Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Introduction
1. The following is a NON-FINAL Office Action in response to the communication received on 02/25/06. Claims 1, 3-10 are now pending in this application.
2. A request for continued examination (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the FINALITY of the previous Office Action has been WITHDRAWN pursuant to 37 CFR 1.114.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 02/25/26 has been entered.
Response to Amendments
3. Applicants Amendment has been acknowledged in that: Claims 1, 6 have been amended; hence such, claims 1, 3-10 are now pending in this application.
RESPONSE TO ARGUMENTS
Applicant argues#1
In addition to the remarks previously presented, the subject matter of the amended claims concerns output of Al agent that would be infeasible for a human to perform. For example, the August 2025 Memo cautioned examiners to consider whether an AI function may be performed in a human mind before declaring the patent an ineligible mental process. See USPTO, Memorandum to Tech. Centers 2100, 2600, and 3600, p. 2 (August 4, 2025). In particular, USPTO, July 2024
Subject Matter Eligibility Examples stated that claims are eligible for subject matter that is "not a process that can be practically performed in the human mind." See USPTO, July 2024 Subject Matter Eligibility Examples, Example 48, claim 2, p. 23 (July 2024).
Examiner Response
Examiner respectfully disagrees.
Based on the amendments to the claims, the claims are now categorized as a Mental Process, see the section 101 rejection below.
Applicant is referred to the MPEP section cited below.
Furthermore, the August 4th, 2025, memorandum is consisted with what is articulated in the MPEP.
MPEP 2106.04(a)(2) states in Section III (B):
B. A Claim That Encompasses a Human Performing the Step(s) Mentally With or Without a Physical Aid Recites a Mental Process.
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If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, 839 F.3d at 1139, 120 USPQ2d at 1474 (holding that claims to the mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper").
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The use of a physical aid (e.g., pencil and paper or a slide rule) to help perform a mental step (e.g., a mathematical calculation) does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another. For instance, in CyberSource, the court determined that the step of "constructing a map of credit card numbers" was a limitation that was able to be performed "by writing down a list of credit card transactions made from a particular IP address." In making this determination, the court looked to the specification, which explained that the claimed map was nothing more than a listing of several (e.g., four) credit card transactions. The court concluded that this step was able to be performed mentally with a pen and paper, and therefore, it qualified as a mental process. 654 F.3d at 1372-73, 99 USPQ2d at 1695. See also Flook, 437 U.S. at 586, 198 USPQ at 196 (claimed "computations can be made by pencil and paper calculations"); University of Florida Research Foundation, Inc. v. General Electric Co., 916 F.3d 1363, 1367, 129 USPQ2d 1409, 1411-12 (Fed. Cir. 2019) (relying on specification’s description of the claimed analysis and manipulation of data as being performed mentally "‘using pen and paper methodologies, such as flowsheets and patient charts’"); Symantec, 838 F.3d at 1318, 120 USPQ2d at 1360 (although claimed as computer-implemented, steps of screening messages can be "performed by a human, mentally or with pen and paper").
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Now turning to the instant specification, the specification discloses in paras 52, 54, disclose the on-location premises evaluation device and an AI agent of the evaluation device.
The use of the on-location premises evaluation device and operating an AI agent to perform the mental steps (the identified abstract idea steps) does not negate the mental nature of the identified abstract limitations.
Paras 52&54 are reproduced below:
[0052] FIG. 2 is an exemplary block diagram of the mobile device or mobile financial processing unit 100A of FIG. 1. Financial processing unit 100D, or simply referred to as device 100D, may include processor 270,I/O module 210,display screen 220,camera 230, one or more speakers 240,microphone 250, sensor device 260,data bus 290 used for communication between the components, and financial processing device client 280, which may be implemented as either a software application and/or hardware component and may be executable by processor 270 to facilitate financial services by device 100D in a financial services interaction or transaction. Processor 270 may also operate I/O module 210,display screen 220,camera 230,speaker 240,microphone 250, and sensor 260 in support of providing financial services as per instructions provided by device client 280. For example, I/O module 210 may send and receive data to and from other devices, e.g., to facilitate financial services between or among the various users and devices such as such as B2B server unit 152 or mortgage processor server system 160 acting as a remote server or to other mobile devices (e.g., a remote device) such as device 100A of FIG. 1. Received data may be displayed on display screen 220;camera 230 may provide video data to be sent to other devices 100D;speaker(s) 240 may play the received audio data; microphone 250 may provide audio input to be sent to other devices; and sensor(s) 260 may read data from or around the user (e.g., a home buyer) of the device 100D to send to one or more of the servers or other devices. In some embodiments, I/O module 210 may include encryption algorithms to provide secure end-to-end communications with other mobile devices or servers units such as server unit 150 of FIG. 1. In some embodiments, financial services may be facilitated using the secure end-to-end communications. In other embodiments, a separate module (not shown) coupled to the processor 270 may be configured to provide the encryption algorithms to provide secure end-to-end communications.
[0054] In accordance with embodiments described herein, device client 280 may
include a premises evaluation module 282 (e.g., analysis of a physical location, land, building, house, complex, business office location, and the like), a servicing module 284, a financial services module 286, and a virtual assistant module 288, which in some embodiments may be an AI-enable module. In some embodiments, the premises evaluation module 282 may be implementable either as a software application and/or hardware component that may be implemented as either an integrated component of device client 280 or as an independent module in communication with device client 280. As will be described below, premises evaluation module 282 may be configured to perform premises evaluation routines on the device 100D. In some examples, the device 100D may be used as part of a real estate evaluation process, such as by a prospective homeowner evaluating the suitability of a new property, or may be used as part of the process for securing a loan or other financial instrument regarding the property (e.g., for purchase of the property). It may be appreciated that the device 100D may be used by any category of users including prospective home buyers, those seeking financial assistance or loans, or businesses evaluating a property. In some embodiments, the premises evaluation module 282 may be included on a server unit such as B2B server unit 150 of FIG. 1.
Therefore, the claims are reciting a mental process.
The rejection is maintained.
Applicant argues#2
The rejections are moot in view of the claim amendments.
Independent Claims 1, 6: Amended independent claim 1 recites, inter alia, "displaying a formatted output via the AI agent based on the response comprising at least one of a numerical assessed valuation; and initiating and controlling a chat session with the AI agent based on the response relating to the recording data comprising the at least one of a three-dimensional (3D) model, a dimension measurement of the structure comprising at least one inside dimension and one outside dimension, or at least one room quantity."
Amended independent claim 6 recites, inter alia, "receiving, based on a prompt from an
artificial intelligence (AI) agent from the remote on-location premises evaluation device."
Applicant submits that none of the cited references, alone or in combination, teach or
suggest at least the above features of claims 1 and 6. None of the cited references teach or suggest anything related to prompts from an AI agent to an LLM system.
For at least the reasons given above, applicant submits that claims 1 and 6 are allowable over the applied references, and therefore respectfully requests that the rejection of claims 1 and 6 be withdrawn. Dependent claims 3-5 and 7-10 depend on their respective independent claims and include all features recited in the independent claims. Accordingly, the dependent claims are allowable at least for the reasons provided for the independent claims.
Examiner Response
Based on the amendments to the claims and an updated prior art search, the 35 U.S.C 103 rejection is hereby withdrawn
Claim Rejections- 35 U.S.C § 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.
1. Claims 1. 3-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 is directed to a method, which is a statutory category of invention. (Step 1: YES).
Claim 1 recites the limitations of:
A method implemented on an on-location premises evaluation device, the method comprising:
sending, to a display of the device, a prompt from an artificial intelligence (AI) agent for a user to begin an on-location premises evaluation;
upon receiving, from a user interface of the device, confirmation from the user to being the evaluation, initiating the on-location premises evaluation;
prompting from the AI agent of the device, the user to begin a walk-through of a structure associated with the premises;
initiating, at the device, a data recording process to capture at least one of a dimension measurement and imagery information of the premises;
capturing in recording data at least one of a three dimensional 3D model, a dimension measurement of the structure comprising at least one inside dimension and one outside dimension, or at least one room quantity;
capturing in the recording data at least one user attribute comprising at least one of a demographic and user preference attribute;
sending, to a remote server, the recording data; and
receiving, from the remote server, a response based on the recording data;
displaying a formatted output via the AI agent based on the response;
initiating and controlling a chat session with the AI agent based on the response relating to the recording data comprising the at least one of a three-dimensional (3D) model, a dimension measurement of the structure comprising at least one inside dimension and one outside dimension or at least one room quantity.
The claim limitations that are in bold above (e.g. sending, a prompt for a user to begin an on-location premises evaluation; upon receiving, from a user, confirmation from the user to being the evaluation, initiating the on-location premises evaluation; prompting the user to begin a walk-through of a structure associated with the premises; initiating, a data recording process to capture at least one of a dimension measurement and imagery information of the premises; capturing in recording data a dimension measurement of the structure comprising at least one inside dimension and one outside dimension, or at least one room quantity; capturing in the recording data at least one user attribute comprising at least one of a demographic and user preference attribute; sending, the recording data; receiving, a response based on the recording data; displaying a formatted output based on the response; initiating and controlling a chat session based on the response relating to the recording data comprising the at least one of a three-dimensional (3D) model, a dimension measurement of the structure comprising at least one inside dimension and one outside dimension or at least one room quantity) under its broadest reasonable interpretation, covers performance of the limitation(s) as a mental process, more specifically a concept performed mentally by a human with a pen and paper (steps for a user to calculate the inside and outside dimensions of an on-location premise by using 3-d modelling).
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a certain method of a concept performed in the human mind, then it falls within the “mental process” grouping of abstract ideas. Accordingly, claim 1 recites an abstract idea.
Claim 6 recites:
A method implemented on a server in communication with a remote on- location premises evaluation device, the method comprising:
receiving, based on a prompt from an artificial intelligence (AI) agent from the remote on-location premises evaluation device, a response associated with real property of the premises, wherein the request comprises at least one of: 1) at least one of a dimension measurement and imagery information of the premises, 2) a dimension measurement of the structure comprising at least one inside dimension and one outside dimension; at least one room quantity, 3) at least one user attribute comprising at least one of a demographic and user preference attribute;
determining, by querying a large language model (LLM), the numerical assessed valuation based on the request, wherein the LLM comprises a sets of attributes associated with the request, the set of attributes comprising at least one of a demographic and user preference attribute
;and
sending, to the remote on-location premises evaluation device, the determined numerical assessed valuation.
The claim recites elements that are in bold above, (receiving, a response associated with real property of the premises, wherein the request comprises at least one of: 1) at least one of a dimension measurement and imagery information of the premises, 2) a dimension measurement of the structure comprising at least one inside dimension and one outside dimension; at least one room quantity, 3) at least one user attribute comprising at least one of a demographic and user preference attribute; determining, the numerical assessed valuation based on the request, the set of attributes comprising at least one of a demographic and user preference attribute ;and sending the determined numerical assessed valuation), under its broadest reasonable interpretation, covers performance of the limitation(s) as a mental process, more specifically a concept performed mentally by a human with a pen and paper (steps for a user to calculate the inside and outside dimensions of an on-location premise by using 3-d modelling).
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a certain method of a concept performed in the human mind, then it falls within the “mental process” grouping of abstract ideas. Accordingly, claim 6 recites an abstract idea.
(Step 2A-Prong 1: YES. The claims are abstract).
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05.f), (2) Adding insignificant extra solution activity to the judicial exception (MPEP 2106.05.g), (3) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05.h).
Claims 1, 6 includes the following additional elements:
-An on-location premises evaluation device
-A user interface of the device
-An AI agent of the on-location premises evaluation device
-A 3D model
-A remote server
-A Large language model
The on-location premises evaluation device, user interface of the device, an AI agent of the on-location premises evaluation device, a 3D model, a remote server, a Large language model, are recited at a high level of generality and are being used in their ordinary capacity and are being used as a tool for implementing the steps of the identified abstract idea, see MPEP 2106.05(f), where applying a computer or using a computer as a tool to perform the abstract idea is not indicative of a practical application.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea
Therefore claims 1, 6 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, there are no additional elements recited in the claim beyond the judicial exception.
Mere instructions to implement an abstract idea, on or with the use of generic computer components, or even without any computer components, cannot provide an inventive concept - rendering the claim patent ineligible. Thus claims 1,6 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 3-5, 7-10 further define the abstract idea that is present in their respective independent claims 1,6 and thus correspond to a Mental Process and hence are abstract for the reasons presented above.
Therefore, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims (3-5, 7-10) are directed to an abstract idea. Thus, the claims 1,3-10 are not patent-eligible.
Claim Rejections- 35 U.S.C § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
2. Claims 6-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "the numerical assessed valuation” in line 4 from the bottom on page 3. There is insufficient antecedent basis for this limitation in the claim.
Claims 7-10 are being rejected using the same rationale as clam 6, as they fail to cure the deficiency of claim 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD Z SHAIKH whose telephone number is (571)270-3444. The examiner can normally be reached M-T, 9-600; Fri, 8-11, 3-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BENNETT SIGMOND can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD Z SHAIKH/Primary Examiner, Art Unit 3694 4/3/2026