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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/16/2025has been entered.
Response to Arguments
Applicant's arguments filed 10/16/2025 have been fully considered, but they are not fully persuasive. The updated 35 USC § 101 rejection of claims 1-22 are applied in light of Applicant's amendments.
The Applicant argues “the human mind cannot reasonably apply a grouping algorithm that executes as parallel processes across multiple processor cores, much less records groups of assets into a database using a hierarchical data structure that enables accelerated retrieval of grouped assets. Further, the Applicant submits that claim 11 integrates any alleged judicial exception into a practical application.” (Remarks 10/16/2025)
In response, the Examiner respectfully disagrees. The claimed subject matter, is directed to an abstract idea by reciting concepts performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “Mental processes” group; and by reciting mathematical relationships, mathematical formulas or equations, mathematical calculations which falls into the “Mathematical concepts” group within the enumerated groupings of abstract ideas set forth in the 2019 PEG. The mere nominal recitation of a generic computer does not take the claim limitation out of methods of mathematical concepts or the mental processes grouping. Thus, the claim recites a mental process for performing certain methods of organizing human activity.
A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation. For example, a step of "determining" a variable or number using mathematical methods or "performing" a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation.
The claimed subject matter merely claims a method for receiving and analyzing (grouping) information regarding service assets. Although it may be intended to be performed in a digital environment, the claimed subject matter (as currently claimed in the independent claim) speaks to the receiving and analyzing (modeling and grouping) data. Such steps are not tied to the technological realm, but rather utilizing technology to perform the abstract idea (mental process). The claimed subject matter is categorized as a Mental Process as it recites concepts performed in the human mind (observation and evaluation). Additionally, parts of the claimed subject matter can be categorized as mathematical concepts as it utilizes mathematics (algorithms, trained model, hierarchical data structure). The steps of receiving data, updating models, and generating a report can be performed by a human (mental process/pen and paper). The practice of grouping information and constructing models with set parameters and timelines can be performed without computers, and thus are not tied to technology nor improving technology.
The solution mentioned in the amended limitation is not implemented/integrated into technology and thus not an improvement to the technical field. Further, there is no integration into a practical application as the claims can be interpreted as humans per se, as the claims fail to tie the steps to technology; insignificant extra solution activities (which are merely calculating and/or analyzing data).
The steps relied upon by the Appellant as recited does not improve upon another technology, the functioning of the computer itself, or allow the computer to perform a function not previously performable by a computer. The claims do not mention to any use of a specialized computer and/or processor. The Appellant is using generic computing components (processors - specification paragraph [0068], Figure 1) to perform in a generic/expected way (obtaining and analyzing/partioning data).The abstract idea is not particular to a technological environment, but is merely being applied to a computer realm. The process of calculating and analyzing data specifically for service project(s), and performing additional analysis can be done without a computer, and thus the claims are not “necessarily rooted", but rather they are utilizing computer technology to perform the abstract idea.
The Examiner does not recognize any elements of the Appellant's claims and/or specification that would improve or allow the computer to perform a function(s) not previously performable by the computer, or improve the functioning of the computer itself. It is insufficient to indicate that the claims are novel and non-obvious, and thus contain “something more.” Just because the components may perform a specialized function does not mean that that the computer components are specialized. As such the application of the abstract idea of collecting and analyzing data regarding a service system, and performing correlation analysis is insufficient to demonstrate an improvement to the technology.
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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Claims 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the “2019 Revised Patent Subject Matter Eligibility Guidance” (published on 1/7/2019 in Fed. Register, Vol. 84, No. 4 at pgs. 50-57, hereinafter referred to as the “2019 PEG”).
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the apparatus (claims 1-10), method (claims 11-15), and computer program product (claims 20-22) are directed to potentially eligible categories of subject matter (i.e., process, machine, and article of manufacture respectively). Thus, Step 1 is satisfied.
With respect to Step 2, and in particular Step 2A Prong One of 2019 PEG, it is next noted that the claims recite an abstract idea by reciting concepts performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “Mental Process” group; and by reciting mathematical relationships, mathematical formulas or equations, mathematical calculations which falls into the “Mathematical concepts” group within the enumerated groupings of abstract ideas set forth in the 2019 PEG. The mere nominal recitation of a generic computer does not take the claim limitation out of methods of mathematical concepts or the mental processes grouping. Thus, the claim recites a mental process while performing math.
A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation. For example, a step of "determining" a variable or number using mathematical methods or "performing" a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation.
The limitations reciting the abstract idea(s) (Mental process and Mathematical Concepts), as set forth in exemplary claim 1, are: receive a selection of assets identified …the assets selected based upon search criteria for each asset of a plurality of assets, wherein the plurality of assets are selected …pre-partition the assets based upon a user-defined pre-partition rule, the pre-partition rule including user-created selection criteria entered …that controls the pre-partitioninq of the assets; apply a grouping algorithm to the pre-partitioned assets to further sort the assets into groups of assets… includes one or more variables …that controls the grouping algorithm; record the groups of assets … using a hierarchical data structure that enables accelerated retrieval of the grouped assets; and transmit a report …that includes a statistical summary of how the assets are configured into the groups. Independent claims 8 and 14 recite the CRM and system for performing the method of independent claim 1 without adding significantly more. Thus, the same rationale/analysis is applied.
With respect to Step 2A Prong Two of the 2019 PEG, the judicial exception is not integrated into a practical application. The additional elements are directed to an input/output device; and a processor coupled to a memory and programmed to… from a database… a trained neural network or machine learning model and… wherein the grouping algorithm executes as a parallel process across multiple processor cores to reduce execution time for large datasets, and wherein the grouping algorithm; and a processor programmed to… A non-transitory computer readable storage medium having stored thereon a plurality of instructions that when executed by a processor… (as recited in claims 1, 11, and 20). However, these elements fail to integrate the abstract idea into a practical application because they fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional limitation(s) is/are directed to: an input/output device; and a processor coupled to a memory and programmed to… from a database… a trained neural network or machine learning model and… wherein the grouping algorithm executes as a parallel process across multiple processor cores to reduce execution time for large datasets, and wherein the grouping algorithm; and a processor programmed to… A non-transitory computer readable storage medium having stored thereon a plurality of instructions that when executed by a processor… (as recited in claims 1, 11, and 20) for implementing the claim steps/functions. These elements have been considered, but merely serve to tie the invention to a particular operating environment (i.e., computer-based implementation), though at a very high level of generality and without imposing meaningful limitation on the scope of the claim.
In addition, Applicant’s Specification (paragraph [0068]) describes generic off-the-shelf computer-based elements for implementing the claimed invention, and which does not amount to significantly more than the abstract idea, which is not enough to transform an abstract idea into eligible subject matter. Such generic, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible, as noted at pg. 74624 of Federal Register/Vol. 79, No. 241, citing Alice, which in turn cites Mayo. See, e.g., 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).
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrate the abstract idea into a practical application. Their collective functions merely provide conventional computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that the ordered combination amounts to significantly more than the abstract idea itself. Further, the courts have found the presentation of data to be a well-understood, routine, conventional activity, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 (see MPEP 2106.05(d)).
The dependent claims (2-10, 12-19, and 21-22) are directed to the same abstract idea as recited in the independent claims, and merely incorporate additional details that narrow the abstract idea via additional details of the abstract idea. For example claims 2-10“wherein the one or more variables are aggregate maximums/minimums in various asset properties entered via the input/output device and describes the groupings of assets that adhere to selected additional properties and/or rules; wherein the pre-partition rule includes at least one of the following: cluster: let X be an asset property that takes on any value from a list of possible values, where a list of disjoint clusters of values are defined such that two assets must occur in different parts of the pre-partition if their values for property X are in different clusters; match: let Y be an asset property and two assets must occur in different parts of the pre-partition if their values for property Y are not equal; and range: let Z be an asset property with a total ordering such that all possible values of Z can be ordered, and the sub-ranges of values are defined such that two assets must occur in different parts of the pre-partition if their values for property Z are not in the same sub-range; herein a property that describes a network of assets that determines necessary, but not sufficient, requirements for membership in the same group is selected; wherein any pre-partition rule can optionally be enforced as at least one of a sufficient condition rather than a necessary condition for membership in the same pre-partition part and a complement of the pre- partition rule; wherein each pre-partition is further divided into connected components of the network, where connections that join assets from distinct pre-partition parts are not allowed, and a connected component is a maximal set of network assets within which there is at least one path of network connections between each pair of assets; wherein the match rule includes an aggregate-max on any numerical asset property, where Y is the numerical asset property and an upper bound on the value of property Y is defined such that the value of Y aggregated over the assets in any group chosen by the grouping algorithm, and having more than one asset, may not exceed the bound; wherein the grouping algorithm reduces sizes of the groups based upon the aggregate-max; further comprising an input-map that includes a geographical representation of the assets on the input-map, which enables asset selection by a user; further comprising an output-map that shows the groups determined by the management apparatus”, without additional elements that integrate the abstract idea into a practical application and without additional elements that amount to significantly more to the claims. The remaining dependent claims (12-19 and 21-22) recite the CRM and method for performing the apparatus of claims 2-10. Thus, the same rationale/analysis is applied. Thus, all dependent claims have been fully considered, however, these claims are similarly directed to the abstract idea itself, without integrating it into a practical application and with, at most, a general purpose computer that serves to tie the idea to a particular technological environment, which does not add significantly more to the claims.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Accordingly, the subject matter encompassed by the dependent claims fails to amount to significantly more than the abstract idea itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:SEGEV; TOM. STRUCTURAL DESIGN SYSTEMS AND METHODS FOR FLOOR PLAN SIMULATION AND MODELING IN MASS CUSTOMIZATION OF EQUIPMENT .U.S. PGPub 20210073449 The present disclosure relates generally to systems and methods for selecting and placing equipment for use in buildings. Disclosed systems and methods may involve automatically simulating equipment selection and placement locations in a floor plan.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arif Ullah, whose telephone number is (571) 270-0161. The examiner can normally be reached from Monday to Friday between 9 AM and 5:30 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Beth Boswell, can be reached at (571) 272-6737. The fax telephone numbers for this group are either (571) 273-8300 or (703) 872-9326 (for official communications including After Final communications labeled “Box AF”)./Arif Ullah/Primary Examiner, Art Unit 3625