Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination under 37 CFR §1.114
2. A request for continued examination under 37 CFR §1.114, including the fee set forth in 37 CFR §1.17(e), was filed on December 29, 2025 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in 37 CFR §1.17(e) has been timely paid, the finality of the previous Office action dated August 29, 2025 has been withdrawn pursuant to 37 CFR §1.114 and the submission filed on December 29, 2025 has been entered. Claims 7, 8, and 17 are newly cancelled by the applicant. Claims 1-6, 10, 11, 13-16, 19, and 20 are pending and are rejected for the reasons set forth below.
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.
4. Claims 1-6, 10, 11, 13-16, 19, and 20 are rejected under 35 U.S.C. §101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and does not include an inventive concept that is “significantly more” than the judicial exception under the January 2019 and October 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Step 1
5. Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a process (claims 1-6, 10, and 11) and a machine (claims 13-16, 19, and 20); where the machine is substantially directed to the subject matter of the process. (See e.g., MPEP §2106.03). Therefore, we proceed to step 2A, Prong 1.
Step 2A, Prong 1
6. Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 1 recites the abstract idea of:
A method for producing a final budgeting projection for an intellectual property portfolio based on information located in [[a computer-implemented docketing system]], the method comprising operations executed on [[a budget projection tool]] using [[at least one processor of a computing device]], and the operations comprising:
receiving an intellectual property portfolio from [[the computer-implemented docketing system]], the intellectual property portfolio comprising one or more patent documents, each patent document represented as a data record containing attributes;
receiving a set of one or more parameters relating to the intellectual property portfolio;
analyzing the attributes of each data record contained in the intellectual property portfolio to identify a subset of data records containing attributes that match a first subset of parameters, the first subset of parameters comprising default parameters, timeframe parameters, and patent type parameters;
wherein the timeframe parameters comprise a finite number of days within a defined period of time in the future; and
wherein the default parameters are automatically determined prior to receiving the intellectual property portfolio;
removing a subset of data records that do not contain attributes that match the first subset of parameters to produce a subset of the intellectual property portfolio containing data records with attributes that match the first subset of parameters;
analyzing the subset of the intellectual property portfolio to: determine one or more tasks associated with each data record, reference a look-up table and assign a cost value to each of the one or more tasks; and produce an aggregated cost projection based on the cost value assigned to the one or more tasks associated with each data record;
filtering the aggregated cost projection based on a second subset of parameters, the second subset of parameters comprising timeframe parameters and deadlines associated with the one or more tasks;
producing a dynamic budget projection based on the filtered aggregated cost projection; and
receiving a third subset of parameters related to the intellectual property portfolio, the third subset of parameters comprising user input; and
updating the dynamic budget projection based on the third subset of parameters to produce the final budgeting projection.
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: certain methods of organizing human activity, which includes fundamental economic practices or principles and/or commercial interactions (e.g., here, generating a budgeting projection for a portfolio of patent documents).
Step 2A, Prong 2
7. Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which claim 1 is directed does not include limitations or additional elements that integrate the abstract idea into a practical application.
Besides reciting the abstract idea, the limitations of claim 1 also recite generic computer components (e.g., a computer-implemented docketing system, a budget projection tool, at least one processor of a computing device, and a user interface displayed on the budget projection tool). In particular, the recited features of the abstract idea are merely being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See e.g., MPEP §2106.05(f)). Therefore, these additional elements are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. In other words, the additional elements are simply used as tools to perform the abstract idea.
Claim 1 also recites the following limitation:
displaying the final budgeting projection within a user interface displayed on the budget projection tool, the user interface including analytics and selectable features for real-time adjustments.
This limitation merely states that the system outputs the final budgeting projection to the user via an interface. However, the claims do not provide any technical detail regarding how the budgeting projection is displayed via the interface, or how the user interface facilitates “real-time adjustments.” Therefore, this limitation amounts to no more than merely outputting/displaying data, which is a form of insignificant extra-solution activity (See MPEP 2016.05(g): OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)).
Thus, claim 1 does not include any limitations or additional elements that integrate the abstract idea into a practical application. As a result, claim 1 is directed to an abstract idea.
Step 2B
8. Under the 2019 PEG step 2B analysis, the additional elements of claim 1 are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the recited additional elements (e.g., a computer-implemented docketing system, a budget projection tool, at least one processor of a computing device, and a user interface displayed on the budget projection tool), do not amount to an innovative concept since, as stated above in the Step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming (See e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality such that they are being used in the claims to simply implement the abstract idea and are not themselves being technologically improved (See e.g., MPEP §2106.05 I.A.); (See also e.g., applicant’s Specification at least Paragraphs 39 and 40).
Additionally, the following limitation identified above as insignificant extra-solution activity (merely outputting/displaying data) has been reevaluated under Step 2B:
displaying the final budgeting projection within a user interface displayed on the budget projection tool, the user interface including analytics and selectable features for real-time adjustments.
As stated in MPEP 2106.05(d), a factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity (Berkheimer v. HP, Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018)). In view of this requirement set forth by Berkheimer, this limitation does not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of merely outputting data to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)).
Thus, claim 1 does not recite any additional elements that amount to “significantly more” than the abstract idea.
Additional Independent Claims
9. Independent claim 13 is similarly rejected under 35 U.S.C. 101 for the reasons described below:
Claim 13 recites limitations that are substantially similar to those recited in claim 1. However, the primary difference between claims 13 and 1 is that claim 13 is drafted as a system rather than as a method. Similarly, as described above regarding claim 1, claim 13 recites generic computer components (e.g. a non-transitory computer-readable medium, one or more processors, a budget projection tool, a computer-implemented docketing system, and a user interface displayed on the budget projection tool) that are simply being used as a tool (“apply it”) to implement the abstract idea. Therefore, since the same analysis should be used for claims 1 and 13, claim 13 is not patent eligible (See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)).
Dependent Claims
10. Dependent claims 2-6, 10, 11, 14-16, 19, and 20 are also rejected under 35 U.S.C. 101 for the reasons described below:
Claims 2 and 14 merely provide further definition to the “patent documents” recited in claims 1 and 13. Simply stating that the patent documents comprise patents, patent applications, or both does not provide any indication of an improvement to any technology or technological field. Rather, this merely defines the type of documents utilized by the system.
Claims 3 and 15 merely provide further definition to the “upcoming costs” recited in claims 1 and 13. Simply stating that the upcoming costs comprise annuities, fees, attorney budgets, or other associated costs does not provide any indication of an improvement to any technology or technological field. Rather, this merely defines the type of costs analyzed by the system.
Claims 4 and 16 merely provide further definition to the process of “receiving an intellectual property portfolio” recited in claims 1 and 13. Simply stating that this process comprises removing information regarding the one or more patents from a database does not provide any indication of an improvement to any technology or technological field. Rather, this amount to no more than merely applying a generic database to manage the storage of the patent documents.
Claims 5 and 6 merely provide further definition to the “database” recited in claims 4 and 16. Simply stating that the database is a governmental/private database does not provide any indication of an improvement to any technology or technological field. Rather, this merely defines the type of database used by the system.
Claims 10 and 19 merely provide further definition to the “cost value assigned to one or more tasks” recited in claims 1 and 13. Simply stating that the upcoming costs are determined based on a jurisdiction does not provide any indication of an improvement to any technology or technological field. Rather, this merely defines the type of information used determine the upcoming costs.
Claims 11 and 20 merely provide further definition to the process of “filtering the aggregated cost projection” recited in claims 1 and 13. Simply stating that this process comprises adding/removing particular costs associated with the patent documents does not provide any indication of an improvement to any technology or technological field. Rather, this amount to no more than merely managing the cost data associated with the patent documents.
Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Response to Arguments
11. Applicant’s arguments filed December 29, 2025 have been fully considered.
Arguments Regarding 35 U.S.C. 101
12. Applicant’s arguments (Amendment, Pgs. 7-9) concerning the prior rejection of the claims under 35 USC 101, including supposed deficiencies in the rejection, are not persuasive for the following reasons. Under the prior and current 101 analysis under 2019 PEG, the amended claims recite and are directed to a patent ineligible abstract idea, without something significantly more, for the reasons given above after consideration of the claimed features and elements. The abstract idea has been restated herein in line with the 2019 PEG guidance and the amended claims. Applicant is directed to the above full Alice/Mayo analysis in the 101 rejection.
Additionally, on page 8 of their remarks, the applicant argues, “Under Enfish, McRO, Finjan and CardioNet, such a claim is patent-eligible because it "focuses on an improvement to the computer's functionality itself, not on economic or other tasks." The independent claims now recite additional limitations on the multi-step filtration process for producing the final budgeting projection, which focuses on improving the functioning of a computer by gradually reducing the data load being accessed and processed by the budget projection tool. The newly added limitations integrate any alleged abstract idea into a practical application by improving how a computer-based system receives and processes data to produce a final budgeting projection.” The examiner respectfully disagrees. Specifically, the examiner notes that the claims do not provide any indication of an improvement to the functionality of a computer itself. Rather, the claim is primarily directed to improvements regarding methods for determining budgeting projections for a portfolio of intellectual property assets (i.e., an improvement to the abstract idea itself). Simply reciting processes for filtering the portfolio of intellectual property assets does not amount to a technical improvement to the functionality of a computer. While this may reduce the number of patents analyzed by the budgeting tool, the claims do not recite an improvement to any technology or technological field which facilitates the filtering process.
Therefore, for these reasons and the reasons given above, the rejection of these claims under 35 U.S.C. 101 is maintained.
Arguments Regarding 35 U.S.C. 102/103
13. All prior rejections under 35 U.S.C. have been withdrawn in response to the applicant’s claim amendments. Specifically, the examiner notes that a combination of prior art references could not be identified to teach the specific combination of limitations recited in independent claims 1 and 16.
Additionally, on pages 9 and 10 of their remarks, the applicant argues, “Colliau appears to disclose a parameter-based appointment scheduling system. Colliau's method appears to determine fees based on an inspection time or fee. Colliau does not disclose analyzing a subset of a portfolio to reference a look-up table and assign a cost value to each of the one or more tasks. The other references do not cure this deficiency.” The examiner respectfully disagrees. While the examiner agrees that Colliau does not explicitly teach referencing a look-up table to determine the cost of tasks associated with a portfolio of intellectual property assets, The combination of Colliau and Hudak does teach this limitation. Specifically, as noted in the Final rejection, while Colliau does not explicitly recite the use of look-up tables for determining fees associated with intellectual property related tasks, it would have been obvious to one of ordinary skill in the art that the look-up tables disclosed by Colliau could be applied to such tasks. In other words, it would have been obvious to one of ordinary skill in the art that the cost look-up tables disclosed by Colliau could be applied to costs associated with an IP portfolio, such as the costs corresponding to the IP portfolio disclosed by Hudak (e.g., see Hudak, Paragraphs 105-107).
Additionally, on page 10 of their remarks, the applicant argues, “Hudak appears to disclose aggregating costs for a portfolio budget by referencing invoice data and predicted actions, and does not teach or suggest producing an aggregated cost projection based on the cost value assigned to the one or more tasks associated with each data record.” The examiner respectfully agrees with this argument. While Hudak broadly teaches a process for determining the costs associated with various tasks corresponding to an intellectual property asset (see Paragraphs 105-107), Hudak does not explicitly teach a process for performing such analysis for a subset of data records within a portfolio and generating an aggregated cost projection for the subset of data records. While Holt and Lundberg describe processes for filtering a portfolio of intellectual property assets, the combination of Hudak, Holt, Lundberg, and Colliau could not reasonably be applied in order to teach the specific processes for generating the aggregated cost projection, as described in claims 1 and 13.
Therefore, for at least these reasons, all prior rejections under 35 U.S.C. 103 have been withdrawn.
Citation of Pertinent Prior Art
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Stec (U.S. Patent No. 9251243): Describes a system that provides a labor and time saving ability to determine interrelationships within patents determined by searching, via a computer system, through patent fields to see if one or more particular pieces of alphanumeric data are common to any of the patents in the database in which the field indicia are located.
Bebber (U.S. Pre-Grant Publication No. 20180218451): Describes a computer system based intellectual property (IP) portfolio management system, in particular for facilitating obtaining and management of registered IP rights and other IP related matters.
Conclusion
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/WILLIAM D NEWLON/Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696