DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the amendment filed on 12/30/2025.
Claims 1-20 have been amended and hereby entered.
Claims 1-20 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 12/30/2025 with respect to the SME 101 rejection have been fully considered but they are not persuasive.
Applicant argues #1:
Regarding step 2A (prong 1) of the § 101 analysis, the Applicant's claims are not directed to an abstract idea. The Office Action argues that the claims purportedly "fall[] within [...]'Certain Methods of Organizing Human Activities."' Office Action, 3-4. Applicant respectfully disagrees.
The currently amended claims are non-abstract and patent-eligible for at least similar reasons as those recited in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) ("Core Wireless"). For instance, the claims at issue in Core Wireless concern "display[ing] a limited list of at least one function offered within the first application [...] being selectable to launch the first application and initiate the selected function." The Federal Circuit indicated that the claims at issue in Core Wireless are non-abstract and patent-eligible because they are "directed to an improved user interface for computing devices,""a particular manner of summarizing and presenting information in electronic devices," and "a specific manner of displaying a limited set of information to the user." Core Wireless, 1362.
Applicant submits that the "interactive user interface" in currently amended claim 1 is analogous in certain respects to the "main menu," the "application summary window," and/or the "limited list of at least one function" in the claims of Core Wireless. For instance, the "receiving" of the "project data""through [the] interactive user interface" in currently amended claim 1 is analogous in certain respects to the "limited list of at least one function offered within the first application [...] being selectable to launch the first application and initiate the selected function" of Core Wireless. (emphasis added). The "processing [of] the at least one project parameter, the property type, and the project status to generate a recommended modification to the project to increase a likelihood of completion of the project" and "automatically updating the interactive user interface to identify the recommended modification to the project" in currently amended claim 1 is analogous in certain respects to actually "initiat[ing] the selected function" in Core Wireless. For at least these reasons, Applicant submits that the currently amended claim 1 is at least partially "directed to an improved user interface for computing devices,""a particular manner of summarizing and presenting information in electronic devices," and "a specific manner of displaying a limited set of information to the user" as in Core Wireless. Core Wireless, 1362.
Examiners response:
The Examiner respectfully disagrees, in Core Wireless, the claims were found to patent eligible because they pertained to improvement to a graphical user interface (GUI) for mobile devices that displays an application summary of each application on the main menu while those applications are in an unlaunched state. The claims to computing devices were held patent eligible because the court concluded that they are directed to an improved user interface for electronic devices, not to the abstract idea of an index. In particular, the claims contain precise language delimiting the type of data to be displayed and how to display it, thus improving upon conventional user interfaces to increase the efficiency of using mobile devices. The specification of Core Wireless addressed specific problems with traditional user interfaces on mobile devices, particularly devices with small displays, showing that the prior art interfaces had many deficits relating to the efficient functioning of the computer, requiring a user “to scroll around and switch views many times to find the right data/functionality.” ’020 patent at 1:47–49. The claims and specification in Core Wireless were directed towards this problem and resulted in a benefit of the speed of a user’s navigation through various views and windows being improved because it “saves the user from navigating to the required application, opening it up, and then navigating within that application to enable the data of interest to be seen or a function of interest to be activated.” Id. at 2:35–39. Rather than paging through multiple screens of options, “only three steps may be needed from start up to reaching the required data/functionality.” Id. at 3:2–3. This language clearly indicates that the claims are directed to an improvement in the functioning of computers, particularly those with small screens. The Examiner fails to see how Core Wireless is applicable as the focus of the claims and specification is not on a solution or technical problems in the relevant art related to a GUI on a mobile device, rather the user interface of the instant application is claimed at a highly generic level such that it amounts to a generic component being used receiving data and displaying the result of the abstract process akin to Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315, 1331, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017); and Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015);.
Applicant argues #2:
The currently amended independent claims recite subject matter that is patent-eligible and non- abstract for similar reasons as those recited in Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) ("Finjan"). The claims at issue in Finjan concern "scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a 'security profile'." Finjan, 1303. The Federal Circuit concluded that the claims in Finjan represent "a non-abstract improvement in computer functionality" because they "employ[] a new kind of file that enables a computer security system to do things it could not do before,""allow[] access to be tailored for different users and ensures that threats are identified before a file reaches a user's computer," and "enable[] more flexible and nuanced virus filtering." Id., 1304-1305 (emphasis added).
Applicant submits that the "custom queries for a plurality of data sources" that are "automatically formulat[ed] [...] based on the at least one project parameter and a plurality of application programming interfaces (APIs) for the plurality of data sources" in currently amended claim 1 are analogous in certain respects to the "security profile" (the "new kind of file") of Finjan. For instance, like the "security profile" of Finjan "enables a computer security system to do things it could not do before" - here, the "custom queries" allow for "querying the plurality of data sources using the plurality of custom queries and through a communication network to extract, from the plurality of data sources and in a specific format, a property type of the property and a project status of the project," which in turn allows for "processing the at least one project parameter, the property type, and the project status to generate a recommended modification to the project to increase a likelihood of completion of the project" (emphasis added). These are "things" that "could not [be done] before" (as in Finjan) given the "different formats of the plurality of data sources" recited in the amended claims. Furthermore, similarly to the "security profile" of Finjan, the "custom queries" in amended claim 1 "allow[] access to be tailored for different" data sources, given the use of "application programming interfaces (APIs) for the plurality of data sources [...] [that] differ according to different formats of the plurality of data sources." Because the claims qualify as non-abstract for similar reasons as in Core Wireless and Finjan, the claims qualify as patent-eligible without further analysis.
Examiners response:
The Examiner respectfully disagrees, with respect to Finjan, the claims were held patent eligible because the court concluded that the claimed method recites specific steps that accomplish a result that realizes an improvement in computer functionality. In particular, the method generates a security profile that identifies both hostile and potentially hostile operations, and can protect the user against both previously unknown viruses and "obfuscated code." This was a technical improvement to a technical problem over traditional virus scanning, which only recognized the presence of previously-identified viruses (see Memorandum - Recent Subject Matter Eligibility Decisions (Finjan Inc. v. Blue Coat Systems, Inc. and Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc.) (April 2, 2018)). In the instance application the Examiner fails to see how computer functionality has been improved, with respect to querying data stores for data using API’s and custom queries, the API’s are claimed in a highly generic manner such they amount to a generic computer component being used for their intended purposed, and generally linking the idea to the computer environment and therefor does not amount to significantly more, creating a custom query for data is in itself abstract. MPEP 2106.05(f) Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); Additionally, NPL Using APIs to collect website data shows it’s well-understood, routine and conventional to use API’s to request data from databases and websites, which states
“Web APIs provide a means of communication between websites and users, structured by rules. In particular, they allow users to obtain clearly defined kinds of data quickly, by requesting it directly from the database underlying a particular website. (This isn’t the only kind of API. For example, smartphone apps frequently use APIs to send data back and forth between your device and the application’s database… Many major companies, as well as government agencies, have created public APIs. These organizations provide easy access to their data to encourage developers to use their platforms. At Pew Research Center, we regularly use APIs to collect information for the studies we produce.”
Applicant argues #3:
Regarding step 2A (prong 2) of the § 101 analysis, the Applicant's claims implement a practical application.
The currently amended claims incorporate a practical application for at least similar reasons as those recited in USPTO Example 42 claim 1 in the USPTO's Subj ect Matter Eligibility Examples 37-42 published January 7, 2019, available at https://www.uspto.gov/sites/default/files/ documents/101_examples_37to42_20190107.pdf. USPTO Example 42 claim 1 concerns
"storing information in a standardized format,""converting [... ] non-standardized updated information into the standardized format,""storing the standardized updated information [...] in the standardized format," and "transmitting [a] message [...] so that each user has immediate access to up-to-date patient information." The USPTO flags "a specific improvement [...] by allowing remote users to share information in real time in a standardized format regardless of the [input] format," noting that thus, "the claim is eligible because it is not directed to the recited judicial exception (abstract idea)."
Applicant submits that "automatically formulating [...] custom queries for [...] data sources based on the at least one project parameter and a [...] application programming interfaces (APIs) for the [...] data sources [that] differ according to different formats of the [...] data sources" and "querying the [...] data sources using the [...] custom queries [...] to extract, from the [...] data sources and in a specific format, a property type of the property and a project status of the project" in the amended claims is analogous in certain respects to "converting [...] non- standardized updated information into the standardized format" in USPTO Example 42 claim 1. For instance, the "different formats of the [...] data sources" in Applicant's currently amended independent claims are similar in some respects to the "standardized format" and the "non- standardized" format of USPTO Example 42 claim 1, and the "specific format" in Applicant's amended claims are similar in some respects to the "standardized format" of USPTO Example 42 claim 1. Similarly to the how the systems of USPTO Example 42 claim 1 "recite a specific improvement [...] by allowing remote users to share information [...] in a standardized format regardless of the [input] format," Applicant's amended claims provide a "specific improvement" by allowing the claimed systems and methods to "generate a recommended modification to the project to increase a likelihood of completion of the project" by processing information from "data sources" in a "specific format" despite the "different formats" of the "data sources."
The currently amended independent claims recite subject matter that is patent-eligible for at least similar reasons as in the claims at issue in AMDOCS Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) ("AMDOCS"). The patent claims at issue in AMDOCS concern "correlating [a] first [...] record with accounting information [...] from a second source [...] to enhance the first [...] record." The Federal Circuit "construed 'enhance' as being dependent upon the invention's distributed architecture" as "understood in light of the written description," stating that the claims in AMDOCS are patent-eligible because they concern "components working in an unconventional distributed fashion to solve a particular technological problem." AMDOCS at 1300, 1301, 1306.
Applicant submits that, like AMDOCS, currently amended claim 1 concerns "correlating" information from multiple sources - including (1) the "project data" that is "receiv[ed] through an interactive user interface" and (2) the "property type [...] and a project status" that are "extract[ed] from the [...] data sources [...] in a specific format" based on "custom queries" that are "automatically formulat[ed] [...] based on the at least one project parameter and [...] application programming interfaces (APIs) for the [...] data sources [that] differ according to different formats of the [...] data sources." Obtaining these different types of data in these different ways and from these different data sources is analogous in certain respects to the "distributed architecture" of AMDOCS. Applicant submits that the "processing [of] the at least one project parameter, the property type, and the project status to generate a recommended modification to the project to increase a likelihood of completion of the project" and "automatically updating the interactive user interface to identify the recommended modification" are analogous in certain respects to the "enhance[ment] [of] the first [...] record" in AMDOCS, and are "dependent upon the [...] distributed architecture" by being dependent on the "project data," the "property type," and the "status update" that are obtained in different ways. Thus, the amended claims, like AMDOCS, are patent-eligible because they likewise concern "components working in an unconventional distributed fashion to solve a particular technological problem." AMDOCS at 1300, 1301, 1306.
Examiners response:
The Examiner respectfully disagrees, In Amdocs, the claims are directed towards the network processing data in way that was unconventional resulting to an improvement to the technical area for processing data by reducing the flow of data records and reducing the amount of data stored in the central database, thus eliminating capacity bottlenecks, and improving the scalability and efficiency of the system, resulting in an improvement to the additional elements themselves.
In the claimed invention, the computer has not been improved. The non-technological process that the software is performing may have been improved but, according to Alice, improving the process without any technological innovation is not statutory. The computer still operates according to its known and standard capabilities, as evident by the cited decisions in MPEP 2106.05(d). Further, as shown above, it’s WURC to use API’s for data gathering and MPEP 2106.05(d) shows Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); is WURC.
Applicant argues #4:
Moreover, MPEP § 2106.04(d)(III) indicates that the Federal Circuit's analysis in Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) ("Finjan") "is equivalent to the Office's analysis of determining that the additional elements integrate the judicial exception into a practical application at Step 2A Prong Two" in ultimately determining that "the claims were not directed to the judicial exception." See MPEP § 2106.04(d)(III). Thus, Applicant submits that the similarities between Applicant's currently amended claims and those at issue in Finjan also supports "integrat[ion] [...] into a practical application at Step 2A Prong Two" for at least the reasons discussed above with respect to Finjan. MPEP § 2106.04(d)(III).
MPEP § 2106.04(d)(I) lists five "considerations" indicative of a practical application, several of which apply here. First, the claimed systems and methods "improve[] the functioning of a computer, technology or technical field." For instance, the claimed systems and methods "supplement and improve assessments and that makes customized recommendations as to how to improve or enhance assessment results under the other type(s) of assessment." Specification, para. [0004] (emphasis added). The claimed systems and methods provide "improve[d] systems and methods for implementing automated project assessments and enhancements." Id., [0005] (emphasis added). The claimed systems and methods harness "APIs 130 [that] allow assessment server 115 to efficiently retrieve, identify/categorize, and extract specific types of data sent electronically over communication network 105 from a variety of different types of the other computing devices for use in the assessment and enhancement operations described in further detail herein," and to "directly access project data from multiple different sources more efficiently (e.g., avoiding the need to manually navigate to each data source, search each data source for relevant data, or manually initiate analytical functions)" Id., [0038], [0045] (emphasis added). The claimed systems and methods are "used to identify recommended ways [...] in which a current project may be modified to improves its odds of approval and/or success" and/or "generate recommendations on how to improve project scores under the same or different scoring algorithms 145." Id., [0041], [0044] (emphasis added). The claimed systems and methods also provide improvements to user interfaces and analyses as discussed above with respect to Core Wireless, Finjan, USPTO Example 41 claim 1, and AMDOCS.
The Office Action dismisses some of Applicant's prior remarks by dismissing Applicant's claim elements as purportedly "generic component[s]." See e.g., Office Action, 4, 8-11. First, Applicant respectfully disagrees, and notes that these components are not "generic." Second, the MPEP notes that "examiners should not dismiss additional elements as mere 'generic computer components' without considering whether such elements confer a technological improvement" and that "examiners should ensure that they give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application." MPEP §§ 2106.05(a) and 2106.04(d) (emphasis added). Applicant notes that these elements provide technological improvements such as those listed above, and thus incorporate a practical application.
The claimed concept is also "use[d] [...] in conjunction with a particular machine or manufacture that is integral to the claim," another one of the five "considerations" indicative of a practical application under MPEP § 2106.04(d)(I). For instance, independent claim 1 integrally relies on at least the "interactive user interface," the "plurality of data sources," the "plurality of application programming interfaces (APIs)," and the "communication network." The Office Action acknowledges some of these machines and manufactures, but fails to address their being "integral to the claim." The claims are also "more than a drafting effort designed to monopolize the exception," another one of the five "considerations" indicative of a practical application under MPEP §2106.04(d)(I).
Because the claims qualify as integrated into a practical application for similar reasons as in USPTO Example 42 Claim 1, AMDOCS, and Finjan, and because of the "considerations" in MPEP § 2106.04(d)(I), the claims qualify as patent-eligible without any further analysis.
Examiners response:
The Examiner respectfully disagrees, the user interface and API’s of the instant application is claimed at a highly generic level such that it amounts to a generic components being used to gather and display the result of the abstract process akin to Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315, 1331, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017); and Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); and Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015);. With respect to the components "interactive user interface," the "plurality of data sources," the "plurality of application programming interfaces (APIs)," and the "communication network.", these are generic computer components being used to implement the abstract idea and limits the judicial exception to the particular environment of networked computers. Mere instructions to apply the judicial exception using generic computer components and limiting the judicial exception to a particular environment are not indicative of a practical application (see MPEP 20106.05(f) and MPEP 20106.05(h)). With respect to monopolizing the abstract idea, it is noted “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The instant application has been reviewed using the Subject Matter Eligibility test as laid out in MPEP 2106, and found to be directed towards an abstract idea without significantly more, therefor this argument is not persuasive.
Applicant argues #5:
Regarding step 2B of the § 101 analysis, Applicant's claims include an inventive concept ("something more"). In particular, the claimed subject matter includes additional elements that amount to an inventive concept ("something more"). In particular, the claimed subject matter includes additional elements that amount to an inventive concept ("something more"). These additional elements include at least the elements discussed above (in the discussion of step 2A prong 2) as being "integral to the claim[s]" under MPEP § 2106.04(d)(I).
The Office Action argues that the claims "amount[] to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment," in apparent reference to MPEP § 2106.05(f) (though the Office Action does not explicitly cite to MPEP § 2106.05(f)). Office Action, 15. Applicant notes that MPEP § 2106.05(f) clarifies that "[w]hen determining whether a claim simply recites a judicial exception with the words 'apply it' (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider [...] [w]hether 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" (emphasis added). Applicant submits that the currently amended independent claims recite a significant amount of details of how the various processes in the claimed solution are accomplished. Thus, under MPEP § 2106.05(f), it would be inappropriate for the Office to dismiss the currently amended claims as "amount[ing] to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment," and Applicant requests reconsideration and withdrawal of this rejection.
Furthermore, the Office Action appears to argue that Applicant's claim elements purportedly "are well-understood routine and conventional," citing several cases listed in MPEP § 2106.05(d)(ii). Office Action, 16. The Applicant respectfully disagrees. The MPEP requires that "Examiners should not assert that an additional element (or combination of elements) is well-understood, routine, or conventional unless the examiner finds, and expressly supports the rejection in writing with one or more of' four types of evidence. MPEP § 2106.07(a)(III) (emphasis added). Of these types of evidence, the Office Action only cites caselaw, arguing that concepts such as "receiving and transmitting data over a network,""receiv[ing] and send[ing] information over a network,""[p]erforming repetitive calculations,""recomputing or readjusting alarm limit values," and "updating an activity log" are purportedly "well-understood routine and conventional" under caselaw cited in MPEP § 2106.05(d)(ii). Office Action, 12-13. However, none of the concepts, or the cases cited in the MPEP in relation to these concepts, discuss the sort of "interactive user interface" recited in Applicant's claims, or "automatically formulating [...] custom queries," or "querying" or "processing" or "verifying" as recited in the claims. Thus, the currently amended independent claims are not "the same as" the cases in the cited sections of MPEP § 2106.05(d), are not "recited in the same manner as" the cases in the cited sections of MPEP §2106.05(d), and are not "recited at the same high level of generality" the cases in the cited sections of MPEP §2106.05(d). Thus, according to MPEP § 2106.07(a)(III)(B), the cases in the cited sections of MPEP §2106.05(d) are not sufficient evidence to support a conclusion of the additional elements being in the currently amended independent claims being "well-understood, routine, or conventional."
Since the Office Action does not "expressly support [this] rejection in writing with" any of the other types evidence listed in the MPEP § 2106.07(a)(III), the claimed elements are not well- understood, routine or conventional. Instead, the additional elements, considered together, represent an inventive concept ("something more") at least because they represent "[i]mprovements to the functioning of a computer,""[i]mprovements to any other technology or technical field," and "[a]ppl[ication] [...] [of] a particular machine" under MPEP § 2106.05(I)(A)(i)-(iii) for at least the reasons discussed above with respect to Step 2A (prong 2).
During the Examiner Interview, the Examiner agreed that the claims, with similar proposed amendments, are likely to overcome the 35 U.S.C. §101 rejection for at least these reasons. Accordingly, the Applicant respectfully requests reconsideration and withdrawal of the 35 U.S.C. § 101 rejection.
Examiners response:
The Examiner respectfully disagrees, "automatically formulating [...] custom queries," or "querying" as recited in the claims is akin to sending and receiving data over the network. The processing and verifying steps are also akin to "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, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016); Further, in Alice, the Supreme Court held that "merely requiring generic computer implementation fails to transform [an] abstract idea into a patent-eligible invention." 134 S.Ct. at 2352. Furthermore, in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354-55 (Fed.Cir. 2014), the Courts stated that Alice "made clear that a claim directed to an abstract idea does not move into § 101 eligibility territory by merely requiring generic computer implementation" (internal quotation marks omitted). While the claims of the instant application may particularly claim the abstract process for making recommendations to a project, the Examiner fails to see how the claims address any technical problems, rather the claims are directed towards abstract processes being applied in the computer environment, similar to other ineligible decisions such as Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015); and Generating restaurant menus with functionally claimed features, Ameranth, 842 F.3d at 1245, 120 USPQ2d at 1857;. Further defining the results (prediction, a recommended action to take based on the prediction to be presented to the user does amount to a practical application as this is present the results of the analysis. Here, and as shown in the rejection, the Examiner met the office’s burden of applying the Subject Matter Eligibility test as laid out in MPEP 2106. With respect to the Examiner interview, the record shows no agreement was reached with respect to amendments to overcome 101.
For the reasons above, the 101 rejection is hereby maintained.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more, and fails step 2 of the analysis because the focus of the claims is not on the devices themselves or a practical application but rather directed towards an abstract idea, the analysis is provided below.
Step 1 (Statutory Categories) - The claims pass step 1 of the subject matter eligibility test (see MPEP 2106(III)) as the claims are directed towards an apparatus, and method.
Step 2A – Prong One (Do the claims recite an abstract idea?) - The idea is recited in the claims, in part, by:
receiving project data identifying at least one project parameter of a project that is associated with a physical structure on a property;
automatically formulating a plurality of custom queries for a plurality of data sources based on the at least one project parameter and a plurality of application programming interfaces (APIs) for the plurality of data sources, wherein the plurality of APIs differ according to different formats of the plurality of data sources;
querying using the plurality of custom queries to extract, in a specific format, a property type of the property and a project status of the project;
processing the at least one project parameter, the property type, and the project status to generate a recommended modification to the project to increase a likelihood of completion of the projects; and
automatically identify a recommended modification to the project; and
verifying, using an additional custom query, that the recommended modification has been made to the project.
The steps recited above under Step 2A Prong One of the analysis under the broadest reasonable interpretation covers commercial or legal interactions (including agreements in the form of contracts; business relations) but for the recitation of generic computer components for generating a prediction regarding an aspect of a project. That is other than reciting an interactive interface, communications network, a plurality of application programming interfaces (APIs), a processor, memory, and a data sources nothing in the claim elements are directed towards anything other than commercial or legal interactions for generating a prediction regarding an aspect of a project. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas. Accordingly, the claims recite an abstract idea.
Step 2A – Prong Two (Does the claim recite additional elements that integrate the judicial exception into a practical application?) - This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of an interactive interface, communications network, a plurality of application programming interfaces (APIs), a processor, memory, and a data sources. The an interactive interface, communications network, a plurality of application programming interfaces (APIs), a processor, memory, and a data sources are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment of networked computers. Additionally paragraph [0038], [0057-0058] describes the API’s and computer components in a generic manner such that it’s part of technical environment in which the idea is being limited to. Mere instructions to apply the judicial exception using generic computer components and limiting the judicial exception to a particular environment are not indicative of a practical application (see MPEP 20106.05(f) and MPEP 20106.05(h)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed towards an abstract idea.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) - The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, with respect to integration of the abstract idea into a practical application, using the additional elements of an interactive interface, communications network, a plurality of application programming interfaces (APIs), a processor, memory, and a data sources to perform the steps recited in Step 2A Prong One of the analysis amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment of computers. Mere instructions to apply an exception using generic computer components and limiting the judicial exception to a particular environment does not provide an inventive concept. The additional elements have been considered separately, and as an ordered combination, and do not add significantly more (also known as an “inventive concept”) to the judicial exception as the retrieving data steps and outputting the results of processing the data amounts insignificant extra-solution activities, and there for the claims, as a whole, do not amount to significant more than the abstract idea. The use of API’s is generally linking the idea to the computer environment, and as MPEP 2106.05(f) Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone);. Further, MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;, and Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); are well-understood routine and conventional, similar to the instant application claims which recites retrieving data from data sources, and sending and receiving data over network used for recommending a modification regarding an aspect of a project (i.e. performing repetitive calculations), and verifying the recommendation was made. Additionally, NPL Using APIs to collect website data shows it’s well-understood, routine and conventional to use API’s to request data from databases and websites. With respect to the interactive user interface, this is part of technical environment in which the idea is being limited to, and the displaying step falls to transform the claims into patent eligible material, as this is part of the field of use and technical environment in which the abstract idea is being implement and does not result in an improvement to additional elements (see MPEP 2106.05(h) Electric Power Group court decision). With respect to the use of a machine learning model in the dependent claims, the machine learning is recited at an extremely broad level, and therefore under broadest reasonable interpretation, using the machine learning model is akin to performing a series of mathematical calculations, similar to ineligible claim 2 of Example 47 in the July 2024 Subject Matter Eligibility Examples, and therefore does not amount to significantly more than the abstract idea. Thus, the claims are not patent eligible.
The dependent claims have been given the full analysis including analyzing the additional limitations both individually and in combination as a whole. For instance, 2-11, and 14 are all steps that fall within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas, further define abstract concepts. Claims 12 and 13 recited receiving electronic file and analyzing the text, and combining the data into different formats, MPEP 2106.05(d) shows sending and receiving data over the network is well-understood, routing and conventional, (Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information);) as is Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and further this is akin organizing information and manipulating information through mathematical correlations, Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014), where in Digitech claimed methods of generating first and second data by taking existing information, manipulating the data using mathematical functions, and organizing this information into a new form, similar formatting the data of the instant application. The use of the interactive user interface in claim 15 is generally linking the use of the judicial exemption to a particular technical computing environment. With respect to claims 15 and 16 and the generating links steps, this is akin to Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315, 1331, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017);) and performing recording keeping tasks. With respect to the links of the claims, the Examiner finds the use of the links akin to Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315, 1331, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017);, additionally outputting the link for the data source is akin to performing recording tasks and displaying the results. The Dependent claims when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 for the same reasoning as above and the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The additional limitations of the dependent claims when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Application Publication 20150363874 to Wallander, et al. discloses “In some cases, the tool is further used to underwrite the project financing and displaying whether a project is preliminarily credit-approved. In further cases, the tool further enables pre-setting project finance assumptions for offering standard fixed-pricing to project applicants arranged by utility tariff, city or county or zip code subject to particular program parameters…n some embodiments, when sufficient property information is collected through Project Registration Form and/or APIs, refined and verified the information through the System Report Form, the information is plugged into a “Dashboard,” e.g., a web-based calculator tool. In further embodiments, the Dashboard is used to summarize and supply project-specific inputs. In addition, Demeter (the application provider) provides additional inputs and default assumptions into the Dashboard”. US Patent Application Publication 20210073930 to Khoshbin discloses “A real estate evaluation engine may receive a request for relevant properties, receive property information, identify a list of relevant properties, and calculate an estimated value for each property in the list of relevant properties. The evaluation engine may calculate a score for each property in the list of relevant properties. The score may be based on a client profile…As an example, a particular client may submit a request for rental properties located in the city of Irvine, Calif., with an asking price less than one million two hundred thousand dollars and at least three rental units. Requests may be received from or via various appropriate resources, such as client device applications, web sites, APIs, etc. For instance, FIG. 4 below describes a graphical user interface (“GUI”) that may be able to receive client requests... The various resources 630-650 may include resources such as search engines, databases, etc. The resources 630-650 may be accessed via various appropriate pathways (e.g., using one or more application programming interfaces (APIs), via a webhook or other uniform resource locator (URL) based resource, by authenticating at a server with a username and password, etc.).”
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 GREGORY S CUNNINGHAM II whose telephone number is (313)446-6564. The examiner can normally be reached Mon-Fri 8:30am-4pm.
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, Bennett Sigmond can be reached at 303-297-4411. 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.
GREGORY S. CUNNINGHAM II
Primary Examiner
Art Unit 3694
/GREGORY S CUNNINGHAM II/ Primary Examiner, Art Unit 3694