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 .
DETAILED ACTION
Status of the Claims
Claim 1 is amended
Claims 1-20 are pending
The rejection under 35 USC 112 is withdrawn
The rejection under 35 USC 103 is withdrawn
The rejection under 35 USC 101 is maintained
Response to Applicant Remarks
Applicant’s well-articulated remarks have been considered but are unpersuasive for the reasons below.
Regarding the rejection under 35 USC 101, Applicant argues that the claimed limitations cannot be performed in the human mind. (Applicant’s 8/12/25 remarks, p.10, “The recited concurrent comparing and concurrently identifying for all electronic devices in the inventory information cannot practically be performed in the human mind. The Office Action's own framing ("but for the recitation of generic computer elements") improperly strips the concurrency limitation rather than considering the claim as a whole, contrary to established precedent.”) The examiner respectfully disagrees.
The examiner notes that the courts have held that performing an abstract idea faster does not necessarily confer patent eligibility. The claimed methods are not rendered patent eligible by the fact that they perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved. Such claims are not made patent eligible under § 101 simply because they speed up human activity. See, e.g., Content Extrac tion, 776 F.3d at 1347; DealerTrack, 674 F.3d at 1333. Whether the issue is raised at step one or step two, the increased speed and efficiency resulting from use of computers (with no improved computer techniques) do not themselves create eligibility. See, e.g., Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355, 1363 (Fed. Cir. 2023) (rejecting argument that “humans could not mentally engage in the ‘same claimed process’ because they could not perform ‘nanosecond comparisons’ and aggregate ‘result values with huge numbers of polls and members’”). The examiner respectfully suggests that a human could reconcile whether new data matches previously recorded data and then engage in a workflow to determine how to update the record accordingly.
Applicant also argues that the claimed invention is a practical application of an abstract idea, because it is a technical solution to a technical problem. (Applicant’s 8/12/26 remarks, p.11). The examiner respectfully disagrees.
Although the invention as claimed is operative to maintain data on electronic devices, the examiner respectfully suggests that this is not an improvement to technology or devices themselves. Whether the records that maintain this data is an a database or manually recorded or if a reconciliation proceeds manually or occurs at the speed of a computer, the examiner suggests that the invention is fundamentally a record keeping system that collects data and performs functions based on comparison of the data to rules. Similar inventions have been found to be ineligible. (See e.g., Fairwarning IP, LLC v. Iatric Systems, Inc.,, Fed. Cir. 2016, The claims related to a system to monitor access to protected health information in which a rule is created, an audit log is compared with the rule, and a notification is provided if rule is fulfilled. The court found that the claims simply related to the collection and analysis of data, which is an abstract idea.)
Applicant also argues that the finding that the additional elements are conventional is not supported. (Applicant’s 8/12/26 remarks, p.12, “The Office Action provides no such support: no citation to an express statement in the specification, no citation to a court decision finding the specific combination conventional, no citation to a publication, and no statement of official notice with opportunity to challenge. The conclusory assertion that "[c]ollecting, analyzing and displaying information, and receiving and transmitting over a network are conventional" does not address the specific ordered combination recited in claim 1, particularly the concurrent comparison and three-way branching based on the database status. Office Action, page 4.”) The examiner respectfully disagrees.
The examiner notes that the line following the quoted text in the prior office action provides a citation. (8/4/26 Non-final rejection, “Collecting, analyzing and displaying information, and receiving and transmitting over a network are conventional in the computing arts. (MPEP 2106.05h; See also MPEP 2106.05, Alice v. CLS, “. Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”).”) In the instant case, the examiner notes that the additional elements explicitly claimed may be a database or data store and a computer or server perhaps running various modules. These appear to be generic computing elements that do not confer eligibility.
Applicant also argues that the invention is not a “method of organizing human activity”. (Applicant’s 8/12/25 remarks, p.10, “Furthermore, the alternative characterization as a "method of organizing human activity" is conclusory and unsupported. Claim 1 governs machine-readable records of electronic device state in a device tracking database, not commercial or legal interactions, not fundamental economic practices, and not managing human behavior. The claims recite operations on machine-readable records of device state in a device tracking database, not organizing human activity.”) The examiner respectfully disagrees.
Although the invention is written in terms of machine readable records in a database, these are generic computing elements. The examiner respectfully suggests that the concept of recording device states (e.g. asset tracking) is a fundamental economic practice performed by many businesses. (See e.g., Dutta et al., A Tracking Solution of IT Assets and Resource Management, Int'l Journal of Mathematics and Computer Research, Vol. 10, Issue 7 (Year: 2022).)
The rejection under 35 USC 103 is withdrawn. The examiner concurs that the cited art does not disclose the conditional limitations upon detecting a mismatch: concurrently identifying the current status in the device tracking database and generating a first alert in response to the current status indicating the electronic device is retired, generating a second alert in response to the current status indicating the electronic device is missing, and updating the current status only when the current status is neither retired nor missing.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Regarding independent claims 1,16 the claimed invention recites an abstract idea without significantly more. The claims recites the abstract idea of managing inventory which is a mental process. Other than reciting devices, server, module, database nothing in the claims precludes the steps from being performed mentally. But for the devices, server, module, database the limitations on obtaining inventory information for electronic devices, accessing current status of electronic devices, comparing inventory information to current status, responsive to inventory information availability is the same as current status taking no action, responsive to inventory information availability does not match current status, identify current status of all electronic devices, responsive to device is retired status generating a first alert, responsive to device is missing status generating a second alert, responsive to device status is neither retired nor missing updating status as set out in inventory information is a process that under its broadest reasonable interpretation could be performed by mentally but for the recitation of generic computer elements. If claim limitations, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Further the above limitations related to managing inventory stripped of the identified additional and insignificant elements could also be considered a “Method of Organizing Human Activity” relating to the managing human behavior and interactions. (fundamental economic practice) Thus, the claims recite an abstract idea.
The judicial exception is not integrated into a practical application. The computers are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. The additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computer environment is not a practical application of the abstract idea and does not take the claim out of the mental process or method of organizing human activity grouping.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of the abstract idea into a practical application, the additional element of devices, server, module, database amount to no more than mere instructions to apply the exception using a generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. Collecting, analyzing and displaying information, and receiving and transmitting over a network are conventional in the computing arts. (MPEP 2106.05h; See also MPEP 2106.05, Alice v. CLS, “. Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). The claims are not patent eligible.
Regarding the dependent claims, these claims are directed to limitations which serve to limit the inventory management steps. The subject matter of claims 2/20 (device stock information to location associated with device), 3 (taking no further action regarding status if inventory information is similar), 4 (tracking database in storage media), 5 (connecting, requesting, gaining access to inventory information), 6 (automatically obtain information), 7 (obtain information on a schedule), 8 (notify incorrect status), 9 (notify found device), 10 (retired statuses), 11 (missing statuses), 12 (updating statuses), 13 (compare at least 10 devices), 14 (provide status report), 15 (communicate status report), 17 (communication module), 18 (effectuate first and second alert), 19 (connect, request and gain access to inventory information) appear to add additional steps to the abstract idea, implemented by generic computers. These claims neither introduce a new abstract idea nor additional limitations which are significantly more than an abstract idea. They provide descriptive details that offer helpful context, but have no impact on statutory subject matter eligibility.
Therefore the limitations on the invention, when viewed individually and in ordered combination are directed to in-eligible subject matter.
Conclusion
Relevant art not relied on but made of record include
“It’s noon on a tuesday. Do you know where your assets are?”, 2023, https://web.archive.org/web/20230803211101/https://www.panatrack.com/fixed-asset-inventory-software/
THIS ACTION IS MADE FINAL. 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 ALLEN C CHEIN whose telephone number is (571)270-7985. The examiner can normally be reached Monday-Friday 8am -5pm.
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/ALLEN C CHEIN/Primary Examiner, Art Unit 3627
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