DETAILED ACTION
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.
2. Claims 21-25, 27-32, 34-35 and 37-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without being integrated into a practical application and do not include additional elements that amount to significantly more than the judicial exception.
Utilizing the two step process adopted by the Supreme Court (Alice Corp vs CLS Bank Int'l, US Supreme Court, 110 USPQ2d 1976 (2014) and the recent 101 guideline, Federal Register Vol. 84, No., Jan 2019)), determination of the subject matter eligibility under the 35 USC 101 is as follows: Specifically, the Step 1 requires claim belongs to one of the four statutory categories (process, machine, manufacture, or composition of matter). If Step 1 is satisfied, then in the first part of Step 2A (Prong one), identification of any judicial recognized exceptions in the claim is made. If any limitation in the claim is identified as judicial recognized exception, then proceeding to the second part of Step 2A (Prong two), determination is made whether the identified judicial exception is being integrated into practical application. If the identified judicial exception is not integrated into a practical application, then in Step 2B, the claim is further evaluated to see if the additional elements, individually and in combination, provide “inventive concept” that would amount to significantly more than the judicial exception. If the element and combination of elements do not amount to significantly more than the judicial recognized exception itself, then the claim is ineligible under the 35 USC 101.
Looking at the claims, the claims satisfy the first part of the test 1A, namely the claims are directed to one of the four statutory class, apparatus and method. In Step 2A Prong one, we next identify any judicial exceptions in the claims. In Claim 1 (as a representative example), we recognize that the limitations “compare the value with reference data, determine a refrigerant charge level of the HVAC system based on the value and the reference data, determine that the value of the operating parameters is within a tolerance range for a threshold time period during operation of the HVAC system to condition the air flow; and update the reference data to provide updated reference data in response to the determination that the value of the operating parameter is within the tolerance range for the threshold time period during operation of the HVAC system to condition the airflow” are abstract ideas, as they are directed to mental process. Similar rejections are made for other independent and dependent claims. With the identification of abstract ideas, we proceed to Step 2A, Prong two, where with additional elements and taken as a whole, we evaluate whether the identified abstract idea is being integrated into a practical application.
In Step 2A, Prong two, the claims additionally recite “one or more processors, and a memory comprising instructions executable by the one or more processors to cause the one or more processors to: operate the HVAC system to condition an air flow, receive data indicative of a value of an operating parameter of the HVAC system during operation of the HVAC system to condition the air flow,” “receive the data indicative of the value of the operating parameter from a sensor of the HVAC system”, “retrieve the reference data from a cloud database,” “store the updated reference data, wherein the memory is a components of a cloud-computing system remote from the HVAC system.” “store the updated reference data in the cloud database,” and “output an indication that the refrigerant charge level deviates from an expected refrigerant charge level in response to a determination that the value of the operating parameter is outside of the tolerance range,” but said limitations are recitation of general-purpose computer to implement the abstract idea, insignificant data collection activity, recited at high level of generality, insignificant storing of the desired data in a memory and insignificant post-solution activity of outputting the desired data, respectively. The claims do not improve the functioning of any processor, sensors, memory, and do not improve other technology. At most, the claims are an improved abstract idea of determining the charge level of the HVAC system. However, the improved or new abstract ideas are nonetheless abstract ideas, and not eligible under the 101. In short, the claims do not provide sufficient evidence to show that they are more than a drafting effort to monopolize the abstract idea. As such, the abstract ideas are not integrated into a practical application. Consequently, with the identified abstract idea not being integrated into a practical application, we proceed to Step 2B and evaluate whether the additional elements provide “inventive concept” that would amount to significantly more than the abstract idea.
In Step 2B, the claims additionally recite “one or more processors, and a memory comprising instructions executable by the one or more processors to cause the one or more processors to: operate the HVAC system to condition an air flow, receive data indicative of a value of an operating parameter of the HVAC system during operation of the HVAC system to condition the air flow,” “receive the data indicative of the value of the operating parameter from a sensor of the HVAC system”, “retrieve the reference data from a cloud database,” “store the updated reference data, wherein the memory is a components of a cloud-computing system remote from the HVAC system.” “store the updated reference data in the cloud database,” and “output an indication that the refrigerant charge level deviates from an expected refrigerant charge level in response to a determination that the value of the operating parameter is outside of the tolerance range,” but said limitations are recitation of general-purpose computer to implement the abstract idea, insignificant data collection activity, recited at high level of generality, insignificant storing of the desired data in a memory and insignificant post-solution activity of outputting the desired data, respectively, that are all well-understood, routine and conventional. As such, the claims do not provide additional elements that would amount to significantly more than the abstract idea.
In Summary, the claims recite abstract idea without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
Response to Arguments
Applicant's arguments filed 03/23/2026 have been fully considered but they are not persuasive.
The Section 101 provides that anyone who “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. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize “the basic tools of scientific and technological work.” Gottschalk vs Benson, 409 US 63, 67, 93 S. Ct. 253, 34 L. Edd. 2d 273 [175 USPQ 673] (1972)). Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Alice, 134 S. Ct. at 2354.
The 101 subject matter eligibility analysis begins with the claimed language (see Synopsis vs Mentor Graphics, 120 USPQ2d 1473 839 F.3d 1138 (Fed. Cir. 2016), Id., at 1481 “The 101 inquiry must focus on the language of the Asserted Claims themselves.”), followed by identifying the focus or underlying invention (see Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 [103 USPQ2d 1425] (Fed. Cir. 2012), Id., at 1431-1432, “Subsequently, however, we explained in CyberSource Corp. v. Retail Decisions, Inc. that we look not just to the type of claim but also “to the underlying invention for patent-eligibility purposes.” 654 F.3d 1366, 1374 [99 USPQ2d 1690] (Fed. Cir. 2011). Looking at the claims in the instant application, the claimed invention is an abstract idea of “updating of the generic reference data”. Specifically, the limitations, including “compare the value with reference data, determine a refrigerant charge level, determine that the value of the operating parameter is within a tolerance range….and update the reference data….,” are limitations that involves mental process. Additionally, the claims do not recite any complexity that would prevent performing the mental process, under the BRI.
Here, we note that the Supreme Court has emphatically rejected the idea that claims become patent eligible simply because they disclose a specific solution to a particular problem (Supreme Court, Alice Corp v CLS Bank Int’l, 110 USPQ 2d 1976 at 1985; DDR Holding, 773 F.3d at 1265)). In other words, even the claims reciting specific abstract ideas for “updating of the generic reference data” would not have made the claims eligible under 35 USC 101 on their own.
Additionally, note that the novelty of the abstract idea itself, also does not cure in overcoming the 101 rejection (see Flook, In Gottschalk vs Benson, Id., at 195, “we held that the discovery of a novel and useful mathematical formula may not be patented,” Indeed, the novelty of the mathematical algorithm is not a determining factor at all.”). This means that any novelty or non-conventionality in the abstract idea of “updating of the generic reference data” will not be a determining factor. New abstract idea is still an abstract idea (see Synopsis, 839 F.3d 1138, 120 USPQ2d, 1473 (2016), Id., at 1483, “a claim for a new abstract idea is still an abstract idea. The search for a 101 inventive concept is thus distinct from demonstrating 102 novelty.”).
Having said that, the subject matter eligibility analysis continues with the examination of the additional elements with respect to the practical application and significantly more criteria. Looking at the claimed invention, the claims additionally recite
“sensor”,” but said limitation is are merely directed to insignificant data collection activity, recited at high level of generality that are also well-understood, routine and conventional. In fact, the claims do not even identify the kind of sensor that is involved in the implementation of the identified abstract idea. The claims additionally recite “processor and memory, wherein the memory is a component of a cloud-computing system remote from the HVAC system”, but said limitations are merely directed to a general-purpose computer and memory for processing the collected data and storing the resulting processed data that are also well-understood, routine and conventional. Furthermore, nothing in the claims, understood in light of the original disclosure, requires anything other than off-the-shelf, conventional sensor, general-purpose computer and memory for collecting data, analyzing and obtaining the desired information and storing of data (unlike Thales 85- F.3d 1343, 121 USPQ2d 1898 (2017), Id., at 1898 where the inertial sensors are used in non-conventional manner for measuring position and orientation).
Furthermore, the claims do not improve the functioning of any machines. The claims in the instant application with the sensor, processor and memory, the focus of the claims is not on such an improvement in said sensors, processor and memory as tools (as in Enfish), or focused on a specific asserted improvement in “updating of the generic reference data”, in non-abstract way (or improvement in computer animation in non-abstract way, without animators able to do to same, as in McRo), but on certain independently abstract ideas that use those sensor, processor and memory as tools. In other words, the Applicant is basically claiming the algorithm itself.
Furthermore, the claims also do not improve any technology under the practical application criteria, as the claims themselves do not recite any improvement. Further explaining, the claims simply implement the abstract idea of comparing some generic operating parameter, determine the refrigerant level, and based on the comparison of the generic operating parameter to threshold, updating some generic reference data thereafter. Consequently, how does updating some generic reference data an improvement to technology? At most, the claims are an improvement in the abstract idea of updating of the generic reference data. However, improved or new abstract idea is still an abstract idea, and not eligible under the 101. As such, the abstract idea is not integrated into a practical application.
Finally, limiting the claims to the particular technological environment of HVAC, without the abstract idea being integrated into a practical application or without the additional elements amounting to significantly more than the abstract idea, is insufficient to transform them into patent-eligible applications of the abstract ideas (Flook established that limiting an abstract idea to one field of use or adding token post-solution components did not make the concept patentable” Bilski v. Kappos, 95 USPQ2d 1001, 1010 (U.S. 2010).
For the reasons given above, the abstract idea is not integrated into a practical application and the additional elements do not amount significantly more than the abstract idea.
In Summary, the claims recite the abstract idea of updating of the generic reference data, without being integrated into a practical application, and do not provide additional elements that would amount to significantly more than the abstract idea. As such, taken as a whole, the claims are ineligible under the 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Brahme et al., US-PGPUB 2021/0025610, Figure 3, in generating baseline database based on steady state.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/HYUN D PARK/Primary Examiner, Art Unit 2857
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