DETAILED ACTION
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 Objections
2. Claim 1 and 19 are objected to because of the following informalities: a) In claim 1 lines 10-13, please change “selecting, based on the first luminaire installation characteristic, on the second luminaire installation characteristic, on a database with a plurality of luminaire designs, a list comprising,” to: --selecting, based on the first luminaire installation characteristic, on the second luminaire installation characteristic, and on a database with a plurality of luminaire designs, a list comprising,--.
b) In claim 19 lines 22-26, please change
“selecting, based on the first luminaire installation characteristic, on the second luminaire installation characteristic, on the database with a plurality of luminaire designs, a list comprising,” to: --selecting, based on the first luminaire installation characteristic, on the second luminaire installation characteristic, and on the database with a plurality of luminaire designs, a list comprising,--.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
3. 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 1-3, 7-9, 11, 13-14, 18-21, 25-27, 29, 31-32, and 36 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.
In view of the new 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register Vol. 84, No. 4, January 7, 2019), the Examiner has considered the claims and has determined that under step 1, claims 1--3, 7-9, 11, 13-14, 18, and 36 are to a process, and claims 19-21, 25-27, 29, and 31-32 are to a machine.
Next under the new step 2A prong 1 analysis, the claims are considered to determine if they recite an abstract idea (judicial exception) under the following groupings: (a) mathematical concepts, (b) certain methods of organizing human activity, or (c) mental processes. The independent claims contain at least the following bolded limitations (see representative independent claims) that fall into the grouping of mental processes:
1. A method for selecting and sorting at least one luminaire design, said method comprising the following steps:
obtaining a first luminaire installation characteristic associated to a first lighting site;
obtaining a second luminaire installation characteristic associated to a second lighting site,
wherein each of the first lighting site and the second lighting site corresponds to a location for installing at least one luminaire neighboring a pathway;
selecting, based on the first luminaire installation characteristic, on the second luminaire installation characteristic, on a database with a plurality of luminaire designs, a list comprising, for each lighting site, at least one suitable luminaire design with at least one suitable configuration parameter of said plurality of luminaire designs, wherein a luminaire design may be the same or different for the first lighting site and the second lighting site; and
sorting the list based on at least one preferential parameter.
19. A computer controlled system for selecting and sorting at least one luminaire design, said system including:
a data entry means adapted to receive:
a first luminaire installation characteristic associated to a first lighting site;
a second luminaire installation characteristic associated to a second lighting site,
wherein each of the first lighting site and the second lighting site corresponds to a location for installing at least one luminaire neighboring a pathway;
and
a database comprising a plurality of luminaire designs;
a memory coupled to said data entry means for storing the first luminaire installation characteristic, the second luminaire installation characteristic, and said database comprising the plurality of luminaire designs;
a processor coupled to said memory; and
a display coupled to said processor,
wherein the processor is further configured for:
obtaining, from the memory, the first luminaire installation characteristic;
obtaining, from the memory the second luminaire installation characteristic;
selecting, based on the first luminaire installation characteristic, on the second luminaire installation characteristic, on the database with a plurality of luminaire designs, a list comprising for each lighting site at least one suitable luminaire design with at least one suitable configuration parameter of said plurality of luminaire designs, wherein a luminaire design may be the same or different for the first lighting site and the second lighting site;
outputting the selected list of the at least one suitable luminaire design via the display;
sorting the list based on a preferential parameter; and
outputting the sorted list of the at least one suitable luminaire design via the display.
The limitations of "selecting and sorting at least one luminaire design" amounts to a mental process to evaluate and organize data, which can be performed mentally or on pen and paper by a person evaluating a plurality of data to make a informational-based selection and organized listing of results. The limitations of "selecting, based on the first luminaire installation characteristic, on the second luminaire installation characteristic, on the database with a plurality of luminaire designs, a list comprising, for each lighting site at least one suitable luminaire design with at least one suitable configuration parameter of said plurality of luminaire designs, wherein a luminaire design may be the same or different for the first lighting site and the second lighting site" amounts to a mental process to evaluate multiple parameters and formulate a list comprising at least one suitable luminaire design with at least one suitable configuration parameter based on the evaluation. The limitations of "sorting the list based on at least one preferential parameter" amount to a mental process step to organize data by assigning a criteria to a preferential parameter in order to carry out a ranking and sorting according to the value of the preferential parameter. Taken together, the bolded limitations in the independent claims above describe a series of abstract mental processing steps to generate a data list that is sorted according to a ranked preferential parameter, which can be performed by a person analyzing data and considering multiple options for selecting a luminaire design.
Next in step 2A prong 2, the independent claims are analyzed to determine whether there are additional elements or combination of elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception such that it is more than a drafting effort designed to monopolize the exception, in order to integrate the judicial exception into a practical application. These limitations have been identified and underlined above, and are not indicative of integration into a practical application because: (1) the limitations of "obtaining a first luminaire installation characteristic associated to a first lighting site," "receive a first luminaire installation characteristic associated to a first lighting site," "obtaining a second luminaire installation characteristic associated to a second lighting site," and "receive a second luminaire installation characteristic associated to a second lighting site," amount to adding insignificant extra-solution data gathering activity to the judicial exception (see MPEP 2106.05(g)); (2) the limitations of "wherein each of the first lighting site and the second lighting site corresponds to a location for installing at least one luminaire neighboring a pathway" amounts to generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)); (3) the limitations of "a computer controlled system," "a data entry means adapted to receive," "a database comprising a plurality of luminaire designs," "a memory coupled to said data entry means for storing the first luminaire installation characteristic, the second luminaire installation characteristic, and said database comprising the plurality of luminaire designs, and optionally the lighting regulation," "a processor coupled to said memory," and "a display coupled to said processor," amount to mere instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)); (4) the limitations of "outputting the selected list of the at least one suitable luminaire design via the display" and "outputting the sorted list of the at least one suitable luminaire design via the display" amount to insignificant post-solution outputting activity to the judicial exception (see MPEP 2106.05(g)). No further limitations are described that amount to an integration into a practical application, as no physical process or technology has been further improved using the information of the selected luminaire design.
Next in step 2B, the independent claims are considered to determine if they recite additional elements that amount to an inventive concept (“significantly more”) than the recited judicial exception.
These limitations have been identified and similarly underlined above, and are not indicative of an inventive concept ("significantly more"). The limitations of "obtaining a first luminaire installation characteristic associated to a first lighting site," "receive a first luminaire installation characteristic associated to a first lighting site," "obtaining a second luminaire installation characteristic associated to a second lighting site," and "receive a second luminaire installation characteristic associated to a second lighting site" do not add significantly more because such limitations amount to adding insignificant extra-solution data gathering activity to the judicial exception (see MPEP 2106.05(g)), and do not describe any data gathering using a particularly implemented physical measurement arrangement. The limitations of "wherein each of the first lighting site and the second lighting site corresponds to a location for installing at least one luminaire neighboring a pathway" do not add significantly more because such limitations amounts to generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)), as the sites are "for" installation, without any installation actually taking place. The limitations of "a computer controlled system," "a data entry means adapted to receive," "a database comprising a plurality of luminaire designs," "a memory coupled to said data entry means for storing the first luminaire installation characteristic, the second luminaire installation characteristic, and said database comprising the plurality of luminaire designs, and optionally the lighting regulation," "a processor coupled to said memory," and "a display coupled to said processor," do not add significantly more because such limitations amount to mere instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). The use of generic computer equipment is considered insignificant additional elements. As recited in the MPEP, 2106.07(b), merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection (see Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94). Selecting a particular generic function for computer hardware to perform (e.g., buffering content, storing and retrieving data from memory) from within a range of well- known, routine, conventional functions performed by the hardware is not significantly more, (see Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264, 120 USPQ2d 1201, 1208 (Fed. Cir. 2016)(MPEP 2106.05(a)II last paragraph). Finally, the limitations of "outputting the selected list of the at least one suitable luminaire design via the display" and "outputting the sorted list of the at least one suitable luminaire design via the display" do not add significantly more because such limitations amount to insignificant post-solution outputting activity to the judicial exception (see MPEP 2106.05(g)). As similarly explained by the Electric Power Group court, "though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and…technology. The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101," (see Electronic Power Group, LLC v. Alstom, 830 F. 3d 1350, 119 U.S.P.Q. 2d 1739 (Fed. Cir. 2016) at pg. 2).
Dependent claims 2-3 and 20-21 contain additional limitations that fall under the abstract idea grouping of a mental process to provide data-based definitions such as for the installation characteristics, configuration parameter, and preferential parameter. Dependent claims 7-9 and 25-27 describe additional insignificant extrasolution data gathering (see MPEP 2106.05(g)) and further mental process selecting and sorting steps according to the gathered additional data input. Dependent claims 11 and 29 describe an abstract idea mental process to consider a further luminaire installation characteristic, and/or amount to generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)), without describing the actual physical installation but merely a planned use environment. Dependent claims 13-14 and 31-32 describe additional insignificant post solution data outputting (see MPEP 2106.05(g)) and abstract idea mental process steps to look at and analyze characteristics from the display. Dependent claim 18 amounts to merely using a computer as a tool to perform the abstract idea (see MPEP 2106.05(f)). Dependent claim 36 merely describes the order of the steps as part of the abstract idea mental process or overall data processing algorithm.
4. An invention is not rendered ineligible for patent simply because it involves an abstract concept. Applications of such concepts "to a new and useful end" remain eligible for patent protection (see Alice Corp., 134 S. Ct. at 2354 (quoting Benson, 409 U.S. at 67)). However, "a claim for a new abstract idea is still an abstract idea" (see Synopsys v. Mentor Graphics Corp. _F.3d_, 120 U.S.P.Q. 2d1473 (Fed. Cir. 2016)). There needs to be additional elements or combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception or render the claim as a whole to be significantly more than the exception itself in order to demonstrate “integration into a practical application” or an “inventive concept.” For instance, particular physical arrangements for actively obtaining any measurement data, or further physical applications using the calculated sorted list of at the least one suitable luminaire design (beyond just merely displaying the information) to drive a physical transformation (such as an installation), change in physical operation, or repair/maintenance of a technology or technical process, could provide integration into a practical application to demonstrate an improvement to the technology or technical field.
Claim Rejections - 35 USC § 112
5. Previous rejections are withdrawn in view of Applicant’s amendment filed August 28, 2026.
Allowable Subject Matter
6. Claims 1-3, 7-9, 11, 13-14, 18-21, 25-27, 29, 31-32, and 36 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
7. The following is a statement of reasons for the indication of allowable subject matter: In regards to claim 1, the closest prior art, Johnson (US Pat. Pub. 2021/0217072) at least teaches
a method for selecting and sorting at least one luminaire design (Johnson abstract teaches a method of using a luminaire selection and architectural design platform for selecting and sorting at least one luminaire design satisfying one or more criterion; Johnson paragraphs [0013] and [0020] teach ranking and sorting results according to priorities), said method comprising the following steps:
obtaining a first luminaire installation characteristic associated to a first lighting site (Johnson paragraphs [0040]-[0048] teach obtaining a first installation characteristic (such as mounting type, source type, and distribution type) from a user selection for a first luminaire at a first lighting site);
obtaining a second luminaire installation characteristic associated to a second lighting site (Johnson paragraphs [0041]-[0048] teach obtaining a second installation characteristic (such as mounting type, source type, and distribution type) from a user selection for a second luminaire at a second lighting site, as paragraph [0069] allows a user to add additional luminaires (including a second luminaire)),
wherein each of the first lighting site and the second lighting site corresponds to a location for installing at least one luminaire neighboring a pathway (Johnson Fig. 2A allows for the selection of lights for multiple lighting sites, including outdoors and neighboring a pathway as illustrated).8. However, claim 1 contains allowable subject matter because the closest prior art, Johnson (US Pat. Pub. 2021/0217072) fails to anticipate or render obvious a method for selecting and sorting at least one luminaire design, said method comprising the following steps: selecting, based on the first luminaire installation characteristic, on the second luminaire installation characteristic, on a database with a plurality of luminaire designs, a list comprising, for each lighting site, at least one suitable luminaire design with at least one suitable configuration parameter of said plurality of luminaire designs, wherein a luminaire design may be the same or different for the first lighting site and the second lighting site, in combination with the rest of the claim limitations as claimed and defined by the Applicant. The selection of a list for each lighting site appears to be made independently for each luminaire in Johnson (US Pat. Pub. 2021/0217072), as for example the characteristics of the second luminaire installation characteristic at a second lighting site are not considered together or compared against the first luminaire installation characteristic at a first lighting site in the selection of the results list for the first lighting site.
Similarly, claim 19 contains allowable subject matter because the closest prior art, Johnson (US Pat. Pub. 2021/0217072) fails to anticipate or render obvious a computer controlled system for selecting and sorting at least one luminaire design, said system comprising: selecting, based on the first luminaire installation characteristic, on the second luminaire installation characteristic, on a database with a plurality of luminaire designs, a list comprising, for each lighting site, at least one suitable luminaire design with at least one suitable configuration parameter of said plurality of luminaire designs, wherein a luminaire design may be the same or different for the first lighting site and the second lighting site, in combination with the rest of the claim limitations as claimed and defined by the Applicant.
9. Dependent claims 2-3, 7-9, 11, 13-14, 18, and 36 depend from claim 1 and contain allowable subject matter for at least the same reasons as given for claim 1. Dependent claims 20-21, 25-27, 29, and 31-32 depend from claim 19 and contain allowable subject matter for at least the same reasons as given for claim 19.
Response to Arguments
10. Applicant's arguments filed August 28, 2026 regarding the 35 U.S.C. 101 rejections have been fully considered but they are not persuasive.
11. Applicant argues in regards to the 35 U.S.C. 101 rejections (see Applicant’s Arguments/Remarks 8/28/2026 pg. 17 paragraph 3 through pg. 19 paragraph 2):
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12. In response, the Examiner respectfully disagrees and points out that the many features cited by the Applicant amount to details of the abstract idea, but "a claim for a new abstract idea is still an abstract idea" (see Synopsys v. Mentor Graphics Corp. _F.3d_, 120 U.S.P.Q. 2d1473 (Fed. Cir. 2016)). An improved sequence of abstract data analysis steps or the consideration of additional variables (such as as a first luminaire installation characteristic, second installation characteristic, and database of luminaire designs) is still an abstract idea, just as an improved formula for that considers additional variables for calculating a value is still an abstract idea. The bolded claim limitations cited as part of the abstract idea in the 35 U.S.C. 101 rejections amount to a mental process of planning for the selection of a luminaire design by considering multiple variables, making a user selection of a list according to the variables, and sorting the list according to a preferential parameter of a user. As described in Electronic Power Group, “accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category," (see Electronic Power Group, LLC v. Alstom, 830 F. 3d 1350, 119 U.S.P.Q. 2d 1739 (Fed. Cir. 2016) at pg. 7). The claims define a desirable informational-based result, but the end result is still within the realm of abstract ideas. The independent claims do not explicitly recite any further applications, such as causing the number of spare parts to be reduced or lightening the load of materials needed during installation as described in Applicant’s arguments, which would amount to an integration into a practical application to affect a real-world physical change for an improvement to the technical field of luminaire installation. Just as in Diamond v. Diehr, where the end application was more than just an improved calculation for a rubber molding time but rather the physical operation of a molding press according to that calculation, the claims in the present application need an applied application outside of the realm of merely calculating an informational-based sorted list.
13. Applicant further argues in regards to the 35 U.S.C. 101 rejections (see Applicant’s Arguments/Remarks 8/28/2026, pg. 19 paragraph 3) that:
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14. In response, the examiner respectfully disagrees and points out that merely outputting the selected list, or outputting a calculation or mental processing result, has been identified as insignificant post-solution display activity that is tangential to the abstract idea (see MPEP 2106.05(g)). Also as described by the Electronic Power Group decision: "Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology. The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under § 101," (see Electronic Power Group, LLC v. Alstom, 830 F. 3d 1350, 119 U.S.P.Q. 2d 1739 (Fed. Cir. 2016) at pg. 2). The outputting of the sorted list provides a desirable “informational”-based output, but does not provide any further integration as the performance of a computer or luminaire installation technical process has not been actively changed in any way.
15. The Applicant makes similar arguments for claims 2-3, 7-9, 11, 13-14, 18, 20-21, 25-27, 29, 31-32, and 36 based on their dependence on claims 1 or 19 (see Applicant’s Arguments/Remarks 8/28/2026 pg. 20 paragraph 1). The Examiner respectfully draws attention to the responses given above in sections 12 and 14 to address these related arguments.
Conclusion
16. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL D LEE whose telephone number is (571)270-1598. The examiner can normally be reached M to F, 9:30 am to 6 pm.
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PAUL D. LEE
Examiner
Art Unit 2857
/PAUL D LEE/Primary Examiner, Art Unit 2857 9/26/2026
