DETAILED ACTION
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 .
Status of Application
This communication is a Final Office Action in response to the Amendments and Remarks filed on the 2nd day of September, 2025. Claims 1-5, 7-12, 14-17, and 19-23 are pending. Claim 6, 13, and 18 have been cancelled. Claims 22-23 are new. No Claims are allowed.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5, 7-12, 14-17, and 19-23 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 significantly more.
Under MPEP 2106, when considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (step 1). If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (step 2A prong 1), and if so, it must additionally be determined whether the claim is integrated into a practical application (step 2A prong 2). If an abstract idea is present in the claim without integration into a practical application, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself (step 2B).
In the instant case, claims 1-5, 7-12, 14-17, and 19-23 are directed to a method, device and a tangible, non-transitory computer-readable medium. Thus, each of the claims fall within one of the four statutory categories. However, the claims also fall within the judicial exception of an abstract idea. Although claims 1, 11, and 16 are directed to different categories the claim language is substantial similar and will be addressed together below.
Under Step 2A Prong 1, the test is to identify whether the claims are “directed to” a judicial exception. Examiner notes that the claimed invention is directed to an abstract idea in that the instant application is directed to certain methods of organizing human activity specifically commercial interactions and behaviors and managing personal behavior and/or interactions between people (see MPEP 2106.04(a)(2)(II)), mental processes (see MPEP 2106.04(a)(2)(III), and mathematical equations (see MPEP 2106.04(a)(2)(II)).
Claims 1, 11, and 16 recite computer-implemented method for generating and/or displaying an overall home score for a property, the computer-implemented method comprising: retrieving, by one or more processors, one or more attributes of the property, the one or more attributes comprising: (i) one or more fire hazard attributes, (ii) one or more weather hazard attributes, and/or (iii) one or more property feature hazard attributes; determining, by the one or more processors, one or more home score factors, wherein the one or more home score factors include (i) a fire hazard score, (ii) a weather hazard score, and/or (iii) a property feature hazard score, and wherein the determining the one or more home score factors comprises determining: the fire hazard score based upon the one or more fire hazard attributes; the weather hazard score based upon the one or more weather hazard attributes; and/or the property feature hazard score based upon the one or more property feature attributes; generating, by the one or more processors, the overall home score of the property by analyzing the one or more home score factors with a trained machine learning model, wherein the trained machine learning model is trained with home telematics data to determine home scores, wherein the telematics data was gathered by: scores; at a plurality of time intervals over a time period, collecting sensor data from one or more sensors, and transmitting, as a cryptographic hash, the sensor data collected over the time period to the one or more processors, and displaying, via the one or more processors, a map including indications of second properties; receiving, via the one or more processors, a user selection of a second property included in the second properties on the map; and in response to receiving the selection, displaying, via the one or more processors, information of the second property including: (i) a fire hazard score of the second property,(ii) a weather hazard score of the second property, and/or (iii) a property feature hazard score of the second property., the claims are similar to the abstract idea found in Electric Power Group.
Examiner notes that claim 1-5, 7-12, 14-17, and 19-23 recite a system for receiving a plurality of attributes related to a property, and calculating an overall rating and score related to the property which is directed to concepts that are performed mentally and a product of human mental work. The limitations suggest a process similar to standard practice risk management when buying or insuring a property where historical data and historical attributes related to the house are considered prior to purchase. Because the limitations above closely follow the steps of receiving information, processing the information, and displaying the results of the processing, and the steps involved human judgments, observations and evaluations that can be practically or reasonably performed in the human mind, the claim recites an abstract idea consistent with the “mental process” grouping set forth in the see MPEP 2106.04(a)(2)(III). If a claim, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of a generic processor executing computer code stored on a computer medium, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, the claims recite an abstract idea.
Examiner notes that the claimed invention amounts to a mental process in that the system is collecting command information, analyzing or processing the information to determine property characteristics, and the subsequently displaying the results of the analysis which is similar to the abstract ideas identified in Electric Power Group and Classen.
Furthermore, the claims recite the familiar concept of property valuation. As the Supreme Court explained in Alice, claims involving “a fundamental economic practice long prevalent in our system of commerce,” such as the concepts of hedging and inter-mediated settlement, are patent-ineligible abstract ideas. Alice, 134 S. Ct. at 2356 (quoting Bilski v. Kappos, 561 U.S. 593, 611 (2010)). It follows that the claims at issue here are directed to an abstract idea. Applicants’ claims recite one or more computers configured to receive a user’s property valuations, and display that information. Like the risk hedging in Bilski and the concept of intermediated settlement in Alice, the concept of property valuation, that is, determining a property’s market value, is “a fundamental economic practice long prevalent in our system of commerce.” Id. (quoting Bilski, 561 U.S. at 611). Prospective sellers and buyers have long valued property and doing so is necessary to the functioning of the residential real estate market. As such, claims 1, 11, and 16 are directed to the abstract idea of property valuation. and is similar to the abstract idea identified in MPEP 2106.04(a)(2)(II) in grouping “II” in that the claims recite certain methods of organizing human activity such as fundamental economic practices. This is merely further embellishments of the abstract idea and does not further limit the claimed invention to render the claims patentable subject matter. The limitations, substantially comprising the body of the claim, recite standard processes found in standard practice in property valuations. This is common practice when purchasing or insuring a piece of property. Because the limitations above closely follow the steps standard in fundamental economic practices such as process valuation, and the steps of the claims involve organizing human activity, the claim recites an abstract idea consistent with the “organizing human activity” grouping set forth in the see MPEP 2106.04(a)(2)(II).
Each claim is similar to the abstract idea identified in the MPEP 2106.04(a)(2)(II)) in grouping “II” in that the claims recite certain methods of organizing human activity such as fundamental business practices of property valuations. The claims invention involves standard practice within the real estate industry in that information related to properties being sold or insured is monitored and results presented regarding the property. This merely amounts to further embellishments of the abstract idea and does not further limit the claims to render the subject matter patentable.
Because the limitations above closely follow the steps standard in business transactions related to enable and monitor rental agreements and rental properties, and interactions between people such as the behaviors of renters within a rented property, and the steps of the claims involve organizing human activity, the claim recites an abstract idea consistent with the “organizing human activity” grouping set forth in the MPEP 2106.04(a)(2)(II)).
The phrase "methods of organizing human activity" is used to describe concepts relating to: fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).
"Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations.
An example of a claim reciting a commercial or legal interaction, where the interaction is an agreement in the form of contracts, is found in buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014). The agreement at issue in buySAFE was a transaction performance guaranty, which is a contractual relationship. 765 F.3d at 1355, 112 USPQ2d at 1096. The patentee claimed a method in which a computer operated by the provider of a safe transaction service receives a request for a performance guarantee for an online commercial transaction, the computer processes the request by underwriting the requesting party in order to provide the transaction guarantee service, and the computer offers, via a computer network, a transaction guaranty that binds to the transaction upon the closing of the transaction. 765 F.3d at 1351-52, 112 USPQ2d at 1094. The Federal Circuit described the claims as directed to an abstract idea because they were "squarely about creating a contractual relationship--a ‘transaction performance guaranty’." 765 F.3d at 1355, 112 USPQ2d at 1096.
Other examples of subject matter where the commercial or legal interaction is an agreement in the form of contracts include: ii. processing insurance claims for a covered loss or policy event under an insurance policy (i.e., an agreement in the form of a contract), Accenture Global Services v. Guidewire Software, Inc., 728 F.3d 1336, 1338-39, 108 USPQ2d 1173, 1175-76 (Fed. Cir. 2013).
An example of a claim reciting advertising is found in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). The patentee in Ultramercial claimed an eleven-step method for displaying an advertisement (ad) in exchange for access to copyrighted media, comprising steps of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad. 772 F.3d. at 715, 112 USPQ2d at 1754. The Federal Circuit determined that the "combination of steps recites an abstraction—an idea, having no particular concrete or tangible form" and thus was directed to an abstract idea, which the court described as "using advertising as an exchange or currency."
An example of a claim reciting a commercial or legal interaction in the form of a legal obligation is found in Fort Properties, Inc. v. American Master Lease, LLC, 671 F.3d 1317, 101 USPQ2d 1785 (Fed Cir. 2012). The patentee claimed a method of "aggregating real property into a real estate portfolio, dividing the interests in the portfolio into a number of deedshares, and subjecting those shares to a master agreement." 671 F.3d at 1322, 101 USPQ2d at 1788. The legal obligation at issue was the tax-free exchanges of real estate. The Federal Circuit concluded that the real estate investment tool designed to enable tax-free exchanges was an abstract concept. 671 F.3d at 1323, 101 USPQ2d at 1789. Examiner notes that the claimed invention is similar to the abstract idea found within Fort Properties in that the system is processing information in the form of registry commands based on the “master agreement” in the form of the consent record stored within the registry.
An example of a claim reciting business relations is found in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The business relation at issue in Credit Acceptance is the relationship between a customer and dealer when processing a credit application to purchase a vehicle. The patentee claimed a "system for maintaining a database of information about the items in a dealer’s inventory, obtaining financial information about a customer from a user, combining these two sources of information to create a financing package for each of the inventoried items, and presenting the financing packages to the user." 859 F.3d at 1054, 123 USPQ2d at 1108. The Federal Circuit described the claims as directed to the abstract idea of "processing an application for financing a loan" and found "no meaningful distinction between this type of financial industry practice" and the concept of intermediated settlement in Alice or the hedging concept in Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108. Examiner notes that the claimed invention is similar to the abstract idea in Credit Acceptance Corp., in that the system is processing information related to registry information by processing stored consent records to validate the command entered into the system based on the stored consent record.
Examiner notes that the claimed invention is more like buySAFE, Accenture, and Ultramercial, in that the invention revolves around analyzing real properties characteristics. Examiner respectfully submits that the claimed invention falls squarely in the grouping “II” and is directed to an abstract idea.
Furthermore, the mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations. The Supreme Court has identified a number of concepts falling within this grouping as abstract ideas including: a procedure for converting binary-coded decimal numerals into pure binary form, Gottschalk v. Benson, 409 U.S. 63, 65, 175 USPQ2d 673, 674 (1972); a mathematical formula for calculating an alarm limit, Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ2d 193, 195 (1978); the Arrhenius equation, Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 15 (1981); and a mathematical formula for hedging, Bilski v. Kappos, 561 U.S. 593, 611, 95 USPQ 2d 1001, 1004 (2010).
When determining whether a claim recites a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations), examiners should consider whether the claim recites a mathematical concept or merely limitations that are based on or involve a mathematical concept. A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept. See, e.g., Thales Visionix, Inc. v. United States, 850 F.3d 1343, 1348-49, 121 USPQ2d 1898, 1902-03 (Fed. Cir. 2017) (determining that the claims to a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform did not merely recite "the abstract idea of using ‘mathematical equations for determining the relative position of a moving object to a moving reference frame’."). For example, a limitation that is merely based on or involves a mathematical concept described in the specification may not be sufficient to fall into this grouping, provided the mathematical concept itself is not recited in the claim.
Examiner notes that the claims contain language directed to “generating, by the one or more processors, the overall home score of the property by analyzing the one or more home score factors with a trained machine learning model, wherein the trained machine model is trained with home telematics data to determine home scores, wherein the telematics data was gathered by: scores; at a plurality of time intervals over a time period, collecting sensor data from one or more sensors, and transmitting the sensor data collected over the time period to the one or more processors”, which amounts to, under the broadest reasonable interpretation, the system requires specific mathematical calculations (training the algorithm using stored hazard information related to properties). “Although the methods described elsewhere herein may not directly mention machine learning techniques, such methods may be read to include such machine learning for any determination or processing of data that may be accomplished using such techniques. In some embodiments, such machine-learning techniques may be implemented automatically upon occurrence of certain events or upon certain conditions being met. Use of machine learning techniques, as described herein, may begin with training a machine learning program, or such techniques may begin with a previously trained machine learning program. A processor or a processing element may be trained using supervised or unsupervised machine learning, and the machine learning program may employ a neural network, which may be a convolutional neural network, a deep learning neural network, or a combined learning module or program that learns in two or more fields or areas of interest. Machine learning may involve identifying and recognizing patterns in existing data (such as customer financial transaction, location, browsing or online activity, mobile device, vehicle, and/or home sensor data) in order to facilitate making predictions for subsequent customer data. Models may be created based upon example inputs of data in order to make valid and reliable predictions for novel inputs.” (See at least Specification ¶ 74-75) and therefore encompasses mathematical concepts. “For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A, Prong One to make the analysis clear on the record.” MPEP 2106.04, subsection II.B. Under such circumstances, however, the Supreme Court has treated such claims in the same manner as claims reciting a single judicial exception. Id. (discussing Bilski v. Kappos, 561 U.S. 593 (2010)). Here, the claimed invention falls within the mental process/certain method of organizing human activity grouping of abstract ideas, and steps fall within the mathematical concepts grouping of abstract ideas. The limitations are considered together as a single abstract idea for further analysis. (Step 2A, Prong One: YES).
Examples of mathematical calculations recited in a claim include: performing a resampled statistical analysis to generate a resampled distribution, SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163-65, 127 USPQ2d 1597, 1598-1600 (Fed. Cir. 2018), modifying SAP America, Inc. v. InvestPic, LLC, 890 F.3d 1016, 126 USPQ2d 1638 (Fed. Cir. 2018); using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps, 609 F.2d 481, 482, 203 USPQ 812, 813 (CCPA 1979); and calculating the difference between local and average data values, In re Abele, 684 F.2d 902, 903, 214 USPQ 682, 683-84 (CCPA 1982).
Examiner draws attention to Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023), in which the Court decided in a case with a more specific use of machine learning than instant application that the claims involving a trained model updating upon new information amounts to merely applying the known computer elements as a tool to implement the method. The claimed invention is similar to the claims found within Recentive in that the model is being trained to output information and the instant application is similar to the identified use of “training” a model for the output of information. No improvement to the overall method of machine learning or algorithm is presented. The mere use of machine learning as a tool to update a displayed information regarding properties does not render the claims patentable subject matter. “Considering the focus of the disputed claims, Alice, 573 U.S. at 217, it is clear that they are directed to ineligible, abstract subject matter. Recentive has repeatedly conceded that it is not claiming machine learning itself. See Appellant’s Br. 45; Transcript at 26:14–15. Both sets of patents rely on the use of generic machine learning technology in carrying out the claimed methods for generating event schedules and network maps. See, e.g., ’367 patent, col. 6 ll. 1–5, col. 11–12; ’811 patent, col. 3, l. 23, col. 5 l. 4. The machine learning technology described in the patents is conventional, as the patents’ specifications demonstrate. See, e.g., ’367 patent, col. 6 ll. 1–5 (requiring “any suitable machine learning technology . . . such as, for example: a gradient boosted random forest, a regression, a neural network, a decision tree, a support vector machine, a Bayesian network, [or] other type of technique”); ’811 patent, col. 3 l. 23 (requiring the application of “any suitable machine learning technique.”).” (Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023)).
“Instead of disclosing “a specific implementation of a solution to a problem in the software arts,” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016), or “a specific means or method that solves a problem in an existing technological process,” Koninklijke, 942 F.3d at 1150, the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment.” (Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023)).
“the claimed methods are not rendered patent eligible by the fact that (using existing machine learning technology) they perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved. We have consistently held, in the context of computer-assisted methods, that such claims are not made patent eligible under § 101 simply because they speed up human activity. See, e.g., Content Extraction, 776 F.3d at 1347; DealerTrack, 674 F.3d at 1333. Whether the issue is raised at step one or step two, the increased speed and efficiency resulting from use of computers (with no improved computer techniques) do not themselves create eligibility. 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”); compare McRo, 837 F.3d at 1314-16 (finding eligibility of claims to use specific computer techniques different from those humans use on their own to produce natural-seeming lip motion for speech)” (Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023)).
Similar to Recentive “nothing in the claims, whether considered individually or in their ordered combination, that would transform the Machine Learning Training and Network Map patents into something “significantly more” than the abstract idea of generating event schedules and network maps through the application of machine learning. See SAP Am., 898 F.3d at 1169–70; Broadband iTV, 113 F.4th at 1372. Recentive has also failed to identify any allegation in its complaint that would suffice to plausibly allege an inventive concept to defeat Fox’s motion to dismiss. Trinity, 72 F.4th at 1365” (Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023)). Examiner notes that the claims are similar to the identified unpatentable subject matter in that the system is merely applying standard machine learning elements in the abstract idea of processing hazard information related to properties.
Examiner notes that the claimed invention is similar to the identified use of mathematical calculations discussed in Bilski, SAP America, Inc., In re Maucorps. and In re Abele.
Examiner notes that the claimed invention is additionally similar to the decision found in Recentive
For the above reasons the examiner concludes that the claimed invention has a concept similar to those that the courts have found to be abstract and that the claims are directed to a judicial exception fin the form of an abstract idea.
The conclusion that the claim recites an abstract idea within the groupings of the MPEP 2106.04(a)(2) remains grounded in the broadest reasonable interpretation consistent with the description of the invention in the specification. For example, (App. Spec. ¶ 2), the system amounts to a “method and system for evaluating and generating a home score for a property”. Accordingly, the Examiner submits claims 1, 11, and 16, recite an abstract idea based on the language identified in claims 1, 11, and 16, and the abstract ideas previously identified based on that language that remains consistent with the groupings of Step 2A Prong 1 of the MPEP 2106.04(a)(1).
If the claims are directed toward the judicial exception of an abstract idea, it must then be determined under Step 2A Prong 2 whether the judicial exception is integrated into a practical application. Examiner notes that considerations under Step 2A Prong 2 comprise most the consideration previously evaluated in the context of Step 2B. The Examiner submits that the considerations discussed previously determined that the claim does not recite “significantly more” at Step 2B would be evaluated the same under Step 2A Prong 1 and result in the determination that the claim does not integrate the abstract idea into a practical application.
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
An example of a case identifying a mental process performed on a generic computer as an abstract idea is Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018). In this case, the Federal Circuit relied upon the specification in explaining that the claimed steps of voting, verifying the vote, and submitting the vote for tabulation are "human cognitive actions" that humans have performed for hundreds of years. The claims therefore recited an abstract idea, despite the fact that the claimed voting steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were "the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries." 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
Both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes. For example, in Mortgage Grader, the patentee claimed a computer-implemented system and a method for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The Federal Circuit determined that both the computer-implemented system and method claims were directed to "anonymous loan shopping", which was an abstract idea because it could be "performed by humans without a computer." 811 F.3d. at 1318, 1324-25, 117 USPQ2d at 1695, 1699-1700. See also FairWarning IP, 839 F.3d at 1092, 120 USPQ2d at 1294 (identifying both system and process claims for detecting improper access of a patient's protected health information in a health-care system computer environment as directed to abstract idea of detecting fraud); Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1345, 113 USPQ2d 1354, 1356 (Fed. Cir. 2014) (system and method claims of inputting information from a hard copy document into a computer program). Accordingly, the phrase "mental processes" should be understood as referring to the type of abstract idea, and not to the statutory category of the claim.
Examples of product claims reciting mental processes include: An application program interface for extracting and processing information from a diversity of types of hard copy documents – Content Extraction, 776 F.3d at 1345, 113 USPQ2d at 1356; and A computer readable medium containing program instructions for detecting fraud – CyberSource, 654 F.3d at 1368 n. 1, 99 USPQ2d at 1692 n.1.
Examiner notes that the claimed in invention is similar to the Voter Verified, Inc., FairWarning, Mortgage Grader, Berkheimer, Content Extraction and CyberSource applications wherein the court identified computer system or using “machine learning” as merely serving as a the generic computer, computing environment, or tool to perform the mental process or abstract idea.
The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72, 101 USPQ2d 1961, 1966 (2012)).
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.’" Alice Corp., 573 U.S. at 218 n.3, 110 USPQ2d at 1981 (quoting Diamond v. Diehr, 450 U.S. 175, 188, 209 USPQ 1, 8-9 (1981)). 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. See, e.g., Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed. Cir. 2016) (process reciting combination of individually well-known freezing and thawing steps was "far from routine and conventional" and thus eligible); BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional).
Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)); and Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)).
It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data using image codes assigned to particular facial features held ineligible because the process did not require a computer).
Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016), iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential); vii. Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality," BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018).
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
Examples that the courts have indicated may not be sufficient to show an improvement to technology include: i. A commonplace business method being applied on a general purpose computer, Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
The instant application fails to integrate the judicial exception into a practical application because the instant application merely recites words “apply it” (or an equivalent) with the judicial exception or merely includes instructions to implement an abstract idea. The instant application is directed to a method instructing the reader to implement the identified method of organizing human activity of fundamental business and economic practices such as property valuation and risk mitigation. For instance, the additional elements or combination of elements other than the abstract idea itself include the elements such as a “processor”, “memory”, “sensor”, and “using a trained machine learning data evaluation model” recited at a high level of generality. The claimed computer structure read in light of the specification can be “processor”, “memory”, and “using a trained machine learning data evaluation model” and includes any wide range of possible devises comprising a number of components that are “well-known” and include an indiscriminate “computer” (e.g., processor, memory). Thus, the claimed structure amounts to appending generic computer elements to abstract idea comprising the body of the claim. Examiner notes that the use and overall description of the machine learning techniques are broadly addressed and claimed. Nothing amounts to improvement to the machine learning techniques or processes. The system is merely appending the computer processes to perform thein intended purposes to the abstract idea. The computing elements are only involved at a general, high level, and do not have the particular role within any of the functions but to be a generically claimed “device” and “units”.
Examiner notes that the claimed invention is more like the implementations of computer elements found in FairWarning IP, LLC, Credit Acceptance Corp. v. Westlake Services, LendingTree, LLC v. Zillow, Inc., BSG Tech LLC v. Buyseasons, Inc., Alice Corp. and Versata Dev. Group, Inc. and fail to implement a technical improvement, practical application, or significantly more than the abstract idea.
Similarly, reciting the abstract idea as software functions used to program a generic computer is not significant or meaningful: generic computers are programmed with software to perform various functions every day. A programmed generic computer is not a particular machine and by itself does not amount to an inventive concept because, as discussed in MPEP 2106.05(a), adding the words “apply it” (or an equivalent) with the judicial exception, or more instructions to implement an abstract idea on a computer, as discussed in Alice, 134 S. Ct. at 2360, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)), is not enough to integrate the exception into a practical application. Further, it is not relevant that a human may perform a task differently from a computer. It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What matters is the application, “stating an abstract idea while adding the words ‘apply it with a computer’” will not render an abstract idea non-abstract. Tranxition v. Lenovo, Nos. 2015-1907, -1941, -1958 (Fed. Cir. Nov. 16, 2016), slip op. at 7-8.
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
An example of a case identifying a mental process performed on a generic computer as an abstract idea is Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018). In this case, the Federal Circuit relied upon the specification in explaining that the claimed steps of voting, verifying the vote, and submitting the vote for tabulation are "human cognitive actions" that humans have performed for hundreds of years. The claims therefore recited an abstract idea, despite the fact that the claimed voting steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were "the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries." 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
Both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes. For example, in Mortgage Grader, the patentee claimed a computer-implemented system and a method for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The Federal Circuit determined that both the computer-implemented system and method claims were directed to "anonymous loan shopping", which was an abstract idea because it could be "performed by humans without a computer." 811 F.3d. at 1318, 1324-25, 117 USPQ2d at 1695, 1699-1700. See also FairWarning IP, 839 F.3d at 1092, 120 USPQ2d at 1294 (identifying both system and process claims for detecting improper access of a patient's protected health information in a health-care system computer environment as directed to abstract idea of detecting fraud); Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1345, 113 USPQ2d 1354, 1356 (Fed. Cir. 2014) (system and method claims of inputting information from a hard copy document into a computer program). Accordingly, the phrase "mental processes" should be understood as referring to the type of abstract idea, and not to the statutory category of the claim.
Examples of product claims reciting mental processes include: An application program interface for extracting and processing information from a diversity of types of hard copy documents – Content Extraction, 776 F.3d at 1345, 113 USPQ2d at 1356; and A computer readable medium containing program instructions for detecting fraud – CyberSource, 654 F.3d at 1368 n. 1, 99 USPQ2d at 1692 n.1.
Examiner notes that the claimed in invention is similar to the Voter Verified, Inc., FairWarning, Mortgage Grader, Berkheimer, Content Extraction and CyberSource applications wherein the court identified computer system and “machine learning” is merely serving as a the generic computer, computing environment, or tool