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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
DETAILED ACTION
This Final Office Action is in response Applicant communication filled on 07/11/2025.
Claims 1, 4, 10, 11, 14, and 20 were amended and Claims 8, 9, 18, and 19 were canceled
Claims 1-7, 10-17, and 20 are currently pending and have been rejected as follows.
IDS
The information disclosure statement filed on 07/11/2025 complies with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 and is considered by the Examiner.
# 1. Response to 37 CFR § 1.105 - Requirement for Information
Examiner thanks the Applicant for his response to the 1.105 requirement. The purpose of requirement was to assist Examiner understanding Applicant’s invention both claimed and disclosed and clarify Applicant’s past and/or present efforts to publicly sell or use the invention. Examiner considers Applicant’s response as a bona fide attempt to comply with the requirement for information since Remarks 07/11/2025 p.9 has provided the requested information and has stated on record that no other publications were known to be relied upon to develop the disclosed subject matter.
Response to Amendments / arguments
Applicant’s 07/11/2025 amendment necessitated new grounds of rejection in this action.
#2. Response to 112(b) arguments / amendments
112(b) rejection in the previous act is withdrawn in view of Applicant amend the rejected claims in a manner similar to the one proposed by the Examiner at the Non-Final 04/29/2025.
#3. Response to 101 arguments / amendments
-> i. Remarks 07/11/2025 p.11 ¶2 argues the claims implement a technical solution for data acquisition and assessment, where data is established as most crucial component for a priori assessment of cores, with more volume and fidelity of available data improving assessment capability.
Examiner fully considered argument #3 i but respectfully disagrees finding it unpersuasive because the mere use of more volume and fidelity of available data as alleged by Remarks 07/11/2025 p.11 ¶2-p.13 ¶1 does not necessarily render the claims eligible. See for example MPEP 2106.04(a)(2) III. C. #2. citing FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016) to state that performing a mental process in a computer environment still sets forth the abstract mental processes. For example, in FairWarning supra, the Federal Circuit found unpersuasive that requiring large number of calculations precludes setting forth the abstract exception, because even in situations of “inability for the human mind to perform each claim step does not alone confer patentability. As we have explained, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter” citing Bancorp Servs., 687 F.3d at 1278. The Federal Circuit’s rationale in “FairWarning” was corroborated by Planet Bingo LLC v. VKGS LLC U.S. Court of Appeals, Federal Circuit 2013-1663 August 26,2014, 576 Fed Appx 1005, 2014 BL 235907, where Planet Bingo unpersuasively argued that handling millions of preselected Bingo numbers by computer program makes it impossible for the invention to be carried out manually. Both “FairWarning” and “Planet Bingo” follow the Supreme Court’s decisions which made it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. See MPEP 2106.04 I ¶5.
For example, the Federal Circuit echoed the Supre Court ruling in Fairwarning Ip, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 U.S.P.Q.2d 1293 (Fed. Cir. 2016), Court Opinion, as cited by MPEP 2106.04, by finding that Fairwarning’s alleged compilation and combination of disparate information sources to make it possible to generate a full picture of a user's activity, identity, frequency of activity, and the like in a computer environment, is representative of merely selecting information, by content or source, for collection, analysis, and announcement which does not differentiate the process from ordinary mental processes, whose implicit exclusion from 101 undergirds the information based category of abstract ideas. Elec Power,830 F3d 1350,[2016 BL 247416],2016WL 4073318 at 4. Here the data acquisition and assessment as argued by Applicant at Remarks 07/11/2025 p.11 ¶2-p.13 ¶1 is not meaningfully different than the selecting, collection and analysis in Elec Power supra, and thus would render the claims ineligible for similar rationales as articulated by the Court in Elec Power.
Moreover, as stressed by MPEP 2106.05(a) an alleged improvement to the information stored by a database is not equivalent to an improvement in actual technology [i.e. database’s functionality]1.
It would then follow that here, data acquisition and assessment as amended at independent Claims 1,11 and argued by Applicant above at Remarks 07/11/2025 p.11 ¶2, would represent an analogous compilation and combination of many, disparate sources of information with any alleged improvement to the information not equivalent to an improvement in actual technology. Thus, these amended features would not render the claims eligible.
-> ii. Remarks 07/11/2025 p.11 ¶3 argues the claims utilize specific analytical approaches of machine learning, deep learning, or statistical analysis-based approaches selected based on specific technical criteria including type, fidelity, volume and accuracy of predictions associated with the data.
Examiner fully considered argument #3 ii and submits that “utilizing machine learning, deep learning, or statistical analysis-based approaches” is an example of mathematical algorithms applied on a computer, which according to MPEP 2106.05(f)(2) i2 represents mere invocation of computer components or analogous machinery to apply (here utiliz[e]) the abstract exception or existing process, set forth as “analyzing the available core data”, which does not integrate the abstract exception into a practical appclaition or provide significantly more. Also, just because such algorithms are “selected based on specific technical criteria including type, fidelity, volume, and accuracy of predictions associated with the data” does not immediately render said claims patent eligible since, such selection would represent a narrowing or limiting of the abstract exception, or at most a narrowing of the abstract exception to a field of use or etchnoglical environment, which according to MPEP 2106.05(h) does not integrate the abstract exception into a practical application or provide significantly more. Further MPEP 2106.04(a) I ¶3 is clear that "narrow laws that may have limited applications" were still held ineligible3. For these reasons, the “utilizing machine learning, deep learning, or statistical analysis-based approaches selected based on specific technical criteria including type, fidelity, volume, and accuracy of predictions associated with the data” does not render the claims patent eligible.
-> iii. Remarks 07/11/2025 p.11 ¶4 argues the claims implement a specific technical process for parts and processes identification, “wherein the system distinguishes between parts that are always replaced versus those replaced based on condition, and processes that are always performed versus those performed based on core condition”.
Examiner fully considered argument #3 iii and submits that the amended limitation of “wherein the system distinguishes between parts that are always replaced versus those replaced based on condition, and processes that are always performed versus those performed based on core condition” represents a further narrowing of the abstract exception to further equally subtract, product lifecycle considerations of unrecoverable (here “always replaced”) versus on-demand (here “on” “condition”),
which does not render the claims less abstract and eligible. Specifically, the Examiner points to the prior Non-Final Act 04/29/2025 p.5 which relied on MPEP 2106.04(a)(2) III D that cited Electric Power Group, 830 F.3d at 1351 and n1 119 USPQ2d at 1740 and n.1, to submit that a wide-area real-time performance monitoring system for monitoring and assessing dynamic stability of an electric power grid was integral an abstract idea. This rationale was later echoed in TDE Petroleum Data Sols., Inc v. AKM Enter., Inc 657 Fed. Appx. 991 (Fed. Cir. 2016), where the Court found determining well operation state as an abstract idea: “As we discussed at greater length in Electric Power, the claims of the '812 patent recite the what of the invention, but none of the how that is necessary to turn the abstract idea into a patent-eligible application. Electric Power [2016 BL 247416] 2016 U.S. App. LEXIS 13861 [2016 BL 247416], 2016 WL 4073318, at *4-5. Therefore, we find that claim 1 is patent-ineligible under § 101”. It would then follow that here, similar to the distinguishing the operability among electrical or mechanical components in the abstract exception found in Electric Power Group and TDE Petroleum supra, the currently amended distinguish[ing] between parts that are always replaced versus those replaced based on condition [or on demand], and processes that are always performed versus those performed based on core condition would similarly not necessarily preclude the claims from reciting, describing or at least setting forth the abstract exception.
-> iv. Remarks 07/11/2025 p.12 ¶2-¶3 argues the claims incorporate specific technical metrics including “embedded energy comprises at least one of energy consumption, water usage, or material usage, and the embedded emissions comprises at least one of greenhouse gas emissions, effluents hazardous to aquatic environment, volatile organic compounds (VOCs). or landfill waste”;
Examiner fully considered argument #3 iv and submits that the amended “embedded energy comprises at least one of energy consumption, water usage, or material usage, and the embedded emissions comprises at least one of greenhouse gas emissions, effluents hazardous to aquatic environment, volatile organic compounds (VOCs). or landfill waste” represents a further narrowing of the abstract exception which does not render the claims less abstract and eligible. Specifically, the Examiner points to the prior Non-Final Act 04/29/2025 p.5 which relied on MPEP 2106.04(a)(2) III D that cited Electric Power Group, 830 F.3d at 1351 and n1 119 USPQ2d at 1740 and n.1, to submit that a wide-area real-time performance monitoring system for monitoring and assessing dynamic stability of an electric power grid was integral an abstract idea. This rationale was later echoed in TDE Petroleum Data Sols., Inc v. AKM Enter., Inc 657 Fed. Appx. 991 (Fed. Cir. 2016), where the Court found determining well operation state as an abstract idea: “As we discussed at greater length in Electric Power, the claims of the '812 patent recite the what of the invention, but none of the how that is necessary to turn the abstract idea into a patent-eligible application. Electric Power [2016 BL 247416] 2016 U.S. App. LEXIS 13861 [2016 BL 247416], 2016 WL 4073318, at *4-5. Therefore, we find that claim 1 is patent-ineligible under § 101”. It would then follow that here, similar to the distinguishing the operability among electrical or mechanical components in the abstract exception found in Electric Power Group, and TDE Petroleum, supra the currently amended “embedded energy comprises at least one of energy consumption, water usage, or material usage, and the embedded emissions comprises at least one of greenhouse gas emissions, effluents hazardous to aquatic environment, volatile organic compounds (VOCs). or landfill waste” would similarly not necessarily preclude the claims from reciting, describing or at least setting forth the abstract exception.
-> v. Remarks 07/11/2025 p.12 ¶4-¶5 argues the claims implement technical process for computing utility measure, where utility measure factors multiple dimensions and allows comparison between cores, representing specific estimates of potential value generated and potential impact generated, measuring both economic value and environmental/economic impact associated with remanufacturing
Examiner fully considered the Applicant’s argument #3 v. but respectfully disagrees that it provides eligibility, because considerations for utility measure representing specific estimates of potential value generated and potential impact generated, measuring both economic value and environmental/economic impact, still sets forth building blocks in the fundamental economic practice or principles of the abstract exception. See MPEP 2106.04(a)(2) II A ¶2 the term fundamentals is not used in the sense of necessarily being old or well-known but rather as representative of building blocks of the modern economy. Thus, the argued limitations remain fundamental economic principles that still set forth the abstract exception and hence do not render their underlining claims patent eligible.
-> vi. Remarks 07/11/2025 p.12 ¶6 -p.13 ¶1 argues that the claims use specific technical process for priority determination where the system assigns weight values to costs, embedded energy, and embedded emissions; multiplies these ,with their respective weight values to generate product values; sums the product values and divides against a reference value to generate a product fraction; and obtains that final utility measure by subtracting the product fraction from one”.
Examiner fully considered the Applicant’s argument #3 vi but respectfully disagrees that it provides eligibility, by reincorporates all findings and rationales at Non-Final Act 04/29/2025 p.27, namely that the novel and non-obviousness mathematical manipulation as identified above do not necessarily render the claims patent eligible. See for example MPEP 2106.04 I ¶5, 3rd sentence citing Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 "the novelty of the mathematical algorithm is not a determining factor at all”. For example in Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014) as cited by MPEP 2106.04(a)(2) I ¶4 a ‘process of organizing information through mathematical correlations ’was still found as directed to an abstract idea, while in SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) as also cited by MPEP 2106.04(a)(2) I ¶4 a ‘‘series of mathematical calculations based on selected information’’ were still found as directed to abstract ideas.
In conclusion, even as amended, the claims still recite, describe or set forth ethe abstract exception with no additional, computer-based elements capable to, either individually or in combination, integrate the abstract exception into a practical application or provide significantly more. Thus, the claims are found to be ineligible.
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#4. Response to 102 arguments/amendments and #5 Response to 102 arguments/amendments
Remarks 07/11/2025 p. 13¶4-p.14 ¶2 argues the independent claims 1,11 were amended to include the subject matter of dependent claims 9,19 which were found as novel and non-obvious by examiner at Non-Final Act 04/29/2025 p.27. Thus, the claims 1,11 and also by dependent their remaining dependent claims are allowable over the prior art.
Examiner fully considered the Appclaint argument #4, #5 which are found persuasive with the Examiner reincorporating all his findings and rationale at Non-Final Act 04/29/2025 p.27, which have now been rolled into the newly amended independent Claims 1,11.
Claim Rejections - 35 USC § 112
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.
Claims 1-7, 10-17 and 20 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.
Claims 1,11 are independent and have been amended to each recite, among others:
acquiring available core data for a selected core from a plurality of cores, wherein data is established as the most crucial component for a priori assessment of cores, with more volume and fidelity of available data directly improving the assessment capability;
analyzing the available core data related to the selected core to assess an internal condition of the selected core and identify faults, wherein analyzing includes utilizing machine learning, deep learning, or statistical analysis-based approaches selected based on specific technical criteria including type, fidelity, volume, and accuracy of predictions associated with the data;
identifying, based on the internal condition and the identified faults, part and processes needed to remanufacture the core, wherein the system distinguishes between parts that are always replaced versus those replaced based on condition, and processes that are always performed versus those performed based on core condition;
deriving metrics for part and processes needed to remanufacture the core, wherein deriving metrics comprises: identifying the part and the processes needed to remanufacture the core based on the identified faults; estimating components cost associated with the identified part and labor cost associated with the identified processes; estimating embedded energy and embedded emissions associated with the identified part and the identified processes, where the embedded energy is a quantified resource required to produce the identified part and perform the identified processes, and the embedded emissions is an amount of environmental cost generated by producing the identified part and performing the identified processes; and outputting the component cost, the labor cost, the embedded energy, and the embedded emissions as the derived metrics, wherein the embedded energy comprises at least one of energy consumption, water usage, or material usage, and the embedded emissions comprises at least one of greenhouse gas emissions…
Claims 1,11 are rendered vague and indefinite because there is insufficient antecedent basis for: “the most crucial component”, “the assessment capability” and “the system”.
Claims 1,11 are also rendered vague and indefinite because the claims first introduce “available core data” then refer to it as “wherein data” at same “acquiring” limitation, and then revert back to expression “the available core data”, hence rendering said claims 1,11 unclear if “wherein data” refers back to “available core data” or not.
Claims 1,11 are also rendered vague and indefinite because it is unclear to which of antecedently recited “components” [plural] “cost” of the estimating limitation, does the subsequently recited “the component” [singular] “cost” of the outputting limitation relates to.
Claims 1,11 are recommended, to be amended to each recite, as an example only:
acquiring available core data for a selected core from a plurality of cores, wherein available core data is established as a most crucial component for a priori assessment of cores, with more volume and fidelity of available data directly improving assessment capability;
analyzing the available core data related to the selected core to assess an internal condition of the selected core and identify faults, wherein analyzing includes utilizing machine learning, deep learning, or statistical analysis-based approaches selected based on specific technical criteria including type, fidelity, volume, and accuracy of predictions associated with the available core data;
identifying, based on the internal condition and the identified faults, part and processes needed to remanufacture the core, wherein a system distinguishes between parts that are always replaced versus those replaced based on condition, and processes that are always performed versus those performed based on core condition;
deriving metrics for part and processes needed to remanufacture the core, wherein deriving metrics comprises: identifying the part and the processes needed to remanufacture the core based on the identified faults; estimating components cost associated with the identified part and labor cost associated with the identified processes; estimating embedded energy and embedded emissions associated with the identified part and the identified processes, where the embedded energy is a quantified resource required to produce the identified part and perform the identified processes, and the embedded emissions is an amount of environmental cost generated by producing the identified part and performing the identified processes; and outputting the components cost, the labor cost, the embedded energy, and the embedded emissions as the derived metrics, wherein the embedded energy comprises at least one of energy consumption, water usage, or material usage, and the embedded emissions comprises at least one of greenhouse gas emissions…
Claims 2-7,10 are dependent and rejected based on rejected independent Claim 1.
Claims 12-17,20 are dependent and rejected based on rejected independent Claim 11.
Clarifications and/or corrections are required.
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 1-7, 10-17, and 20 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, here abstract idea) without significantly more. The claims recite describe, set forth abstract idea of “core remanufacturing evaluation” as example of a fundamental economic practice or principle [MPEP 2106.04(a)(2) II A] that falls within the abstract grouping of Certain Methods of Organizing Human Activities. Simply put the claims set forth “determining a remanufacturing priority based on the computed utility” [function] or “measure”, which is mitigated or hedged according to identif[ied] “faults”
(independent Claims 1,11), and according to a “first” and “second” “estimate of …economic value associated with remanufacturing of the selected core” (dependent Claims 4,14) with a further involvement of a “remanufacturing provider, core broker, or dealer” (dependent Claims 3,13), and further considerations for “at least one of cost, energy, emissions, or water usage associated with at least one of environmental value or economic value” (dependent Claims 5,15).
It can also be argued that such fundamental economic practice or principle of the abstract certain methods of organizing human activities (MPEP 2106.04(a)(2) II A)., can be practically implemented by one of ordinary skills in the art through computer aided mental processes (MPEP 2106.04(a)(2) III) using by equally abstract mathematical relationships expressed in words (MPEP 2106.04(a)(2) I A)4. Examiner justifies such rationale by pointing to MPEP 2106.04(a)(2) III D which cited Electric Power Group, 830 F.3d at 1351 and n1 119 USPQ2d at 1740 and n.1, to submit that a wide-area real-time performance monitoring system for monitoring and assessing dynamic stability of an electric power grid was integral an abstract idea. This rationale was later echoed in TDE Petroleum Data Sols., Inc v. AKM Enter., Inc 657 Fed. Appx. 991 (Fed. Cir. 2016), where the Court found determining well operation state as an abstract idea: “As we discussed at greater length in Electric Power, the claims of the '812 patent recite the what of the invention, but none of the how that is necessary to turn the abstract idea into a patent-eligible application. Electric Power [2016 BL 247416] 2016 U.S. App. LEXIS 13861 [2016 BL 247416], 2016 WL 4073318, at *4-5. Therefore, we find that claim 1 is patent-ineligible under § 101 .1” Here, “acquiring available core data for a selected core from a plurality of cores”; “analyzing the available core data related to the selected core to assess an internal condition of the selected core and identify faults”, “identifying, based on the internal condition and the identified faults, part and processes needed to remanufacture the core” (independent Claims 1,11), and the recitations of “wherein the available core data comprises operational data, sensor or internet of things (IoT) data, and tests and measurements data related to the selected core” (dependent Claims 2,12), “wherein the operational data and the sensor or IoT data are acquired from at least one of asset operator, original equipment manufacturer, dealer, or maintenance service provider; and wherein the tests and measurements data is generated from at least one of remanufacturing provider, core broker, or dealer” (dependent Claims 3,13), “wherein fault identification comprises: using the available core data as input to a fault analyzing model to estimate fault” (dependent Claims 7,17). follow a similar path of ineligibility as that of the wide-area real-time performance monitoring system of power grid in Electric Power Group and/or determining well operation state in TDE Petroleum. Examiner also finds that the subsequent mathematical manipulations of: “deriving metrics for part and processes needed to remanufacture the core”; “computing, from the derived metrics, a utility measure representing an estimate of potential value generated or potential impact generated if the core is remanufactured”; “wherein computing the utility measure comprises: grouping component cost and labor cost as total cost”; “assigning weight values to the total cost, the embedded first factor, and the embedded second factor, respectively”; “multiplying the total cost, the embedded first factor, and the embedded second factor with their respective weight value to generate product values”; “summing the product values to generate product sum”; “dividing the product sum with a reference value to generate product fraction”; “and” “subtracting the product fraction from a value of one to produce the utility measure”, “determining a remanufacturing priority based on the computed utility measure”; (independent Claims 1,11), “computing utility measure for the plurality of cores”; “adding the computed utility measure for the plurality of cores to a remanufacturing priority list”; “sorting the remanufacturing priority list according to the computed utility measure for the plurality of cores”; “and” “processing the plurality of cores based on the sorted remanufacturing priority list” (dependent Claims 6,16), “using the available core data as input to a fault analyzing model to estimate fault, wherein the fault analyzing model is generated by analyzing historical data using any …statistical analysis-based approaches” (dependent Claims 7,17), are not meaningfully different than the generating of first and second data by taking existing information, manipulating the data using mathematical correlations, and organizing this information into a new form, found abstract in Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717,1721 (Fed Cir. 2014) as cited by MPEP 2106.04(a)(2) I A iv5. Further, Examiner points to MPEP 2106.04(a) (2) III ¶3 which cites Synopsys, Inc. v. Mentor Graphics Corp. , 839 F.3d 1138,1139,120 USPQ2d 1473, 1474 (Fed. Cir. 2016) where a process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" was found abstract. It then follows that here, the computer-aided translation of a utility function of a hardware core, as set forth by “computing, from the derived metrics, a utility measure representing an estimate of potential value generated or potential impact generated if the core is remanufactured”; “determining a remanufacturing priority based on the computed utility measure” (independent Claims 1,11), “adding the computed utility measure for the plurality of cores to a remanufacturing priority list”; “sorting the remanufacturing priority list according to the computed utility measure for the plurality of cores”; “and” “processing the plurality of cores based on the sorted remanufacturing priority list” (dependent Claims 6,16), would also not preclude the claims from reciting the abstract idea.
Examiner also points to MPEP 2106.04(a)(2) III which found that the combination of computer aided observation, evaluation and judgement set forth mental processes. For example, MPEP 2106.04 (a)(2) III A cites Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016) to state that a claim reciting the combination of collecting information, analyzing it, and displaying certain results of the collection and analysis, where the data analysis steps
still set forth the abstract mental processes.
It then follows that here “acquiring available core data for a selected core from a plurality of cores” (independent Claims 1,11); “wherein the operational data and the sensor or IoT data are acquired from at least one of asset operator, original equipment manufacturer, dealer, or maintenance service provider; and wherein the tests and measurements data is generated from at least one of remanufacturing provider, core broker, or dealer” (dependent Claims 3,13), “identifying the part and the processes needed to remanufacture the core based on the identified faults” (dependent Claims 8,18) would be analogous to the abstract forms of computer-aided collected observations presented by MPEP 2106.04 (a)(2) III above, and thus still setting forth the abstract exception.
Next, “analyzing the available core data related to the selected core to assess an internal condition of the selected core and identify faults”; “identifying, based on the internal condition and the identified faults, part and processes needed to remanufacture the core”; “deriving metrics for part and processes needed to remanufacture the core”; “estimating components cost associated with the identified part and labor cost associated with the identified processes”; “estimating embedded factor and embedded environmental cost associated with the identified part and the identified processes, where the embedded factor is a quantified resource required to produce the identified part and perform the identified processes, and the embedded environmental cost is an amount of environmental cost generated by producing the identified part and performing the identified processes”; “computing, from the derived metrics, a utility measure representing an estimate of potential value generated or potential impact generated if the core is remanufactured”; “wherein computing the utility measure comprises: grouping component cost and labor cost as total cost; assigning weight values to the total cost, the embedded energy, and the embedded emissions, respectively; multiplying the total cost, the embedded energy, and the embedded emissions with their respective weight value to generate product values; summing the product values to generate product sum; dividing the product sum with a reference value to generate product fraction; and subtracting the product fraction from a value of one to produce the utility measure”; “determining a remanufacturing priority based on the computed utility measure” (independent Claims 1,11), “computing utility measure for the plurality of cores”; “adding the computed utility measure for the plurality of cores to a remanufacturing priority list”; “sorting the remanufacturing priority list according to the computed utility measure for the plurality of cores”; “and” “processing the plurality of cores based on the sorted remanufacturing priority list” (dependent Claims 6,16), “using the available core data as input to a fault analyzing model to estimate fault, wherein the fault analyzing model is generated by analyzing historical data using any …statistical analysis-based approaches” (dependent Claims 7,17), would be analogous to the abstract forms of computer-aided analysis, and/or evaluation and judgement as presented by MPEP 2106.04 (a)(2) III above, and thus still setting forth the abstract exception.
Finally, “outputting the component cost, the labor cost, the embedded factor, and the embedded environmental cost as the derived metrics, wherein the embedded factor comprises at least one of energy consumption, water usage, or material usage, and the embedded environmental cost comprises at least one of greenhouse gas emissions, effluents hazardous to aquatic environment, volatile organic compounds (VOCs), or landfill waste” (independent claims 1,11), and “displaying the available core data, the utility measure, and the remanufacturing priority through a Graphic user interface (GUI), wherein the GUI generates at least one of a time-series graphic representation and a textual result display based on the available core data, faults and remediation needs, the utility measure, or the remanufacturing priority” (dependent claims 10,20), could be argued as computer-aided display of certain results of the collection and analysis as presented by MPEP 2106.04 (a)(2) III above, and thus still setting forth the abstract exception.
In fact, MPEP 2106.04(a)(2) III C. is clear that: # 1. Performing a mental process on generic computer, # 2. Performing a mental process in a computer environment, and # 3. Using a computer as a tool to perform a mental process, do not preclude the claims from reciting the abstract idea.
It then follows that here the recitations of a “wherein the available core data comprises operational data, sensor or internet of things (IoT) data, and tests and measurements data related to the selected core” (dependent Claims 2,12),“displaying the available core data, the utility measure, and the remanufacturing priority through a Graphic user interface (GUI), wherein the GUI generates at least one of a time-series graphic representation and a textual result display based on the available core data, faults and remediation needs, the utility measure, or the remanufacturing priority” (dependent Claims 10, 20) would represent such generic computer (MPEP 2106.04(a)(2) III C #1) or computer tools (MPEP 2106.04(a)(2) III C #3) in performing the aforementioned abstract processes, or they would represent a computer environment (MPEP 2106.04(a)(2) III C #2) upon which the abstract processes are being performed. In an abundance of caution such computerization will be more granularly tested at subsequent steps below. For now, it is clear that, given the preponderance of legal evidence above, the character as a whole of the claims remains undeniably abstract.
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This judicial exception is not integrated into a practical application because per Step 2A prong two, the individual or combination of the additional, computer-based elements is/are found to merely apply the already recited abstract idea. Here, the additional computer-based elements are
- the instruct[ted] computerization recited at preamble of independent Claim 11, and possibly, - use of “sensor or internet of things (IoT) data”, (dependent Claims 2,12),“Graphic user interface (GUI)” (dependent Claims 10,20), tested in the arguendo as additional computer-based elements, if not already integral to the abstract exemption itself, as computer aids tested above.
Thus here, even when tested as additional elements per MPEP 2106.05(f)(2)(i), such computer “instructions” (independent Claim 11), would represent mere computer components used or invoked as tool(s), upon which the business process of “remanufacturing evaluation” is being applied, which as revealed by MPEP 2106.05(f)(2)(i) does not integrate the abstract idea into a practical application.
In a similar vein, when tested per MPEP 2106.05(f)(2)(iii), “the sensor or IoT data” “acquired from at least one of asset operator, original equipment manufacturer, dealer, or maintenance service provider” (dependent Claims 3,13) would correspond to a process for monitoring audit log data executed on a general-purpose computer, as another example of applying the abstract idea that does not integrate it into a practical application.
It is also noted that the current “machine learning (ML), deep learning” (dependent Claims 7,17) is broadly presented in alternative “wherein the fault analyzing model is generated by analyzing historical data using any or combination of machine learning (ML), deep learning, and statistical analysis-based approaches”. Thus, dependent Claims 7,17 are broad enough that the “fault analyzing model is generated by analyzing historical data using” [mental or cognitive] “statistical analysis-based approaches” [only]. Yet, Examiner submits, in the arguendo, that even when such “machine learning (ML), deep learning” would hypothetically be required by dependent claims 7,17, it would still represent, use of mathematical algorithms applied on a computer, which, according to MPEP 2106.05(f)(2)(i), would not integrate the abstract idea into a practical application.
Finally, recitation of “performing remanufacturing of the selected core based on the determined remanufacturing priority” (independent Claims 1,11) can be viewed as general application (“performing remanufacturing”) of the abstract idea (i.e. “determined remanufacturing priority”), which, as tested per MPEP 2106.05(f)(3), would also not integrate the abstract idea into a practical application. It could also be argued as narrowing of the abstract evaluation or utility measure prioritization to a field of use (i.e. here “remanufacturing”) or technological environment (i.e. here pertaining to “cores”), which, as tested per MPEP 2106.05(h), would also not integrate such abstract idea into a practical application. For example, MPEP 2106.05(h) vi. cites Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016), to state that limiting to a technological environment or field of use, the combination of collecting, analyzing and displaying certain results of the collection and analysis, does not integrate the abstract idea into a practical appclaition.
It would then follow that there, a field of use or technological environment broadly described as “performing remanufacturing” (independent Claims 1,11) narrowing the combination of collecting, analyzing and displaying certain results of the collection and analysis, as identified, tested and mapped at the prior step, would also not integrate the abstract exception into a practical application.
Therefore, the claims do not recite additional elements capable to integrate the abstract exception into a practical application.
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The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as shown above, the additional computer-based elements merely apply the already recited abstract idea and link the use of abstract idea to a field of use or technological environment. Examiner follows MPEP 2106.05 (d) II and carries over the findings tested per MPEP 2106.05 (f),(h) to submit that the additional computer-based elements also do not provide significantly more. Even assuming arguendo, that further evidence would be require to demonstrate conventionality of the additional, computer-based elements, Examiner would also point as evidence to the high level of generality of the additional elements read in light of Original Disclosure:
- Original Specification ¶ [0027] 4th sentence, reciting at high level of generality: “For example, the use of the term "automatic" may involve fully automatic or semi-automatic implementations involving user or administrator control over certain aspects of the implementation, depending on the desired implementation of one of the ordinary skills in the art practicing implementations of the present application”
- Original Specification ¶ [0106] 2nd sentence reciting at high level of generality “This apparatus may be specially constructed for the required purposes, or it may include one or more general-purpose computers selectively activated or reconfigured by one or more computer programs”.
- Original Specification ¶ [0107] 1st sentence reciting at high level: “Various general-purpose systems may be used with programs and modules in accordance with the examples herein, or it may prove convenient to construct a more specialized apparatus to perform desired method steps”
- Original Specification ¶ [0108] 2nd, 3rd 5th sentences reciting at high level: “Various aspects of the example implementations may be implemented using circuits and logic devices (hardware), while other aspects may be implemented using instructions stored on a machine-readable medium (software), which if executed by a processor, would cause the processor to perform a method to carry out implementations of the present application. Further, some example implementations of the present application may be performed solely in hardware, whereas other example implementations may be performed solely in software. When performed by software, the methods may be executed by a processor, such as a general-purpose computer, based on instructions stored on a computer readable medium”.
- Original Specification ¶ [0109] “Moreover, other implementations of the present application will be apparent to those skilled in the art from consideration of the specification and practice of the teachings of the present application. Various aspects and/or components of the described example implementations may be used singly or in any combination. It is intended that the specification and example implementations be considered as examples only, with the true scope and spirit of the present application being indicated by the following claims”
In conclusion, Claims 1-7, 10-17, and 20 although directed to statutory categories (“method” or process at Claims 1-7, 10, “non-transitory storage medium”, or article of manufacture at Claims 11-17, 20) they still recite or set forth the abstract idea (Step 2A prong one), with their additional, computer based elements not integrating the abstract idea into a practical application (Step 2A prong two) or providing significantly more than the abstract idea itself (Step 2B). Thus,
Claims 1-7, 10-17, and 20 are patent ineligible.
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- Allowable subject matter over the prior art -
Claims 1-7, 10-17, and 20 overcome the prior art with the following being the Examiner rationale. The closest prior art on record remains:
Walker; Waylon US 20180181892 A1 hereinafter Walker,
Song et al, US 20220164769 A1 hereinafter Song,
Connor US 20240134339 A1 hereinafter Connor.
However, none of Walker, Song, Connor nor any other prior art on record, teaches either alone or, in together with adequate rationales, the combination of:
(i) “grouping component cost and labor cost as total cost”;
(ii) “assigning weight values to the total cost, the embedded energy, and the embedded emissions, respectively”;
(iii) “multiplying the total cost, the embedded energy, and the embedded emissions with their respective weight value to generate product values”;
(iv) “summing the product values to generate product sum”;
(v) “dividing the product sum with a reference value to generate product fraction”; “and”
(vi) “subtracting the product fraction from a value of one to produce the utility measure”;
as now amended in at each of respective dependent claims 1,11
Claims 2-7,10 overcome the prior art by dependency to parent independent Claim 1.
Claims 12-17,20 overcome the prior art by dependency to parent independent Claim 11.
To be clear, novelty (35 USC 102) and non-obviousness (35 USC 103) still pertain to features that are abstract, or incapable to integrate the abstract idea or provide significantly more, which do not render the claims patent eligible (35 USC 101). Simply said, the novel and non-obviousness rationale above do not necessarily render the claims patent eligible. See for example MPEP 2106.04 I ¶5, 3rd sentence citing Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 "the novelty of the mathematical algorithm is not a determining factor at all”.
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Conclusion
Following art is made of record and considered pertinent to Applicant’s disclosure:
- Dayal et al, Enabling Product Circularity Through Big Data Analytics and Digitalization, In2022 IEEE 65th International Midwest Symposium on Circuits and Systems MWSCAS, p1-p6, IEEE, Aug 7, 2022, teaching RE* remanufacturing operations for aging or used products known as cores
- WO 2015016979 A1 teaching Method For Remanufacturing Battery Module, Involves Replacing Portion Of Power Assembly, Interconnect And Side Assembly Or Terminals With New Respective Portion And Retaining Other Portion Of Assembly Or Terminals As Used Portion
- US 20240104516 A1 teaching Remanufacturing orientated operations
- US 20040039658 A1 teaching Method For Managing Returns
- US 20080183600 A1 teaching Automotive core fulfillment system and method
- US 20110005208 A1 reciting at ¶ [0024] 1st sentence: “In order to refurbish a system as shown in FIG. 1, the system is warmed to operating temperature (for example 200 degrees Fahrenheit) and the upstream O2 sensor 16 is removed”.
- US 20070118271 A1 reciting at ¶ [0003] “To estimate engine performance and to find engine sensor faults, selected engine parameters are sensed and monitored to estimate an overall loss in the engine performance. Typically, rotor speeds, exhaust gas temperatures, and fuel flows are corrected or normalized for variations in operating conditions, and these normalized parameters are trended, i.e., their changes over short and long periods of time are plotted, and used to forecast when engine refurbishment is required”.
- US 20250078040 A1 dislosing at Fig.5 and ¶ [0051] In one example, the servicing schedule for the machine 102 includes the first prognosis data for rebuilding the engine of the machine 102. Further, the fault code for this example may include the second prognosis data that indicates fault in a sensor associated with the engine. Thus, the second prognosis data relates to replacement of the sensor rather than rebuilding the engine, which may be cost effective. An upfront provision of details corresponding to a real time machine event based on the fault code data allows precise identification of the issue with the machine 102. Moreover, the servicing schedule without the fault code may be rejected by the customer while a lead generated based on the fault code may be pursued for generating the servicing/maintenance of the machine 102 due to the upfront provision of the fault code. - US 20020023251 A1 teaching Method And System For Assessing Remanufacturability Of An Apparatus
- US 20230185331 A1 disclosing at Fig.2 a decision-making workflow on system replacement
- US 20090006153 A1 teaching Evaluation Tool For Adjusting Resale Of Machine Components, with emphasis on the workflow of Fig.5 and associated text
- US 20020156706 A1 reciting at ¶ [0067] 2nd sentence: supplier accepts the core and re-manufactures it 315.
- US 20070299748 A1 teaching System And Method For Analyzing Service Loss Within A Rotable Supply Chain, and reciting at ¶ [0034] Upon receiving the core material in master warehouse 130 (Step 414), inventory management system 140 may be updated to document the receipt of the core material. The core material may be stocked for future repair/remanufacture (Step 415). Once a purchase order is issued for a core repair/remanufacture (Step 416), the core is shipped to a repair facility (Step 417), where the core undergoes a repair/remanufacture process to return the rotable item to saleable status. Upon completion of the repair, the repair facility may ship the rotable item (now in sellable repair or overhaul condition) back to the master warehouse (Step 418), where it is stocked to fill a future exchange order (Step 419).
- US 20220067669 A1 teaching Predictive device maintenance
- US 20230116673 A1 teaching Industrial internet of things systems for intelligent repair of manufacturing equipment and control methods thereof
- US 20230042433 A1 teaching Systems and methods for assessing degradation in drive components, and reciting at ¶ [0164] a hybrid condition-based prediction model technique will be used in the assessment of quality and quantity of reclaimable material for remanufacturing of an electric powertrain. At least some example embodiments assess the behavior of individual components in the powertrain, based on both usage history as inferred from IoT sensors' data and expected future load profiles.
- US 20140324747 A1 reciting at ¶ [0184] 2nd-4th sentences: (1) accurately predict the onset of impending faults/failures or remaining useful life of components and (2) quickly and efficiently isolate the root cause of failures once failure effects have been observed. if fault/failure predictions may be made, the allocation of replacement parts or refurbishment actions may be scheduled in an optimal fashion to reduce the overall operational and maintenance logistic footprints. From the fault isolation perspective, maximizing system availability and minimizing downtime through more efficient troubleshooting efforts is the primary objective.
- US 20220076182 A1 ¶ [0037] 4th sentence: carbon footprint for the activity may be the amount of work time to complete the activity multiplied by a machine-hour carbon footprint of the machine.
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 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 OCTAVIAN ROTARU whose telephone number is (571)270-7950. The examiner can normally be reached on 571.270.7950 from 9AM to 6PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PATRICIA H MUNSON, can be reached at telephone number (571)270-5396. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/Octavian Rotaru/
Primary Examiner, Art Unit 3624 A
August 15th, 2025
1 BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018)
2 Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014); Gottschalk v. Benson, 409 U.S. 63, 64, 175 USPQ 673, 674 (1972); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);
3 Mayo, 566 U.S. at 79-80, 86-87, 101 USPQ2d at 1968-69, 1971
Flook, 437 U.S. at 589-90, 198 USPQ at 197
4 MPEP 2106.04(a): “examiners should identify at least one abstract idea grouping, but preferably identify all groupings to the extent possible”.
5 MPEP 2106.04(a): “examiners should identify at least one abstract idea grouping, but preferably identify all groupings to the extent possible”.
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