DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-5 and 7-20 are pending.
Claims 1, 3-5, 9-14, and 16-18 were amended or newly added in the Applicant’s filing on 9/25/2025.
This office action is being issued in response to the Applicant's filing(s) on 9/25/2025.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if, may, might, can, could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and emboldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a method comprising:
generating, by one or more processors, a first instruction configured to control at least one of a plurality of devices to perform a first action, wherein the first action is intended to prevent or mitigate damage associated with a predicted or ongoing event;
determining, by the one or more processors, that the first action is insufficient to prevent or mitigate damage associated with the predicted or ongoing property damage event;
in response to the first action being insufficient to prevent or mitigate damage associated with the predicted or ongoing event, generating, by the one or more processors, a second instruction configured to control at least a second device from among the plurality of devices to perform a second action intended to prevent or mitigate the predicted or ongoing event;
Method claims are defined by the method steps being actively performed (i.e., generating an instruction to perform an action), not the intended purpose or the motivation for the performance of the method steps (i.e., the action is intended to prevent or mitigate the predicted or ongoing event).
Claims 9 and 17 have similar issues as the action is being defined by the intended purpose or motivation underlying the action.
Claim 1 recites a method comprising:
generating, by one or more processors, a first instruction configured to control at least one of a plurality of devices to perform a first action, wherein the first action is intended to prevent or mitigate damage associated with a predicted or ongoing property damage event;
determining, by the one or more processors, that the first action is insufficient to prevent or mitigate damage associated with the predicted or ongoing property damage event;
in response to the first action being insufficient to prevent or mitigate damage associated with the predicted or ongoing event, generating, by the one or more processors, a second instruction configured to control at least a second device from among the plurality of devices to perform a second action intended to prevent or mitigate the predicted or ongoing property damage event; and
controlling, by the one or more processors, the second device to perform the second action by transmitting, via a communication network, the second instruction, wherein the transmission of the second instruction causes the second device to perform the second action.
Method claims are defined by the method steps being actively performed, not method steps that may or may not be performed. Reciting a system element in a method claim is configured to perform a method step (i.e., configured to control at least one of a plurality of devices to perform a first action) does not mean that the method step is actually performed (i.e., controlling at least one of a plurality of devices and performing a first action).
Additionally, method claims are defined by the method steps being actively performed (i.e., performing, by the second device, the second action), not method steps possibly performed in the future (i.e., the instruction causes the second device to perform the second action). Claiming method steps in the future tense can be interpreted as the method steps possibly performed in the future are outside the scope of the claimed method.
If the first and second instructions are not performed, the instructions are non-functional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 3 recites a method comprising:
transmitting, to an insurance provider via a second communication network, an indication of the predicted or ongoing property damage event and an indication of the first and second instructions.
Claim elements (i.e., contents of the transmission) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 11 has similar issues.
Claim 5 recites a method comprising:
transmitting, to a mobile or other computer device associated with an individual via a second communication network, an instruction, wherein the instruction causes the mobile or other computer device to:
display an indication of a predicted or ongoing property damage event, and
provide an interface that enables the individual to select the first action.
Method claims are defined by the method steps being actively performed, not method steps that may or may not be performed. Reciting a system element in a method claim is configured to perform a method step (i.e., providing an interface that enables the individual to select the first action) does not mean that the method step is actually performed (i.e., selecting the first action).
Claim 8 recites a method comprising:
receiving, from an insurance provider via a second communication network, a notification that second action has occurred
Claim elements (i.e., contents of the notification) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 16 has similar issues.
Claim 9 recites a system comprising instructions to cause the one or more processors to:
control the second device to perform the second action by transmitting, via a communication network, the second instruction, wherein the transmission of the second instruction causes the second device to perform the second action.
A system claim is defined the method steps that the structural elements of said system (i.e., communication module, memory and processors) are configured to perform or, when the system is executing stored instructions, the method steps to be performed by the structural elements (i.e., communication module, memory and processors) of said system.
However, structural elements outside the recited system (i.e., the second device) are not part of the recited system. The method steps performed by structural elements outside the recited system have no patentable weight.
Claim 20 recites a method:
wherein transmitting the first instruction to the at least one of the plurality of devices causes the first device to turn on: a sump pump, de-watering equipment, or fire sprinklers.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Examiner notes that Claim 1, which Claim 20 is dependent on, does not recite transmitting the first instruction to the at least one of the plurality of devices.
As such, Claim 20 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met (i.e., the first instruction is not transmitted). Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
5. 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 1-5 and 7-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system to perform a method and/or computer-readable medium containing instructions, when executed, perform a method comprising:
generating, …, a first instruction configured to control at least one of a plurality of … to perform a first action, wherein the first action is intended to prevent or mitigate damage associated with a predicted or ongoing property damage event;
determining, …, that the first action is insufficient to prevent or mitigate damage associated with the predicted or ongoing property damage event;
in response to the first action being insufficient to prevent or mitigate damage associated with the predicted or ongoing property damage event, generating, …, a second instruction configured to control at least a second … from among the plurality of … to perform a second action intended to prevent or mitigate the predicted or ongoing property damage event; and
controlling, …, the second … to perform the second action by transmitting the second instruction, wherein the transmission of the second instruction causes the second … to perform the second action.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to mitigate damage to property which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that mitigating damage to property is mitigation of financial risk and that the mitigation of financial risk is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Alice Corp. v. CLS Bank, 573 U.S. 208, 218, 110 USPQ2d 1976, 1982 (2014).
Additionally, these limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a processor (Claim(s) 1, 9 and 17), a device(s) (Claim(s) 1, 9 and 17), a communication network (Claim(s) 1, 9 and 17), a communication module (Claim(s) 9), a memory (Claim(s) 9), and a computer-readable medium (Claim(s) 9).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to (i) adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, (ii) adding insignificant extra-solution activity to the judicial exception, and/or (iii) generally linking the use of judicial exception to a particular technological environment or field of use. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
additional elements that are sufficient to amount to significantly more than the judicial exception.
DEPENDENT CLAIMS
Dependent Claim(s) 2-5, 8, 10-16 and 18-20 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 9 and 7. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of a mobile or computer device (Claim(s) 5, 13 and 18) and a second communication network (Claim(s) 5, 13 and 18).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
6. Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5 and 7-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wedig (US PG Pub. 2014/0358592).
Regarding Claim 1, Wedig discloses a computer-implemented method for controlling interconnected smart devices of a property to limit damage to a property, the method comprising:
generating, by one or more processors, a first instruction configured to control (remotely control) at least one of a plurality of devices to perform a first action (locking doors), wherein the first action is intended to prevent or mitigate damage associated with a predicted or ongoing property damage event (burglary). (see para. 66-67 and 91);
determining, by the one or more processors, that the first action is insufficient to prevent or mitigate damage associated with the predicted or ongoing property damage event (based upon the condition still exceeding a threshold). (see para. 61);
generating, by the one or more processors, a second instruction configured to control (remotely control) at least a second device from among the plurality of devices to perform a second action (close garage doors) intended to prevent or mitigate the predicted or ongoing property damage event (burglary). (see para. 66-67 and 91); and
controlling (remotely control), by the one or more processors, the second device to perform the second action (close garage door) by transmitting, via a communication network, the second instruction, wherein the transmission of the second instruction causes the second device to perform the second action (closed garage door). (see para. 66-67).
Wedig does not explicitly teach that the method comprising generating a second instruction, in response to the first action being insufficient to prevent or mitigate property damage associated with the predicted or ongoing property damage event.
However, if the first action is insufficient to prevent or mitigate damage associated with the predicted or ongoing property damage event (i.e., the condition), the condition still exceeds a threshold (see para. 61).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to have modified Wedig by duplicating claim elements contained in Wedig (e.g., the first iteration to generate a first instruction) to create additional claim elements (e.g., a second iteration to generate a second instruction) until the condition fails below the threshold wherein each additional claim element (i.e., iteration and instruction) would serve the same function as the original claim element (i.e., to reduce the condition below the threshold).
Regarding Claim 2, Wedig discloses a method comprising: controlling (remote controlling), by the one or more processors, the at least one of the plurality of devices to perform the first action (locking doors) by transmitting, via the communication network, the first instruction, wherein the transmission of the first instruction causes the at least one of the plurality of devices to interpret the first instruction and perform the first action (locking doors). (see para. 67-68).
Regarding Claim 3, Wedig discloses a method comprising: transmitting, to an insurance provider via a second communication network, an indication of the predicted or ongoing event (risk value or condition) and an indication of the first and second instructions (reports of information conveyed). (see fig. 6; para. 44, 68, 99 and 112-113).
Regarding Claim 4, Wedig discloses a method comprising:
determining if the first action is insufficient to prevent or mitigate damage associated with the predicted or ongoing event (conditions still exceed threshold). (see para. 48);
analyzing, by the one or more processors, at least one of audio (microphone or acoustic) data, video data, and operational (status) data received from the plurality of devices on the property. (see para. 23-24, 50-51 and 107);
controlling (remotely controlling), by the one or more processors, the second device to perform the second action by transmitting, via a communication network, the second instruction, wherein the transmission of the second instruction causes the second device to perform the second action.
Regarding Claim 5, Wedig discloses a method comprising:
transmitting, to a mobile or other computer device associated with the individual (user) via a second communication network, an instruction, wherein the instruction causes the mobile or other computer device to:
display an indication of a predicted or ongoing event, and provide an interface that enables the individual to select the first action (user commands). (see para. 37-39, 48, 68 and 71).
Regarding Claim 7, Wedig discloses a method wherein transmitting the second instruction to the at least one of the plurality of devices causes the second device to perform at least one of:
shutting off a water or gas supply; closing a door, window or shutter (closing a garage door), turning off an appliance; or turning on a sump pump, de-watering equipment or fire sprinklers. (see para. 67-68).
Regarding Claim 8, Wedig does not explicitly teach a method comprising receiving, from the insurance provider via a second communication network, a notification that the second action has occurred.
However, Wedig discloses a method comprising communicating with an insurance provider via a second communication network (see fig. 6; para. 44, 68, 99 and 112-113); a property owner filing claims with the insurance provider when activity has occurred (see para. 91 and 106); and the system compiling pattern recognition data for recognition of the risk condition. (see para. 30)
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to have modified Wedig by having the insurance provider communicate to the system that the second action has occurred, as suggested by Wedig, thereby compiling and refining data in its pattern recognition capabilities.
Regarding Claims 9-13, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 14, Wedig discloses a system wherein to determine if the first action is insufficient to prevent or mitigate damage associated with the predicted or ongoing event comprises:
determining, by the one or more processors, if the first action is to perform at least one of shutting off a water or gas supply; closing a door (closing garage door), window or shutter; or turning off an appliance. (see para. 67-68).
Regarding Claims 15-19, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 20, Wedig discloses a method comprising transmitting a first instruction to at least one of plurality of devices to turn on (to control heating and air conditioning units). (see para. 48).
Wedig does not explicitly teach a method wherein the instruction is to turn on a sump pump, de-watering equipment or fire sprinklers, although Wedig discloses a method that anticipates sprinkler systems (see para. 50) and sump pumps (see para. 52).
It would have been obvious to one of ordinary skill in the art at he effective filing date of the invention to have modified Wedig to incorporate issuance of instructions to sump pumps and fire sprinklers, as suggested by Wedig, thereby providing additional avenues by which to lower a risk below an established threshold.
7. Response to Arguments
Applicant's arguments filed 9/25/2025 have been fully considered but they are not persuasive.
Claim Interpretation
Applicant asserts that the previously asserted claim interpretations were incorrect and unwarranted. See Arguments, pp. 9-13.
Specifically, Applicant argues:
The preamble of Claim 1 is amended to establish that elements recited in the body of the claim carry patentable weight because they are functionally related and affect claim behavior. As amended, Claim 1 recites "[a] computer-implemented method for controlling interconnected smart devices of a property to limit damage to the property" Claim 1 also recites "a first action" and "a second action" that are both "intended to prevent or mitigate damage associated with a predicted or ongoing property damage event..." At page 4, the Present Action interprets the first and second action recitations as "not limiting the scope of the claimed invention" for being an "intended use" (citing MPEP § 2114(II)). See Arguments, p. 11.
The Examiner respectfully disagrees.
In general, a preamble limits the invention if it recites essential structure or steps, or if it is "necessary to give life, meaning, and vitality" to the claims. See MPEP §2111.02, citing Pitney Bowes, Inc. v. Hewlett-Packard Co. 51 USPQ2d 1161 (Fed. Cir. 1999). Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or an intended use for the invention, the preamble is not a claim limitation given patentable weight. See MPEP §2111.02(II), citing Rowe v. Dror, 42 USPQ2d 1550 (Fed. Cir. 1997). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See MPEP §2111.02(II), citing In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
In the instant case, “for controlling interconnected smart devices of a property to limit damage to the property” as recited in the preamble only states a purpose and/or the intended use of the invention and accordingly is not being assigned any patentable weight.
Applicant further argues:
The recitations of the first and second actions that are both "intended to prevent or mitigate damage associated with a predicted or ongoing property damage event" do not describe an intended use "with respect to the manner in which a claimed apparatus is intended to be employed" as prohibited by MPEP § 2114(II). Rather, these recitations restrict the scope and meaning of the recited first and second actions within the context of the claim recitations as a whole. The recited first and second actions are not any actions, but only those actions that "prevent or mitigate damage associated with a predicted or ongoing property damage event" within the method "for controlling interconnected smart devices of a property to limit damage to the property." See Arguments, p. 9.
The Examiner respectfully disagrees.
As a preliminary matter, claims are to be “given their broadest reasonable interpretation consistent with the specification” and the English language. See MPEP §2111. The Claim Interpretation section is merely to provide notice to the Applicant concerning the claim interpretation taken.
In the claims, as written, the first and second actions are defined by the intentions or motivations behind the actions (i.e., actions are intended to prevent or mitigate damage associated with a predicted or ongoing property damage event). The claims, as written, do not define the actions themselves.
Any action can be a first or second action based upon whether the action is being taken with the intention to prevent or mitigate damage. Similarly, the same action would not qualify as a first or second action, under the claims, if the underlying intention was not to prevent or mitigate damage. The underlying intention or motivation behind the action is defining the action, rather than the action itself.
Examiner notes that the Applicant argues that first and second actions are “only those actions that ‘prevent or mitigate damage associated with a predicted or ongoing property damage event,’” but that is not true. See Arguments, p. 9.
Claim 1 recites a method comprising:
determining, by the one or more processors, that the first action is insufficient to prevent or mitigate damage associated with the predicted or ongoing property damage event;
Actions are not “only those actions that prevent or mitigate damage associated with a predicted or ongoing property damage event” (i.e., actions prevent or mitigate damage) because the claims, as written, recite that the actions are insufficient to prevent or mitigate damage associated with the predicted or ongoing property damage event (i.e., actions do not prevent or mitigate damage).
Applicant further argues:
Furthermore, the independent claims' recitations of "a first instruction configured to
control at least one of a plurality of devices to perform a first action" and "wherein the
transmission of the second instruction causes the second device to perform the second
action" also carry patentable weight. At pages 4 and 5, the Present Action describes these
limitations as not carrying patentable weight because they are not "actively performed." The Present Action supports this proposition by pointing to MPEP § 2111.05(III). This section of the MPEP describes the interpretation of functional and nonfunctional descriptive material related to machine-readable media. The distinction raised by the Present Action at pages 4 and 5 related to active performance of method steps is more readily applied patent claim infringement, not determining patentable weight. As a general rule, method claims are only infringed when the steps are actually performed, not when they are merely capable of being performed or might be performed in the future. 1 The MPEP generally, and § 2111.05(III) in particular, do not describe a requirement for method steps to be "actively performed" to be given patentable weight. Rather, this MPEP section distinguishes claim elements that are functional and nonfunctional descriptive material related to machine-readable media. In general, instructions that are functionally tied to the claim recitations carry patentable weight. (See, e.g., In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994).
The Examiner respectfully disagrees.
Claim 1 recites a method comprising a method step of generating a first instruction to control at device to perform a first action. The method does not recite a method step of implementing the first instruction nor performing the underlying first action. Under the broadest reasonable interpretation, the method merely generates a first instruction. Under the broadest reasonable interpretation, the method is not interpreted as performing additional unrecited or unclaimed method steps.
If the first instruction is not implemented and the underlying action is not performed (i.e., the instruction does not result in a function being performed), then the first instruction is nonfunctional descriptive material.
Similar rationale applies to the second instruction and the second underlying action.
Claim 1 recites a method comprising controlling a second device by transmitting the second instruction. The method performs the method step of transmitting the second instruction.
The second instruction causes the second device to perform the second action. The method does not recite a method step of actively performing the second action. The method recites that the transmission causes the second device to perform the second action in the future. Under the broadest reasonable interpretation, method steps possibly performed in the future are outside the scope of the claimed method.
Applicant further argues:
In other words, the generated first instruction is functionally tied to the claims' outcome because it must be executed for the recitations to then determine that the first action is insufficient. Likewise, the second instruction is functionally tied to the claims' outcome because it actively controls "at least a second device from among the plurality of devices to perform a second action intended to prevent or mitigate the predicted or ongoing property damage event" and the claims also recite controlling the second device to perform the second action. In other words, like the first instruction, the generated second instruction is functionally tied to the claims' outcome because it must be executed for the recitations to then control the second device to perform the second action. These elements are not claimed in the future tense or "possibly" performed in the future, as described at page 5 of the Present Action. Rather, these elements further limit the active steps of "generating" and "controlling" and are functionally tied to the claims' outcome "for controlling interconnected smart devices of a property to limit damage to the property " Therefore, because the recitations of "a first instruction configured to control at least one of a plurality of devices to perform a first action" and "wherein the transmission of the second instruction causes the second device to perform the second action" actually generate the first and second instructions that are both functionally tied to the claims' outcome, these elements of claims 1 and 17 carry patentable weight under MPEP § 2111.05(III). See Arguments, pp. 11-12.
The Examiner respectfully disagrees.
The claims, as written, do not recite that the first instruction is executed. Under the broadest reasonable interpretation, the first instruction is not executed.
If proper interpretation of claimed invention requires a method step of executing the first instruction, the claims, as written, should recite a method step of executing the first instruction. Stating that execution is implied by (1) the preamble or (2) the end result of determining that the first action is insufficient … is insufficient.
Additionally, a determination that the first action is insufficient does not necessarily require execution of the first action. For example, a first action can be proposed and, before it is ever executed, it can be determined to be insufficient for its intended purpose if executed.
Applicant further argues:
The recitations of claim 8 carry patentable weight for similar reasons to the elements described above. At page 5, the Present Action describes that the claim 8 recitation of "receiving, from an insurance provider via a second communication network, a notification that the second action has occurred" is "nonfunctional descriptive material." However, this element is also functionally tied to the claim 1 recitation of the generated second instruction because it must be executed for the recitations to then control the second device to perform the second action. See Arguments, p. 12.
The Examiner respectfully disagrees.
The method recites a method step comprising receiving a notification. The contents of the notification (i.e., that the second action has occurred) has no functional relationship with the steps recited. Stated in an alternative manner, the contents of the notification do not alter the method steps or the functions performed. As such, the contents of the notification is nonfunctional descriptive material.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 13-14.
Specifically, Applicant argues:
At pages 6-8, the Present Action indicates that independent claims 1, 9, and 17 broadly recite a fundamental economic practice or method of organizing human activity amounting to the metal process abstract idea of "a series of steps instructing how to mitigate damage to property at a high level of generality such that they could practically be performed in the human mind." Applicant respectfully submits that recitations of the pending claims, as amended, are not a fundamental economic practice, nor are they methods of organizing human activity. For example, at least "generating, by one or more processors, a first instruction configured to control at least one of a plurality of devices to perform a first action" when considered within the claim as a whole "for controlling interconnected smart devices of a property to limit damage to the property is not a fundamental economic practice. See Arguments, p. 13 – emphasis added.
The Examiner respectfully disagrees.
The claimed invention does recite a judicial exception, a judicial exception falling under the fundamental economic practice or mental process classifications. Admittedly, the claimed invention recites implementation of the judicial exception utilizing computerized elements, such as a processor and smart devices. However, the recitation of computerized elements does not negate the fact that the claimed invention does recite a judicial exception.
For example, the claimed invention recites a method to mitigate risk which is a fundamental economic practice. A claimed invention that recites a method to mitigate risk utilizing processors and smart devices still recites mitigation of risk which is still a fundamental economic practice.
If the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One. The claim then requires further analysis in Step 2A Prong Two, to determine whether any additional elements (e.g., processors and smart devices) in the claim integrate the abstract idea into a practical application. See MPEP §2106.05(f)(2).
Applicant further argues:
Examiner asserts that the recitation of "transmitting" the action/instruction by claims 1, 9, and 17 (i.e., the result of the analysis) would be analogous to displaying the analysis results and that "[t]he results are being outputted from the analysis process." The recitation of "transmitting" by claims 1, 9, and 17 cannot be analogous to "displaying" even if, as alleged at page 13 of the Present Action, the claims recite the second instruction as an analysis output. Claims 1, 9, and 17 do not recite merely "transmitting" the second instruction, but also "controlling a second device by transmitting the instruction that causes the second device to perform the second action." In other words, the second instruction is not merely transmitted, but by its transmission, it controls the second device and causes the second device to perform the second action. Therefore, because the claims do not merely recite "collecting information, analyzing it, and displaying certain results of the collection and analysis" claims 1, 9, and 17 are not drawn to a mental process. See Arguments, pp. 13-14.
The Examiner respectfully disagrees.
As a preliminary matter, the court-identified examples (i.e., Electric Power Group vs. Alstom, SA (Fed. Cir. 2016)) do not define the limits of each enumerated grouping of abstract ideas.
The claimed invention does recite a mental process. Admittedly, the claimed invention recites that the output causes a device to perform an action. However, the recitation of an output causing a device to perform an action (i.e., an extra step) does not negate the fact that claimed invention recites a mental process (i.e., collecting information, analyzing it and displaying certain results of the collection and analysis).
Additionally, Examiner notes that the actions to be performed by the device may be displaying of information to a user by the device. For example, a second device (e.g., a smartphone) receives a transmission of the second instruction that causes the second device (e.g., a smartphone) to perform the second action (e.g., display an alert to a user to prevent or mitigate damage).
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 14-15.
The Examiner respectfully disagrees.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
However, the specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, an improvement to conventional technology or technological processes, or is addressing a technology-based problem.
Additionally, the specification does not provide any evidence that there is even a technical (i.e., technology-based) problem to be solved. For example, the specification does not provide any evidence that existing technology was incapable of performing the claimed functions but for the claimed technical solution.
Additionally, MPEP §2106.05(f)(1) recites:
Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt 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”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743 – emphasis added.
Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished.
If there was a technical problem (e.g., existing technology was incapable of performing the claimed functions) then the claims should recite the details of the technical solution (e.g., how existing technology was improved to overcome this inability). However, the claims, as written, provide no such details and merely recite that the claimed functions (i.e., the outcome) are being performed.
Examiner asserts that the claimed invention is analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016) which stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., preventing or mitigating property damage) that uses computers as tools.
Applicant further argues:
The additional elements apply or use the alleged judicial exception in some other meaningful way beyond generally linking the use of the judicial exception (e.g., insurance functions) to a particular technological environment by operating and controlling remote first and second devices to mitigate or prevent the occurrence of the damage. See Arguments, p. 14.
The Examiner respectfully disagrees.
The claimed invention is linking insurance functions to mitigate or prevent the occurrence of damage to a particular technological environment, a technological environment of smart devices.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f); [and]
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
§103 Rejection
Applicant argues that the previously asserted prior art (Wedig) fails to teach or suggest the claimed invention. See Arguments, pp. 15-16.
Specifically, Applicant argues:
However, the recitations of claims 1, 9, and 17 do not merely duplicate elements contained in Wedig. The recitations of claims 1, 9, and 17 generally recite generating a different (second) instruction for a different (second) action in response to the first action being insufficient. In the context of the disclosure of Wedig, duplicating the first instruction would generate another first instruction to perform the same first action (close the garage door) until the threshold condition (door closed) was met. In contrast, as applied to the disclosure of Wedig, the recitations of claims 1, 9, and 17 would generate the first instruction/action to close the garage door and, if the door did not close to meet the condition, the claimed recitations would issue a different (second) instruction that controls a different (second) device to perform a different (second) action. Because Wedig does not disclose generating a different, second instruction configured to control at least a second device in response to the first action being insufficient, the disclosure of Wedig does not anticipate or render obvious at least the recitations of claim 1. See Arguments, pp. 15-16.
The Examiner respectfully disagrees.
Wedig recites:
A climate control unit can be a thermostat or other unit that is used to control the temperature within a building by controlling heating units and air conditioning units for the building. In one embodiment, decision node 124 and/or sensory node 104 of a sensor system can include a thermometer or other known apparatus for determining temperature. The decision node 124 and/or sensory node 104 can also include data regarding the usual or normal temperature for one or more different rooms of the building in which the system is installed. The data can be based on sensed temperature data that is accumulated over time. The data can also be received from a user through the user interface of the system as threshold temperatures for various rooms of the building. For example, the user may indicate that the minimum temperature for a bedroom of the building is 68 degrees Fahrenheit (F) and that the minimum temperature for the basement of the building is 60 degrees F. As another example, the user may indicate that the maximum temperature for the bedroom of the building is 72 degrees F., the maximum temperature for a kitchen of the building is 76 degrees F., and the maximum temperature for a bathroom of the building is 74 degrees F. See para. 46 – emphasis added.
In an illustrative embodiment, the temperature data is used by decision node 124 and/or sensory node 104 to control climate control unit such that the desired temperature or normal temperature is maintained throughout the various rooms of the building. As a result, there can be numerous locations throughout the building at which decision/sensory nodes are installed, and the temperature can be controlled through each of these locations. This is in contrast to many traditional systems in which a single, a centrally located thermostat is used to control the temperature for an entire building. In one embodiment, the user can also manually control a climate control unit by sending instructions via the user interface of a sensor system. For example, the user may leave on vacation during the winter and forget to turn the heat down prior to departure. With the present system, the user can log in to the user interface and provide an instruction to lower the heat from 72 degrees F. to 60 degrees F. for the entire building. The instruction can be received by decision node 124 and/or sensory node 104 via network 134. Responsive to receiving the instruction, decision node 124 and/or sensory node 104 can control the climate control unit to implement the temperature change in the building. See para. 47 – emphasis added.
In some implementations, sensor readings may be received periodically. In such a case, the frequency of received readings may be high enough to provide substantially real-time readings or low enough to provide very low data transfer while keeping a server up to date. In other implementations, readings may be received only in response to particular circumstances. For example, sensors/sensory nodes may be programmed to only send readings when the readings reached a certain threshold level (e.g., a certain temperature, a concentration of the gas, a raised humidity for particular amount of time, etc.). As another example, sensor/sensory nodes may be programmed to send readings only response to receiving a request for the readings. In some cases in which readings are not sent periodically, sensors may send all the readings collected since a last transmission occurred. In other cases, sensors may only send the most recent readings. See para. 85 – emphasis added.
In some cases, insurance risks may be associated with the occupancy or lack of occupancy of certain rooms/areas of a property. For example, if certain areas of the property are not occupied for long periods of time, then in the damage occurring in those areas will be greatly increased due to the lack of human intervention. In some instances, the lack of occupancy may also lead to reduced climate control usage, which can cause damage to the property during seasons of extreme temperature. As another example, areas that are heavily trafficked in use may be at greater risk for damage from the many occupants of the areas. In some cases, an insurer may have received intended occupancy information at the start of the insurance plan, and therefore may compare the intended occupancy with the actual occupancy. For instance, if the property owner discloses that two people and no animals would be living in a residence, then detecting an actual occupancy of four people and two dogs for an extended period may indicate an increased risk than previously quoted. As another example, if all of the residents of the property are away from home for more than half of the day, then the property may be at reduced risk because the residents have less time to cause damage to the property. See para. 87 – emphasis added.
Wedig discloses a method wherein instructions (climate control instructions) are issued to a first and second device (heating units or air conditioning units). See para. 46. The instructions are to perform actions (maintain a temperature within a range) to prevent or mitigate property damage associated with the predicted ongoing property damage event (extreme temperatures). See para. 46 and 87.
Wedig discloses a method wherein the status of the system to prevent or mitigate property damage is assessed periodically (via maintaining a temperature in a range). See para. 85.
If the first action (activation of a heating unit or air conditioning unit) is insufficient (to maintain a temperature in a range), it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to issue additional instructions (to maintain a temperature within a range) to additional devices (other heating units or air conditioning units) until it was sufficient (to maintain a temperature within a range) based upon the disclosures of Wedig.
8. 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 JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached on M-F 9-5.
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, RYAN D. DONLON can be reached on (571)270-3602. 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 the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 January 30, 2026