DETAILED ACTION
This communication is a Non-Final Office Action on the merits in response to communications received on 11/20/2025. Claims 1, 13, and 19 have been amended. Therefore, claims 1-20 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/20/2025 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
4. Under Step 1 of the two-part analysis from Alice Corp, claims 1 and 19 recite a machine (i.e., a concrete thing, consisting of parts, or of certain devices and combination of devices). Claim 13 recites a process (i.e., an act or step, or a series of acts or steps). Thus, each of the claims fall within one of the four statutory categories.
5. Under Step 2A – Prong One of the two-part analysis from Alice Corp, the claimed invention recites an abstract idea.
Claims 1, 13 and 19 recite:
“assess, manage, and display data relating to a list of brownfield assets;”, “store information related to the list of brownfield assets;”, “provide interactive assessment of the list of brownfield assets and/or automated comparison to relevant best practices and/or prior brownfield projects stored;”, identify errors and/or problems; “wherein the list of brownfield assets includes brownfield assets;”, “predict outcomes for investment opportunities and/or provide indications and/or warnings based on the prior brownfield projects;”, “generate a salient-facts memorandum based on data compiled”, “analyzes information related to at least one brownfield asset on the list of brownfield assets and at least one previous brownfield asset;”, “wherein the information related to at least one brownfield asset is extracted and aggregated, and matched to existing data or project files;”, wherein the analysis includes extracting property variables and matching the property variables to internal data extracted from the internal data sources;”, “wherein, based on at least one preset threshold, generate an investment recommendation based on the analysis and the matched data or project files;”, “store input data relating to the list of brownfield assets;”, “search and sort the stored input data based on brownfield information categories to generate a filtered selection of brownfield assets;”, “and communicate the stored input data to an internal or external entity.”
6. The limitations as drafted are processes under the broadest reasonable interpretation recite certain methods of organizing human activity and mental processes but for the recitation of generic computer components. That is, other than reciting: “a system”, “at least one computer constructed and configured to”, “at least one memory and database operable to”, “a methodology, approach, process (MAP) system operable to”, “an internet-based dashboard operable to”, “an environmental management system (EMS) operable to automatically”, “a web crawler in network communication with the at least one computer”, “wherein the MAP system is operable to”, “automatically compiled by the web crawler”, wherein the EMS includes automation and visualization tools to”, “wherein the at least one computer”, “at least one external database”, “from internal data sources”, “within the at least one memory and database”, “from the external database”, “the at least one computer is operable to”, “a graphical interface hosted on the at least one computer, wherein the graphical interface is operable to”, “in the at least one memory and database” – see claims 1, 13, and 19, nothing in the claim elements precludes these steps from falling within the certain methods of organizing human activity and mental processes groupings enumerated in MPEP 2106.05(a)(2)
The Applicant’s specification in at least ¶ [0002] The present invention relates to assessment for investing in the remediation and/or redevelopment of real estate, and more particularly, to automated optimization of assessing, remediating and redeveloping brownfield real estate.
.
The limitations recite mental processes necessary to carry out an evaluation of brownfield assets. The evaluation encompasses collecting and comparing known information relating to brownfield assets in order to aid with investment decisions which are limitations that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper. Also, the series of steps recite generating an investment recommendation for brownfield real estate assets, steps a user may follow to search/retrieve data regarding brownfield assets, and communicating data with an internal/external entity which are concepts that may be reasonably characterized as a fundamental economic practices or commercial interactions (i.e., marketing or sales activities, business relations), or managing personal behavior or interactions between people. Accordingly, the claim recites an abstract idea.
7. Under Step 2A – Prong Two of the two-part analysis from Alice Corp, this judicial exception is not integrated into a practical application because the additional elements of: “a system”, “at least one computer constructed and configured to”, “at least one memory and database operable to”, “a methodology, approach, process (MAP) system operable to”, “an internet-based dashboard operable to”, “an environmental management system (EMS) operable to automatically”, “a web crawler in network communication with the at least one computer”, “wherein the MAP system is operable to”, “automatically compiled by the web crawler”, wherein the EMS includes automation and visualization tools to”, “wherein the at least one computer”, “at least one external database”, “from internal data sources”, “within the at least one memory and database”, “from the external database”, “the at least one computer is operable to”, “a graphical interface hosted on the at least one computer, wherein the graphical interface is operable to”, “in the at least one memory and database” – see claims 1, 13, and 19 are all recited in the specification [Fig. 1, ¶ 0046-0048] at a high-level of generality. Thus, because applicant’s specification describes these additional elements in general terms, without describing the particulars, the claim limitations may be broadly but reasonably construed as reciting generic computer components and functionalities in light of the disclosure. These claimed additional elements merely recite the words "apply it" (or an equivalent) with the judicial exception, or merely include 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)
The other additional element of: “retrieve and display the stored input data relating to the filtered selection of brownfield assets” and “provide…financial data for the list of brownfield assets” merely adds insignificant extra-solution activity to the judicial exception, [i.e., data output, presentation of formatted information], as discussed in MPEP 2106.05(g).
The other additional elements of: “for assessment of brownfield real estate assets comprising:”, “remote”, “real-time” is/are an attempt to limit the claimed invention 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.
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 system”, “at least one computer constructed and configured to”, “at least one memory and database operable to”, “a methodology, approach, process (MAP) system operable to”, “an internet-based dashboard operable to”, “an environmental management system (EMS) operable to automatically”, “a web crawler in network communication with the at least one computer”, “wherein the MAP system is operable to”, “automatically compiled by the web crawler”, wherein the EMS includes automation and visualization tools to”, “wherein the at least one computer”, “at least one external database”, “from internal data sources”, “within the at least one memory and database”, “from the external database”, “the at least one computer is operable to”, “a graphical interface hosted on the at least one computer, wherein the graphical interface is operable to”, “in the at least one memory and database” – see claims 1, 13, and 19, amount to no more than mere instructions in which to apply the judicial exception and does not provide an inventive concept. Thus, at Step 2B the claim(s) are ineligible.
The other additional element of: “retrieve and display the stored input data relating to the filtered selection of brownfield assets” and “provide…financial data for the list of brownfield assets” was 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 Communications, OIP Techs court decisions cited in MPEP 2106.05(d)(II) indicated: “presenting offers and gathering statistics” and “receiving or transmitting data over a network” is well-understood, routine, conventional activity. Thus, at Step 2B the claim(s) are ineligible.
Dependent claims include 2-12, 14-18, and 20.
Claims 2, 14, and 20 recite “wherein the EMS is accessible through the graphical interface.” which is recited at a high-level of generality. Merely using a computer as a tool to perform the abstract idea does not integrate a judicial exception into a practical application. See MPEP 2106.05(f) Claims 3 and 15 recite “wherein the at least one computer outputs the information related to the at least one brownfield asset on the list of brownfield assets and the at least one previous brownfield asset in a digital spreadsheet, including the analyzed information, wherein the digital spreadsheet is searchable and editable.” which adds insignificant extra solution activity to the abstract idea, i.e., data output, as discussed in MPEP 2106.05(g). Claims 4 and 16 recite “wherein a budget is automatically generated from the information corresponding to the at least one of the brownfield assets; further comprising automatically generating a budget from the documents and the budget information relating to the at least one of the brownfield assets” which further narrows how the abstract idea may be performed but does not make the claim any less abstract. Claims 5 and 17 recites “wherein an administrator user account is operable to assign and manage tasks relating to the at least one brownfield asset on the list of brownfield assets” which further narrows how the abstract idea may be performed but does not make the claim any less abstract. Claims 6 and 18 recites “wherein the information for each of the at least one brownfield asset on the list of brownfield assets is stored in a corresponding project file with a Global Deal ID” which further describes the data/information recited in the abstract idea but does not make the claim any less abstract. Claim 7 recites “wherein the graphical interface is further operable to store vendor data, wherein the vendor data includes fields for at least names, phone numbers, email addresses, physical addresses, and a list of involved projects” which further describes the data/information recited in the abstract idea but does not make the claim any less abstract. The graphical user interface is an additional element that operates in its normal capacity to store/retrieve data. Claim 8 recites “wherein the brownfield assets compiled by the web crawler are automatically screened by an automatic screening tool before being added to the list of brownfield assets, wherein the automatic screening of the brownfield assets compiled by the web crawler results in a decision regarding whether each brownfield asset passes the automatic screening, fails the automatic screening, or requires further investigation, wherein passing the automatic screening means the brownfield asset is added to the list of brownfield assets and failing the automatic screening means the brownfield asset is not added to the list of brownfield assets.” which further narrows how the abstract idea may be performed but does not make the claim any less abstract. The additional elements of a web crawler and automatic screening tool are merely generic computer components being used to perform the abstract idea. Claim 9 recites “wherein the brownfield assets compiled by the web crawler are automatically screened by an automatic screening tool, wherein the automatic screening of the brownfield assets compiled by the web crawler is based on quality control information for the property, wherein the quality control information for the property includes location, zoning, public and/ media opinion on development in the location, lender availability, type of environmental contamination or pollution, use restrictions imposed by remediation requirements, wildlife habitat, flood plain, airport proximity, topographical data, historical structures or areas, easements, and/or need for regulatory approval for development for the property.” which further narrows how the abstract idea may be performed and describes the data/information recited in the abstract idea but does not make the claim any less abstract. Claim 10 recites “wherein the web crawler automatically provides quality control information for each brownfield asset” which further narrows how the abstract idea may be performed and describes the data/information recited in the abstract idea but does not make the claim any less abstract. Claim 11 recites “wherein the brownfield assets compiled by the web crawler are automatically screened by an automatic screening tool, wherein an automatic alert message is generated after the automatic screening of the brownfield assets compiled by the web crawler, wherein the automatic alert message includes a decision of the automatic screening for each brownfield asset.” which further narrows how the abstract idea may be performed and describes the data/information recited in the abstract idea but does not make the claim any less abstract. Claim 12 recites “wherein the brownfield assets compiled by the web crawler are automatically screened by an automatic screening tool, wherein if the automatic screening tool determines that further investigation is required for a particular brownfield asset and a particular brownfield asset is determined to have failed in a further investigation, then the automatic screening tool is updated with a quantifiable factor regarding the decision to fail the particular brownfield asset, wherein the quantifiable factor is included in the automatic screening for subsequent brownfield assets.” which further narrows how the abstract idea may be performed and describes the data/information recited in the abstract idea but does not make the claim any less abstract. Therefore, the claims do not add any meaningful limitations and the computer components of these limitations are no more than mere instructions to apply the exception using the generic computer components. Accordingly, the dependent claims do not provide an inventive concept or integrate the abstract idea into a practical application.
Response to Arguments
Applicant's arguments filed 20 November 2025 have been fully considered but they are not persuasive.
With Respect to Rejections Under 35 USC 101
Applicant argues “Step 2A: Prong One The claim does not recite a judicial exception The Office Action states, on pages 7, that a judicial exception is recited in claim 1. Specifically, the Office Action states on Page 5, that a judicial exception is not integrated into a practical application because elements are described in general terms, and thus the limitations may be broadly but reasonably be construed as reciting generic computer components and functionalities. Applicant respectfully disagrees. Specifically, the Office Action alleges on Page 4, that "[t]he limitations recite mental processes necessary to carry out an evaluation brownfield real estate assets...which are limitations that can be practically performed in the human mind, with or without the use of a physical aid" and "[a]lso the series of steps recite generating an investment recommendation for brownfield real estate assets... which are concepts that may be reasonably characterized as fundamental economic practices." Applicant respectfully disagrees. The claimed invention is not a method of organizing human activity or mental process, simply a recitation of fundamental economic practices but is rather inextricably tied to computer technology. The claimed invention is inextricably tied to computer technology Applicant respectfully submits that the claimed invention is not directed to an abstract idea, but is rather inextricably tied to computer technology.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A Prong One of the two-part analysis. The arguments are unpersuasive because Applicant does not address and substantively traverse the Examiner’s specific findings. [See Final Act., pg. 3]. The Applicant’s own remarks also concede the claimed invention recites fundamental economic practices. Thus, while the claimed invention may in fact require that the claimed data relate to "transactions or activities that are executed in the computer environment," limiting the claims to the computer field does not alone transform them into a patent-eligible application. See Alice, 134 S. Ct. at 2358. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Guidance on Alice provided by the Federal Circuit case DDR Holdings Significantly, the Federal Circuit held in a comparable case that the claims were directed toward patentable subject matter. Applicant asserts that the claimed invention is not directed towards an abstract idea under DDR Holdings, LLC v. Hotels.com, L.P., Appeal No. 2013-1505 (Fed. Cir. Dec. 5, 2014). In DDR Holdings, the Federal Circuit found patent eligible claims addressed to creating a composite webpage to display a third party vendor's webpage embedded within a host's website in a way that maintains the illusion that the user is viewing content native to the host's website.
“Using the first step of the Alice test, the court found that the claims at issue were not an abstract idea. The "claims do not recite a mathematical algorithm. Nor do they recite a fundamental economic or longstanding commercial practice. Although the claims address a business challenge ... it is a challenge particular to the Internet." DDR Holdings at 19.”
Under the second step of the Alice test, the court ruled the claims at issue to be patent eligible because "they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." DDR Holdings (emphasis added).” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A Prong One of the analysis. In the instant case, Applicant has not discussed how the asserted claims propose a solution or overcome a problem "specifically arising in the realm of computer [technology]." DDR Holdings, 773 F.3d at 1257. At most, the claims require that these processes be executed on a generic computer. But, "after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible." Id. at 1256 (citing Alice, 134 S. Ct. at 2358). Thus, DDR has no applicability because the cited court decision does not support applicant’s position. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Guidance provided by the USPTO in Examples: Abstract Ideas and in the July 2015 Update The Federal Circuit's interpretation of Alice in DDR Holdings was affirmed by the USPTO in the document titled Examples: Abstract Ideas, which was published by the USPTO in conjunction with the 2014 Interim Guidance. Example 1 includes a computer-implemented method for protecting a computer from an electronic communication containing malicious code. The USPTO provides that "the invention claimed here is directed towards performing isolation and eradication of computer viruses, worms, and other malicious code, a concept inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract." Examples: Abstract Ideas at 3.
Example 23 of the July 2015 Update also provides that a computer-implemented method for dynamically relocating textual information within an underlying window displayed in a graphical user interface is inextricably tied to computer technology. "The claim does not recite a basic concept that is similar to any abstract idea previously identified by the courts. For example, the claim does not recite any mathematical concept or a mental process such as comparing or categorizing information that can be performed in the human mind, or by a human using a pen and paper. Accordingly, the claim does not set forth or describe an abstract idea. Instead, the claimed method is necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces. Additionally, the claim does not recite any other judicial exception. Therefore, the claim is not directed to a judicial exception (Step 2A: NO). The claim is patent eligible." July 2015 Update at 9.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A Prong One of the analysis. The cited examples were directed to specific technological improvements, whereas the present claims are directed to applying an abstract idea with generic computing components. At best, the remarks make conclusory statements that the claims are inextricably tied to computer technology, but this does not make the claimed invention or render the claims non-abstract. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Rather, the claims address a challenge particular to providing remote, interactive assessment of a brownfield asset and automating comparison. Under the second step of the Alice test as implemented in DDR Holdings, the claims of the present invention are patent eligible because they do not merely recite the performance of a system relating to brownfield investment known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. More specifically, the claimed invention is necessarily rooted in computer technology because it provides an automated dashboard for a user to see financial data related to brownfield assets and generates a salient-fact memo based on data from other systems in the claimed invention in real time.
Paragraph [00107] of the application as filed states that there is a "longstanding unmet need in the industry for providing automated, networked, and real-time access to templates and tools developed and refined over 20 years project experience,"... "for saving time, helping to avoid mistakes by individuals, reducing expenses and/or risk and improving safety." Therefore, the specification specifically states deficiencies in existing computer technology's failure to automate, in real-time, data processing, transmission, and display of data relating to brownfield investments. The claimed invention solves these deficiencies by providing an internet-based dashboard populated with real-time data for potential deals as well as existing assets. The dashboard aggregates information from large quantities of often disparate sources to provide financial data to a user very quickly. This allows for a "snapshot" of the market at a given moment to be provided to a user.
In the time between finding individual brownfield asset opportunities, market conditions frequently shift. Therefore, real-time aggregated data from disparate data sources is essential to investing parties for making accurate investment decisions in a rapidly evolving market. Paragraph [0083] of the application as filed states "[b]eneficially, the present invention provides systems and rules that direct investment decisions through a standardized process that provides streamlined, accurate management, recording, and monitoring," and "[t]his process is one that was not available before computer technology, as the combination of analytical features with other interactive components provides a tool that makes concrete investment decisions and suggestions that are not dependent upon subjective processes." Manually compiling financial information from disparate data sources is a subjective process, the compiler must manually pick and choose which data sources to take financial information from, which may lead to relevant financial data being omitted. Furthermore, the systems of the claimed invention communicate with one another to provide real-time summaries of potential investment decisions such that prospective deals may be analyzed quickly and accurately. Paragraph [0034] states "[d]uring the assessment or "pre closing" phase, a deal assessment or an investment assessment is analyzed based upon ...salient facts represented in a memo" and "a salient facts memo includes factors such as property description essential for identification, environmental evaluation" Paragraph [0037]. The salient facts memo is generated through the compilation of data from systems in the claimed invention, including the EMS, during the pre-acquisition phase of the investment process. FIG.2 shows the EMS system generating a preliminary environmental review such that a "summary of perceived or actual, current, or historic environmental impacts and remediation requirements" Paragraph [0036] are included on the salient facts memo. The system then analyzes the salient-facts memo to determine if the user should move into the active deal phase,
as shown in FIG. 3. Therefore, providing an internet-based dashboard and generating a salient-facts memo based on data from other systems in the claimed invention provides a solution to overcome a problem specifically arising in the realm of computer networks.
Thus, Applicant submits that claim 1 is at least eligible under Prong One.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A Prong One of the two-part analysis. The courts have previously held that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology. In those cases, "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." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions.").
Same is the case here, the claims describe the automation of the fundamental economic concept of brownfield evaluation. The claimed invention's "internet-based dashboard”, does not amount to an improvement in computer technology [See Spec. ¶ 0041]. The dashboard is discussed in a general manner as it behaves in its normal or ordinary capacity to present information. In regards to the disparate data sources, "collecting information, including when limited to particular content (which does not change its character as information), is within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353 The claims in this case specify the type of information, i.e., financial, salient facts, investment decisions, desired to be gathered, analyzed, and displayed, including in "real time", but they do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely generic technology. Therefore do not state an arguably inventive concept in the realm of application of the information-based abstract ideas. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Step 2A: Prong Two The claimed invention is not directed to an abstract idea under Trading Technologies. Assuming, arguendo, that the claimed invention is directed to an abstract idea, the claimed invention includes an inventive concept sufficient to transform any allegedly abstract idea into patent eligible subject matter under 35 U.S.C. 101. Guidance provided by Trading Technologies The Federal Circuit determined in Trading Technologies v. CQG that a method for displaying market information and trading on a graphical user interface was not directed to an abstract idea. Like the technology at issue in DDR Holdings, the technology of computerized trading has no pre-electronic trading analog. The claimed invention in Trading Technologies also does not merely involve the implementation of a known procedure on a conventional computer. Rather, the claimed invention solves problems specific to prior art graphical user interfaces for computerized trading, improving upon the speed, accuracy, and usability of the prior art interfaces.
Additionally, the Federal Circuit determined that even if the claimed invention was directed to an abstract idea, the claimed invention recites the inventive concept of a static price index. The static price index is an inventive concept that allows traders to more efficiently and accurately place trades using the electronic trading system. Application of Guidance provided by Trading Technologies
Similarly, the claimed invention represents an improvement to the field of brownfield investments. Like the technology of computerized trading, this technology has no pre-electronic analog. The claimed invention also does not merely involve the implementation of a known procedure on a conventional computer. Rather, the claimed invention solves problems specific to brownfield investment in a rapidly evolving market. This improves the speed of collecting financial data for brownfield asset investment, which is important in a rapidly changing market. Applicant further argues “Assuming, arguendo, that the claimed invention is directed to an abstract idea, the
claimed invention recites the inventive concept of compiling financial data from a plurality of devices to provide a user with financial data for potential deals or brownfield assets. Paragraph [0041] of the application as filed states "[a]n internet or intranet-based dashboard is utilized to provide financial data for potential deals as well as existing assets and portfolios. The dashboard is populated with real time data and is updated in real-time, with the real-time data coming from a multiplicity of devices connected to the intranet or internet." This inventive concept provides for real-time accumulation of financial data, which allows a user to analyze the financial data behind a potential deal as well as existing assets and portfolios very quickly. The real-estate market is rapidly changing, and viewing opportunities based on an old market scenario may bias a potential deal and produce less favorable results.
The Federal Circuit determined in Trading Technologies v. CQG, "that the challenged claims recite an 'inventive concept.' The court observed that Step 2 "requires something different than pre-AIA §§ 102 and 103." Dist. Ct. op. at 8. The court identified the static price index as an inventive concept that allows traders to more efficiently and accurately place trades using this electronic trading system. The court distinguished this system from the routine or conventional use of computers or the Internet and concluded that the specific structure and concordant functionality of the graphical user interface are removed from abstract ideas, as compared to conventional computer implementations of known procedures." Trading Techs. Int'l, Inc. v. CQG, INC., 675 F. App'x 1007-1008 (Fed. Cir. 2017). Therefore, under Trading Technologies v. CQG, the internet-based dashboard of the present invention does recite an inventive concept. As the claimed invention recites an inventive concept, Applicant respectfully submits that the claims of the present application are directed to patent eligible subject matter under 35 U.S.C. 101.” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2A Prong Two of the two part analysis. The remarks indicate the claimed invention has no pre-electronic analog, however, the asserted claims in this case do not even require a new source or type of information, or new techniques for evaluating the brownfield investment decisions. Nothing in the claims, understood in light of the specification [Fig. 1, ¶ 0046-0048], requires anything other than off-the-shelf, computer components, network, and display technology for gathering, sending, and presenting the desired information. the Examiner asserts that the instant invention does not describe any new computing device or network and “fails to provide any technical details for the tangible components, but instead predominately describes the system and methods in purely functional terms. In this case the claims' invocation of computers, networks, and displays does not transform the claimed subject matter into patent-eligible application. The cited guidance from Trading Technologies does not support Applicant’s position. The present claims do not recite a comparable technological improvement. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Step 2B: The claimed invention includes an inventive concept under Berkheimer and April 2018 USPTO Memo Titled "Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" The Federal Circuit determined that "whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination" in the recent case Berkheimer v. HP Inc., 881 F.3d. 1360, 1369 (Fed. Cir. 2018). "Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art." Id. The Federal Circuit found claims 4-7 of the patent at issue (U.S. Patent No. 7,447,713) to be directed to the abstract idea of parsing, comparing, storing, and editing data. Id. at 1367.
However, the Federal Circuit also determined that claims 4-7 may include one or more inventive concepts such that claims 4-7 are directed to patent eligible subject matter. Claim 4 recites the additional step of "storing a reconciled object structure in the archive without substantial redundancy." Claim 5, which is dependent on claim 4, further recites the step of "selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items." The '713 patent specification explains how these claimed features improve efficiency and computer functionality over prior art systems: By eliminating redundancy in the archive 14, system operating efficiency will be improved, storage costs will be reduced and a one-to-many editing process can be implemented wherein a singular linked object, common to many documents or files, can be edited once and have the consequence of the edit process propagate through all of the linked documents and files. The one-to-many editing capability substantially reduces effort needed to up-date files which represent packages or packaging manuals or the like as would be understood by those of skill in the art.
'713 patent, col. 16, 11. 52-60.
The Federal Circuit determined that "the improvements in the specification, to the extent they are captured in the claims, create a factual dispute regarding whether the invention describes well-understood, routine, and conventional activities." Berkheimer, 881 F.3d. at 1369. While claim 1 "failed to transform th[e] abstract idea into a patent-eligible invention," claims 4-7 "contain limitations directed to the arguably unconventional inventive concept described in the specification. at 1370. "This one-to-many functionality is more than 'editing data in a straightforward copy-and- paste fashion,' as characterized by the district court." Id. According to the specification, conventional digital asset management systems cannot perform one-to-many editing because they store documents with numerous instances of redundant elements, rather than eliminate redundancies through the storage of linked object structures." Id. (citing '713 patent at 1:22-55, 4:4-9, 16:52-60). "These claims recite a specific method of archiving that, according to the specification, provides benefits that improve computer functionality." Id. at 1370. The Federal Circuit concluded that "there is at least a genuine issue of material fact in light of the specification regarding whether claims 4-7 archive documents in an inventive manner." Id."
Whether claims 4-7 perform well-understood, routine, and conventional activities to a skilled artisan is a genuine issue of material fact making summary judgment inappropriate with respect to these claims." Id. In a memo issued on April 19, 2018, the USPTO ordered changes in 101 examination procedure based on Berkheimer. Specifically, the USPTO's position is that "an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing" with written evidence that these improvements are not well-understood, routine, or conventional. Memorandum - Revising 101 Eligibility Procedure in view of Berkheimer v. HP, Inc. (issued April 19, 2018).
Application of Guidance provided by Berkheimer & USPTO based on the guidance provided by Berkheimer, Applicant respectfully submits that assuming arguendo, the claimed invention is directed to an abstract idea, the claimed invention recites one or more inventive concepts as claimed through one or more claim limitations that are not well-understood, routine, or conventional in the art. Specifically, the claimed invention provides optimized automated assessment, remediation and redevelopment of brownfield real estate properties. Like the claimed invention at issue in Berkheimer, these are improvements over the prior art. Moreover, the specification of the present application explains how these claimed limitations improve upon the prior art. Paragraph [0083] of the specification recites, "[t]he processes and systems described herein are a significant improvement to the current process of brownfield investment. Brownfield investment has traditionally been focused on "optimistic" or "creative" approaches to investment leads, which leaves the investment with an unclear probability of success. These subjective approaches involve an artistic and experienced evaluator manually compiling the facts, information, and statistics about potential sites and deciding whether or not to invest based on intuition. In addition, the investment in projects as a result of this subjective process leads to projects that are driven and monitored by "inertia," or a focus on the projects that have significant interest or progress. Beneficially, the present invention provides systems and rules that direct investment decisions through a standardized process that provides streamlined, accurate management, recording, and monitoring. The ordered combination of the system components and method steps provides an inventive, non-obvious process for brownfield investment through implementation of components that allow for documentation, approval, and collaboration features that provide a specific process to brownfield investments. This process is one that was not available before computer technology, as the combination of analytical features with other interactive components provides a tool that makes concrete investment decisions and suggestions that are not dependent upon subjective processes." Importantly, because the present invention provides a streamlined investment process, in part by the dashboard providing real-time financial data and the generation of a salient-facts memo based on data compiled in other systems within the claimed invention, there is a significant improvement to the current process of brownfield investment. These improvements are captured in the claims in the limitations referenced above. Thus, per the USPTO memo on Berkheimer, these improvements are "not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing" with written evidence that these improvements are not well-understood, routine, or conventional.
Applicant respectfully submits that the claimed invention should therefore be found directed to patent eligible subject matter under 35 U.S.C. § 101. The additional elements of the claims amount to significantly more, and therefore an inventive concept” The Examiner respectfully disagrees.
Contrary to the remarks, the claimed invention remains ineligible under Step 2B. The citations from the Berkheimer decision have been considered, however, they do not support applicant’s position. Even if the applicant alleges improvements over the prior art, the Examiner asserts that simply looking towards the specification [Fig. 1, ¶ 0046-0048] it is clear that the invention describes the computing components/environment as either performing basic computing functions such as sending and receiving data, or performing functions “known” in the art.
In other words, the claimed functions are “’well-understood, routine, activit[ies]’ previously known in the industry.” Id. at 2359 (quoting Mayo, 132 S. Ct. at 1294). That is to say, the computing components/environment simply provide the environment in which the abstract idea of brownfield investment evaluation is carried out. Further, as was stated in Alice 134 S. Ct. at 2360 “Nearly every computer will include a ‘communications controller’ and a ‘data storage unit’ capable of performing basic calculation, storage, and transmission functions required by the method claims.”); Content Extraction, 776 F.3d at 1345, 1348 (“storing information” into memory, and using a computer to “translate shapes on a physical page into typeface characters,” insufficient confer patent eligibility); Mortg. Grader, 811 F.3d at 1324-25 (generic computer components such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Intellectual Ventures I. 792 F.3d at 1368 (a “database” and a “communication medium” “are all generic computer elements”); BuySAFE v Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”) Thus, the ordered combination of limitations do not provide an inventive concept. For these reasons, the rejections under 101 are being maintained.
Applicant further argues “The Office Action alleges, on page 5, that the claimed invention does not include additional elements which are sufficient to amount to significantly more than the judicial exception. The Office Action further claims that the additional elements are recited at a high level of generality such that they amount to applying the judicial exception using generic computer components. Applicant respectfully disagrees. Applicant respectfully submits that the additional limitations of the claimed invention (including the internet-based dashboard and the generation of the salient facts memo), when read in combination, are not well-understood, routine, or conventional activities in the industry. Although some of the limitations of the present invention, when taken alone, may be found by the Examiner to be steps practiced in the prior art, "a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made" (Diamond v. Diehr,450 U.S. at 188, 209 USPQ at 9 (1981)).” 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 here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of data analysis steps based on selected information and the presentation of the results of those results (in the internet-based dashboard). No matter how much of an advance in the brownfield investment field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm.
Here, the asserted limitations that recite (i.e., generation of the salient facts memo) were part of the abstract idea discussed under Prong One of the analysis as these steps merely narrow how the abstract idea may be performed. The “internet-based dashboard” was considered an additional element and merely recites “apply it”(or an equivalent) or mere instructions to implement the judicial exception on a computer. See MPEP 2106.05(f) The claims at issue do not require any nonconventional computer, network, or display components, or even a "non-conventional and non-generic arrangement of known, conventional pieces," but merely call for performance of the claimed information collection, analysis, and display functions "on a set of generic computer components" and display devices. See Bascom, 827 F.3d at 1349-52 For these reasons, the rejections under 101 are being maintained.
Applicant further argues “Claim 13 For at least the reasons recited with respect to claim 1, claim 13 is directed to patent eligible subject matter under 35 USC 101. Claim 19 For at least the reasons recited with respect to claim 1, claim 19 is directed to patent eligible subject matter under 35 USC 101.” The Examiner respectfully disagrees.
Contrary to the remarks, claims 13 and 19 do not alter the previous analysis. These claims recite limitations substantially similar to the limitations recited in claim 1, therefore the claims are being held rejected under the same rationales. Accordingly, the rejections under 101 are being maintained.
Applicant further argues “The Rejection of the Dependent Claims is Overcome Because each of the dependent claims includes each of the recitations of a respective independent base claim, Applicant further submits that the dependent claims are patentably distinguishable from the cited references, taken alone or in combination, for at least those reasons discussed above. Accordingly, Applicant respectfully submits that the rejections of the dependent claims are overcome and the dependent claims are in condition for allowance.” The Examiner respectfully disagrees.
Contrary to the remarks, the rejection presents findings for each of the dependent claims, explaining why the limitations recited by these claims do not impart subject matter eligibility. Applicant’s reply does not persuasively challenge these findings. For these reasons, the rejections under 101 are be maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EHRIN PRATT whose telephone number is (571)270-3184. The examiner can normally be reached 8-5 EST Monday-Friday.
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, Lynda Jasmin can be reached at 571-272-6782. 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.
/EHRIN L PRATT/Examiner, Art Unit 3629
/JESSICA LEMIEUX/Supervisory Patent Examiner, Art Unit 3626