DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for continued examination of application 17/822,964 (8/29/22) filed on 05/26/26.
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. See also, MPEP §606.01.
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 - 7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
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).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
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
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
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.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
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 NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
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.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1 - 7 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention is involves analyzing, using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images received from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images; associating the plurality of the items with an address of a home based on metadata of the images; analyzing, using the one or more image processing techniques, the one or more images to determine a room for each item of the plurality of the item within the home; generating a home inventory comprising the plurality of items, the address of the home, and the room for each item within the home; determining based on demographic information associated with the user, a demographic classification for the user; determining based on the demographic classification and the home inventory, one or more candidate items to recommend to the user; and transmitting a recommendation related to the one or more candidate items, which is a fundamental economic principles or practices (inventory management; insurance); commercial or legal interactions (inventory management; insurance); and managing personal behavior or relationships or interactions between people (analyzing, blurring, smoothing, converting, identifying, associating, analyzing, generating, determining, transmitting).
The mere nominal recitation of “a server” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to analyzing, using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images received from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images; associating the plurality of the items with an address of a home based on metadata of the images; analyzing, using the one or more image processing techniques, the one or more images to determine a room for each item of the plurality of the item within the home; generating a home inventory comprising the plurality of items, the address of the home, and the room for each item within the home; determining based on demographic information associated with the user, a demographic classification for the user; determining based on the demographic classification and the home inventory, one or more candidate items to recommend to the user; and transmitting a recommendation related to the one or more candidate items.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. That is, other than reciting “a server”, nothing in the claim element precludes the steps from practically being performed in the mind. In other words, the claim encompasses the user analyzing, using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images received from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images; associating the plurality of the items with an address of a home based on metadata of the images; analyzing, using the one or more image processing techniques, the one or more images to determine a room for each item of the plurality of the item within the home; generating a home inventory comprising the plurality of items, the address of the home, and the room for each item within the home; determining based on demographic information associated with the user, a demographic classification for the user; determining based on the demographic classification and the home inventory, one or more candidate items to recommend to the user; and transmitting a recommendation related to the one or more candidate items.
The mere nominal recitation of “a server” does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea). Is not integrated into a practical application.
The claim recites the combination of additional elements of “a server” performing each of the steps or acts and the “transmitting” being “to a user device associated with the user”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer performing the generic computer functions of (a) data processing (e.g., “analyzing”, “blurring”, “smoothing”, “converting”, “identifying”, “associating”, “analyzing”, “generating”, “determining”, etc. step(s) as claimed); and (b) data receipt/ transmission (e.g., “transmitting”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering image information, and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “server” that is used to perform the steps or acts is also recited at a high level of generality, and merely automates the step(s). The “server” limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea. NOTE: (a) The claim is exclusively from the perspective of “a server”. (b) Although a “user device associated with the user” is recited in the claim, the claim is not from the perspective of the “user device associated with the user”. None of the positively recited steps or acts required of the claimed invention are performed by the “user device associated with the user”.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts 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 using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 08/29/22 does not provide any indication that the “server” is anything other than a generic, off-the-shelf computer component, see para. [0027] [0033] [0035]. Furthermore, the prosecution history of the instant application provides Trandal, US Pat. No. 7,899,823; Fini, US Pub. No. 2012/0323609; and Busque, US Pub. No. 2011/0161117 operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “analyzing”, “blurring”, “smoothing”, “converting”, “identifying”, “associating”, “analyzing”, “generating”, “determining”, etc. step(s) as claimed); and (b) data receipt/ transmission (e.g., “transmitting”, etc. step(s) as claimed) are well understood, routine and conventional. See Trandal, col. 1, lines 55 - 59; col. 2, lines 11 - 28; col. 4, lines 1 - 7; col. 5, lines 11 - 20; col. 5, lines 63 - 67; col. 6, lines 15 - 45; col. 7, lines 39 - 48; col. 9, lines 46 - 55; col. 10, line 47+ - col. 11, line 39; col. 18, lines 1 - 10. See Fini, abstract, [0010] [0012] [0020] [0028] [0029] [0030]. Busque, [0019] [0020] [0021] [0028] [0033] [0055] [0090]. Busque, [0019] [0020] [0021] [0028] [0033] [0055] [0090]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed (a) data processing (e.g., “analyzing”, “blurring”, “smoothing”, “converting”, “identifying”, “associating”, “analyzing”, “generating”, “determining”, etc. step(s) as claimed); and (b) data receipt/ transmission (e.g., “transmitting”, etc. step(s) as claimed) are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 7 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 (claims 2 - 7 based on their dependency) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 (claims 2 - 7 based on their dependency) recites, “analyzing, by a server and using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images received from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images;”
Although there is a general reference to “blur filters, grey-scaling, optical recognition, edge detection” in applicant’s specification as filed 08/29/22, it is unclear where support may be found for the limitation as claimed particularly the positively recited steps or acts of “blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images” as claimed. See para. [0045] of applicant’s specification as filed 08/29/22.
Claim 1 (claims 2 - 7 based on their dependency) recites, “analyzing, by the server and using the one or more image processing techniques, the one or more images to determine a room for each item of the plurality of the item within the home;”
Although there is a general reference to analyzing images (e.g., photo), it is unclear where support may be found for the limitation as claimed particularly “to determine a room for each item of the plurality of the item within the home”. At best, applicant’s specification describes use of the image processing techniques to identify item(s) (e.g., personal computer of a particular model type) and analyze whether there is damage to the item(s) (e.g., damage associated with the computer). The specification never ties the image processing techniques to the purpose of determining a room where item(s) are located. See para. [0045] of applicant’s specification as filed 08/29/22.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 (claims 2 - 7 based on their dependency) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 (claims 2 - 7 based on their dependency) recites, “analyzing, by a server and using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images received from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images;”
The claim is unclear and indefinite because it is subject to contradictory interpretations. The claim limitation first states “one or more image processing techniques” suggesting the broadest reasonable interpretation is that only one of “blur filter, grey-scaling, optical recognition, or edge detection” is required. The phrase “by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images” would seem to make all of the “image processing techniques” a requirement however. See also, MPEP § 2111 Claim Interpretation; Broadest Reasonable Interpretation.
NOTE: The particular language used is not required, but intended as an aide to the applicant in overcoming one or more of the objections and/ or rejections noted in this office action. Alternative language may be used. Please indicate where support may be found in the specification for any amendments made.
Response to Arguments
101
Applicant's arguments have been fully considered but they are not persuasive.
1.Applicant argues that streamlined analysis should apply/ Core Wireless.
For the convenience of examiners, the 2014 IEG presented a streamlined analysis that is available for claims that “clearly do not seek to tie up any judicial exception such that others cannot practice it.” The use of “tie up” refers to the results of Steps 2A and 2B, and is not meant to imply that the streamlined analysis is either a preemption test or a means of avoiding the results that would occur if a claim were to undergo the full eligibility analysis. In fact, the results of the streamlined analysis will always be the same as the full analysis, in that a claim that qualifies as eligible after Step 2A or Step 2B of the full analysis would also be eligible if the streamlined analysis were applied to that claim. See pgs. 8-9 of July 2015 Update: Subject Matter Eligibility.
In the instant case, it has been determined that the claimed invention is not eligible for streamlined analysis and even if applied, streamlined analysis would not change the outcome.
2.Applicant argues the claimed invention is not directed to a judicial exception (i.e., an abstract idea). Applicant argues comparisons to Research Corp.
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
Fundamental economic principles or practices relate to the economy and commerce. The claimed invention encompasses fundamental economic principles or practices as it relates to inventory management and insurance.
The claimed invention encompasses commercial or legal interactions. The claimed invention relates to inventory management and insurance. Inventory management and insurance, in the instant scenario, pertains to agreements in the form of “contracts” (e.g., between parties such as an insurance company and insurance customer), “legal obligations” (i.e., because it imposes contractual obligations enforceable by law), and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions (e.g., analyzing, blurring, smoothing, converting, identifying, associating, analyzing, generating, determining, transmitting).
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
The claimed invention is directed to mental processes.
The claimed invention encompasses observations, evaluations, judgements and opinions (e.g., “determining ….. based on the demographic classification and the home inventory, one or more candidate items to recommend to the user; and transmitting ….. a recommendation related to the one or more candidate items.”)
Contrary to applicant’s arguments, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid. Similarly, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Although claims 1 - 7 suggest the steps or acts occur on a computer (i.e., “a server”), nothing forecloses applicant’s claimed invention from being performed by a human and thus applicant’s claimed invention is still directed to a mental process.
Features upon which applicant relies (e.g., “analyzing, by a server and using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images received from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images”; “analyzing, by the server and using the one or more image processing techniques, the one or more images to determine a room for each item of the plurality of the item within the home;” See independent claim 1) could be done by a human operator or a human operator using a computer as a physical aid. Features upon which applicant relies (e.g., “by the server”, “to a user device associated with the user” See independent claim 1) are computers acting as proxy for actions that could similarly be performed by human operators (e.g., insurance company; customer of an insurance company).
See also, MPEP §2106.04(a)(2)(III).
With respect to applicant’s suggestion that “inventory management” is not an abstract idea within the framework of “fundamental economic principles or practices” and/or “commercial or legal interactions”. See pgs. 10 - 12 of applicant’s arguments/ remarks as filed (05/26/26). Examiner disagrees. Examiner directs applicant’s attention to Credit Acceptance. Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The facts of Credit Acceptance are similar to Appellant’s claimed invention in many respects. In Credit Acceptance, the patentee claimed a "system for maintaining a database of information about the items in a dealer’s inventory, obtaining financial information about a customer from a user, combining these two sources of information to create a financing package for each of the inventoried items, and presenting the financing packages to the user”. 859 F.3d at 1054, 123 USPQ2d at 1108. The court found in Credit Acceptance determined that the claimed invention was directed to an abstract idea and found "no meaningful distinction between this type of financial industry practice" and the concept of intermediated settlement in Alice or the hedging concept in Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108. See also, MPEP § 2106.04(a)(2) II.B.
With respect to applicant’s suggestion that the Examiner has inaccurately characterized or oversimplifies the abstract idea to which the claimed invention is directed.” See pgs. 10 - 12 of applicant’s arguments/ remarks (05/26/26). Examiner disagrees. The interpretation of the claimed invention as directed to “inventory management” and “insurance” is consistent with the prosecution history of the instant application.
For example, para. [0002] [0003] [0004] [0025] [0026] of applicant’s specification as filed 08/29/22 states:
[0002] The present disclosure relates to systems and methods for generating, maintaining, and using an inventory for insurance purposes.
[0003] Conventional software applications for generating an inventory of items associated with property such as a home, office, business, etc. are little more than non-intelligent databases for storing each item input by a user. In addition, conventional inventory applications are stand-alone systems that are not configured to interact with external systems to better leverage the information included in the inventory.
[0004] Therefore, there is a need for optimized systems and methods for generating an inventory and leveraging the information included within the inventory.
[0025] In accordance with various aspects of the disclosure, methods, computer-readable media, and apparatuses are disclosed through which an inventory may be generated, maintained, and used for insurance purposes. In certain aspects, when an optimized inventory analysis server receives an inventory of all items associated with an entity (e.g., home, business, vehicle, etc.) from one or more computing devices (e.g., a desktop, mobile device, etc.), the optimized inventory analysis server may process the received inventory data to provide enhanced services to users (e.g., customers of an insurance company).
[0026] Embodiments of the disclosure may utilize various hardware components (e.g., processors, communication servers, memory devices, etc.) and related computer algorithms to generate an inventory of items and associated user profiles, to price the items within the inventory, to recommend items that users may not already own and may want to purchase in the future, to assess loss associated with the inventory items, to recommend additional/alternative insurance products from which users may benefit, to recommend incentives on items that users may want to purchase, to suggest items a user may already own and should add to the inventory, and to recommend incentives on insurance products for insuring items that users may want to purchase.
For example, pg. 14 of applicant’s arguments/ remarks as filed (05/26/26) which states:
Claim 1 addresses, inter alia, a technology-rooted solution to a computer-centric problem related to allowing “external systems to better leverage the information included in the inventory.” (Specification, § [03]). The features of claim 1 are directed to improvements in generic computing capabilities and conventional systems used to manage information related to what a user owns. The improved apparatus provides features that allow for the optimized management of “information related to what a user owns, insurance coverage for items owned by the user, and the value of items owned and insured by the user,” and “may also recommend items that each user may want to own or may already own but has forgotten to add to the inventory,” as explained in Appellant’s Specification. (Specification, ¶¶ [07], [09]). The claimed features are meaningful and an improvement over conventional computer capabilities and functionality because the claimed features provide users with the ability to conveniently maintain and manage, from the convenience of a personal device, such as their mobile device, an inventory of the items that the user owns; to receive, without interaction on the user’s part, recommendations about other items the user may wish to own or include in their inventory based on an analysis by the system of items owed by other users having a similar demographic classification as the user; and to receive determinations regarding whether their existing insurance coverage is adequate to coverage the items in the inventory and any additional items recommended for inclusion in the home inventory. (See Specification, ¶¶ [06]-[11], [43]).
Accordingly, the features of claim 1 provide a practical application for addressing challenges provided by conventional systems where “[c]onventional software applications for generating an inventory of items associated with property such as a home, office, business, etc. are little more than non-intelligent databases for storing each item input by a user. In addition, conventional inventory applications [which] are stand-alone systems that are not configured to interact with external systems to better leverage the information included in the inventory.” (Specification, ¶ [03]). (See e.g., USPTO’s Memorandum regarding “Recent Subject Matter Eligibility Decisions” dated November 2, 2016, at p. 2) (stating “[a]n ‘improvement in computer-related technology’ is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of ‘rules’ (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer.”)
For example, at least claims 1, 2 and 7 as filed (05/26/26).
With respect to applicant’s comparisons to Research Corp. Research Corp. v. Microsoft Corp. 627 F.3d 859 (2010). Examiner Disagrees. In Research Corp., the courts found that the claimed invention was not abstract, but there were several findings (e.g., (a) “The invention presents functional and palpable applications in the field of computer technology. These inventions address ‘a need in the art for a method of and apparatus for the halftone rendering of gray scale images in which a digital data processor is utilized in a simple and precise manner to accomplish the halftone rendering”; (b) “Indeed, this court notes that inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.” (c) “This court also observes that the claimed methods incorporate algorithms and formulas that control the masks and halftoning.”) that are not applicable in the instant case.
In the instant case, the alleged improvements in applicant’s claimed invention are to inventory management and insurance (abstract ideas), not the “image processing techniques” used. The “image processing techniques” are used as a tool, not the source of alleged improvement. The use of “image processing techniques” for the gathering of information through the analysis of images received is also insignificant. In the context of the claims, the “image processing techniques” are nominally or tangentially related to the claimed invention and there is nothing comparable to the types of algorithms and formulas incorporated in Research Corp with respect to the masks and halftoning.
3.Applicant argues the claimed invention is integrated into a practical application. Appellant argues comparisons to claim 1 of Example 42.
Applicant argues the claimed invention is (a) technical solution to a technical problem (i.e., “a technology-rooted solution to a computer-centric problem related to allowing ‘external systems to better leverage the information included in the inventory’ ”. See pg. 14 of applicant’s arguments/ remarks (05/26/26); and (b) improvements to the functioning of a computer, or to any other technology or technical field (i.e., “improvements in generic computing capabilities and conventional systems used to manage information related to what a user owns.” See pg. 14 of applicant’s arguments/ remarks (05/26/26).)
First, applicant’s limitations are not indicative of integration into a practical application. Applicant’s claimed invention is not a “technology-rooted solution to a computer-centric problem” and does not involve “improvements in generic computing capabilities” as applicant suggests. Furthermore, applicant’s claimed invention is not a (a) technical solution to a technical problem; and (b) improvements to the functioning of a computer, or to any other technology or technical field. Applicant’s claimed invention is directed to a single, generic computer (i.e., “server”) acting alone. There is no improvement made to the functioning of the computer. The alleged “improvements” (e.g., “The improved apparatus provides features that allow for the optimized management of “information related to what a user owns, insurance coverage for items owned by the user, and the value of items owned and insured by the user,” and “may also recommend items that each user may want to own or may already own but has forgotten to add to the inventory” See pg. 14 of applicant’s arguments/ remarks as filed 05/26/26) are really directed to the underlying abstract idea. See also MPEP §2106.05(a). Second, since a general computer is claimed there is no use of a particular machine. Even though applicant’s arguments appear to allude to a network-centric or tech-centric environment that engages various “external systems”, the engagement described in the specification is not actually claimed. Applicant’s arguments attempting to distinguish the claimed invention from “non-intelligent databases” in the prior art are not persuasive (See pg. 14 of applicant’s arguments/ remarks (05/26/26). Applicant has effectively claimed their own “non-intelligent database” considering it does not interface with “external systems” or render the home inventory dynamic. See also, MPEP § 2106.05(b).
The claimed invention invokes computers or other machinery (e.g., “server”) merely as a tool to perform an existing process (e.g., inventory management; insurance) or uses a computer or other machinery (e.g., “server”) in its ordinary capacity for economic or other tasks (e.g., inventory management; insurance).
Mere instructions to implement an abstract idea on a computer, merely using a computer as a tool to perform an abstract idea or an equivalent of an “apply it” rational are not indicative of integration into a practical application. See also, MPEP §2106.05 (f).
The role of the device (e.g., “server”) is limited to necessary data gathering and outputting (e.g., “transmitting, by the server, to a user device associated with the user, a recommendation related to the one or more candidate items.” steps as claimed).
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information; analyzing it (e.g., “analyzing, ….. using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images received from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images; associating ….. the plurality of the items with an address of a home based on metadata of the images;
analyzing, ….. using the one or more image processing techniques, the one or more images to determine a room for each item of the plurality of the item within the home;
generating ….. a home inventory comprising the plurality of items, the address of the home, and the room for each item within the home; determining ….. based on demographic information associated with the user, a demographic classification for the user; determining ….. based on the demographic classification and the home inventory, one or more candidate items to recommend to the user;”); and displaying certain results of the collection and analysis (e.g., “transmitting ….. to a user device associated with the user, a recommendation related to the one or more candidate items.”) merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
With respect to claim 1 in Example 42, the claim was found eligible because the claims recited a combination of additional elements that were integrated into a practical application.
The facts of the instant application are completely different. In claim 1 of Example 42, for example, (a) the information may be received from a plurality of disparate sources in an inconsistent format and (b) the user is using the graphical user interface/ user device to make actual updates. As noted above, in contrast, applicant has claimed their own “non-intelligent database” with no external sources contributing the home inventory. Although recommendations are provided to a user device, nothing is done with those recommendations. Applicant’s claimed invention is more like claim 2 in Example 42 which was found not to be integrated into a practical application because it merely described how to generally apply the concept in a computer environment, the computer components were recited at a high level of generality and merely invoked as tools; and simply implementing an abstract idea on a generic computer is not a practical application of an abstract idea.
NOTE: In response to applicant's arguments, it is noted that the features upon which applicant relies (i.e., “Claim 1 addresses, inter alia, a technology-rooted solution to a computer-centric problem related to allowing “external systems to better leverage the information included in the inventory.” (Specification, § [03]). The features of claim 1 are directed to improvements in generic computing capabilities and conventional systems used to manage information related to what a user owns. The improved apparatus provides features that allow for the optimized management of “information related to what a user owns, insurance coverage for items owned by the user, and the value of items owned and insured by the user,” and “may also recommend items that each user may want to own or may already own but has forgotten to add to the inventory,” as explained in Appellant’s Specification. (Specification, ¶¶ [07], [09]). The claimed features are meaningful and an improvement over conventional computer capabilities and functionality because the claimed features provide users with the ability to conveniently maintain and manage, from the convenience of a personal device, such as their mobile device, an inventory of the items that the user owns; to receive, without interaction on the user’s part, recommendations about other items the user may wish to own or include in their inventory based on an analysis by the system of items owed by other users having a similar demographic classification as the user; and to receive determinations regarding whether their existing insurance coverage is adequate to coverage the items in the inventory and any additional items recommended for inclusion in the home inventory. (See Specification, ¶¶ [06]-[11], [43]). Accordingly, the features of claim 1 provide a practical application for addressing challenges provided by conventional systems where “[c]onventional software applications for generating an inventory of items associated with property such as a home, office, business, etc. are little more than non-intelligent databases for storing each item input by a user. In addition, conventional inventory applications [which] are stand-alone systems that are not configured to interact with external systems to better leverage the information included in the inventory.” (Specification, ¶ [03]). (See e.g., USPTO’s Memorandum regarding “Recent Subject Matter Eligibility Decisions” dated November 2, 2016, at p. 2) (stating “[a]n ‘improvement in computer-related technology’ is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of ‘rules’ (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer.”) See pg. 14 of applicant’s arguments/ remarks (05/26/26).) are not recited in the rejected claim(s). NOTE: As noted above, applicant’s claimed invention fails to explicitly recite many of the features relied upon in the arguments (e.g., “external systems”; “optimized management”, “insurance coverage”, “value of items”). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
4.Applicant argues the claimed invention is “significantly more”. Applicant argues the claimed invention is not “well-understood, routine or conventional”. Applicant argues Berkheimer. Applicant argues “inventive concept”/ comparisons to Bascom.
Contrary to applicant’s remarks, three arguments (i.e., (a) applicant’s specification as filed (08/29/22); (b) art of record; and (c) case law) were made in support of the ineligibility of the claims in light of Berkheimer. See rejection supra. Any one of these arguments alone can support the ineligibility of applicant’s claims under Berkheimer.
With respect to argument (a), please see also the analysis above regarding the interpretation of applicant’s claimed invention in light of applicant’s specification as filed (08/29/22) discussed above with respect to whether the claimed invention is “integrated into a practical application”. Furthermore, applicant’s specification as filed (08/29/22) does not provide any indication that the “server” is anything other than a generic, off-the-shelf computer component. See at least para. [0027] [0033] [0035] of applicant’s specification as filed (08/29/22).
With respect to argument (b), Trandal, Fini and Busque are operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “analyzing”, “blurring”, “smoothing”, “converting”, “identifying”, “associating”, “analyzing”, “generating”, “determining”, etc. step(s) as claimed); and (b) data receipt/ transmission (e.g., “transmitting”, etc. step(s) as claimed) are well understood, routine and conventional.
Trandal is relevant to the claimed invention because it describes the analysis of a home inventory (e.g., col. 1, lines 55 - 59; col. 2, lines 11 - 28; col. 4, lines 1 - 7; col. 5, lines 11 - 20; col. 5, lines 63 - 67; col. 6, lines 15 - 45; col. 7, lines 39 - 48; col. 9, lines 46 - 55; col. 10, line 47+ - col. 11, line 39; col. 18, lines 1 - 10). Fini is relevant to determining candidate items based on factors such as demographic classification and home inventory (e.g., abstract, [0010] [0012] [0020] [0028] [0029] [0030]). Busque is relevant to determining whether an incentive associated with at least one of the one or more candidate items is available (e.g., [0019] [0020] [0021] [0028] [0033] [0055] [0090]).
With respect to argument (c), the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as
data processing (e.g., “analyzing, by a server and using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images received from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images; associating, by the server, the plurality of the items with an address of a home based on metadata of the images; analyzing, by the server and using the one or more image processing techniques, the one or more images to determine a room for each item of the plurality of the item within the home;
generating, by the server, a home inventory comprising the plurality of items, the address of the home, and the room for each item within the home; determining, by the server, based on demographic information associated with the user, a demographic classification for the user; determining, by the server, based on the demographic classification and the home inventory, one or more candidate items to recommend to the user;”, etc. step(s) as claimed) are well understood, routine and conventional.
Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here).
data receipt/ transmission (e.g., “transmitting, by the server, to a user device associated with the user, a recommendation related to the one or more candidate items”, etc. step(s) as claimed) are well understood, routine and conventional.
Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here).
Applicant argues the claim invention provides for “allowing ‘external systems to better leverage the information included in the inventory’ ”. See pg. 14 of applicant’s argument’s/ remarks (05/26/26). This characterization of the technical problem differs from applicant’s specification as filed (08/29/22) however. The technical problem described in applicant’s specification relates to a server/ inventory system that interfaces with external systems to generate a more robust inventory database (as opposed to “non-intelligent databases for storing each item input by a user”) and configured for purposes such as insurance analysis. See para. [0003] [0007] [0040] [0052] of applicant’s specification as filed (08/29/22). Applicant’s claimed invention accomplishes neither of these objectives and thus, applicant has modified the technical problem to be directed to the intended use of the claimed server/ inventory system (i.e., “solving a technical problem related to leveraging information included in a home inventory for use by external systems.”) by other, unclaimed machines. See pg. 17 of applicant’s arguments/ remarks as filed (05/26/26).
Furthermore, with respect to applicant’s arguments, applicant is conflating two different standards (i.e., Prior art eligibility consideration with respect to 102 or 103; and “well-understood, routine and conventional” consideration with respect to 101.
Regarding applicant’s Bascom arguments, an important aspect of the courts finding with respect to the inventive concept in Bascom was that it was a “non-conventional non-generic arrangement of known conventional, pieces” (i.e., In contrast to the “then-known filtering tools”, Bascom’s claimed invention installed filters at the ISP server.). Applicant’s claimed invention is not comparable to Bascom.
First, applicant’s claimed invention is well-understood, routine conventional. As noted above, applicant’s specification as filed (08/29/22) does not provide any indication that the “server” is anything other than a generic, off-the-shelf computer component. Furthermore, the prosecution history of the instant application provides Trandal, Fini and Busque operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “analyzing”, “blurring”, “smoothing”, “converting”, “identifying”, “associating”, “analyzing”, “generating”, “determining”, etc. step(s) as claimed); and (b) data receipt/ transmission (e.g., “transmitting”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data processing (e.g., “analyzing”, “blurring”, “smoothing”, “converting”, “identifying”, “associating”, “analyzing”, “generating”, “determining”, etc. step(s) as claimed); and (b) data receipt/ transmission (e.g., “transmitting”, etc. step(s) as claimed) are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here).
Second, applicant’s claimed invention does not provide “non-conventional non-generic arrangement of known conventional, pieces.” As noted above, applicant’s claimed invention does not provide a “distributed” architecture that renders to the claimed invention “unconventional”. Applicant’s claimed invention is directed to a conventional computer network. Furthermore, all processing and decision making in the claimed invention is done exclusively by a single computer (i.e. “server”). In other words, there is no real distribution of tasks in the claimed invention.
5.Applicant argues the claims to not preempt.
With regard to preemption, the issue comes down to whether the claim is directed to an abstract idea and does it fail the Mayo/Alice step one and step two analysis.
In the instant case, the claims are directed to the concepts of analyzing, by a server and using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images; associating, by the server, the plurality of the items with an address of a home based on metadata of the images; analyzing, by the server and using the one or more image processing techniques, the one or more images to determine a room for each item of the plurality of the item within the home; generating, by the server, a home inventory comprising the plurality of items, the address of the home, and the room for each item within the home; determining, by the server, based on demographic information associated with the user, a demographic classification for the user;
determining, by the server, based on the demographic classification and the home inventory, one or more candidate items to recommend to the user; and transmitting, by the server, to a user device associated with the user, a recommendation related to the one or more candidate items is similar to other (methods of organizing human activities; mental processes, etc.) found to be abstract ideas.
The fact that the claims do not preempt all ways of analyzing, by a server and using one or more image processing techniques comprising a blur filter, grey-scaling, optical recognition, or edge detection, one or more images from a user by blurring and smoothing the one or more images, converting the one or more images into greyscale, and identifying structural edges in the one or more images based on brightness changes to identify a plurality of items depicted in the one or more images; associating, by the server, the plurality of the items with an address of a home based on metadata of the images; analyzing, by the server and using the one or more image processing techniques, the one or more images to determine a room for each item of the plurality of the item within the home; generating, by the server, a home inventory comprising the plurality of items, the address of the home, and the room for each item within the home; determining, by the server, based on demographic information associated with the user, a demographic classification for the user; determining, by the server, based on the demographic classification and the home inventory, one or more candidate items to recommend to the user; and transmitting, by the server, to a user device associated with the user, a recommendation related to the one or more candidate items does not make them any less abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture, 728 F.3d at 1345.
Therefore, based on the two-part Alice Corp. analysis, there are no meaningful limitations in the claims that transform the exception (i.e., abstract idea) into a patent eligible application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and relate to insurance and/ or inventory analysis.
US 8423548 B1
US 8296259 B1
US 8135726 B1
AU 2011213713 A1
US 7962485 B1
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
