DETAILED ACTION
This communication is a Final Rejection Office Action in response to the 9/22/2025 submission filled in Application 17/458,159.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA
Claims 1, 13 have been amended. Claims 1-6, 8-16 are now presented.
Response to Arguments
Applicant’s arguments filed 9/22/2025, with respect to the prior art have been fully considered and are persuasive.
Regarding the rejection under 101, the Applicant argues “the Applicant respectfully disagrees, and submits that at least “deleting one or more data points of the real-time activity data used for calculation of the absolute and relative sustainability footprints from a database after the calculation,” which is positively recited in amended claims 1 and 13, is not an abstract idea. The Action appears to assert that such an activity is a mental process. However, MPEP 2106.04(a)(2)(IID defines mental processes as “(thinking) that ‘can be performed in the human mind, or by a human using a pen and paper,’” and provides examples including “observations, evaluations, judgments, and opinions.” Deleting data points from a database is none of these examples, and cannot be performed in the human mind, or by a human using a pen and paper, as it specifically involves alterations to a physical element outside of the human mind (e.g., altering a database by “reducing allocated volume on the database’).”
The Examiner respectfully disagrees. The limitations directed to “calculating the absolute and relative sustainability footprints for materials associated with the operations of the organization for a current period based on an associated relative sustainability footprint calculated for a previous period, and deleting one or more data points of the real-time activity data used for calculation of the absolute and relative sustainability footprints after the calculation” are also abstract. The practice of current period based on an associated relative sustainability footprint calculated for a previous period and deleting used data can be performed mentally or by a human using a pen and paper. A human can use data from a previous period and then delete those value once the calculation is complete. As such, the recited calculation is abstract and cannot integrate the abstract idea into a practical application. The fact that the claim has been amended to recite this practice “reducing allocated volume on the database” and “increases a speed of the calculations for the next period”. Merely reciting a technical improvement in the claim does not mean the claim recites a technical improvement. The recites steps fall into the mental processes grouping, and limitation that fall into abstract idea grouping cannot also integrate the abstract idea into a practical application. Further, the use of the database to store and delete data does not represent a technical improvement. The databased functions as it normally would and amounts to insignificant extra solution activity and well known and conventional computer functions. MPEP 2106.05 states "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality," (see BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018)).
Regarding the rejection under 101, the Applicant further argues “Even if another element of the claims was to be considered to recite an abstract idea, the recitation of deleting data points from a database, as well as other elements of claims 1 and 13, constitute additional elements that integrate the alleged abstract idea into a practical application. For example, deleting data points from a database after calculation provides the improvement described in paragraph [0057] of the specification and recited in claims 1 and 13 (e.g., reduced computer resource usage due to faster calculations and decreased database allocation associated with the performance of the recursive calculation using a footprint for a previous period). When the claim is considered as a whole, the additional elements of deleting data points from a database after the calculation provides a practical application of performing the recursive calculation (using footprints calculated for the current period in calculations for a next period) by providing the technical improvement of reducing allocated database volume as described above.”
The Examiner respectfully disagrees. The limitations directed to “calculating the absolute and relative sustainability footprints for materials associated with the operations of the organization for a current period based on an associated relative sustainability footprint calculated for a previous period, and deleting one or more data points of the real-time activity data used for calculation of the absolute and relative sustainability footprints after the calculation” are also abstract. The practice of current period based on an associated relative sustainability footprint calculated for a previous period and deleting used data can be performed mentally or by a human using a pen and paper. A human can use data from a previous period and then delete those value once the calculation is complete. As such, the recited calculation is abstract and cannot integrate the abstract idea into a practical application. The fact that the claim has been amended to recite this practice “reducing allocated volume on the database” and “increases a speed of the calculations for the next period”. Merely reciting a technical improvement in the claim does not mean the claim recites a technical improvement. The recites steps fall into the mental processes grouping, and limitation that fall into abstract idea grouping cannot also integrate the abstract idea into a practical application. Further, the use of the database to store and delete data does not represent a technical improvement. The databased functions as it normally would and amounts to insignificant extra solution activity and well known and conventional computer functions.
Regarding the rejection under 101, the Applicant further argues” Furthermore, even if somehow the claims are determined to be directed to an abstract idea (which Applicant refutes above), the claims as a whole amount to significantly more than any alleged abstract idea itself. For example, as acknowledged on page 2 of the Action, Applicant’s prior arguments regarding the novelty and non-obviousness of the claims of the cited references were persuasive, thus claims 1-6 and 8-16 recite a number of innovative features that that are novel and nonobvious over the known art and describe a technical solution to a technical problem in operating computing systems to calculate and provide sustainability footprints. Further, these claim limitations, either individually or in combination, “are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present.” Accordingly, even if the claims somehow do not pass the Step 2A inquiry, they satisfy Step 2B test because the claims as a whole amount to an “inventive concept.””
The Examiner respectfully disagrees. MPEP 2105.05 states:
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101 ) and patentability over the art (under 35 U.S.C. 102 and/or 103 ) is further discussed in MPEP § 2106.05(d).
As such, novelty does not have any bearing on subject matter eligibility. Despite not being rejected under the prior art, the claims recite limitations that fall into the methods of organizing activity grouping and mental processes grouping and are as such abstract.
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 1-6, 8-16 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 is recite 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 1-6, 8-12 are directed toward a method for determining an indication of the absolute, relative, and average relative sustainability footprints. Claims 13-16 are directed toward a computer program product for determining an indication of the absolute, relative, and average relative sustainability footprints. 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 determining an indication of the absolute, relative, and average relative sustainability footprints 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 computer-implemented method comprising:
receiving real-time activity data for an organization;
determining emissions factors for the real-time activity data;
calculating absolute and relative sustainability footprints associated with operations of the organization based on the real-time activity data and the emissions factors, wherein calculating the absolute and relative sustainability footprints associated with operations of the
organization based on the real-time activity data and the emissions factors includes calculating the absolute and relative sustainability footprints for materials associated with the operations of the organization for a current period based on an associated relative sustainability footprint calculated for a previous period, and deleting one or more data points of the real-time activity data used for calculation of the absolute and relative sustainability footprints after the calculation,
wherein deleting the one or more data points of the real-time activity data comprises reducing
allocated volume on the database, and wherein the absolute and relative sustainability footprints calculated for the current period are used for calculations for a next period;
and using the absolute and relative sustainability footprints calculated for the current period for
calculations for the next period increases a speed of the calculations for the next period;
calculating average relative sustainability footprints for the organization over a specified time period based on the absolute and relative sustainability footprints;
generating, for display on a graphical user interface, an indication of the absolute, relative, and average relative sustainability footprints; and
providing the calculated absolute, relative, or average relative sustainability footprints to one or more computer applications of an Enterprise Resource Planning (ERP) system, the calculated absolute, relative, or average relative sustainability footprints being used by the one or more computer applications to adjust operations of the ERP system to reduce an overall footprint associated with operations managed by the ERP system.
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.
In the instant case adjusting operations of the ERP system to meet enterprise goals is a fundamental business process and is abstract. The limitations that are directed to the sustainability footprints being used to adjust operations of the ERP system to reduce an overall footprint associated with operations managed by the ERP system. The specification states the footprints are used to “optimizing business processes like reducing the footprint of inflow materials (purchasing and sourcing), the production process (manufacturing and maintenance) or transport (logistics).” When reading the claim in light of the specification these adjustment still amount to abstract methods of organizing human activity as they are directed to business processes. As such, the claim recites at least one abstract idea. These steps are adjustments that a human user could do to optimize business processes. As such, the claim recites at least one abstract idea.
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 claims recite mental processes including observation, evaluation, judgment, opinion. For example, the steps directed to processing the real-time activity data including mapping the activity data to a respective relevant emissions factor; calculating, a plurality of relative sustainability footprints using the augmented activity data in association with operations; calculating an absolute sustainability footprint; and calculating, an average relative sustainability footprint; are drawn to observation and evaluation and the absolute and relative sustainability footprints calculated for the current period are used for calculations for a next period. The limitations that are directed to the sustainability footprints being used to adjust operations of the ERP system to reduce an overall footprint associated with operations managed by the ERP system. The specification states the footprints are used to “optimizing business processes like reducing the footprint of inflow materials (purchasing and sourcing), the production process (manufacturing and maintenance) or transport (logistics).” These steps are adjustments that a human user could do to optimize business processes.
Further, the limitations directed to “calculating the absolute and relative sustainability footprints for materials associated with the operations of the organization for a current period based on an associated relative sustainability footprint calculated for a previous period, and deleting one or more data points of the real-time activity data used for calculation of the absolute and relative sustainability footprints after the calculation” are also abstract. The practice of current period based on an associated relative sustainability footprint calculated for a previous period and deleting used data can be performed mentally or by a human using a pen and paper. A human can use data from a previous period and then delete those value once the calculation is complete. As such, the recited calculation is abstract and cannot integrate the abstract idea into a practical application. The fact that the claim has been amended to recite this practice “reducing allocated volume on the database” and “increases a speed of the calculations
for the next period”. Merely reciting a technical improvement in the claim does not mean the claim recites a technical improvement. The recites steps fall into the mental processes grouping, and limitation that fall into abstract idea grouping cannot also integrate the abstract idea into a practical application.
Under step 2A prong 2 the examiner must then determine if the recited abstract idea is integrated into a practical application. MPEP 2106.04 states:
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• 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, as discussed in MPEP § 2106.05(e)
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in 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 computer-implemented method comprising:
receiving real-time activity data for an organization;
a graphical user interface for displaying information
the use of a database
Claim 13 recites the additional elements of:
One or more computer-readable media storing instructions which, when executed by one or more hardware processors, cause the hardware processors to perform the abstract idea;
retrieving a set of emissions factors relating to one or more products;
receiving real-time activity data, the real-time activity data including one or more categories of data relating to operations of an organization;
generating, for display via one or more views of a graphical user interface of a computer device, an indication of the calculated relative, absolute, and average relative sustainability footprints.
However, the computer elements (computer-readable media storing instructions which, when executed by one or more hardware processors) are 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 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 retrieval of real-time 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))
Similarly, the display of the results of an analysis recited in the instant claims is not meaningfully different from the post solution activity of 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. Both the instant case and the example cited in the MPEP merely output the result of an analysis in a manner that is not integrated into the claim as a whole.
Further, using a database to store and delete data is amount to insignificant extra-solution activity. The database is used as it normally would be and does not represent a technical improvement.
Viewing the generic display, data gathering and database 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 be 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 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 database functions as it normally would and does not result in an improvement to database technology. MPEP 2106.05(d) states Storing and retrieving information in memory is conventional when claimed generically. Further, nothing in the specification indicates that the display of information is anything other than conventional. The Examiner takes official notice that the display of the result of an analysis is well-known in conventional.
Viewing the conventional display and data gathering and database in combination with the generic computer does not add more than when viewing the elements individually. Accordingly, the additional elements do provide and inventive concept.
Further Claims 14-16 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 13-16 that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The analysis above applies to all statutory categories of invention. The presentment of claim 13 otherwise styled as a method, or system, for example, would be subject to the same analysis. As such, claims 1-6, 8-12 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).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DEIRDRE D HATCHER/Primary Examiner, Art Unit 3625