DETAILED ACTION
This communication is a Final Rejection Office Action in response to the 2/3/2026 submission filed in Application 17/430,836.
Claims 1, 11, 15 have been amended. Claims 1, 5, 7-11, 13, 15-16, and 19-21 are now presented.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments filed 2/23/2026 with respect to the prior art have been fully considered and are persuasive. The prior art rejections have been withdrawn.
Applicant’s remaining arguments have been fully considered but are not persuasive.
Regarding the Claim interpretation under 35 U.S.C. 112(f), the Applicant argues “Applicant has amended the claims to refer to the "SE-Linx communications module" rather than merely "Linx communications module." Applicant has further amended the claims to specify the particular functions performed by the SE-Linx communications module. Applicant respectfully submits that these amendments provide sufficient structure to avoid interpretation under 35 U.S.C. § 112(f). To the extent the Examiner continues to interpret certain limitations under 35 U.S.C. § 112(f), Applicant respectfully submits that the Specification provides corresponding structure for each of the claim elements”
The Examiner respectfully disagrees. The amendments directed to the web-based SE Linx control communication module do not provide sufficient structure and as such that the limitations articulated in the claim interpretation will still be interpreted under 112(f). If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. As such, the claims are still interpreted under 112(f).
Regarding the Rejection under 101, the Applicant argues “Applicant respectfully submits that the claims recite specific technical implementations that describe how the claimed result is accomplished, rather than merely reciting a desired outcome. Claim 1 recites that the machine learning is configured to "overlay design rules from the document library module by automatically applying the stored design rules to update the cost estimate when the CAD data for the project is modified." The claim specifies the mechanism by which the machine learning overlays design rules-namely, by automatically applying stored design rules to update the cost estimate in response to modifications to CAD data. Similarly, claim 1 recites that the machine learning is configured to "memorize prior solutions for previous projects and incorporate them into project management functions for the project by storing optimized parameters derived from prior project data and automatically applying the stored optimized parameters to generate recommendations for the project." This specifies that the machine learning stores optimized parameters from prior project data and automatically applies those stored parameters to generate recommendations.”
The Examiner respectfully disagrees. The applying the stored design rules to update the cost estimate when the CAD data for the project is modified is a mental process as a human can perform this with a pen and paper. The claim recites that machine learning is configured to perform this, but does not state how. The recitation of machine learning is indicative of apply it which is not sufficient to integrate the abstract idea into a practical application.
Further, a human can also memorize prior solutions for previous projects and incorporate them into project management function. The claim recites that machine learning is configured to perform this, but does not state how. The recitation of machine learning is indicative of apply it which is not sufficient to integrate the abstract idea into a practical application.
Regarding the Rejection under 101, the Applicant further argues “The claims recite machine learning that automatically applies stored design rules to update a cost estimate when CAD data for the project is modified, and that stores optimized parameters derived from prior project data and automatically applies those parameters to generate recommendations. These operations cannot practically be performed in the human mind because they involve: (1) monitoring for modifications to CAD data; (2) automatically triggering the application of design rules in response to such modifications; (3) storing and retrieving optimized parameters from prior project data; and (4) automatically applying those parameters to generate recommendations.”
The Examiner respectfully disagrees. A human can monitor for modifications to CAD data, triggering the application of design rules in response to such modifications; use optimized parameters from prior project data; applying those parameters to generate recommendations.
Regarding the Rejection under 101, the Applicant further argues “The Desjardins decision, as incorporated into MPEP § 2106.04(d) by the December 5, 2025 memorandum, instructs that claims to machine learning that address specific technical problems and improve the functioning of the machine learning model itself are eligible. See Desjardins Memo, p. 2. The amended claims reflect similar improvements. The machine learning functionality recited in the claims is configured to: (1) preserve design rules stored in the document library module and automatically apply them when CAD data is modified, thereby ensuring that cost estimates remain current without manual intervention; and (2) store optimized parameters from prior projects and automatically apply them to generate recommendations for current projects. See Desjardins Memo, p. 4.”
In Ex Parte Desjardins the Appeals Review Panel found that “In Step 2A Prong Two, the ARP then determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. Importantly, the ARP evaluated the claims as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the specification”. In the instant case there is no such technical improvement to machine learning processes. The machine leaning processes is recited broadly and no improvement is disclosed. As such, the broadly recited machine learning does not integrate a judicial exception into a practical application or provide significantly more.
Regarding the Rejection under 101, the Applicant further argues “Accordingly, the claims recite a combination of specific elements that amount to significantly more than any alleged judicial exception. This combination of elements as set forth in amended claim 1 are not well-understood, routine, or conventional activity in the field of building construction project management, and thus "contribute to an inventive concept" that "amount[s] to significantly more" than the alleged judicial exception. See MPEP § 2106.05(II).”
The Examiner respectfully disagrees. The limitations do not improve the functioning of a computer. The computer claims as it normally would as it performs the recited abstract idea. Claim 1 recites additional elements of:
a data receiver for receiving project data relating to a project, the data receiver including a document library module configured to store design rules and compliance documents;;
an artificial intelligence processor that includes machine learning;
a processor for performing the abstract idea;
modules to perform the recited functions;
a web based SE Linx communications module configured to facilitate communication between the plurality of modules and distribute the instructions from the sixth module
When viewing the generic receipt and storage of data and broadly recited ML and AI in combination with the generic computer does not add more than when viewing the elements individually. The web-based Linx communication modules is not described in the claims of the specification in any detail that indicated the communication module is byon what is well-known and convention, or an improvement the technology. Accordingly, the additional elements do not provide and inventive concept because it does not impose any meaningful limits on practicing the abstract idea.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a data receiver for; an action generator for; the recited modules in claim 1 and the module in claim 11.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 7-11, 13, 15-16, and 19-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, in step 2A prong 1 it must then be determined whether the claim recites a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim recites a judicial exception, under step 2A prong 2 it must additionally be determined whether the recites additional elements that integrate the judicial exception into a practical application. If a claim does not integrate the Abstract idea into a practical application, under step 2B it must then be determined if the claim provides an inventive concept.
In the Instant case Claims 1, 5, 7-11, 13, 21 are directed toward a system for automating building project management system. Claims 15-16, 19-20 are directed toward a method to automate building production. As such, each of the Claims is directed to one of the four statutory categories of invention.
MPEP 2106.04 II. A. explains that in step 2A prong 1 Examiners are to determine whether a claim recites a judicial exception. MPEP 2106.04(a) explains that:
To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
As per step 2A prong 1 of the eligibility analysis, claim 1 recites the abstract idea of processing data to generate actions for building construction which falls into the abstract idea categories of certain methods of organizing human activity and mental processes. The elements of Claim 1 that represent the Abstract idea include:
A building construction project management system comprising:
processing the received project data;
facilitate communication with one or more customers such that the first module provides the one or more customers with documentation and logs interactions with the one or more customers;
automate measuring, estimating, and ordering for a plurality of project materials based on computer aided design (CAD) data for the project;
facilitate compliance with workplace health and safety rules, contractual requirements, and payment rules by demanding approval of one or more documents;
provide payment information and generate a work- in-progress report;
a plurality of reports for the project and a report generator to build custom reports; and
combine data to issue instructions based on the processed project data;
request progress claims and supply relevant documentation; distribute up-to-date contract documentation to stakeholders; notify estimated task completion dates; and automatically transfer documents to the document library module;
automatically generating actions based upon the processed project data, the action generator having a display configured to display at least one action deadline,
wherein the system is configured to generate a cost estimate using location data and the
wherein the cost estimate is compared with a project schedule to identify missing tasks in the project schedule,
(1) overlay design rules from the document library module by automatically applying the stored design rules to update the cost estimate when the CAD data for the project is modified, thereby ensuring that a sales estimate remains current when changes to a project design are made; and
(2) memorize prior solutions for previous projects and incorporate them into project management functions for the project by storing optimized parameters derived from prior project data and automatically applying the stored optimized parameters to generate recommendations for the project; and
wherein the system is configured to generate site-specific preliminary orders for the project using specification or location data.
MPEP 2106.04(a)(2) II. states:
The phrase "methods of organizing human activity" is used to describe concepts relating to:
fundamental economic principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and
managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).
The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
The limitations of
A building construction project management system comprising:
processing the received project data;
facilitate communication with one or more customers such that the first module provides the one or more customers with documentation and logs interactions with the one or more customers;
automate measuring, estimating, and ordering for a plurality of project materials based on computer aided design (CAD) data for the project;
facilitate compliance with workplace health and safety rules, contractual requirements, and payment rules by demanding approval of one or more documents;
provide payment information and generate a work- in-progress report;
a plurality of reports for the project and a report generator to build custom reports; and
combine data to issue instructions based on the processed project data;
request progress claims and supply relevant documentation; distribute up-to-date contract documentation to stakeholders; notify estimated task completion dates; and automatically transfer documents to the document library module;
automatically generating actions based upon the processed project data, the action generator having a display configured to display at least one action deadline,
wherein the system is configured to generate a cost estimate using location data and the
wherein the cost estimate is compared with a project schedule to identify missing tasks in the project schedule,
overlay design rules from the document library module by automatically applying the stored design rules to update the cost estimate when the CAD data for the project is modified, thereby ensuring that a sales estimate remains current when changes to a project design are made; and
memorize prior solutions for previous projects and incorporate them into project management functions for the project by storing optimized parameters derived from prior project data and automatically applying the stored optimized parameters to generate recommendations for the project; and
wherein the system is configured to generate site-specific preliminary orders for the project using specification or location data.
are directed to managing personal behavior or relationships or interactions between people and activities that can be performed by humans. Further, generating site-specific preliminary orders for the project using specification or location data is directed to a fundamental business practice which is also abstract.
MPEP 2106.04(a)(2) states:
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.
The instant claim recites mental processes including observation, evaluation, judgment, opinion. For example, the steps of
processing the received project data;
measuring, estimating, and ordering for a plurality of project materials based on computer aided design (CAD) data for the project;
facilitate compliance with workplace health and safety rules, contractual requirements, and payment rules by demanding approval of one or more documents;
generate a work- in-progress report;
a plurality of reports for the project and a report generator to build custom reports; and
combine data to issue instructions based on the processed project data;
generating actions based upon the processed project data, the action generator having a display configured to display at least one action deadline,
generate a cost estimate using location data and the
wherein the cost estimate is compared with a project schedule to identify missing tasks in the project schedule,
(1) overlay design rules from the document library module by automatically applying the stored design rules to update the cost estimate when the CAD data for the project is modified, thereby ensuring that a sales estimate remains current when changes to a project design are made; and
(2) memorize prior solutions for previous projects and incorporate them into project management functions for the project by storing optimized parameters derived from prior project data and automatically applying the stored optimized parameters to generate recommendations for the project; and
generate site-specific preliminary orders for the project using specification or location data.
are drawn to observation and evaluation and mental steps. As such, the claim recites at least one abstract idea.
Under step 2A prong 2 the examiner must then determine if the recited abstract idea is integrated into a practical application. The 2019 PEG states that additional elements that are indicative of integration into a practical application include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
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 - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
In the instant case, this judicial exception is not integrated into a practical application. In particular, Claim 1 recites the additional elements of:
a data receiver for receiving project data relating to a project, the data receiver including a document library module configured to store design rules and compliance documents;;
an artificial intelligence processor that includes machine learning;
a processor for performing the abstract idea;
modules to perform the recited functions;
a web based SE Linx communications module configured to facilitate communication between the plurality of modules and distribute the instructions from the sixth module;
However, the processor is recited at a high-level of generality (i.e., as a generic processor performing a generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Further, the specification discloses “the processor may include integrated processing modules including one or more of: a customer management module; an estimating and ordering module; a contract and compliance module; a project management module; a bookkeeping and WIP (Work in Progress) module and a business reports module”. As such, the recited modules also amounts to mere instructions to apply the exception using a generic computer component.
Further, a web based SE Linx module that facilitates communication between the plurality of modules also amounts to mere instructions to apply the exception using a generic computer component. This is because the module merely comprises instructions that directs how the other recited modules communicate with one another.
Further MPEP 2105.05(g) explains that data gathering and data output can be considered pre-solution activity and post-solution activity. See MPEP 2106.05(g) that states:
An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.
In the instant case, the receipt of project data is considered mere data gathering which is incidental to the primary process in a similar way that obtaining information about credit card transactions to be analyzed was incidental to the primary process explained above. Further, MPEP 2106.05 also states Examiner should evaluate whether the extra-solution limitation is well known. In this case, the broadly recited receipt of data is well known. The MPEP also cites several examples of mere data gathering that have been found to be insignificant extra-solution activity including gathering statistics generated based on the testing about how potential customers responded to the offers; the statistics are then used to calculate an optimized price (see OIP Technologies, 788 F.3d at 1363, 115 USPQ2d at 1092-93); and obtaining information about transactions using the Internet to verify credit card transactions (see CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
MPEP 2105.05(g) also states that conventional data storage does not add a meaningful limitation to the process and is insignificant extra solution activity.
Further, the use of the artificial intelligence processor includes machine learning is indicative of adding the words “apply it” (or an equivalent) with the judicial exception. MPEP 2106.05(f) states:
When determining whether a claim simply recites a judicial exception with the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following:
(1) 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.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found 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")).
In the instant case, the additional elements of the broadly recited the artificial intelligence processor includes machine learning cover any solution to the identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, which 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”. The claims do not state how artificial intelligence module processes the received project data. Further, the overlaying design rules from the document library module and memorize prior solutions for previous projects and incorporate them into project management functions are abstract. Implementing abstract idea via a broadly recited artificial intelligent module cover any solution to the identified problem with no restriction on how the result is accomplished. As such, the broadly recited machine learning and artificial intelligence do not integrate a judicial exception into a practical application or provide significantly more.
When viewing the generic receipt and storage of data and broadly recited ML and AI in combination with the generic computer does not add more than when viewing the elements individually. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In step 2B, the examiner must determine whether the claim adds a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d). As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Further, the receipt of project data is recited broadly in the claims. MPEP 2106.05(d) states receiving or transmitting data over a network, e.g., using the Internet to gather data is conventional when claimed generically (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)). As such, the broadly claimed receipt of data is considered well-known and conventional as established by the MPEP and relevant case law.
Further, the storage data is recited broadly in the claims. MPEP 2106.05(d) states storing and retrieving information in memory is conventional when claimed generically (Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93). As such, the broadly claimed storage of data is considered well-known and conventional as established by the MPEP and relevant case law.
Further, similar to the analysis with respect to step 2A prong 2 recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished cannot provide an inventive concept under step 2B of the eligibility analysis.
When viewing the generic receipt and storage of data and broadly recited ML and AI in combination with the generic computer does not add more than when viewing the elements individually. Accordingly, the additional elements do not provide an inventive concept.
Claims 5, 7-11, 13, 21 further limit the mental processes and sales activities recited in the parent claim, but fail to remedy the deficiencies of the parent claim as they do not impose any additional elements that amount to significantly more than the abstract idea itself.
Accordingly, the Examiner concludes that there are no meaningful limitations in claims 1, 5, 7-11, 13, 21 that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself. Further, claim 5 recites automatically amending and automatically generating about to automating abstract ideas which is not sufficient to integrate the abstract idea into a practical application or provide an inventive concept.
The analysis above applies to all statutory categories of invention. The presentment of claim 1 otherwise styled as a method, computer program product or system, for example, would be subject to the same analysis. As such, claims 15, 16, 19-20 are also rejected.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/DEIRDRE D HATCHER/Primary Examiner, Art Unit 3625
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