DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on has been entered.
Claims Status
Claim 8 has been cancelled.
Claims 1-7 and 9-20 remain pending.
Claims 12-16 are withdrawn as set forth previously.
Claims 1-7, 9-11, and 17-20 stand rejected.
Response to Arguments
I. Applicant’s arguments made with respect to the rejection under 35 USC 112(a) have been fully considered but are not persuasive.
Applicant argues that training data is a “foundational concept” apparent to one of ordinary skill in the art, and expressly argues that the claimed “encoding” refers to “the standard process” . Accordingly, one of ordinary skill in the art would have understood that the specification as originally filed supported the use of standard training and encoding techniques in machine learning and/or neural networks. That is, one of ordinary skill in the art would have understood how these standard techniques could be applied to the target performance data to determine user preferences and generate recommendations. As such, the rejection is withdrawn.
II. Applicant’s arguments made with respect to the rejection under 35 USC 101 have been fully considered but are not persuasive.
On page 12-13 Applicant argues that the specification identifies a technical problem, citing to paragraph 0006 in support, and describes the problem as existing within computerized building product selection systems. Applicant emphasizes slow response time and adverse impact on network load in particular. These are discussed in relation to specific features of the claimed invention (p. 13-14), and are addressed as follows:
Regarding Feature 1 “accessing pre-processed performance data for at least some of the plurality of building product configurations”, the Examiner disagrees that this feature achieves an improvement to the functioning of the computer itself or another technology or technical field. As defined by Applicant, “pre-processing” is “performing computationally intensive calculations in advance”. This forms part of the abstract idea, and does represent a technical operation performed by a computer.
Furthermore, the Examiner agrees with Applicant’s characterization of the claimed “accessing” as retrieving [data] from storage. As stated by Applicant, the accessing is meant to encompass “accessing pre-computed data rather than calculating on the fly”.
Presuming the result from accessing pre-processed performance data for at least some of the plurality of building product configurations “reduces computational load and improves response time”, the Examiner maintains that the claimed invention does not achieve an improvement in the functioning of the computer itself or another technology or technical field. The claims as written, and the specification as originally filed, do not provide a technical explanation of how the data is processed, or how the data is stored or retrieved. As noted above, the “pre-processing” is itself an abstract computation, not a specific technological operation of the computer.
Further, the storage and retrieval occurs only at a high-level of generality. Neither the
claims nor the specification provides sufficient detail concerning the technical explanation by which the data is stored or retrieved (e.g., particular manners of data compression, formatting, or any other technical operation by which a reduction in network usage may be achieved by the computer). To the contrary, the improvement is merely in the decision to store data in advance for retrieval, the storage and retrieval taking place in some unspecified manner. Lastly, storing and retrieving information in memory is a function the courts have recognized as well‐understood, routine, and conventional, as is performing repetitive calculations (which relates to the pre-processing or pre-computation above) (see: MPEP 2106.05(d)(II) (ii) and (iv)).
Lastly, the Examiner points out that the limitation is recited as “wherein the automatically determining performance data comprises accessing pre- processed performance data for at least some of the plurality of building product configurations”. That is, the limitation even fails to recite any specific storage from which the data is accessed.
Regarding Feature 2 and “utilizing the user selection and target performance data as training data to identify relationships in user selection” the Examiner again disagrees. Initially, the Examiner notes that at least utilizing the user selection and target performance data…to identify relationships in user selection forms part of the abstract idea. Even assuming arguendo the entire limitation is to be treated as additional, the limitation does not integrate the abstract idea into a practical application or otherwise provide “significantly more”.
As disclosed and recited in the claims, the use of machine learning is akin to the words “apply it”. That is, they are the mere instructions to apply the abstract idea using (in part) machine learning. Neither the claims nor the specification set forth a particular training process, and Applicant expressly admits that the “encoding” is “standard ML implementation” (Remarks, p. 14; see also the discussion above regarding 35 USC 112(a)). 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: MPEP 2106.05(f)).
With respect to the technical benefits argued by Applicant, “improved recommendations” is an improvement to the abstract idea itself, not the functioning of the computer or another technology or technical field. An algorithm that is more accurate and in turn requires the automated abstract procedure implemented by a computer to simply be used less is not tantamount to improving the computer’s ability to perform any algorithm more efficiently. Likewise, using a network less as a result of more accurately configuring glass products is not tantamount to an improvement in another technology or technical field such as networks, but instead represents an improvement to the abstract configuration process and merely acts to generally link the abstract idea to the particular technological environment of computer networks.
Regarding Enfish, the plain focus of the claims at issue in Enfish was on an improvement to computer functionality itself – not economic or other tasks for which a computer is used in its ordinary capacity. The court in Enfish found that the claims were directed to a specific improvement to the way computers operate embodied in a "self-referential table" (rather than any form of storing tabular data). This point was underscored by the emphasis the court placed upon Applicant’s disclosure, which described a self-referential table that functioned differently than conventional database structures. The Examiner holds that a comparison to the circumstances and concepts described in Enfish is inapposite, and reiterates that both the specification and claims set forth the storage and retrieval of pre-processed (“pre-computed”) data only at a high level. There is no restriction on how these operations are performed, and nothing like the technical solution described with respect to the self-referential table of Enfish.
Ultimately, the Examiner emphasizes that – even if a technical problem is acknowledged – the claims fail to reflect a technical solution and instead employ generic computing technology only at a high level as a tool to perform the abstract idea.
Turning to Applicant’s arguments on Visual Memory and the standard of evaluation, the Examiner disagrees. More specifically, Applicant alleges that the relevant question “is not whether the specification provides implementation details of every sub-component, but whether the specification describes the improvement with sufficient detail that a person of skill in the art would recognize it as an improvement”. MPEP 2106.05(a); MPEP 2106.04(d)(1)) are explicit: 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. Although the specification need not explicitly set forth the improvement, 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.
The Examiner maintains that Applicant’s specification fails to provide sufficient detail that a person of skill in the art would recognize it as an improvement. As discussed above, both the claims and the specification provide details with respect to how the pre-processing may be performed, nor do they otherwise describe any particular manner of processing, formatting, or storing the data that moves beyond a highly-generalized access of data previously processed. Notably, the claim itself does not recite any procedure for “pre-processing performance data”, but merely “accesses” the data that has been “pre-processed”. At best, this represents storing and retrieving information in memory (see MPEP 2106.05(d)(II)(iv)).
Furthermore, Applicant expressly states “This is a fundamental computer science concept (trading upfront computation for improved query performance) and represents a specific technical implementation choice that improves computer operation.” (p. 17). This apparent admission only underscores the Examiner position that the specification has not provided sufficient details to demonstrate that Applicant has invented an improvement to the computer’s functioning or another technology or technical field. This is effectively applying known improvements in the industry to Applicant’s abstract idea.
With respect to Applicant’s arguments against the Examiner’s use of Affinity Labs, the Examiner maintains that the comparison is appropriate. Although the claims recite structural/functional requires such as accessing pre-processed data and encoding relationships these are recited only at high-level of generality in the claims, with the specification effectively providing only literal support. There is no specificity, no restriction on how the operations are performed, and nothing that provides evidence that the claims go beyond using a computer to merely implement the abstract idea.
With regard to McRO, the response is similar to Enfish. The basis for the court’s decision in McRO was that the claims were clearly directed to an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters"). As part of the analysis, the court in McRO emphasized the specification, which clearly described the invention as improving computer animation through the use of specific rules. The decision in McRO was similar to that in Enfish v. Microsoft (Fed. Cir. 2016) and other precedential decisions in that the courts emphasized the specificity of the specification in detailing and solving a problem arising in a specific technology or technical field. Unlike McRO, the claims do not reflect a technical solution, and even granting that the pre-processing does relate to such a technical solution, Applicant has already admitted that this is a “fundamental computer science concept” and not a product of their own innovation.
MPEP 2106.05(d) also contrasts the McRO decision with that in in Affinity Labs of Tex. v. DirecTV, LLC (discussed supra). In that decision, the court relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016). The Examiner holds that a more proper comparison of the claimed invention is to that of Affinity Labs of Tex. v. DirecTV, LLC, rather than McRO (or other eligible decisions). The Examiner also draws Applicant’s attention to RecogniCorp, LLC v. Nintendo Co. Fed. Cir. 2017), which held claims directed to a method of creating a composite image through encoding/decoding facial data to be ineligible. Here again, the court relied upon admissions and deficiencies in the speciation, which informed the court on what the applicant had invented.
Concerning Applicant arguments on p. 18 that the claimed steps cannot be performed as a mental process, even presuming this were true the claims are still understood to recite an abstract idea because they recite ‘certain methods of organizing human activity’, such as by performing commercial interactions (see: MPEP 2106.04(a)(2)(II)).
Lastly, Applicant argues that the claims would be eligible under any prior standard, and then makes subsequent comparison to DDR Holdings. Whether or not a determination of eligibility would have been different under a prior standard is moot, as under the existing standard outlined in MPEP 2106 the claims remain ineligible.
Although Applicant alleges a particular solution, the Examiner disagrees. As written the claims merely set forth at a high level the a pre-computation of data, its storage and retrieval. There is no particular technology-based solution that addresses slow response times or network usage.
Turning to Applicant’s citation to DDR Holdings, the claims in DDR Holdings attempted to address a problem specific to the routine functionality of a link (i.e. a user is directed away from the current page to the site of another merchant). The claims of DDR Holdings specified how interactions with the computer/Internet were manipulated to create a composite/hybrid page that prevented the user from being directed to the outside merchant, therein overriding the routine function of the link.
Here again, the Examiner holds that the claims of the instant application lack any restriction on the manner in which the computing operations are to be performed to store or retrieve data, train or encode data for machine learning, et al.
Applicant’s attention is also drawn to Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017). Here, the courts found the claims to be directed to the abstract idea of “collecting, displaying, and manipulating data.” 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words “apply it”. 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”)). Like Intellectual Ventures, nothing in the claims indicates what specific steps are undertaken for storing or retrieve data, training, encoding data for machine learning.
Accordingly, the rejection under 35 USC 101 has been maintained.
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 1-7, 9-11, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Regarding claims 1-7, 9-11 and 17-20, under Step 2A claims 1-7, 9-11 and 17-20 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites a method of performance-driven selection of building product configurations comprising
receiving target performance data for a building product configuration, wherein the target performance data includes a user indication of a geographic region and…the target performance value being at least one of U-factor, solar heat gain coefficient, transmittance, reflectance, or condensation resistance;
automatically determining performance data for each of a plurality of building product configurations, wherein each of the plurality of building product configurations includes a glass product and a framing system, the performance data comprising center of glass U-value and frame U-value;
identifying, from the plurality building product configurations, one or more satisfactory building product configurations, wherein the performance data of the one or more satisfactory building product configurations satisfies the target performance data;
deriving user-selectable configuration options based, at least in part, on the one or more satisfactory building product configurations, the user selectable configuration options including an interlayer thickness;
publishing information related to the user-selectable configuration options; and
receiving a user selection of a building product configuration from the one or more satisfactory building product configurations;
utilizing the user selection and target performance data to identify relationships in user selections; and
wherein the automatically determining performance data comprises accessing pre-processed performance data for at least some of the plurality of building product configurations.
These limitations recite ‘certain methods of organizing human activity’, such as by performing commercial interactions (see: MPEP 2106.04(a)(2)(II)). This is because the claimed limitations set forth and describe a process for investigating and customizing building product configurations. This represents the performance of a marketing and/or sales activity, which is a commercial interaction and falls under organizing human activity.
Accordingly, under step 2A (prong 1) claim 1 recites an abstract idea because claim 1 recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. The Examiner acknowledges that representative claim 1 does recite additional elements, such as a computer system and a user interface. Claim 1 also recites:
the user interface comprises at least one graphic indicator corresponding to a desired target performance value, and,
utilizing the user selection and target performance data as training data to identify relationships in user selections by encoding the relationships in at least one of a neural network or machine learning algorithm to determine user preferences and generate recommendations that improve the selection process.
For the sake of argument, the Examiner will also address accessing pre- processed performance data for at least some of the plurality of building product configurations as an additional element despite no specific storage being recited by the limitation from which the data is accessed.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 1 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
With further respect to (i), even presuming arguendo that the step of accessing pre-processed data does not form part of the abstract idea, the Examiner holds that this is not tantamount to an improvement to the functioning of a computer or another technology or technical field. This is because neither the claims nor the specification discuss any underlying technical procedure (such as a particular way of “processing” the data (e.g. compressing or formatting data, or other computer-based processes for data handling) in order to enable more expedient transmission. This reflects an improvement to the abstract idea itself, rather than an improvement in the functioning of a computer, or an improvement to other technology or technical field. See the more detailed discussion under the heading Response to Arguments above, which is incorporated herein.
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claim 1, taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Furthermore, the additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the additional elements of claim 1 utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data over a network,
storing or retrieving information from memory,
presenting offers.
Even considered as an ordered combination (as a whole), the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 2-7 and 9-11, dependent claims 2-11 recite more complexities descriptive of the abstract idea itself, and at least inherit the abstract idea of claim 1. As such, claims 2-7 and 9-11 are understood to recite an abstract idea under step 2A (prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 2-7 and 9-11 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. Claims 2-11 rely on at least similar additional elements as recited in claim 1, which are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Lastly, under step 2B, claims 2-7 and 9-11 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims merely apply the exception on generic computing hardware, generally link the exception to a technological environment, and append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
In view of the above, claims 2-7 and 9-11 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Regarding claims 17-20, claims 17-20 recite at least substantially similar concepts and elements as recited in claims 1-7 and 9-11 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 17-20 are rejected under at least similar rationale.
Claim Interpretation
The following terms have been interpreted as follows in accordance with their plain meaning in the art:
Interlayer: a layer of material between two glass panes (e.g., PVB, EVA, SGP, etc. are known interlayer materials)
Interlayer thickness: the thickness of the interlayer material
Allowable Subject Matter
Though rejected on other grounds, claims 1-7, 9-11, and 17-20 are allowable over the prior art. The reasons for indicating allowable subject matter discussed in the Non-Final mailed 4/15/2025 (p. 14-15) are incorporated herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J ALLEN whose telephone number is (571)272-1443. The examiner can normally be reached Monday-Friday, 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
WILLIAM J. ALLEN
Primary Examiner
Art Unit 3625
/WILLIAM J ALLEN/Primary Examiner, Art Unit 3619