interpretation
Applicant argues that the previously asserted claim interpretation was unwarranted.
Specifically, Applicant argues:
The Examiner noted that information regarding the asset data in Claim 1 was non-functional descriptive material that is not involved in recited steps. (OA, P. 4). Claim 1 has been revised to provide that the computer system comprises computer program instructions, which "when executed by said processor causes the processor to access a data structure comprising asset data for the physical assets and to store in said data structure any updates to said data structure ... wherein said asset data for each of said physical assets comprises" the listed asset information. Applicant submits that, as now set forth, the asset data is "functionally involved" in a recited step. Claim 20 has been similarly amended. See Arguments filed 11/03/2025, p. 14.
The Examiner respectfully disagrees.
If it is determined that the limitation is directed to printed matter (i.e., content of printed information), the examiner must then determine if the matter is functionally or structurally related to the associated physical substrate. See MPEP §2111.05, citing In re DiStefano, 808 F.3d 845, 117 USPQ2d 1267-1268 (Fed. Cir. 2015). To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated. See MPEP §2111.05(I)(A), citing In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994).
Where a product merely serves as a support for printed matter, no functional relationship exists. See MPEP §2111.05(I)(B). Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. See MPEP §2111.05(I)(B).
The computer system accesses and stores data. Whether the data is an asset type, asset identification or a grocery list is immaterial to the computer system. To the computer system it is just data that is being accessed and stored.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments filed 11/03/2025, pp. 18-20.
Specifically, regarding Claim 1, the Applicant argues:
Claim 1, as noted, has been amended to provide that the system stores the asset data among multiple distinct data substructures, and that upon request, the system will pull together the data from the various data substructures for a particular asset into an asset record (i.e., "common view") which the user/requester can then view and interact with. Applicant submits that this is not an activity that can practically be performed in the human mind. This aspect would require that the user pull together data from discrete and distinct data structures, and then generate a record or view of the data which could then be perceived by the user. Thus, the system is not merely collecting, analyzing, and displaying information, as suggested by the Examiner at P. 8 of the Office Action. Rather, as described in Par. [0097], by keeping various data for the asset dispersed among multiple data substructures, Applicant's system is maintaining the security of each stakeholder's individual data substructure. In this regard, one stakeholder does not have access to the data of another stakeholder. Rather, as set forth in the claim, a stakeholder is permitted to view the data without being given access to the data structure of other stakeholders. See Arguments filed 11/03/2025, pp. 18-19 – emphasis added.
The Examiner respectfully disagrees.
If the system is “pull[ing] together data from discrete and distinct data structures,” the system is collecting information. The system is collecting information from discrete and distinct data structures. If the system is then “generat[ing] a record or view of the data which could be perceived by the user,” the system is displaying the information. The system is displaying certain results of the collection from the discrete and distinct data structures.
If the claimed invention is reciting “’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” the claimed invention is reciting a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Claim 1, as asserted by the Applicant, recites “the system stores the asset data among multiple distinct data substructures, and that upon request, the system will pull together the data from the various data substructures for a particular asset into an asset record (i.e., "common view") which the user/requester can then view and interact with.” See Arguments filed 11/03/2025, pp. 18-19.
A human being (e.g., a researcher) can store the asset data among multiple distinct data substructures (e.g., pages), and that upon request, the human being will pull together the data from the various data substructures (e.g., pages) for a particular asset into an asset record (e.g., report or file) which the user/requester can then view and interact with.
Admittedly, the claimed invention is utilizing a computer to perform the abstract idea. But these are additional elements (i.e., computerized elements) and additional elements are examined under Step 2A Prong Two, to determine whether any additional elements in the claim integrate the abstract idea into a practical application, not Step 2A Prong One. See MPEP §2106.05(f)(2).
As such, recited processes are processes that can practically be performed in the human mind even though the process is performed on a computer. A mental process can be performed on a computer without negating classification as a mental process. See MPEP §2106.04(a)(2)(III)(C).
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments filed 11/03/2025, pp. 19 and 21-22.
Specifically, Applicant argues:
Applicant submits that Enfish v. Microsoft, 822 F.3d 13278 (Fed. Cir. 2016) is instructive. As in Enfish, Applicant's data structure provides significant advantages with respect to security of data stored in the data structure. In particular, as described in the application, by maintaining the data for the asset in separate data substructures and requiring that all communication with the data structure go through the system (as shown in FIG. 3C), no stakeholder has access to the data of any other stakeholder. In this respect, Applicant submits that its system provides for an improvement in the functioning of a computer or computer system, or an improvement to the technical field. MPEP §2106.04(d)(1). See Arguments filed 11/03/2025, p. 19.
The Examiner respectfully disagrees.
Rather than being analogous to Enfish v. Microsoft, as asserted by the Applicant, the claim invention is more analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality by enabling a new functionality (e.g., preventing stakeholder access to the data of other stakeholders). Rather, the claimed invention is applying a computer’s existing capabilities (e.g., data access privileges) to implement a particular abstract idea (e.g., asset management). As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (e.g., asset management) that uses computers as tools.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
The specification does not provide any evidence that there is a technical problem (i.e., a technology-based problem) to be solved. For example, the specification does not provide any evidence that there was a technology-based problem that prevented existing and conventional technology from performing the claimed process.
The specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, or an improvement to conventional technology or technological processes. For example, the specification does not provide any evidence that the functionality of a computer or conventional technology has been improved, or their technological capabilities have been expanded beyond their existing capabilities.
Additionally, MPEP §2106.05(f)(1) recites:
Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743 – emphasis added.
Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished.
If there was a technical problem (e.g., existing technology was incapable of preventing stakeholders from accessing data of other stakeholders) then the claims should recite the details of the technical solution (e.g., how existing technology was improved to overcome this inability). However, the claims, as written, provide no such details and merely recite that the claimed functions (i.e., the outcome) are being performed.
For example, the claim does not recite details of how the system prevents stakeholder access to the data of other stakeholders, outside of stating that they are not permitted to have access and, therefore, are not provided access.
Applicant also argues that the claimed invention recites a practical application, specifically “because they impose meaningful limits on practicing the abstract idea,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments filed 11/03/2025, pp. 20-21.
The Examiner respectfully disagrees.
MPEP §2106.04(d) recites:
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
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, as discussed in MPEP §2106.05(e). emphasis added.
Examiner asserts that the claimed invention is merely “generally linking the use of the judicial exception to a particular technological environment” which is insufficient to demonstrate a practical integration.
Examiner notes that MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) 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, as discussed in MPEP § 2106.05(f); [and]
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
Step 2B
Applicant argues that the additional elements amount to “significantly more” than the abstract idea and, as such, satisfies Step 2B of the §101 Guidelines. See Arguments filed 11/03/2025, pp. 22-23.
The Examiner respectfully disagrees.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
§103 Rejection
Claim 1
Applicant argues that the previously asserted prior art (McNutt and Ballew) fails to teach or suggest the claimed invention as recited in Claim 1. See Arguments filed 11/03/2025, pp. 24-26.
Specifically, Applicant argues:
McNutt discloses an asset information system comprising an asset tag (102), an asset access device (106), and an asset display device (108). The asset access device and access display device can be combined in a single unit. The asset tag (102) has a memory on which asset data is stored. The asset access device reads the data and stores it in the asset display device. The asset display device may thus have data for multiple assets. However, any new data is updated to the tag, and thus anyone who needs the updated info would need to read the tag. Unlike Applicant's system, McNutt teaches that the data for an asset is stored on the RFID tag. Thus, the RFID taqs become the primary source for the data for the assets. Although data can be loaded onto a user device from the RFID tag, that data is not available to another user device which had not been used to read the data for the asset. Therefore, McNutt does not teach or suggest a centralized data structure, as set forth in the claims of this application. See Arguments filed 11/03/2025, pp. 24-25.
The Examiner respectfully disagrees.
As a preliminary matter, 37 CFR §1.111(b) recites:
A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
Applicants have failed to specifically point out how the language of the claims patentably distinguishes them from the prior art references utilized.
The claims, as written, do not recite that the data is accessed by “another user device.” The claims, as written, only recite one user device.
Regardless, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified McNutt and Ballew by duplicating claim elements contained in McNutt (e.g., the first user device) to create additional claim elements (e.g., a second user device) wherein each additional claim element would serve the same function as the original claim element. In the combination each element, original element and additional element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the combination were predictable. see MPEP §2144.04 (VI)(B).
The claims, as written, do not recite “a centralized data structure.”
Examiner assumes that Applicant means “the computer system” as recited in the claims, as “the computer system” is a centralized location for storage of data.
McNutt recites:
In operation, access device 106 retrieves and stores a plurality of asset information from a plurality of data tags 102 related with one or more assets 104 at a particular location or locations. Access device 106 stores the retrieved asset information and transmits the asset information to asset data display 108 or asset information system 120. Asset data display 108 stores the received asset information and displays the stored asset information upon request or demand from a user of asset data display 108 or asset information system 120. In another embodiment, asset data display 108 may be associated with a telecommunication device 124 which may be a telephone, DSL modem, cable modem, or other telecommunication device configured for communication to one or more asset information systems 120. See para. 39 – emphasis added.
McNutt discloses a computer system (i.e., an asset information system) which is a centralized location for storage of data. See para. 39.
Applicant further argues:
The Examiner suggests that in Pars. [0047] and [0058]-[0062] McNutt discloses a data structure. For the reasons just noted, Applicant respectfully disagrees. McNutt Par. [0047] provides that data is stored on the RFID tag and is accessed by the user device. In Pars. [0058]-[0062], McNutt describes a computer system that can be used. Other than to generally provide that data is stored on the RFID tag, McNutt does not describe a data structure. See Arguments filed 11/03/2025, p. 25.
The Examiner respectfully disagrees.
During examination, claims are to be “given their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005).
Under the broadest reasonable interpretation, a “data structure” is the structure in which data is organized. Data inherently has a data structure. Whatever structure data has is its data structure.
Applicant further argues:
The Examiner asserts that Ballew discloses Applicant's quality assurance schedule and the updating of the quality assurance schedule "in response to the receipt of information regarding testing, calibration, maintenance, or servicing for said selected asset" as set forth in Claim 1. Applicant respectfully disagrees. As set forth in the prior response, Ballew is directed to a system for monitoring the location of assets and the duration of their use. Ballew does disclose in Par. [0192] that "status information 1252 are alerts and warnings, such as an asset may be moved outside of a geo-fence, an asset may need maintenance or be close to needing maintenance". However, while Ballew discloses in multiple locations updating the asset information regarding location of an asset, Ballew does not disclose updating the cadence schedule in response to testing, servicing, etc. as described in Pars. [0078]-[0079] of the application and as set forth in Claim 1. See Arguments filed 11/03/2025, p. 25 – emphasis added.
The Examiner respectfully disagrees.
During examination, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). As such, para. 78 and 79 of the specification are not imported into the claim.
Ballew recites:
For example, if a dozer is operating at peak operation for an unexpectedly extended time period, such as disaster relief, the asset management system will be aware of the scheduled maintenance requirements and update its future maintenance forecast based on the present increase in operation time. Thus, the dozer can be serviced, in the field if necessary, when scheduled maintenance is due instead of passing the scheduled maintenance intervals, on purpose or accident, as presently occurs. See para. 103 – emphasis added.
In another example, in one embodiment, integrated data about an asset is used to supply a comprehensive work order which integrates both scheduled and unscheduled maintenance due for an asset. The comprehensive work order is used to update a maintenance information system, which for purposes of this example is system 3405B shown in FIG. 34. In one such embodiment, data for the unscheduled maintenance comes from inspection data reported by an enabled device such as enabled device 3409A, while data for the scheduled maintenance comes from operation information (hours of operation, engine time, oil level, and the like) reported by a reporting source such as reporting source 208A. Thus, in one embodiment, investigation information received via first client information system 3405A is integrated with other asset data can be extracted from database 205 to provide an update to second client information system 3405B. This allows for data sharing between client information systems which, in many cases do not normally share data. Such data sharing increases efficiency and streamlines operations of a company, such as an asset rental company, asset maintenance company, asset sales company, or asset operations company, or the like. See para. 408 – emphasis added.
Ballew discloses a system updating of the quality assurance schedule (maintenance schedule or scheduled maintenance) in response to the receipt of information regarding testing (inspection data), calibration, maintenance, or servicing for said selected asset. See para. 103 and 408.
Applicant further argues:
Neither McNutt nor Ballew teach or suggest a data structure comprised of discrete data substructures as set forth in Claim 1 and as described above. There is no incentive in either reference to provide a data structure as described in the application and set forth in Claim 1. McNutt, as noted, does not describe a database or data structure. Ballew does disclose a database. However, there is no incentive in Ballew to provide a data structure comprised of data substructures as used by Applicant, as such a data structure would add unnecessary complexity to the Ballew system. See Arguments filed 11/03/2025 – emphasis added.
The Examiner respectfully disagrees.
During examination, claims are to be “given their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005).
Under the broadest reasonable interpretation, a “data structure” inherently has discrete data substructures. Stated in an alternative manner, a structure can always be broken down into smaller structures.
For example, a book can be subdivided into chapters which can be subdivided into pages which can be subdivided into paragraphs which can be subdivided into sentences which can be subdivided into words.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified McNutt and Ballew by separating one composite claim element contained in McNutt (i.e., the data structure) into component claim elements (e.g., a first data substructure and a second data substructure) wherein each component claim element would serve the same separate function performed when it was a component in the original composite claim element. In the separation each component claim element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the separation were predictable. See MPEP §2144.04 (V)(C).
Regardless McNutt recites:
Asset information stored in data tag memory 126 may include a name of the manufacturer, an equipment classification, a model number, a serial number, a date of manufacture, a date of installation, a software version identification for the asset data software, an asset protocol version, one or more service contacts or service providers, a term of warranty, a length of a warranty, a warranty termination date, data related to a service action, service information, an asset owner name, and an asset location. In the case of a service action, this may include the identification of one or more operating actions or events that may prompt the user to initiate a service call. For example, this may include a recycling of a system or process, a failure, an outage, and a local light or other visual, audible or other indicator. See para. 29.
McNutt discloses a data structure (data tag memory) comprising a plurality of distinct and separate data substructures (data elements such as a name of the manufacturer, an equipment classification, a model number, a serial number, a date of manufacture, a date of installation, a software version identification for the asset data software, an asset protocol version, one or more service contacts or service providers, a term of warranty, a length of a warranty, a warranty termination date, data related to a service action, service information, an asset owner name, and an asset location). See para. 29.
Applicant further argues:
Neither McNutt nor Ballew teach or suggest a data structure comprised of discrete data substructures as set forth in Claim 1 and as described above. There is no incentive in either reference to provide a data structure as described in the application and set forth in Claim 1. McNutt, as noted, does not describe a database or data structure. Ballew does disclose a database. However, there is no incentive in Ballew to provide a data structure comprised of data substructures as used by Applicant, as such a data structure would add unnecessary complexity to the Ballew system. See Arguments filed 11/03/2025, p. 26.
The Examiner respectfully disagrees.
As previously asserted by the Examiner, McNutt discloses a “data structure comprised of discrete data substructures.”
Applicant further argues:
Finally, there is no incentive to modify McNutt in view of any of the teachings of Ballew. As noted, McNutt is directed to a system in which the data resides on the asset tag. The data is read from the asset tag, and then stored in the user device. McNutt does not have a remotely stored data structure, as is necessary for a system such as disclosed by Ballew and claimed by Applicant. To provide McNutt with the scheduling, reporting, and updating functions of Claim 1 would require a substantial reconfiguration of the McNutt system. In particular, it would require that that data be stored remotely from the asset, rather than on the asset tag. This would destroy a basic teaching of the McNutt system. Hence, for this additional reason, there is no incentive to modify the McNutt system as suggested by the Examiner. See Arguments filed 11/03/2025, p. 26 – emphasis added.
The Examiner respectfully disagrees.
The courts have stated that “[a] suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references...The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art… there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Examiner asserts that he can and/or has provided such “articulated reasoning” to support the legal conclusion of obviousness.
McNutt retrieves asset data from an asset tag utilizing a user device and transmits said data to a computer system for storage. Balew retrieves asset data from a computer system and transmits it to a user device. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have combined McNutt and Balew to transmit information to and receive information from a centralized computer system, thereby enabling a user to properly manage their assets.
Claim 23
Applicant argues that the Examiner fails to provide sufficient motivation to combine the previously asserted prior art (McNutt, Ballew and Weaver). See Arguments filed 11/03/2025, p. 31.
Specifically, Applicant argues:
Initially, Claim 23 is submitted to be allowable in view of its dependency from Claim 1. Further, Applicant submits that there is no incentive to modify the McNutt/Ballew combination in view of the teachings of Weaver. Applicant respectfully disagrees. As noted above, in the McNutt system, the asset data is stored in the memory of an asset tag that is associated with the particular asset. Although asset data can be read by, and stored on, a user device, the user must be in the vicinity of the asset to initially read the data and to update the data on the asset tag. Inasmuch as the data on the asset tag cannot be changed if the technician is not in the vicinity of the asset, the McNutt system effectively requires the presence of a technician at the asset. Thus, there is no reason to add proximity detection to the McNutt system because it simply is not necessary. Hence, there is no incentive to one of ordinary skill in the art to modify McNutt with the teachings of Weaver. Claim 23 is thus submitted to be allowable for this additional reason. See Arguments filed 11/03/2025, p. 31.
The Examiner respectfully disagrees.
Ballew discloses a system wherein a user device (enabled device) is utilized to update information pertaining to an asset, such inspection information. (see para. 388-390).
Weaver discloses a system comparing the location of the user relative to the location of the physical asset, and to including an indication in the record if the user is not within a predetermined distance of the asset. (see para. 58 and 59).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified McNutt and Ballew by incorporating location data, as disclosed by Weaver, thereby ensuring that the person inspecting the asset is actually inspecting the asset (i.e., is at the location of the asset).
9. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. DONLON can be reached on (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 September 3, 2026
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