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
Claims 1,15,16 are amended
Claims 6,9-12 are cancelled.
Claims 1-5,7-8,13-20 are pending.
The rejection under 35 USC 112 is withdrawn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 invention cannot be performed in the human mind. (Applicant’s 8/13/26 remarks, pp.13-14, “Claims 1 and 15, as amended, require: (1) obtaining disposal details "by requesting, via an application programming interface, the disposal details from a disposal vendor and receiving, via electronic communication, the disposal details in response to the request"; (2) "concurrently comparing, by a computer processor via execution of computer-readable memory encoded with instructions and for all electronic devices for which disposal details are obtained, the disposal details for the electronic device to the corresponding device details in the device tracking database"; (3) "generating an alert that notifies an operator that the disposal vendor has not provided a certificate of wipe or recycling for the electronic device"; (4) as recited by claim 1, "saving the at least one corresponding certificate included in the disposal details to storage media"; (5) "generating a certificate indication, for the electronic device in the device tracking database, including that the at least one corresponding certificate is saved in storage media and a location within storage media at which the certificate is saved"; and (6) "locating the at least one corresponding certificate using the certificate indication and providing, via electronic communication, the at least one corresponding certificate to a client for which the electronic devices are tracked." Additionally, claim 1 recites a conditional lead-in, "upon obtaining the disposal details that include the signal that the respective electronic device has at least one corresponding certificate," which ties the certificate-handling steps to a specific triggering condition within the disposal details. Claim 15 recites corresponding disposal-module functions, including "save the at least one corresponding certificate included in the disposal details to storage media," "generate a certificate indication, for the electronic device in the device tracking database, including that the at least one corresponding certificate is saved in storage media and a location within storage media at which the at least one corresponding certificate is saved," and "locate the at least one certificate using the certificate indication and provide, via electronic communication, the at least one corresponding certificate to a client for which the electronic devices are tracked." These limitations cannot practically be performed in the human mind. A human cannot make API requests to an external disposal vendor's system, cannot concurrently reconcile disposal details against a device tracking database for all electronic devices for which disposal details are obtained, cannot save a certificate file to storage media and write a certificate indication including its storage location into a database record, and cannot later locate that file using the certificate indication and electronically transmit it to a remote client. Moreover, the mental processes grouping is defined as "concepts performed in the human mind," and the enumerated examples are "observations, evaluations, judgments, and opinions." MPEP § 2106.04(a)(2)(III). Saving a certificate file to storage media, writing a certificate indication into a database record, and later retrieving that file
using the certificate indication are none of those things. They fall outside the mental processes
grouping entirely, rather than being additional elements to be stripped away under a "but for"
analysis. The Office Action's "but for" analysis improperly strips out these affirmative claim
requirements. Accordingly, the claims do not recite a mental process under Prong One.”) 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 Extraction, 776 F.3d at 1347; DealerTrack, 674 F.3d at 1333. 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.
Regarding the claimed API, this appears to be a generic interface. Although an API is obviously specific to a computer, in this instance, it is only a generic mechanism to exchange information and does not confer eligibility. (MPEP 2106.05f, “Other examples where the courts have found the additional elements to be mere instructions to apply an exception, because they recite no more than an idea of a solution or outcome include:
i. Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315, 1331, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017);”)
Although a human mind generally does not directly interact with a database, at the level the invention is claimed the database is merely a data store used in a customary manner that applies the abstract idea to a technical environment. A human can manually store and retrieve records. Employing a database to store data is not an improvement to technology that confers eligibility. (MPEP 2106.05a, “Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality…
vii. Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality," BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018); and”).
Similarly, transmission of data by a generic computer does not confer eligilbity. (MPEP 2106.05f, “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.”).
Applicant also argues that the claimed invention is a practical application of an abstract idea, citing USPTO eligibility example 42. (Applicant’s 8/13/26 remarks, p.14).
Although the example is not intended to be a template or evidence for eligibility, the examiner would point out that example 42 is at least distinguishable from Applicant’s claimed invention, because Applicant lacks any recitation of conversion of medical record data from hardware/software dependent nonstandardized to standardized formats.
Applicant also argues that the invention is unconventional under step 2B. (Applicant’s 8/13/26 remarks, p.15, “The Office Action cites
Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014), for the proposition that "[n]early
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." Office Action, page 7. But the generic "communications controller" and "data storage unit"
of Alice are not commensurate with the specific claim limitations at issue here: an API request
directed to an external disposal vendor system and receipt of disposal details in response, saving a
certificate file to storage media and generating a certificate indication, including the storage
location, in the device tracking database, and later locating that certificate file using the certificate
indication and electronically transmitting it to a client.”). The examiner respectfully disagrees.
As discussed above, the examiner does not consider the recited API to be more than a generic computing elements. Similarly, receiving, storing, transmitting data on a computer is not more than an abstract idea. (MPEP 2106.05f, “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.”). The examiner understands storing/retrieving data in a database to be ordinary functions of a database, not an improvement to a database. (MPEP 2106.05a, “Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality…
vii. Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality," BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018); and”). A human could manually store a certificate in some type of organized filing system and retrieve/share it as needed. Although the enumerated steps recite technological elements, they appear to only be steps of an abstract idea applied to a generic technical environment.
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 1-5,7-8,13-20 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, 15 (note Claims 15, 16 and 17 appear to recite the limitations of claim 1) 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 a processor, database/storage, electronic communication, modules nothing in the claims precludes the steps from being performed mentally. But for the processor, database/storage, electronic communication, modules the limitations on
obtaining disposal details via electronic communication, the disposal details having at least one of the following: a disposal date representative of a date on which the respective electronic device was disposed, a signal that the respective electronic device has a corresponding certificate, an indication that the respective electronic device was disposed, and an indication that the electronic device was sold;
accessing … that includes device details and a current status for each of the electronic devices for which disposal details are obtained;
concurrently comparing, … via execution of computer-readable memory encoded with instructions and for all electronic devices for which disposal details are obtained, the disposal details for the electronic device to the corresponding device details …;
for each electronic device for which disposal details are obtained:
in response to the disposal details for the electronic device matching the corresponding device details …, taking no further action regarding the current status of the electronic device and regarding updating the device details;
in response to at least a portion of the disposal details for the electronic device differing from the corresponding device details …, identifying the current status of the respective electronic device … and;
in response to the current status of the electronic device … indicating that the electronic device is retired and the electronic device does not have a corresponding certificate, comparing the disposal date for the respective electronic device to a threshold amount of time and:
in response to the disposal date being less than or equal to the threshold amount of time, updating the device details in the device tracking database to include at least a portion of the disposal details; and
in response to the disposal date being greater than the threshold amount of time, generating an alert that notifies an operator that the disposal vendor has not provided a certificate of wipe or recycling for the electronic device;
in response to the current status of the electronic device … indicating that the electronic device is not retired, identifying whether the disposal details include either the indication that the electronic device was disposed or the indication that the electronic device was sold and;
in response to the disposal details including at least one of the indication that the electronic device was disposed and the indication that the electronic device was sold, updating the current status for the electronic device … to reflect the indication for the respective electronic device as set out in the disposal details;
in response to the disposal details not including at least one of the indication that the electronic device was disposed and the indication that the electronic device was sold, determining whether the current status of the electronic device … indicates that the electronic device is pending disposal such that:
in response to the current status indicating that the electronic device is pending disposal, updating the device details .. to include at least a portion of the disposal details; and
in response to the current status not indicating that the electronic device is pending disposal, updating the current status … to indicate that the electronic device is pending disposal;
upon obtaining the disposal details that include the signal that the respective
electronic device has at least one corresponding certificate:
saving the at least one corresponding certificate included in the disposal
details …; and
generating a certificate indication, for the electronic …, including that the at least one corresponding
certificate is saved … and a location … at which the certificate is saved;
locating the at least one corresponding certificate using the certificate indication
and providing, …, the at least one corresponding
certificate to a client for which the electronic devices are tracked.
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 a processor, database, modules amounts 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 dependent claims, these claims are directed to limitations which serve to limit the inventory management steps. The subject matter of claims 2 (update disposal sold details), 3 (updating disposal details when not pending disposal), 4 (updating disposal details automatically), 5 (obtaining disposal details on a schedule), 7 (threshold time is 7 days), 8 (disposal details include certificate), 13 (status is in stock pending disposal), 14 (status is retired disposed), 18 (provide status information to client), 19 (obtain and use disposal details from vendor), 20 (communicate with vendor to request and receive disposal details) 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
“What Is Asset Disposition? Everything You Need to Know”, 7/2024, https://redbeam.com/blog/the-disposition-of-assets-how-it-works-and-implications-to-know
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian Zeender can be reached at (571) 272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLEN C CHEIN/Primary Examiner, Art Unit 3627
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