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 .
Notice to Applicant
The following is a Final Office action. In response to Examiner’s Non-Final Rejection of 11/19/2025, Applicant, on 02/18/2025, argued the previous rejection. No amendments made. Claims 1-18 are pending in this application and have been rejected below.
Response to Arguments
Applicant's arguments filed 02/18/2025 have been fully considered, but they are not fully persuasive. The 35 USC § 101 rejection of claims 1-18 is still applied.
The Applicant argues “In Exparte Desjardins, Director Squires found claims directed towards a machine learning model…Using Director Squire's reasoning above, if software -i.e., a method-can make a non- abstract improvement to a technology then it is incorporated into a practical application. Here, the claimed method of claim 1 is providing the practical application of creating and displaying a multi- year plan regarding patent protecting technology of a market-tech unit of a product.” (Remarks 02/18/2026)
In response, the Examiner respectfully disagrees. In response to Applicant’s reliance on Ex Parte Desjardins and the related citation to Enfish (Remarks at pg. 9), the Examiner first notes that the fact pattern and claimed subject matter under consideration in Desjardins shares virtually no substantive similarities to applicant’s claims in this instance. For example, in Desjardins, which was directed to a computer-implemented method of training a machine learning model, the claimed improvement (which was supported by the Specification) was deemed to allow artificial intelligence (AI) systems to use less storage capacity and reduce system complexity. Applicant’s claimed yield a result of “generate, by the co-processor, a digitally formatted graphical representation, for display on graphical user interface,” which has no nexus to machine-learning or artificial intelligence, nor any discernible improvement in terms of computing system storage capacity or reduced system complexity. Thus, the Examiner does not find the Ex Parte Desjardins argument persuasive.
The claimed subject matter, is directed to an abstract idea by reciting concepts performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “Mental Process” group within the enumerated groupings of abstract ideas. The mere nominal recitation of a generic computer does not take the claim limitation out of the mental processes grouping.
The claimed subject matter is merely claims a method for identifying and calculating information regarding patent lifecycle data. Although it may be intended to be performed in a digital environment, the claimed subject matter (as currently claimed in the independent claim) speaks to the calculating and analyzing data. Such steps are not tied to the technological realm, but rather utilizing technology to perform the abstract idea. Additionally, the claimed subject matter can also be categorized as a Mental Process as it recites concepts performed in the human mind (observation and evaluation). The steps of calculating data, training/updating models, and generating a model/trend line can be performed by a human (mental process/pen and paper). The practice of calculating information and constructing models with set parameters and timelines can be performed without computers, and thus are not tied to technology nor improving technology.
The solution mentioned in the amended limitation is not implemented/integrated into technology and thus not an improvement to the technical field. Further, there is no integration into a practical application as the claims can be interpreted as humans per se, as the claims fail to tie the steps to technology; insignificant extra solution activities (which are merely calculating and/or analyzing data).
The steps relied upon by the Applicant as recited does not improve upon another technology, the functioning of the computer itself, or allow the computer to perform a function not previously performable by a computer. The claims do not mention to any use of a specialized computer and/or processor. The Applicant is using generic computing components (processors) to perform in a generic/expected way (obtaining and analyzing data).The abstract idea is not particular to a technological environment, but is merely being applied to a computer realm. The process of calculating and analyzing data specifically for patent information, and performing additional analysis can be done without a computer, and thus the claims are not “necessarily rooted", but rather they are utilizing computer technology to perform the abstract idea. The Examiner does not recognize any elements of the Applicant's claims and/or specification that would improve or allow the computer to perform a function(s) not previously performable by the computer, or improve the functioning of the computer itself. It is insufficient to indicate that the claims are novel and non-obvious, and thus contain “something more.” Just because the components may perform a specialized function does not mean that that the computer components are specialized. As such the application of the abstract idea of collecting and analyzing data regarding purchase information, and performing correlation analysis is insufficient to demonstrate an improvement to the technology.
The additional elements have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment (generic computing environment). See MPEP 2106.05(f) and 2106.05(h).
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the method (claims 1-9) and computer program product (claims 10-18) are directed to potentially eligible categories of subject matter (i.e., process, machine, and article of manufacture respectively). Thus, Step 1 is satisfied.
With respect to Step 2, and in particular Step 2A Prong One, it is next noted that the claims recite an abstract idea by reciting concepts performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “Mental Process” group within the enumerated groupings of abstract ideas set forth in the 2019 PEG. The mere nominal recitation of a generic computer does not take the claim limitation out of the mental processes grouping.
The limitations reciting the abstract idea(s) (Mental process), as set forth in exemplary claim 1, are: identifying…for technology, a market-technology unit of a product based on marketable features and unique value propositions identifying…technology challenges of the market-technology unit determining…a number of inventions to accommodate the technology challenges; determining…a technology life cycle for the market-technology unit creating…patent planning data based on the number of inventions and the technology life cycle; generating…a plurality of multi-year plans based on the patent planning data and a plurality of patent positions; calculating…patent expenses for each of the multi-year plans; calculating…market-technology unit value for each of the multi-year plans; …each of the multi-year plans; the patent expenses for each of the multi-year plans; and the market-technology unit value for each of the multi-year plans; when a selection of a multi-year plan of the multi-year plans is received…within a time window: finalizing…the selected multi-year plan; Independent claims 8 and 14 recite the CRM and system for performing the method of independent claim 1 without adding significantly more. Thus, the same rationale/analysis is applied.
With respect to Step 2A Prong Two, the judicial exception is not integrated into a practical application. The additional elements are directed to: by a co-processor of a computer … from a system database of the new computer via a digital communication… generate, by the co-processor, a digitally formatted graphical representation, for display on graphical user interface, of… and storing, by the co-processor, the digitally formatted graphical representation of the selected multi-year plan, of the patent expenses for the selected multi-year plan, and of the market-technology unit value for the selected multi-year plan in a system database record regarding the market-technology unit in the system database; A computer for technology having an improved computer architecture comprises: one or more computing entities; and one or more system databases, wherein the one or more computing entities is operable to… (as recited in claims 1 and 10). However, these elements fail to integrate the abstract idea into a practical application because they fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional limitation(s) is/are directed to: by a co-processor of a computer for technology that has an improved computer architecture… from a system database of the new computer via a digital communication… generate, by the co-processor, a digitally formatted graphical representation, for display on graphical user interface, of… and storing, by the co-processor, the digitally formatted graphical representation of the selected multi-year plan, of the patent expenses for the selected multi-year plan, and of the market-technology unit value for the selected multi-year plan in a system database record regarding the market-technology unit in the system database; A computer for technology having an improved computer architecture comprises: one or more computing entities; and one or more system databases, wherein the one or more computing entities is operable to… (as recited in claims 1 and 10) for implementing the claim steps/functions. These elements have been considered, but merely serve to tie the invention to a particular operating environment (i.e., computer-based implementation), though at a very high level of generality and without imposing meaningful limitation on the scope of the claim.
In addition, Applicant’s Specification (paragraph [0030]) describes generic off-the-shelf computer-based elements for implementing the claimed invention, and which does not amount to significantly more than the abstract idea, which is not enough to transform an abstract idea into eligible subject matter. Such generic, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible, as noted at pg. 74624 of Federal Register/Vol. 79, No. 241, citing Alice, which in turn cites Mayo. See, e.g., Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrate the abstract idea into a practical application. Their collective functions merely provide conventional computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that the ordered combination amounts to significantly more than the abstract idea itself. Further, the courts have found the presentation of data to be a well-understood, routine, conventional activity, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93 (see MPEP 2106.05(d)).
The dependent claims (2-9 and 11-18) are directed to the same abstract idea as recited in the independent claims, and merely incorporate additional details that narrow the abstract idea via additional details of the abstract idea. For example claims 2-9 “when the selection of the multi-year plan of the multi-year plans is not received within the time window, generating, by the new computer, a new multi-year plan based on one or more of a desired patent position, a desired patent spend, and a desired market- technology unit value; wherein the patent planning data includes one or more of: marketing data, sales data, business data, technology data, patent data, old market-technology unit problems, new market-technology unit problems, new market- technology unit features, a number of existing patents related to the market-technology unit, patent holder data of the number of existing patents, a total number of inventions, a patent fee schedule, S-curve phase data for the number of existing patents, S- curve phase data for new inventions, quantity of invention types of the new inventions, ratio of the invention types of the new inventions, likely use factors for the invention types, generational data, ideal number of the new inventions to be patent protected, a new invention to old invention complexity factor, and a new invention to old invention disruption factor; wherein a patent position of the plurality of patent positions is a measure of patent leverage with respect to the market-technology unit over others; wherein the generating of the plurality of multi-year plans comprises: for each patent position of the plurality of patent positions: determining, by the co-processor, a number of new application filings per year; determining, by the co-processor, a yearly prosecution forecast based on existing patent portfolio matters and one or more forecasting parameters; determining, by the co-processor, a yearly issuance forecast based on the yearly prosecution forecast and the one or more forecasting parameters; determining, by the co-processor, a yearly maintenance forecast based on the yearly issuance forecast and the one or more forecasting parameters; and determining, by the co-processor, a yearly subsequent filing forecast based on one or more of the existing patent portfolio matters, the number of new application filings per year, the yearly issuance forecast, and the one or more forecasting parameters; wherein the one or more forecasting parameters include: a total annual patent budget; a total patent budget compound annual growth rate (CAGR); the number of new application filings per year; existing portfolio matters; receive probabilities of office actions; office action time windows; notice of allowance time windows; allowance probabilities from office actions; issuance probabilities; and subsequent filing factors; wherein the calculating the patent expenses for each of the multi-year plans comprises: for each year of each multi-year plan of the multi-year plans: determining, by the co-processor, patent expenses based on the number of new application filings, the yearly prosecution forecast, the yearly issuance forecast, the yearly maintenance forecast, and the yearly subsequent filing forecast in accordance with a patent fee schedule; wherein the calculating the market-technology unit value for each of the multi-year plans comprises: for each of the multi-year plans: determining, by the co-processor, a market impact of the market-technology unit; determining, by the co-processor, a how well protected value for the market-technology unit; generating, by the co-processor, reverse engineering costs associated with the market-technology unit; determining, by the co-processor, a market-patent "k" factor; and calculating, by the co-processor, the market-technology unit value based on the market impact, patent protection score, reverse engineering costs, and the market-patent "k" factor; wherein the determining the how well protected value comprises: determining, by the co-processor, a portfolio score based on one or more of: a number of issued market-technology unit patents, a number of pending market-technology unit patents, a number of a legal placeholder market-technology unit inventions, a patent quality rating per issued and pending market-technology unit patent, patent age data, market-technology unit portfolio breadth data, and market-technology unit portfolio balance data; determining, by the co-processor, an invention score based on one or more of: a number of ideal inventions, a number of protected inventions, and invention curve data; and calculating, by the co-processor, the how well protected value as a function of the portfolio score and the invention score”, without additional elements that integrate the abstract idea into a practical application and without additional elements that amount to significantly more to the claims. The remaining dependent claims (11-18) recite the CRM for performing the method of claims 2-9. Thus, the same rationale/analysis is applied. Thus, all dependent claims have been fully considered, however, these claims are similarly directed to the abstract idea itself, without integrating it into a practical application and with, at most, a general purpose computer that serves to tie the idea to a particular technological environment, which does not add significantly more to the claims.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Accordingly, the subject matter encompassed by the dependent claims fails to amount to significantly more than the abstract idea itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Shaffer; Monte J.. Patent Value Prediction, .U.S. PGPub 20120317040 Patent holders and other organizations strive to estimate a patent's current and potential value. To calculate such value, these patent holders may make estimations based on subjective perceptions of the market, products, and technology. While this strategy may provide some indication of a patent's value, patent holders continually strive to enhance the accuracy of such estimations.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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 Arif Ullah, whose telephone number is (571) 270-0161. The examiner can normally be reached from Monday to Friday between 9 AM and 5:30 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Beth Boswell, can be reached at (571) 272-6737. The fax telephone numbers for this group are either (571) 273-8300 or (703) 872-9326 (for official communications including After Final communications labeled “Box AF”).
/Arif Ullah/
Primary Examiner, Art Unit 3625
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