DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This communication is a final action in response to the correspondences filed on 7/23/2026. Claims 1-19 are currently pending and have been considered below.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/23/2026 has been entered.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claims 1-19 are determined to be directed to an abstract idea.
The claims 1-19 are directed to a judicial exception (i.e., law of nature, natural phenomenon, or abstract idea), without a practical application and without providing significantly more.
Regarding Step 1 of the subject matter eligibility test per MPEP 2106.03, Claims 1-10 are directed to a method (i.e., process), Claims 11-19 are directed to a system (i.e., apparatus); accordingly, all claims are directed to one of the four statutory categories of invention.
Regarding Step 2A-Prong 1 of the subject matter eligibility test per MPEP 2106.04, Claim 1 is directed specifically to the abstract idea of evaluating/managing life-cycle assessment of buildings by obtaining building parameters of a building, the building parameters comprising material mass values of the building; determining exergy-based life cycle assessment (Exe-LCA) values of the building based at least in part upon the building parameters, the Exe-LCA values comprising life cycle resource depletion, life cycle exergy loss of emissions and total Exe-LCA of the building; modifying a design of the building based upon the Exe-LCA values, the modification producing modified building parameters of the building; and implementing the modified building design thereby providing a reduced whole building LCA; which include mental processes (i.e., evaluating and analyzing building parameters for a judgement and opinion for Life-cycle assessment of a building) and certain methods of organizing human activities based on fundamental economic practice, and managing personal behavior and interactions between people (managing building design planning and following rules and instructions for modifying a building design for reduced LCA). Claim 11 is directed specifically to the abstract idea of evaluating/managing life-cycle assessment of buildings by determine exergy-based life cycle assessment (Exe-LCA) values of a building based at least in part upon building parameters of the building, the building parameters comprising material mass values of the building, the Exe-LCA values comprising life cycle resource depletion, life cycle exergy loss of emissions and total Exe-LCA of the building; and provide at least one modification of a design of the building based upon the Exe-LCA values, the at least one modification producing modified building parameters of the building; and generate a modified building design based upon the at least one modification, the modified building design providing a reduced whole building LCA; which include mental processes (i.e., evaluating and analyzing building parameters for a judgement and opinion for Life-cycle assessment of a building) and certain methods of organizing human activities based on fundamental economic practice, and managing personal behavior and interactions between people (managing building design planning and following rules and instructions for modifying a building design for reduced LCA). Claims 2-10 and 12-19 are directed to performing the abstract idea of claim 1 or 11 with further details provided for the mental processes and certain methods of organizing human activity for similar reasons as provided above for claim 1 or 11. After considering all claim elements, both individually and in combination and in ordered combination, it has been determined that the claims do not amount to significantly more than the abstract idea itself.
Regarding Step 2A-Prong 2 of the subject matter eligibility test per MPEP 2106.04(d) and 2106.05, while the claims 1-19 recite additional elements which are hardware or software elements, such as at least one computing device comprising a processor and memory; and an ExeLCA analysis program, where execution of the ExeLCA analysis program by the at least one computing device causes the at least one computing device to, these limitations are not enough to qualify as “practical application” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instructions of the abstract idea, and mere instructions to apply/implement/automate an abstract idea in a particular technological environment and merely limiting the use of an abstract idea to a particular technological environment do not provide practical application for an abstract idea (MPEP 2106.05 (f) & (h)). The claims do not amount to "practical application" for the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Further, “where implementing the modified building design comprises constructing or modifying the building based upon the modified building design” merely is insignificant extrasolution activity – insignificant application (See MPEP 2106.05(g)).
Regarding Step 2B of the subject matter eligibility test per MPEP 2106.05, while the claims 1-19 recite additional elements which are hardware or software elements, such as at least one computing device comprising a processor and memory; and an ExeLCA analysis program, where execution of the ExeLCA analysis program by the at least one computing device causes the at least one computing device to, these limitations are not enough to qualify as “significantly more” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instructions of the abstract idea, and mere instructions to apply/implement/automate an abstract idea in a particular technological environment and merely limiting the use of an abstract idea to a particular technological environment do not provide significantly more to an abstract idea (MPEP 2106.05(f) & (h)). The claims do not amount to "significantly more" than the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) add a specific limitation other than what is well-understood, routine and conventional in the field; (6) add unconventional steps that confine the claim to a particular useful application; nor (7) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Further, “where implementing the modified building design comprises constructing or modifying the building based upon the modified building design” merely is insignificant extrasolution activity - insignificant application and well-understood routine and conventional – converting an architectural plan into a building via construction (See MPEP 2106.05(d)&(g)).
Therefore, since there are no limitations in the claims 1-19 that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself, and looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, the claims are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Response to arguments
Applicant’s arguments filed on 7/23/2026 have been fully considered and would not overcome all of the rejections in the most recent Office action. Details are provided below.
Rejections under 35 U.S.C. 101:
Applicants argued that the claims are not directed to an abstract idea. Examiner respectfully disagrees.
Applicant’s claimed invention recites the abstract idea of mental processes (i.e., evaluating and analyzing building parameters for a judgement and opinion for Life-cycle assessment of a building) and certain methods of organizing human activities based on fundamental economic practice, and managing personal behavior and interactions between people (managing building design planning and following rules and instructions for modifying a building design for reduced LCA).
Applicants argued that the claims are directed to practical application and/or significantly more. Examiner respectfully disagrees.
Additional elements are not enough to qualify as “practical application” or “significantly more” being recited in the claims along with the abstract idea since these limitations are merely invoked to perform instructions of the abstract idea, and mere instructions to apply/implement/automate an abstract idea in a particular technological environment and merely limiting the use of an abstract idea to a particular technological environment do not provide practical application for an abstract idea (MPEP 2106.05 (f) & (h)).
Applicants also argue that the claims are directed to patent eligible subject matter because the Examiner withdrew all prior-art rejections. Appellants strongly assert that if a set of ‘specific limitations’ has been deemed not anticipated, taught, or even suggested by a field of available art, (as is the case with the instant claims) then the same set of ‘specific limitations’ cannot plausibly be simultaneously argued as being ‘well-understood, routine and conventional in the field.”
This argument is unpersuasive because it improperly conflates the inquiry of patent eligibility under 35 U.S.C. § 101 with the separate and distinct inquiries of novelty and non-obviousness under 35 U.S.C. §§ 102 and 103. Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016) (Reyna, J., dissenting) (“The inventiveness inquiry of § 101 should . . . not be confused with the separate novelty inquiry of § 102 or the obviousness inquiry of § 103.”).
Applicants point to no specific element missing from the prior art that allegedly indicates the claims are directed to practical application or significantly more than an abstract idea. The fact that the prior-art rejections were withdrawn may well, then, merely indicate that the Examiner determined the prior art did not reasonably teach or suggest the underlying abstract idea itself. However, a claim to an abstract idea is not rendered patentable even if it is “[groundbreaking, innovative, or even brilliant.” See SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1018 (Fed. Cir. 2018).
Conclusion
Closest prior art to the invention includes Lee et al. (Pub. No.: KR 100,934,979), Otsuka et al. (Pub. No.: JP 2004/265,178 A), Tae et al. (U.S Patent No. 11,531,793) and Rosen (M. A. Rosen, "Exergy Concept and its Application," 2007 IEEE EPEC). None of the prior art alone or in combination teaches the claimed invention wherein the novelty is in combination of all the limitations.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 MEHMET YESILDAG whose telephone number is (571)272-3257. The examiner can normally be reached M-F 8:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerry O'Connor can be reached on (571) 272-6787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEHMET YESILDAG/Primary Examiner, Art Unit 3624
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