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 .
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1-8, 11-18, 20-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the 2019 PEG, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “transmit…a request to obtain asset data for a dashboard visualization with a portfolio of assets; receive the asset data…, the asset data being configured based on the asset descriptor and the user identifier; render, based on the asset data, the dashboard visualization…, the dashboard visualization configured to provide the prioritized actions for the portfolio of assets…; rank the prioritized actions for the portfolio of assets using one or more machine learning models based on an impact of respective prioritized actions with respect to the portfolio of assets; execute one or more actions dynamically to adjust asset configurations based on a real-time detection of deviations from predefined performance thresholds of the one or more assets, and control at least one asset from the portfolio of assets by transmitting one or more set-point changes, one or more protocol commands, or one or more firmware updates to an asset controller…to perform one or more actions associated with the prioritized actions for the portfolio of assets” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. In addition, the claim limitations “receive the asset data…, the asset data being configured based on the asset descriptor and the user identifier; generate…insights based on real-time asset data and historical asset data; wherein the one or more machine learning models are configured to: detect deviations from one or more performance thresholds; and determine a likelihood of equipment faults based on asset properties and relationships defined in a knowledge graph, and wherein the insights are used to generate or update the prioritized actions for the portfolio of assets; rank the prioritized actions for the portfolio of assets using one or more machine learning models based on an impact of respective prioritized actions with respect to the portfolio of assets; control at least one asset from the portfolio of assets by transmitting one or more set-point changes, one or more protocol commands, or one or more firmware updates to an asset controller…to perform one or more actions associated with the prioritized actions for the portfolio of assets; execute one or more actions dynamically to adjust asset configurations based on a real-time detection of deviations from the one or more performance thresholds of the one or more assets” are steps that can be performed in the human mind. Any steps that can be performed in the human mind falls into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “establish communication with another user computing device via the dashboard visualization to facilitate performing one or more actions associated with the prioritized actions for the portfolio of assets based on the asset data automatically; memory, server system, one or more processors and computing device.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the processors, memory, computing device and server system are caused to perform these steps. The processors, memory, computing device and server system, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activity. For instance, the step of “establish communication with another user computing device via the dashboard visualization to facilitate performing one or more actions associated with the prioritized actions for the portfolio of assets,” when considered as a whole, is directed to an insignificant extra-solution activity of sending data from one system to another (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016). Further, the limitations “wherein the request comprises: an asset descriptor, the asset descriptor describing one or more assets in the portfolio of assets of one or more buildings; and a user identifier, the user identifier identifying a user for the dashboard visualization and the asset data being configured based on the asset descriptor and the user identifier, and the asset data comprising prioritized actions for the portfolio of assets, and wherein an action from one or more actions comprises at least an action associated with an application services layer, an application layer, and a core services layer associated with an Internet of Things (IoT),” are recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “the processors, memory and server system.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0082-0084. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 2-8, 12-18, 21 and 23 do recite additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Further, claim 22 when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity).
Response to Arguments
Applicant's arguments filed on 11/03/25, regarding the 101 rejections, have been fully considered but they are not persuasive.
In response to applicant’s argument that the claim as currently amended is not directed to an abstract, the examiner disagrees. The examiner contends that the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “transmit…a request to obtain asset data for a dashboard visualization with a portfolio of assets; receive the asset data…, the asset data being configured based on the asset descriptor and the user identifier; render, based on the asset data, the dashboard visualization…, the dashboard visualization configured to provide the prioritized actions for the portfolio of assets…; rank the prioritized actions for the portfolio of assets using one or more machine learning models based on an impact of respective prioritized actions with respect to the portfolio of assets; execute one or more actions dynamically to adjust asset configurations based on a real-time detection of deviations from predefined performance thresholds of the one or more assets, and control at least one asset from the portfolio of assets by transmitting one or more set-point changes, one or more protocol commands, or one or more firmware updates to an asset controller…to perform one or more actions associated with the prioritized actions for the portfolio of assets” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. In addition, the claim limitations “receive the asset data…, the asset data being configured based on the asset descriptor and the user identifier; generate…insights based on real-time asset data and historical asset data; wherein the one or more machine learning models are configured to: detect deviations from one or more performance thresholds; and determine a likelihood of equipment faults based on asset properties and relationships defined in a knowledge graph, and wherein the insights are used to generate or update the prioritized actions for the portfolio of assets; rank the prioritized actions for the portfolio of assets using one or more machine learning models based on an impact of respective prioritized actions with respect to the portfolio of assets; control at least one asset from the portfolio of assets by transmitting one or more set-point changes, one or more protocol commands, or one or more firmware updates to an asset controller…to perform one or more actions associated with the prioritized actions for the portfolio of assets; execute one or more actions dynamically to adjust asset configurations based on a real-time detection of deviations from the one or more performance thresholds of the one or more assets” are steps that can be performed in the human mind. Any steps that can be performed in the human mind falls into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that the additional elements in the claim provide technical advantages, the examiner disagrees. The alleged advantages that applicant touts (actionable dashboard visualizations for a portfolio of assets, etc) do not concern improvements to computer capabilities but instead relate to alleged improvements in computer-based processes; that is, processes in which a computer is used as a tool in its ordinary capacity which is to process, send and receive data, store and display data. Also, the solution addressed by the applicant’s claims is a business solution and not a technical solution. Rather than addressing a problem unique to the technology in which the solution is implemented, applicant’s claim merely automates, using a generic computer technology, a business process in which profitability is increased through asset analytics.
In response to applicant’s argument that the alleged abstract idea is integrated into a practical implementation, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “establish communication with another user computing device via the dashboard visualization to facilitate performing one or more actions associated with the prioritized actions for the portfolio of assets based on the asset data automatically; memory, server system, one or more processors and computing device.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the processors, memory, computing device and server system are caused to perform these steps. The processors, memory, computing device and server system, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activity. For instance, the step of “establish communication with another user computing device via the dashboard visualization to facilitate performing one or more actions associated with the prioritized actions for the portfolio of assets,” when considered as a whole, is directed to an insignificant extra-solution activity of sending data from one system to another (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016). Further, the limitations “wherein the request comprises: an asset descriptor, the asset descriptor describing one or more assets in the portfolio of assets of one or more buildings; and a user identifier, the user identifier identifying a user for the dashboard visualization and the asset data being configured based on the asset descriptor and the user identifier, and the asset data comprising prioritized actions for the portfolio of assets, and wherein an action from one or more actions comprises at least an action associated with an application services layer, an application layer, and a core services layer associated with an Internet of Things (IoT),” are recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
In response to applicant’s argument that claim 1 provides provide an inventive concept and amounts to significantly more than the exception itself, the examiner disagrees. It is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “the processors, memory and server system.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0082-0084. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695