DETAILED ACTION
This communication is a Non-Final Office Action on the merits in response to communications received on 01/29/2026. Claims 1, 8, and 15 have been amended. Therefore, claims 1, 8, and 15 are pending and have been addressed below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/29/2026 has been entered.
Claim Rejections – 35 USC §101
2. 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.
3. Claims 1, 8, and 15 are rejected under 35 U.S.C. § 101 because the claimed invention recites an abstract idea without significantly more.
4. Regarding Step One, claim 1 recites a process (i.e., an act or step, or a series of acts or steps), claim 8 recites a machine (i.e., consisting of parts, or of certain devices and combination of devices), claim 15 recites a manufacture (i.e., an article that is given a new form, quality, property, or combination through man-made or artificial means.) Thus, each of these claims fall within one of the four statutory categories.
5. Regarding Step 2A [Prong One], claims 1, 8, and 15 recite:
“extracting features…by: extracting intrinsic features comprising market value, total area, age of an associated building, and number of floors of the associated building;”, “extracting neighborhood asset types by extracting asset types for a group of neighboring properties;”, “extracting census information;”, “extracting asset types of other properties by: determining a set of related properties by: identifying a group of neighboring properties based on a map of the each of the one or more properties identifying properties that share a same compound or parcel; and identifying additional properties having a common owner;”, “estimating a multinomial distribution over the asset types for the set of related properties, wherein: the multinomial distribution has k possible results corresponding to a number of the asset types, each possible result has an associated probability that a property is a corresponding asset type, a sum of the associated probabilities is 1, and parameters of the multinomial distribution are estimated using Bayesian inference;”, “extracting…features by: tokenizing NAICS descriptions from… providing the tokenized NAICS descriptions;”, “receiving a set of NAICS embeddings… based on the NAICS tokenized descriptions;” and “averaging the set of NAICS embeddings extracting legal description features by: tokenizing legal descriptions;”, “providing the tokenized legal descriptions to the model;”, “receiving a set of legal embeddings…based on the tokenized legal descriptions averaging the set of legal embeddings and…to the set of legal embeddings;”, “using the features, wherein each of…corresponds to a separate asset type in a set of asset types,…using a portion of the features corresponding to the separate asset type;”, “determining an asset type of the set of asset types for each of the one or more properties using the features as an input;” and “outputting…the asset type for each of the one or more properties.”
Under the broadest reasonable interpretation, the limitations recite an abstract idea for extracting property data, determining, and outputting classification types for one or more real estate properties which is/are a concept that encompasses fundamental economic principles or practices (i.e., hedging, insurance, mitigating risk), commercial interactions (i.e., marketing or sales activities, business relations), mental concepts (i.e., observations, evaluations, judgments, opinions), mathematical concepts (i.e., mathematical calculations) and falls within the certain methods of organizing human activity, mental processes, and mathematical concepts groupings discussed in MPEP 2106.04(a)(2).
The Applicant’s Specification in at least [0002-0005, 0065] Referring to Fig. 2, Fig. 2 is a flow diagram for a process 200 of determining asset types for one or more properties. The process 200 may be implemented to effectuate commercial research on properties in a large area. The process 200 may determine multiple asset types for a single property. Additionally, the process 200 may determine that a property does not have any asset types. The process 200 includes steps of collecting data from a large number of databases. [0071] At step 220, the process may output each asset type of the one or more properties. Each of the determined asset types may be displayed on a list viewable to a user when the property is selected. In various embodiments, the property is displayed on a map at an accurate position relative to other properties. The user may select one of the displayed properties to display the list of its determined asset types.
Consistent with the disclosure, the limitations are considered fundamental economic practices and/or sales or marketing activities because the steps of “extracting”, “determining”, “outputting” in the context of the claim may be performed by a user that has access to property data the ability to interact with one or more properties that have been classified, i.e., businesses or residences, according to a particular category. In this way, the limitations cover subject matter that may be reasonably characterized as falling within the certain methods of organizing human activity grouping. The limitations are considered mental processes because the steps of “extracting”, “determining”, “outputting” in the context of the claim involve the collection of information, i.e., property data, and processes for understanding the meaning of the information (such as determining an asset type for one or more properties) where these steps can be performed by a human using evaluation and because they involve determinations which are mental tasks humans routinely do and thus can be practically performed in the human mind. In this way, the limitations may be reasonably characterized as falling within the mental processes grouping. The limitations are also considered mathematical calculations because the step of “estimating” in the context of the claim recites mathematical relationships between variables and numbers. It is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula. Accordingly, the claim recites an abstract idea.
6. Regarding Step 2A [Prong Two], the recited additional elements include:
“a processor in communication with a memory”, “by the processor”, “North American Classification System (NAICS)”, “a NAICS database”, “to a model”, “from the model”, “applying a term frequency-inverse document frequency algorithm”, “training, using a tree-based gradient boosting algorithm, a set of binary classifiers”, “the binary classifiers”, “wherein training comprises: training each of the binary classifiers”, “to a one-versus-rest model and the set of binary classifiers”, “a client device”, “a user interface of the client device”, “a map”, “the map”, “a computing system”, “a processing server”, “the processing server”, “a non-transitory computer readable storage medium, with a processor in communication with a memory through a bus, having data stored therein representing a software executable by a computer, the software comprising instructions that, when executed, cause the computer to perform:” – see claims 1, 8, 15 which are all recited at a high-level of generality in light of the specification. Since the specification describes the additional elements in general terms, without describing the particulars, the additional elements may be broadly but reasonably construed as generic computer components being used in their ordinary capacity to perform the abstract idea. The additional elements merely add the words “apply it” with the judicial exception, or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05 (f)
The other additional element of: “collecting data…related to the one or more properties;” “causing the asset type to be displayed…in response to a user selecting a property of the one or more properties…, wherein the property is positioned…relative to other properties of the one or more properties…” adds insignificant extra-solution activity to the judicial exception, as discussed in MPEP 2106.05(g).
The other additional element of: “a method for determining asset types of one or more properties, the method comprising:” recited in the preamble merely indicates a particular field of use or technological environment in which to apply the judicial exception, as discussed in MPEP 2106.05(h).
Thus, the additional claim elements are not indicative of integration into a practical application, because the claims do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea and the claims are directed to an abstract idea.
7. The claim(s) does/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, the additional element(s) of: “a processor in communication with a memory”, “by the processor”, “North American Classification System (NAICS)”, “a NAICS database”, “to a model”, “from the model”, “applying a term frequency-inverse document frequency algorithm”, “training, using a tree-based gradient boosting algorithm, a set of binary classifiers”, “the binary classifiers”, “wherein training comprises: training each of the binary classifiers”, “to a one-versus-rest model and the set of binary classifiers”, “a client device”, “a user interface of the client device”, “a map”, “the map”, “a computing system”, “a processing server”, “the processing server”, “a non-transitory computer readable storage medium, with a processor in communication with a memory through a bus, having data stored therein representing a software executable by a computer, the software comprising instructions that, when executed, cause the computer to perform:” – see claims 1, 8, 15 at best add the words “apply it” to the judicial exception. Therefore, mere instructions to apply the judicial exception cannot provide the inventive concept at Step 2B.
The other additional element of: “collecting data…related to the one or more properties;” “causing the asset type to be displayed…in response to a user selecting a property of the one or more properties…, wherein the property is positioned…relative to other properties of the one or more properties…” were considered to be insignificant extra-solution activity in Step 2A, and thus re-evaluated in Step 2B to determine if it is more than well-understood, routine, conventional activity in the field. The Symantec, TLI, OIP Techs, Versata Dev. Group court decisions cited in MPEP 2106.05(d)(II) indicate: “receiving or transmitting data over a network”, “storing and retrieving information in memory”, and “presenting offers and gathering statistics” are well-understood, routine, conventional activity. Thus, when viewing the additional elements individually and as a whole in combination with the judicial exception, the additional elements do not provide an inventive concept at Step 2B.
Response to Arguments
8. Applicant's arguments filed 01/29/2026 have been fully considered but they are not persuasive.
With Respect to Rejections Under 35 USC 101
Applicant argues “In the Examiner's Step 2 Prong One analysis, the Examiner makes the statement that the claimed invention encompasses fundamental economic practices, commercial interactions, mental concepts, and mathematical concepts. See id. The MPEP describes that to "recite" an abstract idea, a claim must "set forth" or "describe" an abstract idea. See MPEP § 2106. The MPEP provides, as an example of "set forth", the mathematical equation explicitly included in the claims at issue in Diamond v. Diehr (i.e., a relationship between reaction rate and temperature, which relationship can be expressed in the form of a formula called the Arrhenius equation). Id. Applicant respectfully asserts that no independent claim explicitly sets forth an abstract idea in such a manner. The MPEP provides, as an example of "describe", the description of the concept if intermediated settlement in Alice Corp. v. CLS Bank without including the words intermediated or settlement. Id. Applicant respectfully asserts that there is no such description of an abstract idea present in any independent claim.
MPEP § 2106 goes on to explain if a claim merely involves a judicial exception, rather than reciting it (or setting forth or describing it), then the "claim is eligible [] without further analysis". MPEP § 2106. As an example, the MPEP provides a claim that recites a judicial exception as one that sets forth "A machine comprising elements that operate in accordance with F=ma". Id. Such a claim requires further analysis under Prong Two of Step 2A. The MPEP further provides an example of a claim, which merely involves an exception: "A teeter-totter comprising an elongated member pivotably attached to a base member, having seats and handles attached at opposing sides of the elongated member". Id. The MPEP goes on to explain that "This claim is based on the concept of a lever pivoting on a fulcrum, which involves the natural principles of mechanical advantage and the law of the lever. However, this claim does not recite these natural principles and therefore is not directed to a judicial exception". Id. Therefore, the MPEP concludes that the hypothetical claim is eligible without further analysis. Id.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A Prong One of the two part analysis. In the last Office Action, the rejection identified the limitations that recite an abstract idea for extracting property data, determining, and outputting classification types for one or more real estate properties and explained why the limitations fall within the certain methods of organizing human activity, mental processes, and mathematical concepts groupings of abstract ideas. In the instant case, the Applicant’s reply at best discusses guidance from the MPEP but does not explain how the guidance is applicable to remove the claimed invention from abstraction. The Examiner asserts the reply does not properly address the abstract idea identified in the previous rejection. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “In addition, the USPTO has provided additional guidance in the form of a series of subject matter eligibility examples. In one such example, Example 39, the USPTO provided an example for training a neural network for facial detection with a claim that provides for a series of data collection and modification steps to generate training data and then generically training the neural network using the training data. See 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), Example 39. The guidance continues, stating that this claim is eligible because it does not recite a judicial exception under Prong 1. See id. Further, the guidance states that this claim is based on mathematical concepts, those concepts are not recited in the claims and, further, the claims does not recite a mental process nor does it recite any method of organizing human activity.
Independent claim 1, as amended, requires a series of data preparation steps (i.e., the steps of collecting and the detailed set of extracting steps), a step of training multiple classifiers, using the classifiers along with a one-versus-rest model to generate a prediction using the data prepared in the data preparation steps using models to obtain conventional prediction, and a step of presenting the data on a map in a particular manner.
As such, the claims provide a specific method of data manipulation and use of models to obtain a specific type of prediction data. This claimed method is highly analogous to the Example 39 described above, which also provides for a method of generating a model that is able to provide a certain type of prediction data (i.e., facial detection). In particular, the claims provide for a set of data manipulation steps, like Example 39, and training of models, also like Example 39. Further, the current recitations include a much more detailed set of steps for preparing the data than those provided in Example 39. In addition, the present claims provide for actually using the trained models, which is an additional step that is not present in Example 39. Moreover, the present claims provide for displaying the generated data. Thus, for at least the same reasons that Example 39 is eligible, the pending claims should also be found to be eligible under Prong 1.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible because the specificity of the presently recited techniques in claim 1 does not lead towards eligibility. As an ordered combination, the limitations recited from claim 1 above recite no more than when they are considered individually. The method steps recite result-oriented functions rather than technical improvements to computers or technology. See Ericsson Inc. V. TCL Communication Tech. Holdings Ltd., 955 F.3d 1317, 1328 (Fed. Cir. 2020). Also, presentation of data in a particular formatted manner and as a result of a standard operation such as in response to user selection constitutes post solution activity which cannot support claim 1 as either a practical application or an inventive concept.
It is important for Applicant to note MPEP 2106.07 indicates while it would be acceptable for applicants to cite training materials or examples in support of an argument for finding eligibility in an appropriate factual situation, applicants should not be required to model their claims or responses after the training materials or examples to attain eligibility. The evaluation of whether the claimed invention qualifies as patent-eligible subject matter should be made on a claim-by-claim basis, because claims do not automatically rise or fall with similar claims in an application. In the instant case, the claimed invention do not recite a neural network. Therefore, the remarks in regards to Training Example 39 are not applicable because the limitations recited by the claimed invention do not parallel the same factual patterns that were discussed. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “In addition, as a practical matter, the human mind is not equipped to perform this method. See MPEP § 2106.04(a)(2)(III)(A). The method requires a process for training models, performing computer-based manipulations to data, and using both inputs and outputs of models, which a human mind is unable to perform without the use of a computer. See e.g., Research Corp. Techs., 627 F.3d at 868, 97 USPQ2d at 1280. Subsequently, because the claims, as amended, cannot be performed in the human mind or by a human using pen and paper, the amended claims fail to recite a mental process (i.e., an abstract idea), and the analysis under the Mayo/Alice Test should end with a conclusion that the claims are directed to patent eligible subject matter, and the independent claims should be considered patent eligible.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A – Prong One of the two part analysis. MPEP 2106.04(a)(2)(III)(C) indicates claims can recite a mental process even if they are claimed as being performed on a computer. In the instant case, the claimed methods are not rendered patent eligible by the fact that (using existing machine learning technology for training models, performing computer-based manipulations to data) they perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved. The courts have previously held in the context of computer-assisted methods such claims are not made patent eligible under 101 simply because the speed up human activity. See, e.g., Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355, 1363 (Fed. Cir. 2023) (rejecting argument that “humans could not mentally engage in the ‘same claimed process’ because they could not perform ‘nanosecond comparisons’ and aggregate ‘result values with huge numbers of polls and members’”) (internal citation omitted); Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (holding claims abstract where “[t]he only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task”). For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Assuming arguendo that the independent claims recite a judicial exception, Applicant asserts that any such judicial exception is integrated into a practical application. "If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception and thus is eligible. This concludes the eligibility analysis." See MPEP § 2106. Applicant respectfully asserts that, if the claims actually did explicitly recite a judicial exception (which they do not), they clearly integrate any such judicial exception into a practical application. In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The
court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality. Id. It was the specification's discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. Further, claims that improve a technical field using specific sets of rules are eligible. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313; MPEP § 2106.05(a)(II). In particular, the court in McRO held that the claims were not directed to an abstract idea but rather to a specific technological improvement in computer animation, distinguishing them from cases where computers merely automated conventional human activities. See id. The claimed method used specific rules that evaluated sub-sequences of phonemes (rather than individual phonemes) along with timing information to generate intermediate morph weight sets and transition parameters, which represented a particular implementation that improved upon the prior manual animation process where human animators subjectively set keyframes. See id. More specifically, the specification of the patent at issue in the McRO case provided that the resulting facial expression is calculated using a summation of a product of the transition parameters and the morph weights-a clear example of a basic mathematical concept and/or mental process. See id. Despite this clear use of mathematical concepts or mental processes, the court found that while the claims covered a genus of rules with certain characteristics, they did not preempt all rules-based approaches to automated lip synchronization because the specific structure and limitations of the claimed rules left room for alternative methods, demonstrating that the claims were directed to a
patent-eligible technological improvement rather than an abstract idea. See id.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A – Prong Two of the two-part analysis. The claims were patent eligible in Enfish because the courts held they were directed to improvements in the way computers and networks carry out their basic functions. The courts also held the claimed improvement in McRO was how the physical display operated to produce better quality images.
Here, there are not technical improvements provided by the Applicant. The reply discusses the Enfish and McRO court decisions in a high-level general manner and does not explain how the limitations from the claimed invention parallel the factual patterns cited in these court decisions. It is important for applicant to note although the extent of preemption is a consideration in the analysis, the absence of complete preemption is not dispositive. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility."). "[Q]uestions on preemption are inherent in and resolved by the § 101 analysis," which the Examiner has applied. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Similar to McRO, where the Federal Circuit found claims eligible because they were "limited to rules with specific characteristics" that improved computer animation technology, the present claims are limited to a specific, technical implementation for analyzing property data through a particular ordered combination of, at least: (i) Extracting multiple categories of features including intrinsic features,
neighborhood asset types, census information, and related property distributions; (ii) Applying specific technical processes including tokenization of NAICS and legal descriptions; (iii) Generating embeddings through models and averaging techniques; (iv) Estimating multinomial distributions using Bayesian inference with specific constraints; and (v) Training binary classifiers using extracted features in a one-versus-rest configuration.” Like the claims in McRO that used specific rules to achieve improved lip synchronization rather than automating animator tasks, the present claims use specific technical processes and techniques to achieve improved property classification rather than merely automating human classification tasks. The claim requires "specific features" and "specific technical implementations" that parallel the "specific... rules defining outputs based on timing" that rendered the McRO claims eligible.”
“In addition, like the claims in McRO, the present claims do not preempt all ways of determining property asset types. Rather, they are limited to the specific technical implementation involving the particular combination of feature extraction methods, embedding generation, statistical modeling, and classifier training recited in the claims. These specific technical elements place the claims squarely within the realm of patent-eligible subject matter under McRo and its progeny.” The Examiner respectfully disagrees.
Contrary to the remarks, the limitations recited in claim 1 are substantially different from the claims in McRO. In McRO the courts held eligibility of the claims to use specific computer techniques different from those humans use on their own to produce natural seeming lip motion for speech. Rather, the claimed invention uses generic computer technology to perform data reception, analysis, update, and processing and does not recite an improvement to a particular computer technology. As such, claim 1 covers mental tasks and mathematical calculations for classifying real estate property data, which is subject matter that falls within the groupings of abstract ideas. The remarks regarding preemption have already been addressed above. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Moreover, similar to the claims in Desjardins, the claims provide for an improvement to the functionality of machine learning models themselves. The technical field of machine learning cannot be directly or generically applied to data about properties. Instead, the field of machine learning faces specific problems based on the real-world collection and use of data about properties. These problems are addressed in the Specification and the improvements to the field of machine learning are provided in the claimed invention. In particular, the claims provide for a highly-specific set of steps for extracting features, training a set of binary classifiers using the features, and determining an asset type using the trained binary classifiers and a one-versus-rest model.”
“More specifically, as provided in the Specification, the underlying data is sourced from various databases that have dissimilar types of data and store the data in different formats, thus requiring the claimed set of feature extraction steps that must each be customized to the specific type of data sought to be extracted. See Specification, para. [0040]. This problem faced by the technical field and the improvement thereto is provided by the set of steps for extracting features. Further, the binary classifiers must be able to scale from millions of data points, be parallelizable, run fast, and use low amounts of memory and the training of the binary classifiers must also be able to scale to millions of data points and handle missing values. This problem faced by the technical field and the improvement thereto is provided by the training of the set of binary classifiers. As can be seen, the technical field of machine learning faces specific problems when applied to data related to property. The claimed invention addresses these specific problems and presents an improvement to the field of machine learning to enable the technology of machine learning to be properly applied to data related to property. As such, like Desjardins, the claimed invention is directed to an improvement in computer functionality. Applicant respectfully asserts that such actions are clearly a practical application into which the concepts in amended independent claims 1, 8, and 15 are integrated and are not "no more than adding insignificantly extra-solution activity to the judicial exception". As such, the claims are not "directed" to an abstract idea, and the rejection should be withdrawn.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A-Prong Two of the two part analysis. The clamed invention is distinguishable from the claims discussed in the Ex Parte Desjardins court decision because the court decision used support from the Specification and reflected in the claim technical improvements in the manner AI functions or operates. The claimed invention does not mirror the factual patterns discussed in this court decision. Thus, the Desjardins court decision is not applicable to the claimed invention and cannot be relied upon to support eligibility.
Next, the mere combination of data sources, however, does not make the claims patent eligible. See Fairwarning IP, LLC v. Iatric Systems, Inc. The courts have previously held, "merely selecting information, by content or source, for collection, analysis, and [announcement] does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from 101 undergirds the information-based category of abstract ideas." The set of steps for extracting features are part of the abstract idea recited in claim 1 and are mental processes for parsing and comparing data rather than improvements to a technical field as disputed by Applicant.
The cited passage of [¶ 0040] from the Applicant’s remarks has been reproduced below here: [Data is collected from various databases. The various databases may have dissimilar types of data and store the data in different formats. Thus, the asset inferring system may use multiple feature extraction components for different types of features and for different databases. The feature extraction components are necessary for both model training and also run in production. In some cases, subroutines perform more complex or lengthy feature extraction, as in the case of NAICS and SIC code feature extraction, in the case of legal description feature extraction, and in the case of multi-parcel asset type feature extraction.] The support from the Specification sets forth a technical problem a conclusory manner.
As to the data being operated upon or extracted, “even if a process of collecting and analyzing information is limited to a particular content” that limitation does not make the collection and analysis other than abstract. Although, the recited binary classifiers are trained, i.e., updated, in the claim, there are no technical details as to how the training being performed improves the manner in which the binary classifiers operate. The claims call for generic use of binary classifiers [see Spec. ¶ 0062-0064] in the manner such models ordinarily operate. Simply reciting particular technological modules or pieces of equipment in a claim to aid in performing the abstract idea does not confer eligibility. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Because this approach considers all claim elements, the Supreme Court has noted that "it is consistent with the general rule that patent claims 'must be considered as a whole."' [citation omitted] Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim". MPEP § 2106. The Examiner has failed to consider the additional elements as a whole. For example. See MPEP § 2106(I)(B). As such, Step 2B of the Mayo/Alice Test can be answered with a "yes", and the rejection should be withdrawn. In view of the above, Applicant respectfully asserts that the Examiner has failed to establish a prima facie case of patent ineligibility under 35 U.S.C. § 101, and respectfully requests withdrawal of the rejection.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2B. It is important for Applicant to note the present rejection has been updated in view of the amendments to the independent claims. The last Office Action sufficiently articulated the basis for the rejection and thus established a prima facie case of patent ineligibility. On pgs. 6-7 of the last Office Action, the Examiner made explicit findings with reasoning as to the additional elements of "a processor in communication with a memory", "by the processor", "North American Classification System (NAICS)", "a NAICS database", "to a model", "from the model", "applying a term frequency-inverse document frequency algorithm", "training a set of binary classifiers", "the binary classifiers", "wherein training comprises: training each of the binary classifiers", "to a one-versus-rest model and the set of binary classifiers", "a computing system", "a processing server", "the processing server", "a non-transitory computer readable storage medium, with a processor in communication with a memory through a bus, having data stored therein representing a software executable by a computer, the software comprising instructions that, when executed, cause the computer to perform:" - see claims 1, 8, and 15 are recited at a high-level of generality and add the words “apply it” (or an equivalent) with the judicial exception or mere instructions to implement an abstract idea on a computer. See MPEP 2106.05. Taking each of the claim elements individually and as an ordered combination, the previous rejection concluded the additional elements are not indicative of integration into a practical application and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. For these reasons, the rejections under 101 are being maintained.
Conclusion
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/EHRIN L PRATT/Examiner, Art Unit 3629 /SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629