DETAILED ACTION
This Non Final Office Action is in response to the arguments, amendments, and Request for Continued Examination filed June 2, 2026.
Claim 27 is newly added.
Claims 1, 5-9, 11, 15-19, 21, and 24 has been amended.
Claims 1-27 are currently pending and have been considered below.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 2, 2026 has been entered.
Claim Rejections - 35 USC § 112
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.
Claims 1, 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 claim(s) contains 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1, 11, and 21 are directed towards “causing a modification to the product based on the carbon equivalent emissions data analytics recommendation, wherein the modification to the product comprises a modification to a deployment of the product”. The modification is described in the originally filed specification pages 8-9, however, the specification does not provide written description support for modifying the deployment of the product. Upon further consideration, the specification does not provide support for the modification in general. The specification provides support in terms of providing recommendations, however, based on consideration of the amended claim language that the modification of the product is not provided adequate written description. While there is support in terms of enabling decision makers levers and recommendations based on the analysis that previously was broad in terms of adapting i.e. modifying a product the specificity and further consideration of the claim amendments renders the claim as failing the written description requirement as claims 1, 11, and 21 are directed towards new matter. The specific section that Examiner is referring to is, “Some of the advantages of the solution include enabling business decision makers to measure accurately emissions related to their software products and future products to be deployed, identify drivers and levers they can act on to reduce their software emission footprint which enables full variability based on drivers of functionalities and configuration and adapt their products (architecture design, technical configuration and operating configuration) to achieve their emission footprint goals” (pg. 9 lines 17-23). This specification description provides broad language to adapt products, however, the claims now require a specific modification based on the recommendation in terms of the deployment of the product that is not adequately supported by the written description. As such, claims 1, 11, and 21 are rejected under 35 USC 112(a). Dependent claims 2-10, 12-20, and 22-27 inherit the deficiency of their respective parent claim.
Dependent claim 27 is directed towards, “wherein the modification comprises at least one of: implementing at least a portion of the product using edge computing, consolidating one or more servers for implementing at least a portion of the product, or implementing at least a portion of the product using cloud computing”. The claim is describing specific modification steps that invoke implementation of edge computing, consolidating, or implementation using cloud computing. These elements are not supported as specific, active modifications within the specification. The specification provides edge, cloud, and server computing to implement in the sense of architectural and technological components to provide system elements for the claim (pages 11-13) and figures 2, 6, and 7, however, the specification is not directed towards modifying the product implemented using these specific architectural elements. The specification merely describes the system elements and is not directed towards the modifications towards these elements. This is to say that the system uses these technical elements to provide the recommendation elements and is not directed towards the recommendation utilizing these technical elements to modify the product. As such, claim 27 is further rejected under 35 USC 112(a) for being directed towards new matter.
Therefore, claims 1-27 are rejected under 35 USC 112(a) for being directed towards new matter and failing the written description requirement.
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 1-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed towards non-eligible subject matter.
In terms of step 1, claims 1-26 are directed towards one of the four categories of statutory subject matter.
In terms of step 2(a)(I), independent claims 1, 11, and 21 are directed towards (as represented by claim 1), “receive (i) a technology assets design for the product and (ii) parameters and data including system consumption data and historical usage data logs; model a baseline operation of the technology asset design and a quantification of baseline emissions and power consumption of the technology assets design; generate, by an abatement scenario building and assessment engine, at least two abatement scenario models; generate at least one comparison of the at least two abatement scenario models; generate a carbon equivalent emission data analytics recommendation, based on the least one comparison; cause display of the carbon equivalent emissions data analytics recommendation, wherein the modification to the product comprises a modification to a deployment of the product”. The claims are directed towards modeling asset design and consumption to provide a comparison for abatement scenarios that leads to generating a carbon emission recommendation. This is directed towards a commercial activity in terms of carbon reduction recommendations (described in the specification and dependent claims as within the GHG protocol scopes). This further includes modifying the product based on the recommendations for deployment of the product. These elements are describing business process workflow steps for designing and modifying a product based on emission calculations. As such, the claims are describing carbon emission reduction recommendations based on design parameters that fall into the abstract idea grouping of certain method of organizing human activity.
The claims also fall into an abstract idea under mental process. The claims fall into collecting, high level analyzing, and displaying results that can be performed mentally. The analysis and collection of data is merely providing comparisons and abatement scenarios that a person could mentally opine and observe and the recommendations a person could make mentally in terms of reducing carbon emissions based on the collected information. Modifying the deployment of the product also falls within the mental process as a person would be able to ascertain the recommendations and provide deployment alterations based on observations and judgements of the emission values. As such, the claims also fall into an abstract idea under the mental process grouping.
Step 2(a)(II) considers the additional elements in terms of being transformative into a practical application. The additional elements of the independent claims are, “A computer system for measuring carbon equivalent emissions from technology assets including software, the computer system comprising: one or more computer processors; and computer memory storing a carbon emissions data analytics engine that includes computer-useable instructions that, when executed by the one or more computer processors, cause the one or more computer processors to (claim 1); by one or more computer processors (claim 11); non-transitory computer readable storage medium for measuring carbon equivalent emissions from technology assets including software, the computer readable storage medium storing a carbon emissions data analytics engine that includes computer-useable instructions that, when executed by the one or more computer processors, cause the one or more computer processors to (claim 21); generating by an abatement scenario building and assessment engine, at least two abatement scenario models; providing at least one comparison of the at least two abatement scenario models; and cause a modification to the product based on the carbon equivalent emissions data analytics recommendation, wherein the modification to the product comprises a modification to a deployment of the product”. The additional elements of the computer aspects are described in the originally filed specification fig 7 and pages 11-14. The computing environment is merely describing generic technology to implement the abstract idea. The abatement scenario and models are described in the originally filed specification pages 6-7 and figures 5C-F. The specification and drawings are not describing specific algorithms, models, or scenarios, but rather utilizing generic engine comparison analysis. The consideration is that the engine and analysis elements are high level analysis that are accomplished by generic technology. Further, the outputs of the recommendations are additionally described in terms of the idea of a solution. The analysis and subsequent output from the engine are providing claims that fail to recite details of how the solution is accomplished. Providing a comparison between models and determining the recommendation is not directed towards a technical improvement. This consideration is further provided for the adaption of the products based on the output. The adaption is described in page 9 and is merely describing an idea of a solution based on the output. There is no specific technical description or detail. Therefore, the claims are directed towards generic technology and an idea of a solution that is merely apply it. As such, the claims are not directed towards additional elements that are transformative into a practical application. Refer to MPEP 2106.05(f).
Step 2(b) considers the additional elements in terms of being significantly more than the identified abstract idea. The additional elements of the independent claims are, “A computer system for measuring carbon equivalent emissions from technology assets including software, the computer system comprising: one or more computer processors; and computer memory storing a carbon emissions data analytics engine that includes computer-useable instructions that, when executed by the one or more computer processors, cause the one or more computer processors to (claim 1); by one or more computer processors (claim 11); non-transitory computer readable storage medium for measuring carbon equivalent emissions from technology assets including software, the computer readable storage medium storing a carbon emissions data analytics engine that includes computer-useable instructions that, when executed by the one or more computer processors, cause the one or more computer processors to (claim 21); generating by an abatement scenario building and assessment engine, at least two abatement scenario models; providing at least one comparison of the at least two abatement scenario models; and cause a modification to the product based on the carbon equivalent emissions data analytics recommendation, wherein the modification to the product comprises a modification to a deployment of the product”. The additional elements of the computer aspects are described in the originally filed specification fig 7 and pages 11-14. The computing environment is merely describing generic technology to implement the abstract idea. The abatement scenario and models are described in the originally filed specification pages 6-7 and figures 5C-F. The specification and drawings are not describing specific algorithms, models, or scenarios, but rather utilizing generic engine comparison analysis. The consideration is that the engine and analysis elements are high level analysis that are accomplished by generic technology. Further, the outputs of the recommendations are additionally described in terms of the idea of a solution. The analysis and subsequent output from the engine are providing claims that fail to recite details of how the solution is accomplished. Providing a comparison between models and determining the recommendation is not directed towards a technical improvement. This consideration is further provided for the adaption of the products based on the output. The adaption is described in page 9 and is merely describing an idea of a solution based on the output. There is no specific technical description or detail. Therefore, the claims are directed towards generic technology and an idea of a solution that is merely apply it. As such, the claims are not directed towards additional elements that are significantly more than the identified abstract idea. Refer to MPEP 2106.05(f).
Dependent claims 2, 3, 4, 5, 6, 9, 12, 13, 14, 15, 16, 19, 22, and 23 are further describing the abstract idea and not directed towards additional elements beyond those identified above. The dependent claims are further describing the commercial activity (certain method of organizing human activity) and high level analysis and display of results (mental process) in terms of describing the high level of analysis through the use of Greenhouse Gas Protocol scope model elements (in terms of the claims describing scope 1-3) {claims 2, 3, 12, 13, 22, and 23}, providing further description in terms of the inputs {claims 4, 5, 6, 14, 15, and 16}, and describing the outputs that include the recommendations provided for emission improvement {claims 9 and 19}. Further, the claims providing the Greenhouse Gas Protocol is merely using a provided algorithm/model description to implement the abstract idea. The protocol while not directed towards additional elements is describing a provided modeling technique/system (GHG Protocol) to provide the scope and emission elements that are utilized for the identified abstract idea. The identified claims are further describing the abstract ideas above and are not directed towards additional elements beyond those identified above. As such, the claims are not directed towards additional elements that are significantly more or transformative into a practical application.
Dependent claims 7, 8, 10, 17, 18, and 20 are directed towards additional elements beyond those identified above. The claims are directed towards, “wherein the abatement scenario building and assessment engine is configured to: define abatement levers and abatement scenarios, and fine-tune operation of the product based on a baseline quantification engine, in response to modeled abatement scenarios”, “wherein the carbon emissions data analytics engine further comprises: a decision-support engine configured to: provide comparisons of abatement scenarios and impact potentials, and provide continuous monitoring of the product”, and “wherein the carbon emissions data analytics engine is configured to provide a user interface that renders a layered baseline system architecture that includes a plurality of layers, including at least a hardware layer, an operating system container layer, and an application layer”. The additional elements are in terms of the fine tuning and abatement scenario building, the decision engine and continuous monitoring, and user interfaces with system architectures. The additional elements are described in the originally filed specification in pages 5-7 {analytics engine} and 8 {interface and structural layers}. The additional elements are merely describing generic technology to implement the abstract idea. The additional elements are not directed towards technical improvements and as such are not transformative into a practical application or significantly more than the identified abstract idea. Refer to MPEP 2106.05(f).
Dependent claims 24-26 are further describing additional elements identified above. The claims are directed towards, “wherein the modification to the product comprises: adapting the technology assets design for the product based on the carbon equivalent emissions data analytics recommendation”, “wherein the modification to the product comprises: adapting a technical configuration of the product based on the carbon equivalent emissions data analytics recommendation”, and “wherein the modification to the product comprises: adapting an operating configuration of the product based on the carbon equivalent emissions data analytics recommendation”. The adaption is described in page 9 and is merely describing an idea of a solution based on the output. There is no specific technical description or detail. Therefore, the claims are directed towards generic technology and an idea of a solution that is merely apply it. As such, the claims are not directed towards additional elements that are transformative into a practical application or significantly more than the identified abstract ideas. Refer to MPEP 2106.05(f).
Dependent claim 27 is further describing additional elements beyond those identified above. The claim is directed toward, “wherein the modification comprises at least one of: implementing at least a portion of the product using edge computing, consolidating one or more servers for implementing at least a portion of the product, or implementing at least a portion of the product using cloud computing”. The claim is further directed towards the abstract idea in terms of the modification for the product that falls under the business product deployment and mental process evaluation. The additional elements are with respect to the edge computing, servers, and cloud computing. The additional elements are described in the originally filed specification pages 11-13 and figure 2, 6, and 7. The elements are merely describing tools to implement the abstract idea. As such, the additional elements are not transformative into a practical application or significantly more than the identified abstract idea. Refer to MPEP 2106.05(f).
The claimed invention is directed towards an abstract idea without additional elements that are significantly more or transformative into a practical application. Therefore, claims 1-27 are rejected under 35 USC 101 for being directed towards non-eligible subject matter.
Response to Arguments
In response to the arguments filed June 2, 2026 on pages 9-13 regarding the 35 USC 101 rejection, specifically that the amended claim limitations are directed towards eligible subject matter.
Examiner respectfully disagrees.
The arguments are with respect to the claim limitations directed towards a technical improvement. In terms of the amended claim limitations, the written description does not provide proper support and has been rejected under 35 USC 112(a). Examiner notes that the provided paragraphs in the remarks and further consideration of the specification do not offer written description support for modifying the deployment of the product. The cited passage, “Some of the advantages of the solution include enabling business decision makers to measure accurately emissions related to their software products and future products to be deployed, identify drivers and levers they can act on to reduce their software emission footprint which enables full variability based on drivers of functionalities and configuration and adapt their products (architecture design, technical configuration and operating configuration) to achieve their emission footprint goals “ (pg. 9) does not provide written description regarding support for the claim amendment. Further, the passage does not provide technical description in terms of an improvement to the technology that would be rendered transformative into a practical application or significantly more than the identified abstract idea. The written description is merely describing an idea of a solution that attempts to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it" (refer to MPEP 2106.05(f)(1)). As such, the claims are not directed towards additional elements that are significantly more or transformative into a practical application.
Further arguments are directed towards new claim 27. Based on the considered specification, claim 27 is separately rejected as new matter. The cited passage, “Some of the advantages of the solution include enabling business decision makers to measure accurately emissions related to their software products and future products to be deployed, identify drivers and levers they can act on to reduce their software emission footprint which enables full variability based on drivers of functionalities and configuration and adapt their products (architecture design, technical configuration and operating configuration) to achieve their emission footprint goals “ (pg. 9) does not provide written description regarding support for the claim amendment. Further, the passage does not provide technical description in terms of an improvement to the technology that would be rendered transformative into a practical application or significantly more than the identified abstract idea. The written description is merely describing an idea of a solution that attempts to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it" (refer to MPEP 2106.05(f)(1)). As such, the claims are not directed towards additional elements that are significantly more or transformative into a practical application.
Lacking any further arguments, claims 1-27 are rejected under 35 USC 101 for being directed towards non-eligible subject matter, as considered above in light of the amended and newly added claim limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Sharma et al [2022/0156120] (green computing recommendation deployment analysis);
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW CHASE LAKHANI whose telephone number is (571)272-5687. The examiner can normally be reached M-F 730am - 5pm (EST).
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Monfeldt can be reached at 571-270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW CHASE LAKHANI/Primary Examiner, Art Unit 3629
Prosecution Insights