DETAILED ACTION
Response to Amendment
This Action is in response to Preliminary Amendment filed on 06/26/2025.
Claims 1 has been cancelled. Claims 2-21 are new.
Claims 2-21 are presented for examination.
Claims 2-21 remain pending in this application.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/25/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
Domestic Benefit/ Cross Reference
This application is a Continuation of U.S. Patent Application Serial No. 18/362,725, filed July 31, 2023, which is a Continuation of U.S. Patent Application Serial No. 17/239,488, filed April 23, 2021. Acknowledgment is made of applicant's claim for benefit of prior filed applications.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim(s) 8-9 is/are objected to because of the following informalities:
Claim 8 recites the limitation “subsequent to caching the first chained sequence of com, …” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitations “wherein the grouping the sequence of API calls comprises…” in line 4 as well as “the chained sequence of API invocations” in line 11. There are insufficient antecedent basis for these limitations in the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 begins by reciting “the method of claim 8 further comprising: …”. However, claim 8 is a system claim, not a method claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 6-7, 9-10, 16 and 20 is/are rejected on the ground of non-statutory double patenting as being unpatentable over claims U.S. Patent documents US 12340263 B2 and US 11755392 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations in the instant application are obvious variation of the method claims of the exemplary US 12340263 B2, as shown in the table below:
Current Application
U.S. Patent No. US 12340263 B2
Claim 2 (also similar claims 9 and 16):
A system comprising:
a non-transitory memory storing instructions; and
one or more hardware processors communicatively coupled to the non-transitory memory and configured to execute the instructions from the non-transitory memory to cause the system to:
identify a sequence of actions that has been conducted via a first edge server of the system at a frequency higher than a threshold, wherein each action in the sequence of actions triggers an execution of one or more corresponding operations at a server;
generate a sequence of application programming interface (API) computer program modules based on the sequence of actions;
chain the sequence of computer program modules, wherein chaining the sequence of computer program modules comprises linking a first parameter in a first computer program module in the sequence of computer program modules to a second parameter in a second computer program module in the sequence of computer program modules; and
cache the chained sequence of computer program modules at the first edge server.
Claim 1:
A system comprising:
a non-transitory memory storing instructions; and
one or more hardware processors configured to execute the instructions to cause the system to perform operations comprising:
identifying a particular sequence of user action steps that has been conducted via a first edge server of the system at a frequency higher than a threshold, wherein each user action step in the particular sequence of user action steps triggers an execution of one or more corresponding operations within the system;
generating a sequence of application programming interface (API) invocations in an order associated with the particular sequence of user action steps;
grouping the sequence of API invocations, wherein the grouping the sequence of API invocations comprises linking a first parameter in a first API invocation in the sequence of API invocations to a second parameter in a second API invocation in the sequence of API invocations; and
based on determining that the particular sequence of user action steps is trending at a geographical location based on a set of criteria, caching the grouped sequence of API invocations at a particular edge server corresponding to the geographical location.
Claim 6:
The system of claim 2, wherein executing the instructions further causes the system to:
analyze actions conducted via the first edge server over a period of time, wherein the sequence of actions is identified based on analyzing the actions.
Claim 10:
The method of claim 9, wherein the determining is further based on the analyzing the aggregated user action data.
Claim 7 (and similarly claim 20):
The system of claim 2, wherein executing the instructions further causes the system to:
identify a second sequence of actions that has been conducted via a second edge server of the system at a second frequency higher than the threshold; and
cache a second chained sequence of computer program modules associated with the second sequence of actions at the second server.
Claim 14:
The method of claim 8, further comprising:
identifying a second sequence of user action steps that has been conducted via the second edge server;
…
… causing the first edge server to cache the chained second sequence of API invocations in the first edge server.
Claim 10:
The method of claim 9, further comprising:
analyzing different sequences of actions conducted via the edge server by different users; and
determining that the sequence of action, from the different sequences of actions, is trending based on the analyzing.
Claim 7:
The system of claim 1, wherein the operations further comprise: determining that the particular sequence of user action steps is trending at the geographical location based on user activities corresponding to the particular sequence of user action steps conducted through the particular edge server exceeding a second threshold.
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.
35 U.S.C. 101 has been interpreted as imposing three requirements. First, whoever invents or discovers an eligible invention may obtain only one patent therefor. MPEP 2104. This requirement forms the basis for statutory double patenting rejections when two applications claim the same invention (i.e. claim identical subject matter). Second, a claimed invention must fall within one of the four eligible categories of invention (i.e. process, machine, manufacture, or composition of matter) and must not be directed to subject matter encompassing a judicially recognized exception as interpreted by the courts. Id.; MPEP 2106. Third, a claimed invention must be useful or have a utility that is specific, substantial and credible. MPEP 2104.
The four eligible categories of invention include: (1) process which is an act, or a series of acts or steps, (2) machine which is an concrete thing, consisting of parts, or of certain devices and combination of devices, (3) manufacture which is an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery, and (4) composition of matter which is all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids. MPEP 2106(I).
Claims 2, 6-12 and 20-21 are rejected under 35 U.S.C. 101 (STEP 2) because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 2 is directed to a system comprising: a non-transitory memory storing instructions; and one or more hardware processors communicatively coupled to the non-transitory memory and configured to execute the instructions from the non-transitory memory to cause the system to perform a series of steps. Although the claimed invention is a statutory category of invention, the steps involve:
identify a sequence of actions that has been conducted via a first edge server of the system at a frequency higher than a threshold, wherein each action in the sequence of actions triggers an execution of one or more corresponding operations at a server (Mental processes – concepts performed in the human mind including an observation, evaluation, judgment, opinion);
generate a sequence of application programming interface (API) computer program modules based on the sequence of actions (Mental processes – concepts performed in the human mind including an observation, evaluation, judgment, opinion);
chain the sequence of computer program modules, wherein chaining the sequence of computer program modules comprises linking a first parameter in a first computer program module in the sequence of computer program modules to a second parameter in a second computer program module in the sequence of computer program modules (Mental processes – concepts performed in the human mind including an observation, evaluation, judgment, opinion);and
The limitation of “identify a sequence of actions that has been conducted via a first edge server of the system at a frequency higher than a threshold, wherein each action in the sequence of actions triggers an execution of one or more corresponding operations at a server”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “first edge server” and “a server”, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “first edge server” and “a server” language, “identify” in the context of this claim encompasses the user manually determining a sequence of actions that has been conducted at a frequency higher than a threshold, wherein each action in the sequence of actions triggers an execution of one or more corresponding operations.
Similarly, the limitations of “generate a sequence of application programming interface (API) computer program modules based on the sequence of actions”, and “chain the sequence of computer program modules, wherein chaining the sequence of computer program modules comprises linking a first parameter in a first computer program module in the sequence of computer program modules to a second parameter in a second computer program module in the sequence of computer program modules” as drafted, are method steps that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. These steps also encompass the user manually linking parameters of API program modules together to create a sequence chain.
Next, an evaluation is done whether the claim recites additional elements that integrate the exception into a practical application of the exception. This judicial exception is not integrated into a practical application. In particular, the claim recites the additional limitations in:
cache the chained sequence of computer program modules at the first edge server.
While this step is used in storing the chained sequence of computer program modules, this step is performed as a final step to store data after the steps of mental analysis, and is a necessary post-solution activity for all uses of the recited exception. All uses of the recited judicial exception require such data gathering or data output (see Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); also see MPEP 2106.05(g)). Adding a final step of caching data to a process that only recites concepts performed in the human mind does not add a meaningful limitation to the process of computing the area. It is thus insignificant extra-solution activity, and does not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
Next, the additional elements are evaluated individually and in combination to determine whether they amount to significantly more. The claim recites the additional elements in “first edge server”, “a server”, and “cache the chained sequence of computer program modules at the first edge server”.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because first edge server” and “a server” are generic computer elements, applied generically to an abstract idea. The mere recitation of first edge server” and “a server” is akin to adding the words “apply it" with a computer in conjunction with the abstract idea. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. In addition, and as set forth above, the steps of cache the chained sequence of computer program modules at the first edge server, is extra-solution activity. Adding the steps of (i) identify a sequence of actions that has been conducted via a first edge server of the system at a frequency higher than a threshold, wherein each action in the sequence of actions triggers an execution of one or more corresponding operations at a server (a mental process), (ii) generate a sequence of application programming interface (API) computer program modules based on the sequence of actions (a mental process), and (iii) chain the sequence of computer program modules, wherein chaining the sequence of computer program modules comprises linking a first parameter in a first computer program module in the sequence of computer program modules to a second parameter in a second computer program module in the sequence of computer program modules (a mental process) do not add a meaningful limitation to the process of operating a mobile device. As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). Taking the elements both individually and as a combination, the computer components at each step of the process perform purely generic computer functions. Therefore, the claim as a whole does not amount to significantly more than the abstract idea itself, making the claim patent ineligible.
As for claims 9 and 16, the claims are directed towards the corresponding method and non-transitory machine-readable medium to perform the steps disclosed in system claim 1. Although the method and non-transitory machine-readable medium are statutory categories of inventions, the claim limitations do not teach or further define over the limitations put forth in claim 1, hence, directed to a judicial exception. Therefore, claims 9 and 16 are rejected for the same reasons as set forth in claim 1.
Claim 6-8, 10-12 and 20-21 depend on claims 1, 9 and/or 16, and introduces additional limitations:
analyze actions conducted via the first edge server over a period of time, wherein the sequence of actions is identified based on analyzing the actions;
identify a second sequence of actions that has been conducted via a second edge server of the system at a second frequency higher than the threshold;
cache a second chained sequence of computer program modules associated with the second sequence of actions at the second edge server;
subsequent to caching the first chained sequence of com, identify a second sequence of actions that has been conducted via the first edge server at a second frequency higher than the threshold;
generate a second chained sequence of computer program modules based on the second sequence of actions; and
cache the second chained sequence of computer program modules at the first edge server;
analyzing different sequences of actions conducted via the edge server by different users;
determining that the sequence of action, from the different sequences of actions, is trending based on the analyzing; and
removing the first chained sequence of API invocations from the edge server.
As set forth in claim 2, these limitations as drafted, are processes that each, under its broadest reasonable interpretation, covers method of mental processes – concepts performed in the human mind including an observation, evaluation, judgment, opinion.
The claim does not include additional elements that integrate the judicial exception (abstract idea) into a practical application of the exception. If the exception is not integrated into a practical application, then the claim is “directed to” the exception.
In addition, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because the additional elements are either generic computer elements, applied generically to an abstract idea, or insignificant extra-solution activities that do not amount to an inventive concept. Taking the elements both individually and as a combination, each step of the process perform purely generic functions. Therefore, claims 6-8, 10-12 and 20-21 are rejected for the same reasons as set forth in claim 2.
Allowable Subject Matter
Claims 2-21 are allowed over prior arts.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Additional References
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bastaldo-Tsampalis et al. (US 20140279024 A1) provides a content delivery system or consumer experience platform.
Ko et al. (US 10445151 B1) teaches Distributed API accounting that uses aggregated counter value corresponding to the API service counter identifier.
Lipstone (US 10114882 B2) discloses CDN analytics management via edge stage collectors to collect analytics associated with requests for content in the CDN.
Freedman (US 7007089 B2) generates CDN map using passive measurement data.
Ochsner et al. (US 11290476 B1) discloses time bounded lossy counters for network data, wherein information pertaining to the API calls is included in the information associated with the graph edge of the graph database model.
POITREY (US 20180365190 A1) teaches acceleration system for facilitating processing of API calls.
Kim et al. (US 8458733 B2) teaches global API deployment and routing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANDARVA KHANAL whose telephone number is (571)272-8107. The examiner can normally be reached MON-FRI, 0800-1700.
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/SANDARVA KHANAL/Primary Examiner, Art Unit 2453
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