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 . Claims 1-8 and 10-21 have been reviewed and are under consideration by this office action.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/09/2026 has been entered.
Notice to Applicant
In response to Examiner’s Final Rejection Applicant, on 04/28/2026, amended claims, cancelled claim 9, and added claim 21. Claims 1-8 and 10-21 are pending in this application and have been rejected below.
Response to Amendment
Applicant’s amendments are received and acknowledged. Amended claims overcome the 103 Rejections and are therefore withdrawn.
Response to Arguments - 35 USC § 101
Applicant’s arguments with respect to the 35 USC 101 rejections have been fully considered, but they are not persuasive.
Applicant contends that the amended claims do not recite mental processes as the claims now recite searching a computer network…, training an AI/ML model…, and generating via an AI/ML model…
Examiner respectfully disagrees. The above mentioned elements are additional elements which are performing the steps would be no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). The claims recite the mental processes of identifying a first source that provide client data, obtaining client data, generating a set of value, and utilizing the values to generate an assessment all of which are concepts capable of being performed in the human mind (i.e. via pen and paper).
Applicant contends that similar to Desjardins the claims are directed towards critical emerging technology of artificial intelligence.
Examiner respectfully disagrees. The claims recite the use of AI/ML at high level of generality and do not disclose the any explicit details of how the models are trained and retrained other than asserting the model is trained using personalized client values.
Applicant contends the amended claims recite an inventive concept of AI/ML model-generated value based assessments.
Examiner respectfully disagrees. The concept of generating a values based assessment is concept capable of being performed in the human (and further certain methods of organizing human activity) and further utilizes an AI/ML model recited at a high level of generality.
The 101 Rejection is updated and maintained below.
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 1-8 and 10-21 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.
Step One - First, pursuant to step 1 in the January 2019 Guidance on 84 Fed. Reg. 53, the claim(s) is/are directed to statutory categories.
Step 2A, Prong One – The claims are found to recite limitations that set forth the abstract idea(s), namely in independent claims recite a series of steps for the abstract idea recited below.
Regarding Claim 1, (additional elements bolded)
A method for implementing a values-based decision-making, diagnostics, and reporting tool, the method comprising:
searching a computer network for at least one client identifier, to identify at least one first source that includes the at least one client identifier and utilizes the at least one client identifier to provide client data that indicates at least one from among a client preference, a client behavior, and a client profile;
downloading, based on the at least one client identifier, the client data from the at least one first source, as a download of the client data;
utilizing the download of the client data to generate a set of personalized client values that indicates a set of values of a client; and
training data an artificial intelligence and machine learning (AI/ML) model;
generating, via the AI/ML model, an AI/ML model-generated values-based assessment
for the client by utilizing business values data to identify, from a portfolio of the client, at least one client-held product that is associated with at least one entity that is associated with nonconforming values-based information that conflicts with the set of personalized client values
of the client;
wherein the AI/ML model-generated values-based assessment comprises one or more impact metrics that utilize a standardized index as a baseline for indicating how the portfolio of the client impacts one or more corresponding values of the client, and
wherein the set of personalized client values comprises at least one from among a location and a proximity.
Further regarding Claims 10, A system for implementing a values-based decision-making, diagnostics, and reporting tool, the system comprising: a processor; and
memory storing executable instructions that, when executed by the processor, cause the processor to:
Further regarding Claims 19, A non-transitory computer-readable medium for implementing a values-based decision-making, diagnostics, and reporting tool, the non-transitory computer-readable medium storing instructions that, when executed by a processor, cause a processor to:
As drafted, this is, under its broadest reasonable interpretation, within the Abstract idea groupings of “Mental processes—concepts performed in the human mind” (observation, evaluation, judgment, opinion) as the claims are directed towards identifying a first source that provide client data, obtaining client data, generating a set of value, and utilizing the values to generate an assessment all of which are concepts capable of being performed in the human mind (i.e. via pen and paper).
Further the claims are directed towards the abstract idea grouping of “Certain methods of organizing human activity” — commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) as the claims are directed towards decision making practices of organizations (See Specification, [02]).
Step 2A, Prong Two - This judicial exception is not integrated into a practical application. The independent claims utilize at least the additional elements bolded above. The additional elements are performing the steps would be no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h).
Step 2B - The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements are just “apply it” on a computer. (See MPEP 2106.05(f) – Mere Instructions to Apply an Exception – “Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible.” Alice Corp., 134 S. Ct. at 235) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). Further downloading… from a first source is an activity that has been recognized by the courts as well-understood, routine, and conventional activity (See MPEP 2106.05(d)(i) Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362).
Regarding Claims 2-3, 5, 7-8, 11-12, 14, 16-18, and 20-21 the claim(s) further narrows the abstract idea or recite additional elements previously addressed in the independent claims.
Regarding Claims 4 and 13, the claim(s) further recite the additional element(s) of utilizing natural language processing to search a data network. This element(s) is performing the steps would be no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) in Steps 2A-Prong 2 and 2B.
Regarding Claims 6 and 15, the claim(s) further recite the additional element(s) of generating a notification. This element(s) is performing the steps would be no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) in Steps 2A-Prong 2 and 2B.
Accordingly, the claim fails to recite any improvements to another technology or technical field, improvements to the functioning of the computer itself, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine the claim to a particular useful application, and/or meaningful limitations beyond generally linking the use of an abstract idea to a particular environment. See 84 Fed. Reg. 55. Viewed individually or as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Examining Claims with Respect to Prior Art
Claims 1-8 and 10-21, though directed to non-statutory subject matter, are deemed to define over the currently known prior art under 35 USC 102 and 103. Examiner interprets based upon the claim limitations that there is no currently known prior art that discloses the features relating to: “A method for implementing a values-based decision-making, diagnostics, and reporting tool, the method comprising: searching a computer network for at least one client identifier, to identify at least one first source that includes the at least one client identifier and utilizes the at least one client identifier to provide client data that indicates at least one from among a client preference, a client behavior, and a client profile; downloading, based on the at least one client identifier, the client data from the at least one first source, as a download of the client data; utilizing the download of the client data to generate a set of personalized client values that indicates a set of values of a client; and training data an artificial intelligence and machine learning (AI/ML) model; generating, via the AI/ML model, an AI/ML model-generated values-based assessment; for the client by utilizing business values data to identify, from a portfolio of the client, at least one client-held product that is associated with at least one entity that is associated with nonconforming values-based information that conflicts with the set of personalized client values of the client; wherein the AI/ML model-generated values-based assessment comprises one or more impact metrics that utilize a standardized index as a baseline for indicating how the portfolio of the client impacts one or more corresponding values of the client, and wherein the set of personalized client values comprises at least one from among a location and a proximity.”
The reason to withdraw the 35 USC 103 rejection of claims 1-20 in the instant application is because the prior art of record fails to teach the overall combination as claimed. Therefore, it would not have been obvious to one of ordinary skill in the art to modify the prior art to meet the combination above without unequivocal hindsight and one of ordinary skill would have no reason to do so. Upon further searching the examiner could not identify any prior art to teach these limitations. The prior art on record, alone or in combination, neither anticipates, reasonably teaches, not renders obvious the Applicant’s claimed invention.
Known Prior Art (patent)
Davar et al.
US 20180158004 A1
Mcwain et al.
US 20220101428 A1
Caputo et al.
US 8407078 B1
Jayaraman et al.
US 20240303740 A1
Johnson et al.
US 20210133660 A1
Kwapiszeski et al.
US 20140046709 A1
Lane et al.
US 20230351515 A1
Krull et al.
US 12524809 B1
Siebel et al.
US 20170006135 A1
Guzman et al.
US 11587172 B1
Known Prior Art (NPL)
Lu, H., Thelen. Fink, O.; Federated Learning with Uncertainty-Based Client Clustering for Fleet-Wide Fault Diagnosis; https://doi.org/10.48550/arXiv.2304.13275; 2023
Known Prior Art (foreign)
Flanagan
WO2019120579A1
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY L GUNN whose telephone number is (571)270-1728. The examiner can normally be reached Monday - Friday 6:30-4:30.
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, Jerry O'Connor can be reached at (571) 272-6787. 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.
/JEREMY L GUNN/Examiner, Art Unit 3624
Prosecution Insights