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 .
Response to Amendment
2. The Amendment filed June 12, 2026 has been entered. Claims 11 and 20 are newly cancelled. Claims 1-6, 10, 13-16, and 19 are pending and are rejected for the reasons set forth below.
Claim Rejections - 35 USC §112(a)
3. The following is a quotation of the first paragraph of 35 U.S.C. §112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. §112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claims 1-6, 10, 13-16, and 19 are rejected under 35 U.S.C. §112(a) or 35 U.S.C. §112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation, “storing the reduced subset in a memory of a computing device, wherein storing the reduced subset in a memory of the computing devices includes granting exclusive retrieval access to the budgeting tool for executing an aggregation operation, the aggregation operation comprising…” The applicant’s specification does not appear to provide support for providing “exclusive retrieval access” to the budgeting tool for retrieving the reduced subset from memory. Paragraphs 31-35 of the applicant’s specification describe a process for filtering, by the budgeting tool, the portfolio based on retrieved parameters and aggregating upcoming costs associated with the portfolio. However, the specification does not appear to provide any indication of a process for granting exclusive access rights to the budgeting tool regarding the filtered “subset” of data records. Therefore, this limitation fails to comply with the written description requirement.
Since claim 13 has the substantially same issue as claim 1, claim 13 is rejected for the grounds and rationale used to reject claim 1. Since claims 2-6, 10, 14-16, and 19 include the respective limitations of claims 1 or 13, these claims are rejected for the grounds and rationale used to reject claims 1 and 13. Appropriate correction or clarification of these claims is required. No new matter may be added.
Claim Rejections - 35 USC §112(b)
5. The following is a quotation of 35 U.S.C. §112(b):
(b) CONCLUSION —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. §112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
6. Claims 1-6, 10, 13-16, and 19 are rejected under 35 U.S.C. §112(b) or 35 U.S.C. §112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation, “storing the reduced subset in a memory of a computing device, wherein storing the reduced subset in a memory of the computing devices includes granting exclusive retrieval access to the budgeting tool for executing an aggregation operation, the aggregation operation comprising…” The meaning of this limitation is unclear in light of the applicant’s specification. Specifically, it is unclear who/what is being granted the exclusive retrieval access. For example, this limitation could be interpreted as stating that an individual operating the budgeting tool is granted exclusive retrieval access “to the budgeting tool.” However, this limitation could also be interpreted as stating that the budgeting tool itself is granted exclusive retrieval access to the reduced subset of data records. As noted above, the applicant’s specification does not appear to provide any support for this process of granting exclusive retrieval access. For the purpose of examination, this limitation has been interpreted as stating that the budgeting tool itself is granted exclusive access to the reduced subset of data records for executing an aggregation operation.
Since claim 13 has the substantially same issue as claim 1, claim 13 is rejected for the grounds and rationale used to reject claim 1. Since claims 2-6, 10, 14-16, and 19 include the respective limitations of claims 1 or 13, these claims are rejected for the grounds and rationale used to reject claims 1 and 13. Appropriate correction or clarification of these claims is required. No new matter may be added.
Claim Rejections - 35 USC § 101
7. 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.
8. Claims 1-6, 10, 13-16, and 19 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
9. 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 and 10) and a machine (claims 13-16, and 19); 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
10. 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 an aggregated cost projection for an intellectual property portfolio, the method comprising storage and retrieval operations executed on [[a budget projection tool]], the operations comprising:
receiving the intellectual property portfolio from [[a 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;
removing a subset of data records that do not contain attributes that match the first subset of parameters from the intellectual property portfolio to produce a reduced subset of data records, the reduced subset comprised entirely of data records with attributes that match the first subset of parameters;
the aggregation operation comprising: retrieving the reduced subset from [[memory]];
analyzing the reduced subset of the intellectual property portfolio to the exclusion of the removed data records by;
determining one or more tasks associated with each data record;
referencing a cost value look-up table and assigning a cost value to each of the one or more tasks; and
producing an aggregated cost projection based on the cost value assigned to the one or more tasks associated with each data record from the reduced subset of data records.
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
11. 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:
storing the reduced subset in a memory of a computing device, wherein storing the reduced subset in a memory of the computing devices includes granting exclusive retrieval access to the budgeting tool for executing an aggregation operation.
This limitation merely states that the system stores the reduced subset of data records in a memory, and that the storing process comprises granting exclusive retrieval access rights to the budgeting tool. However, the claims do not provide significant technical detail regarding how the data is stored, or how the exclusive retrieval access rights are implemented. Therefore, such limitations amount to no more than merely storing data, which is a form of insignificant extra-solution activity (See MPEP 2016.05(d): Versata Dev. Group, Inc. v. SAP Am., Inc., 793F.3d 1306, 1334 (Fed. Cir. 2015); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d at 1363).
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
12. 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 storing data) has been reevaluated under Step 2B:
storing the reduced subset in a memory of a computing device, wherein storing the reduced subset in a memory of the computing devices includes granting exclusive retrieval access to the budgeting tool for executing an aggregation operation.
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 storing data to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): Versata Dev. Group, Inc. v. SAP Am., Inc., 793F.3d 1306, 1334 (Fed. Cir. 2015); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d at 1363).
Thus, claim 1 does not recite any additional elements that amount to “significantly more” than the abstract idea.
Additional Independent Claims
13. 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 memory of a computing device) 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
14. Dependent claims 2-6, 10, 14-16, and 19 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.
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
15. Applicant’s arguments filed June 12, 2026 have been fully considered.
Arguments Regarding 35 U.S.C. 101
16. Applicant’s arguments (Amendment, Pgs. 7 and 8) 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 7 of their remarks, the applicant argues, “In response, Applicant submits the presently claimed method and system focus on a technical architecture that improves processing by limiting access during operations requiring large computing capacity." The examiner respectfully disagrees. Specifically, the examiner notes that the claims do not provide significant technical detail regarding the system architecture 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 generic data storage and retrieval processes, and 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.
Additionally, on pages 7 and 8 of their remarks, the applicant argues, “Here, a similar architecture of data structures produces analogous measurable improvements in functionality by granting exclusive access to reduced subsets of data records only when larger computational operations are needed for producing an aggregated cost projection… The court identified "faster search times" and "smaller memory requirements" as the technical benefits of the Enfish patent, which are also achieved by the claimed method and system in this case." The examiner respectfully disagrees. Specifically, the examiner notes that the claims do not provide significant technical detail regarding the data structures used to implement the claimed processes. Simply stating that the system utilizes generic data structures (e.g., as described in Paragraph 42 of the applicant’s specification) does not integrate the abstract idea into a practical application. Rather, this amounts to no more than merely applying generic computer-related components to implement the abstract idea on a computer.
Therefore, for these reasons and the reasons given above, the rejection of these claims under 35 U.S.C. 101 is maintained.
Citation of Pertinent Prior Art
17. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Lee (U.S. Pre-Grant Publication No. 20120323804): Describes methods and computer readable mediums for analyzing, searching, and accessing information concerning intellectual property. More specifically, it relates to methods and systems for enabling the integration of and/or integration across a variety of intellectual property and/or intellectual property-related systems and/or information.
Rivette (U.S. Patent No. 7949728): Describes tools for patent-centric and group-oriented data processing. These tools comprise diverse capabilities for data presentation and processing, including data presentation and processing using hyperbolic trees. The tools include modules to track and process IP related transactions, such as license agreements.
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 WILLIAM D NEWLON whose telephone number is (571)272-4407. The examiner can normally be reached Mon - Fri 8:30 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached at (571) 272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM D NEWLON/Examiner, Art Unit 3696
/John H. Holly/Primary Examiner, Art Unit 3696
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