DETAILED ACTION
Claims 15-30 are presented for examination.
This Office Action is in response to submission of documents on July 7, 2026.
Rejection of claims 15-30 under 35 U.S.C. 101 for being directed to unpatentable subject matter is maintained.
Rejection of claims 15-20, 26-28, and 30 under 35 U.S.C. 103 as being obvious over Thomsen in view of Hershey is withdrawn.
Rejection of claims 21-23 are rejected under 35 U.S.C. 103 as being obvious over Thomsen in view of Hershey and Benesh is withdrawn.
Rejection of claims 24-25 are rejected under 35 U.S.C. 103 as being obvious over Thomsen in view of Hershey and Deutsch is withdrawn.
Rejection of claims 29 is rejected under 35 U.S.C. 103 as being obvious over Thomsen in view of Hershey and Cella is withdrawn.
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 Arguments
Regarding rejection of claims 15-30 as being directed to unpatentable subject matter under 35 U.S.C. 101, Examiner is not persuaded by the amendments and arguments for the following reasons.
Applicant first argues that “Taken as a whole, applicants' claimed method would be considered by one of ordinary skill in the art to be limited to a useful practical application….” Response at pg. 10. This is not a correct assessment of whether a judicial exception is integrated into a practical application such that the claim is directed to patent eligible subject matter. Instead,
…the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception, identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception, and explain the reason(s) that the additional elements taken individually, and also taken as a combination, 1) do not integrate the judicial exception into a practical application…. MPEP 2106.07, emphasis added.
As set forth in the previous Office Actions, the steps of “converting asset related data…,” “matching common graphical representations of the converted asset related data…,” and “merging mapped assets of said industrial facility…” have been identified as abstract ideas. Accordingly, it is the additional elements that must be evaluated to determine if, alone or in combination, they integrate the judicial exceptions into a practical application. In the previously presented independent claims, each of the elements that Applicant argues integrates the claim into a practical application have not been identified as additional elements. Instead, these limitations are themselves abstract ideas and an inventive concept of a judicial exception cannot supply an element that would integrate the judicial exception into a practical application.
Because a judicial exception is not eligible subject matter, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. “Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract”); eligibility “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must “transform the nature of the claim” into a patent-eligible application of the judicial exception, either at Prong Two or in Step 2B. MPEP 2106.04(II)(3), citations removed to improve readability.
The further newly added steps of “establishing crosslinks…by linking…” and “identifying…representations of the same assets” are further identified as a mental processes and accordingly cannot supply the element that integrates the judicial exceptions into a practical application. See rejection, below.
A similar rationale is applied to the considerations of Step 2B. “An inventive concept ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.’” Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016); MPEP 2106.05. Thus, it is only the additional elements that are assessed when determining what amounts to significantly more (than the recited judicial exceptions). The additional elements of the claim, as currently amended, are “asset related data collected from different tools…” and “automatically identifying…representations of the same assets.” These are determined to be data transmission and collection, and instructions to apply a judicial exception.
Each of these types of additional elements have been identified by courts to be insignificantly more than a recited judicial exception. See rejection, below; See also MPEP 2106.05(I)(A), listing “Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception,” particularly i and iii. Applicant asserts that “[t]he Office has failed to identify evidence that this ordered combination, including the reconciliation of corresponding representations into a single node and the subsequent linking of that node across different tools using unique asset identifiers, is well-understood, routine, or conventional. In particular, the proffered rejection fails to cite any reference demonstrating that reconciling multiple independently derived representations of the same asset into a single node within a unified graph data structure was well- understood, routine, or conventional at the time of applicants' instant invention.” Response at pp.11-12. However, the steps that are asserted by Applicant as evidence of significantly more have already been identified as judicial exceptions that cannot supply the inventive concept that recites significantly more than the recited judicial exceptions. Therefore, analysis of whether these features are well-understood, routine, and conventional is precluded from assessment at Step 2B.
Those features that are additional elements have been identified by courts to be of a type that does not add significantly more than a recited judicial exception. MPEP 2106.05 makes clear that finding an additional element does not amount to significantly more can be accomplished in various ways, one of which is determining that it is well-understood, routine, and conventional. Other types of additional elements that are insignificantly more and relevant to the additional elements of the present claims include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)).
Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information (see MPEP § 2106.05(g)).
Accordingly, because the claims recite judicial exceptions and do not recite additional elements that integrate the claims into a practical application, improve the functioning of a computer or a technological field, or amount to significantly more than the judicial exceptions, rejection of claims 15-30 under 35 U.S.C. 101 are maintained.
Regarding the rejection of claims 15-20 under 35 U.S.C. 103, Examiner is persuaded by the arguments and amendments submitted with Applicant’s response. Particularly, Examiner agrees that “merging mapped assets of said industrial facility by reconciling the corresponding representations of the same asset into a single node in a unified graph while preserving said edges to provide the holistic digital twin of said industrial facility” is not taught nor disclosed by Thomsen, alone or in combination with the other cited prior art. Accordingly, the rejections of claims 15-30 under 35 U.S.C. 103 as being obvious over Thomsen in view of Hershey, Bensch, Deutsch, and/or Cellla are withdrawn.
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 15-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exceptions without significantly more. The claims recite mathematical calculations and mental processes. This judicial exception is not integrated into a practical application because the additional elements that are recited in the claims are extra-solution activities that do not integrate the judicial exceptions into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because courts have found that the steps of data gathering, ideas of solutions, and generally linking the judicial exceptions to a particular field or technology are not significantly more than the judicial exception.
Claim 15
Step 1: The claim is directed to a process, falling under one of the four statutory categories of invention.
Step 2A, Prong 1: The claim 1 limitations include (bolded for abstract idea identification):
Claim 15
Mapping Under Step 2A Prong 1
A computer-implemented method for providing a holistic digital twin of an industrial facility comprising a plurality of assets, the method comprising:
(a) converting asset related data collected from different tools utilized to at least one of plan and operate said industrial facility in a tool specific data format and asset related data provided by data sources of the industrial facility in a data source specific data format into a common graphical representation, each asset of the plurality of assets being represented as a node associated with a unique asset identifier provided across said different tools and data sources and connected via edges to other nodes representing other assets of said industrial facility having a physical or logical relation with a respective asset;
(b) matching common graphical representations of the converted asset related data by automatically identifying, based on unique asset identifiers and edges representing physical or logical relations, corresponding representations of a same asset originating from the different tools and data sources to
provide a mapping between the corresponding representations;
(c) merging mapped assets of said industrial facility by reconciling the corresponding representations of the same asset into a single node in a unified graph while preserving said edges to provide the holistic digital twin of said industrial facility, nodes of the unified graph including the unique asset identifiers; and
(d) establishing crosslinks between the different tools by linking the single node in the unified graph for each asset to the corresponding representations of that asset in the different tools utilizing the unique asset identifiers.
Abstract Idea: Mental Process
Converting data from one format to a common graphical representation is a mental process that can be performed by a human. The assets related data can include, for example, a unique identifier for an asset and a human can identify the type of tool or data source that generated the data from the unique identifier, and then create edges based on observing the physical and logical relations between the assets in the industrial facility. See e.g., MPEP 2106.04(a)(2), Subsection III.
Abstract Idea: Mental Process
Matching graphical representation can be performed by a human, either with pencil and paper or with a computer as an aid (which courts have found can still be a mental process. See MPEP 2106.04(a)(2), Subsection III(C)). For example, a human can observe the nodes of the graphical representation and, through observation and evaluation, select pairs (or multiples) of nodes that represent the same asset (i.e., match).
Abstract Idea: Mental Process
Merging connected graphical representations into a single map can be performed by a human, either with pencil and paper or with a computer as an aid (which courts have found can still be a mental process. See MPEP 2106.04(a)(2), Subsection III(C)). For example, a human observe and evaluate the multiple graphical representations and reconnect edges that are connected to different nodes representing the same asset to a single node of the asset. Thus, as illustrated in FIGS. 4 and 5 of the Specification, such a process can be performed using pencil and paper.
Abstract Idea: Mental Process
Establishing links between nodes and software tools is a mental process that can be performed by a human using a generic computer and/or pencil and paper. See MPEP (a)(2), Subsection III. Through observation of a graphical representation of the assets and the identifier of the nodes, particular nodes can be connected to the tools that generated the corresponding nodes.
Step 2A, Prong 2: The claim 1 limitations recite (bolded for additional element identification):
Claim 15
Mapping Under Step 2A Prong 2
A computer-implemented method for providing a holistic digital twin of an industrial facility comprising a plurality of assets, the method comprising:
(a) converting asset related data collected from different tools utilized to at least one of plan and operate said industrial facility in a tool specific data format and asset related data provided by data sources of the industrial facility in a data source specific data format into a common graphical representation, each asset of the plurality of assets being represented as a node associated with a unique asset identifier provided across said different tools and data sources and connected via edges to other nodes representing other assets of said industrial facility having a physical or logical relation with a respective asset;
(b) matching common graphical representations of the converted asset related data by automatically identifying, based on unique asset identifiers and edges representing physical or logical relations, corresponding representations of a same asset originating from the different tools and data sources to provide a mapping between the corresponding representations;
(c) merging mapped assets of said industrial facility by reconciling the corresponding representations of the same asset into a single node in a unified graph while preserving said edges
to provide the holistic digital twin of said industrial facility, nodes of the unified graph including the unique asset identifiers; and
(d) establishing crosslinks between the different tools by linking the single node in the unified graph for each asset to the corresponding representations of that asset in the different tools utilizing the unique asset identifiers.
Reciting generic computer components is the additional element of instructions to apply the recited judicial exception, which courts have found does not integrate the judicial exception into a practical application. See MPEP 2106.05(f)
Collecting data from tools and other data sources is an extra-solution activity of data gathering, which courts have found does not integrate the recited judicial exception(s) into a practical application. See MPEP 2106.05(g)(3). Further, generally linking the use of the judicial exception to a field of use does not integrate the judicial exception into a practical application. MPEP 2106.05(h).
Performing something “automatically,” such as automating or implementing an abstract idea using a generic computer does not implement the abstract idea into a practical application nor improve the functioning of a technology. The feature in a mere indication to “apply it.” Se MPEP 2106.05(f).
“Providing” is the extra-solution activity of data transmission, which courts have found does not integrate a judicial exception into a practical application. The limitation does not recite, with specificity, how the data is provided and therefore does not improve the functioning of a computer. See MPEP 2106.05(d)(II).
Step 2B: Regarding Step 2B, the inquiry is whether any of the additional elements (i.e., the elements that are not the judicial exception) amount to significantly more than the recited judicial exception. Courts have found that mere data gathering to be insignificant extra-solution activity. See, e.g., Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015). Additionally, generally linking a judicial exception to a particular field or technology is insignificantly more than the recited judicial exception. See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011). Further, reciting generic components and/or reciting applications of an abstract idea have been found by courts to be insignificantly more than the recited abstract idea. See, e.g., Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014), Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972), Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 112 USPQ2d 1750 (Fed. Cir. 2014); Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016).
Accordingly, claim 1 is rejected for being directed to unpatentable subject matter.
Claim 16
Claim 16 recites wherein the assets of said industrial facility comprise hardware components and software components installed in said industrial facility. and wherein the corresponding representations of the same asset identified in step (b) include representations of the hardware components and the software components originating from the different tools and data sources. The limitation merely further generally links the judicial exception to the judicial exception asserted above regarding the converting step and types of sources for the asset data. Accordingly, claim 16 is rejected for being directed to unpatentable subject matter.
Claim 17
Claim 17 recites wherein each unique asset identifier is utilized in steps (b) and (c) to identify the corresponding representations of the same asset and to reconcile the corresponding representations into the single node. The limitation further specifies data that is associated with assets, which is used as part of a mental process without adding additional elements that integrate the exception into a practical application. Accordingly, claim 17 is rejected for being directed to unpatentable subject matter.
Claim 18
Claim 18 recites wherein each asset of said industrial facility comprises an associated unique asset identifier utilized for identifying and reconciling corresponding representations of the hardware components and the software components into the single node in the unified graph. The limitation further specifies data that is associated with assets, which is used as part of the mathematical concepts and/or mental process without adding additional elements that integrate the exception into a practical application. Accordingly, claim 18 is rejected for being directed to unpatentable subject matter.
Claim 19
Claim 19 recites wherein the common graphical representations generated in step (a) are stored as unified data in a central storage; and wherein the matching in step (b) and the merging in step (c) are performed on the unified data stored in the central storage. Storing data in storage is related to mere data gathering, which courts have found is insignificant extra-solution activity that does not integrate the judicial exception into a practical application. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015). Accordingly, claim 19 is rejected for being directed to unpatentable subject matter.
Claim 20
Claim 20 recites wherein the matching of the common graphical representations in step(b) is performed by a graph matching algorithm which utilizes the unique asset identifiers and the edges representing physical or logical relations to identify the corresponding representations of the same asset. Matching graphical representation can be performed by a human, either with pencil and paper or with a computer as an aid (which courts have found can still be a mental process. See MPEP 2106.04(a)(2), Subsection III(C)). For example, a human can observe the nodes of the graphical representation and, through observation and evaluation, select pairs (or multiples) of nodes that represent the same asset (i.e., with matching unique identifiers). Accordingly, claim 20 is rejected for being directed to unpatentable subject matter.
Claim 21
Claim 21 recites wherein at least one of ambiguities and mismatches occurring during the identifying of the corresponding representations of the same asset in step (b) are resolved in response to a user input prior to reconciling the corresponding representations into the single node. Getting input from a user is data gathering, which is an insignificant extra-solution activity that does not integrate the judicial exceptions into a practical application. Further, resolving ambiguities and mismatches is a step that can be performed by a human using observation, evaluation, opinion, and judgment. Thus, the limitation recites a judicial exception of a mental process. Accordingly, claim 21 is rejected for being directed to unpatentable subject matter.
Claim 22
Claim 22 recites wherein at least one of ambiguities and mismatches occurring during identifying of the corresponding representations of the same asset in step (b) are resolved automatically based on received asset related data concerning assets affected by at least one of the ambiguities and mismatches prior to reconciling the corresponding representations into the single node. Matching graphical representation can be performed by a human, either with pencil and paper or with a computer as an aid (which courts have found can still be a mental process. See MPEP 2106.04(a)(2), Subsection III(C)). For example, a human can observe the nodes of the graphical representation and, through observation and evaluation, select pairs (or multiples) of nodes that represent the same asset (i.e., match). The limitations merely indicate what is considered mismatches in order to determine how to resolve the node.
According, claim 22 is rejected for being directed to unpatentable subject matter.
Claim 23
Claim 23 recites wherein the graph matching algorithm is machine learned to improve identification of the corresponding representations of the same asset based on prior reconciliations into single nodes. Using a machine learning model is a mathematical concepts because the machine learning model is comprised of one or more mathematical function, takes one or more parameters as input, and provides a result after performing the functions. Further, an intended consequence of the application of the abstract idea is an idea of a solution that is not recited with specificity as to how the solution is accomplished. See MPEP 2106.05(f)(1). See also 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). Accordingly, claim 23 is directed to unpatentable subject matter.
Claim 24
Claim 24 recites wherein the different tools providing the asset related data comprise tools of different lifecycle stages of said industrial facility; and wherein the corresponding representations of the same asset originate from the tools of the different lifecycle stages. These limitations merely generally links the judicial exception to a particular field of use. See MPEP 2106.05(h). See also, e.g., Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). Accordingly, claim 24 is directed to unpatentable subject matter.
Claim 25
Claim 25 recites wherein the tools of the different lifecycle stages comprise at least one of engineering tools, operation management tools and service and maintenance tools; and wherein said establishing of crosslinks in step (d) enables linking of the corresponding representations of the same asset across the engineering tools, operation management tools, and service and maintenance tools. The limitation merely further specifies the field of use for the judicial exception. For example, the type of tools that are included in the industrial facility is not an additional element but is instead a further specification of already claimed tools, which are either part of steps that are judicial exceptions or insignificant additional elements that do not integrate the judicial exception into a practical application. Accordingly, claim 25 is directed to unpatentable subject matter.
Claim 26
Claim 26 recites wherein the unified graph comprising the single node for each asset is fed back to the tools utilized to at least one of plan and operate said industrial facility to upgrade the respective tools to upgrade the respective tools based on the established crosslinks. The limitations recite an idea of a solution without specific details as to how the solution is accomplished. For example, “feeding” the twin back to the tools is not recited with specificity as to how the tool is provided the twin, and further, upgrading the tool(s) is not claimed with details as to how the upgrade is performed. Accordingly, claim 26 is directed to unpatentable subject matter.
Claim 27
Claim 27 recites wherein the unified graph comprising the reconciled single nodes is processed to at least one of simulate and predict an operational behavior of said industrial facility based on the reconciled representation of the same asset across the different tools. Simulating operational behavior is a mathematical concept because a simulation includes one or more mathematical functions that are representative of the physical assets of the industrial facility. Further, predicting operational behavior is either a mathematical concepts (if the prediction is part of the simulation) or a mental process that requires observation, evaluation, opinion, and judgment. Accordingly, claim 27 is directed to unpatentable subject matter.
Claim 28
Claim 28 recites wherein the data sources providing the asset related data comprise at least one of sensor assets and memory asse and wherein the corresponding representations of the same asset include representations derived from the sensor assets and the memory assets. The limitations merely specifies a source of data, and thereby includes the extra-solution activity of data transmission, which courts have found to be insignificant extra-solution activities that do not incorporate the recited judicial exception into a practical application. See, e.g., Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d at 1328-29, 121 USPQ2d at 1937. Accordingly, claim 28 is directed to unpatentable subject matter.
Claim 29
Claim 29 recites wherein the asset related data provided in the tool specific data format comprise at least one of image data, acoustic data, text data, graphical data, topological data and location data, and wherein the corresponding representations of the same asset are identified across the different data types using the unique asset identifier. The limitation merely specifies types of data that can be provided from a tool or data source. As previously asserted, gathering of such data is an insignificant extra-solution activity that does not integrate the judicial exceptions into a practical application. Accordingly, claim 29 is directed to unpatentable subject matter.
Claim 30
Claim 30 recites a system for generating a holistic digital twin of an industrial facility which comprises a plurality of assets, said system comprising: a processor; and a central storage; wherein the processor is configured to perform steps substantially the same as recited in claim 15. The claim recites generic computer components that perform the recited judicial exceptions, which courts have found to be an insignificant additional element that does not integrate the judicial exception into a practical application. Accordingly, for at least the same reasons as claim 15, claim 30 is rejected under 35 U.S.C. 101 for being directed to unpatentable subject matter.
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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JOSEPH MORRIS
Examiner
Art Unit 2188
/JOSEPH P MORRIS/Examiner, Art Unit 2188
/RYAN F PITARO/Supervisory Patent Examiner, Art Unit 2188
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