DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/29/2025 has been entered.
Status of Claims
This is in reply to the claim amendments and remarks of the RCE filed 9/29/2025.
Claims 1, 7, 12, and 18 have been amended.
Claims 1-23 are currently pending and have been examined.
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 .
Response to Amendments
The previously pending 35 USC 112b rejection has been withdrawn with Applicant deleting the limitation.
Applicant’s amendments have been fully considered, but do not overcome the previously pending 35 USC 101 rejections.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
The Examiner notes that the 35 USC 101 rejection was affirmed at the board in PTAB decision 7/28/2025.
The Examiner strongly recommends reviewing the most recent guidelines on subject matter eligibility including the 2024 AI SME Update.
With regard to the limitations of claims 1-23, Applicant argues that the claims are patent eligible under 35 USC 101 because the pending claims provide technical implementation. The Examiner respectfully disagrees. The Examiner has already set forth a prima facie case under 35 USC 101. The Examiner has clearly pointed out the limitations directed towards the abstract idea, what the additional elements are and why they do not integrate the abstract idea into a practical application, and why the additional elements and remaining limitations do not amount to significantly more than the abstract idea. The Applicant does not properly argue why the claims or eligible. The Examiner asserts that Applicant’s claims are determining what formula to run based off of human user inputs and a trained machine learning model. The claims are generically using a general purpose computer to run calculations, which merely adds the words apply it with the judicial exception. Applicant’s arguments are not persuasive.
The Examiner further asserts that the claimed Formula Machine and Flexible Measure Calculator are recited at such a high level of generality that they merely add the words apply it with the judicial exception (See MPEP 2106). Applicant’s arguments are not persuasive.
The Examiner notes that receiving requests is generic human input into a general purpose computer, which is then used to determine which formula to run on the general purpose computer. That does not improve the functioning of the computer itself, but rather is merely using the computer as a tool to implement the abstract idea (See MPEP 2106). Applicant’s arguments are not persuasive.
For example, Applicant mentions a “specific API known to the user-facing feature and the special formula takes the aggregate of required formula inputs and passes them to be persisted inside the FM object”. The Examiner asks what is the known user facing feature? What is the special formula? How does persisting input inside the FM object (e.g. saving data in a data object) improve the functioning of the computer? The Examiner asserts these features are recited at such a high level of generality that they merely add the words apply it with the judicial exception (See MPEP 2106). Applicant’s arguments are not persuasive.
The Examiner further asserts that train a formula machine is recited at such a high level of generality that they merely add the words apply it with the judicial exception (See MPEP 2106). Applicant’s arguments are not persuasive.
Applicant argues that applying a Formula Machine improves the functioning of the general purpose computer. The Examiner respectfully disagrees. The claims are generically using a general purpose computer to run calculations, which merely adds the words apply it with the judicial exception. The Examiner further asserts a trained FM is just software containing math. Applicant’s arguments are not persuasive.
Applicant argues that applying a Formula Machine transforms the claims. The Examiner respectfully disagrees. Applicant does not properly identify what the transformation is or how this argument is even related to these claims. The claims are generically using a general purpose computer to run calculations, which merely adds the words apply it with the judicial exception. The Examiner further asserts a trained FM is just software containing math. Applicant’s arguments are not persuasive.
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 1-23 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, 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, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.
In the instant case (Step 1), claims 1-23 are directed toward a process and a system; which are statutory categories of invention. Additionally (Step 2A Prong One), the independent claims are directed toward an asset management system including a flexible measure calculator (FMC), comprising: a user facing feature configured to receive a first request for information including input information associated with one or more assets being managed by the asset management system; and a calculation module including a generalized engine configured to determine a customized FMC to obtain a requested output to respond to the first request for information by; determining which formulas of a collection of formulas are required to be applied to the input information received with the first request for information to respond to the first request for information based on the input information received in the first request; applying the determined required formulas to the input information received in the first request to determine a response to the first request for information; training the FMC to emulate outputs of the required formulas based on formula inputs provided to the FMC by determining a logic of the required formulas and assigning the logic to the FMC; and configuring the FMC as a persistent object within a memory of the calculation module, wherein formula inputs and formula outputs are stored within the FMC instantiated persisted object, and wherein the user facing feature is configured to access the trained FMC instantiated persisted object to generate a response to the subsequent requests for information requiring the same required formulas as the first request for information without applying the determined required formulas to input information received with the subsequent requests using the calculation module and generalized engine, which reduces processing resources required to determine respective responses to the subsequent requests for information (Organizing Human Activity), which are considered to be abstract ideas (See PEG 2019 and MPEP 2106.05). The steps/functions disclosed above and in the independent claims are directed toward the abstract idea of Organizing Human Activity because the claimed limitations are analyzing user requests by inputting the request features into a formula which will then generate outputs and responses to the requests to manage assets by a trained machine learning model that compares requests and determines which formula to apply to generate the response to the requests by the human user, which is managing how humans interact with the system for commercial purposes.
Step 2A Prong Two: In this application, even if not directed toward the abstract idea, the above “an asset management system including a flexible measure calculator (FMC), comprising: a user facing feature configured to receive a first request for information associated with one or more assets being managed by the asset management system; and a calculation module including a generalized engine configured to; wherein the FMC is configured to be instantiated as a persistent object within a memory of the calculation module, wherein formula inputs and formula outputs are stored within the FMC instantiated persisted object, and wherein the user facing feature is further configured to access the FMC instantiated persisted object” steps/functions of the independent claims would not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because receiving/storing data and displaying data merely add insignificant extra-solution activity and merely adds the words to apply it with the judicial exception. Also, the claimed “an asset management system including a flexible measure calculator (FMC), comprising: a user facing feature configured to; one or more assets; and a calculation module including a generalized engine configured to; a persistent object within a memory of the calculation module; a customized formula machine (FM); API” would not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because the claimed structure merely adds the words to apply it with the judicial exception and mere instructions to implement an abstract idea on a computer (See PEG 2019 and MPEP 2106.05).
In addition, dependent claims 2-6, 8-11, 13-17, and 19-23 further narrow the abstract idea and dependent claims 5 and 16 additionally recite “API” which do not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because the claimed structure merely adds the words to apply it with the judicial exception and mere instructions to implement an abstract idea on a computer (See PEG 2019 and MPEP 2106.05).
The claimed “an asset management system including a flexible measure calculator (FMC), comprising: a user facing feature configured to; one or more assets; and a calculation module including a generalized engine configured to; a persistent object within a memory of the calculation module; a customized formula machine (FM); API” are recited so generically (no details whatsoever are provided other than that they are general purpose computing components and regular office supplies) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. Even when viewed in combination, the additional elements in the claims do no more than use the computer components as a tool. There is no change to the computers and other technology that is recited in the claim, and thus the claims do not improve computer functionality or other technology (See PEG 2019).
Step 2B: When analyzing the additional element(s) and/or combination of elements in the claim(s) other than the abstract idea per se the claim limitations amount(s) to no more than: a general link of the use of an abstract idea to a particular technological environment and merely amounts to the application or instructions to apply the abstract idea on a computer (See MPEP 2106.05 and PEG 2019). Further, method; and System claims 1-23 recite an asset management system including a flexible measure calculator (FMC), comprising: a user facing feature configured to; one or more assets; and a calculation module including a generalized engine configured to; a persistent object within a memory of the calculation module; a customized formula machine (FM); API; however, these elements merely facilitate the claimed functions at a high level of generality and they perform conventional functions and are considered to be general purpose computer components which is supported by Applicant’s specification in Paragraphs 0055-0067 and Figure 7. The Applicant’s claimed additional elements are mere instructions to implement the abstract idea on a general purpose computer and generally link of the use of an abstract idea to a particular technological environment. Also, the above “an asset management system including a flexible measure calculator (FMC), comprising: a user facing feature configured to receive a first request for information associated with one or more assets being managed by the asset management system; and a calculation module including a generalized engine configured to; wherein the FMC is configured to be instantiated as a persistent object within a memory of the calculation module, wherein formula inputs and formula outputs are stored within the FMC instantiated persisted object, and wherein the user facing feature is further configured to access the FMC instantiated persisted object” steps/functions of the independent claims would not account for significantly more than the abstract idea because receiving data and displaying/presenting data (See MPEP 2106.05) have been identified as well-known, routine, and conventional steps/functions to one of ordinary skill in the art. When viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
In addition, claims 2-6, 8-11, 13-17, and 19-23 further narrow the abstract idea identified in the independent claims. The Examiner notes that the dependent claims merely further define the data being analyzed and how the data is being analyzed. Similarly, claims 5 and 16 additionally recite “API” which do not account for additional elements that amount to significantly more than the abstract idea because the claimed structure merely amounts to the application or instructions to apply the abstract idea on a computer and does not move beyond a general link of the use of an abstract idea to a particular technological environment (See MPEP 2106.05). The additional limitations of the independent and dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea. The examiner has considered the dependent claims in a full analysis including the additional limitations individually and in combination as analyzed in the independent claim(s). Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Allowable over 35 USC 103
Claims 1-23 are allowable over the prior art, but remain rejected under §101 for the reasons set forth above. Independent claims 1-23 disclose analyzing user requests by inputting the request features into a formula which will then generate outputs and responses to the requests to manage assets by a trained machine learning model that compares requests to determine which formula to apply.
Regarding a possible 103 rejection: The closest prior art of record is:
Smialek et al. (US 2012/0222000 A1) – which discloses parser and conde generator for a transformation engine on spread sheet calculations.
Subramaniam et al. (US 2003/0088545 A1) – which discloses persistent data objects in storage being used for analysis.
Fairweather (US 2007/0112714 A1) – which discloses managing knowledge.
The prior art of record neither teaches nor suggests all particulars of the limitations as recited in claims 1-23, such as analyzing user requests by inputting the request features into a formula which will then generate outputs and responses to the requests to manage assets by a trained machine learning model that compares similar requests to determine which formula to apply. While individual features may be known per se, there is no teaching or suggestion absent applicants’ own disclosure to combine these features other than with impermissible hindsight and the combination/arrangement of features are not found in analogous art. Specifically the claimed “an asset management system including a flexible measure calculator (FMC), comprising: a user facing feature configured to receive a first request for information including input information associated with one or more assets being managed by the asset management system; and a calculation module including a generalized engine configured to determine a customized FMC to obtain a requested output to respond to the first request for information by; determining which formulas of a collection of formulas are required to be applied to the input information received with the first request for information to respond to the first request for information based on the input information received in the first request; applying the determined required formulas to the input information received in the first request to determine a response to the first request for information; training the FMC to emulate outputs of the required formulas based on formula inputs provided to the FMC by determining a logic of the required formulas and assigning the logic to the FMC; and configuring the FMC as a persistent object within a memory of the calculation module, wherein formula inputs and formula outputs are stored within the FMC instantiated persisted object, and wherein the user facing feature is configured to access the trained FMC instantiated persisted object to generate a response to the subsequent requests for information requiring the same required formulas as the first request for information without applying the determined required formulas to input information received with the subsequent requests using the calculation module and generalized engine, which reduces processing resources required to determine respective responses to the subsequent requests for information (as required by independent claims 1-23)”, thus rendering claims 1-23 as allowable over the prior art.
Conclusion
The prior art made of record, but not relied upon is considered pertinent to Applicant's disclosure is listed on the attached PTO-892 and should be taken into account / considered by the Applicant upon reviewing this office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D HENRY whose telephone number is (571)270-0504. The examiner can normally be reached on Monday-Thursday 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN EPSTEIN can be reached on (571)-270-5389. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW D HENRY/Primary Examiner, Art Unit 3625