DETAILED ACTION
Notice of 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 the Application
Claims 1-6, 9-14, and 17-20 were pending and were rejected in the previous office action.
Claims 2, 10, and 18 were cancelled. Claims 1, 3-6, 9, 11-14, 17, and 19-20 were amended.
Claims 1, 3-6, 9, 11-14, 17, and 19-20 remain pending and are examined in 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/4/2026 and the RCE filed 6/1/2026 have been entered.
Priority
This application claims priority U.S. provisional application no. 61/414,382, filed January 10, 2023.
Response to Arguments
35 USC § 101:
Applicant’s arguments regarding the § 101 rejection of claims 1-6, 9-14, and 17-20 (pgs. 11-13, remarks filed 5/4/2026) have been fully considered but they are not persuasive. Applicant specifically argues that the even if the claims recite a judicial exception, the claims integrate the exception into a practical application because they are directed to improving automation of generating building construction forms, and cites McRO as supporting case law (pgs. 11-13).
However, the examiner respectfully disagrees. “Improving automation of generating building construction forms” is not a technological improvement, but instead describes the automation of a process of filling out building construction forms using generic computer implementation. “[M]ere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.” See Credit Acceptance Corp. v. Westlake Services. Therefore, the claims do not recite additional elements that provide an improvement to computer functionality of an improvement to any specific technology, but instead aim to apply an abstract idea for filling out building constructions forms using generic computer components (i.e. mere instructions to “apply it” on computers).
The newly amended features for generating a BIM design file, accessing a data repository of the BIM design application by an add-in application, and extracting data from the data repository and the BIM design file appear to describe generic data processing techniques used to generate a file using a computer, retrieve/extract data by a computer, and transfer data to fill out a form. Furthermore, passing data via a “data pipeline” does not improve how computers receive or transmit data, but instead seems to recite a generic computer element for receiving or transmitting data at a high level of generality. This does not add anything beyond the use of computers in their ordinary capacity to receive or transmit data.
The courts have also found that “Receiving or transmitting data over a network, e.g., using the Internet to gather data,” (see MPEP 2106.04(d)(II) citing Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)) and “Storing and retrieving information in memory” (See MPEP 2106.04(d)(II) citing Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93) describes well-understood, routine, and conventional computer activity.
Further, the examiner respectfully disagrees that the claimed invention provides an improvement to the functioning of computers similar to McRO. The instant claims do not improve computer functionality by enabling a computer to perform tasks that it previously could not. The instant application extracts or retrieves various types of data from building design files and a data repository in order to automatically fill out a form (i.e. the claimed invention is automating paperwork using generic computer functionality). Therefore, the computer functionality merely automates an existing process in which a person would have to manually identify/extract the appropriate data and fill out the form. For example, while the amended claim recites, generally, “extracting...building design data from the data repository...,” and “passing, via a data pipeline of the add-in application of the computing device, the extracted building design data…,” the claimed invention is not directed to an improvement to the way computer systems search, retrieve, extract, or receive and transmit data. Thus, while computer functionality is used in the claims to carry out the abstract idea within a computer environment, none of the computer functions recited describes an improvement to the functioning of a computer itself.
Therefore, the § 101 rejection is maintained – please see the current § 101 rejection of claims 1, 3-6, 9, 11-14, 17, and 19-20 below, as claims 2, 10 and 18 are now canceled.
35 USC § 103:
Applicant’s arguments regarding the previous § 103 rejections of claims 1-6, 9-14, and 17-20 (pgs. 14-16, remarks filed 05/04/2026) have been fully considered, but they are not persuasive.
Applicant argues that the previously cited references fail to show or suggest the elements of claim 1 for:
calculating, by the add-in application of the computing device, the plurality of building design energy consumption metrics using the extracted building design data, wherein the calculated building design energy consumption metrics include:
a comparison of one or more building component parameters to one or more prescribed energy consumption values specified in a statutory or regulatory building energy code,
a determination of energy consumption performance of the building construction project in comparison to a first baseline energy consumption value, and
a comparison in energy consumption costs of the building construction project to a second baseline energy consumption value
However, the examiner respectfully disagrees. Upon further consideration, though the specific grounds of rejection applied in the § 103 rejections below have been updated, a new combination of the previously cited references (including Tierney, Pantel, and Fitch) still teaches all of the limitations of independent claims 1, 9 and 17, under the broadest reasonable interpretation.
First, the claims are read in light of the specification and the specification, at most, only broadly touches on costs associated with the building designs in general and does not appear to specifically define the energy consumption values (e.g. any values for energy usage) or energy consumption costs (e.g. any costs related to energy usage or consumption, whether financial, running costs, utility costs, or environmental costs related to energy usage). Specific energy consumption costs are never discussed in any detail. For example, ¶ 0043 of the spec. filed 1/09/2024 (“Lastly, a third option is a performance method which compares the proposed design to a baseline design that minimally meets the Illinois Energy Code (2018 IECC with Illinois amendments) to show that the proposed design will be no more costly to operate than the baseline.”) at most simply describes comparison using some operating cost of a building design that is nominally related to energy usage. While the examiner finds that the disclosure is sufficient to meet the requirements of § 112(a), these limitations are still given the broadest reasonable interpretation. Therefore, any values that could reasonably reads on energy consumption values or energy consumption costs would read on the respective terms as used in the claimed invention.
The examiner maintains that the combination of Tierney, Pantel, and Fitch teach all of limitations of amended claims 1, 9 and 17. Specifically with respect to the limitations argued in the remarks, see the following portion copied from the office action below (motivation/rationale for combination being omitted here for brevity):
With respect to the limitation:
calculating, by the add-in application of the computing device, the plurality of building design energy consumption metrics using the extracted building design data,
Tierney teaches an add-in application of a computing device installed in conjunction with a building design/modeling software of a computing device as per above (Tierney: ¶ 0077-0078, Fig. 3B, ¶ 0015, ¶ 0050, ¶ 0057, ¶ 0068), and Tierney teaches calculating…the plurality of building design metrics using the extracted building design data (Tierney: ¶ 0048, ¶ 0051-0055, ¶ 0069-0070, ¶ 0078-0079) – but Tierney/Pantel merely differ from the claimed limitation in that the metrics are not “energy consumption” metrics and that the calculation is performed at a cloud server receiving the extracted data from the add-in application, rather than performing the calculations via an “add-in” application running on the computing device.
However, Fitch teaches using a modeling system being executed on, or displayed and accessed through a user computing device (Fitch: Fig. 1/¶ 0025-0032, Fig. 8/¶ 0060-0063 – both configs. being corresponding to an “add-in application on a computing device,” – in view of the specific “add-in application” configuration already taught by Tierney above) for performing calculation/analysis of building design parameters based on data from a building design/model and including a plurality of modeled energy consumption and energy performance metrics (Fitch: ¶ 0021, ¶ 0028-0029, ¶ 0052-0054, ¶ 0062, ¶ 0064, ¶ 0079-0084, ¶ 0090-0091, ¶ 0100-0103, ¶ 0106, ¶ 0114 showing calculating various energy usage/consumption, energy performance, and cost related metrics pertaining to building model according to modeled features).
With respect to the following limitations, Tierney also teaches calculating construction metrics and cost estimates based on the extracted building parameters from a BIM file (Tierney: ¶ 0048, ¶ 0056, ¶ 0058-0062), but Tierney/Pantel do not explicitly teach the following examples of generated building design energy consumption metrics. However, Fitch teaches:
wherein the calculated building design energy consumption metrics include:
a comparison of one or more building component parameters to one or more prescribed energy consumption values specified in a statutory or regulatory building energy code (Fitch: ¶ 0033, ¶ 0050, ¶ 0079 – with ¶ 0079 showing calculation of building parameters based on building codes associated with the location and ¶ 0033-0035 calculating energy efficiency factors in comparison to baseline models meeting building code standards; and ¶ 0051 showing modeling and calculating energy usage values in comparison to baseline model using requirements required by building code for the particular region),
a determination of energy consumption performance of the building construction project in comparison to a first baseline energy consumption value (Fitch: ¶ 0048-0055 showing comparing calculated values for energy performance and energy usage of the building model in comparison to a baseline model; also see ¶ 0062-0064, ¶ 0007, ¶ 0028-0030, ¶ 0114), and
a comparison in energy consumption costs of the building construction project to a second baseline energy consumption value (Fitch: ¶ 0101-0102, ¶ 0108-0111, ¶ 0064, showing determining baseline costs associated with baseline model and comparing changes made by applying energy efficiency factors/user inputs to the baseline; see Fig. 10 and ¶ 0106-0109 showing various energy related costs, including cost 1016 associated with the updated model, energy CO2 costs, etc. comparing the current building profile to the values of the baseline profile);
Therefore, the § 103 rejections are updated based on the amendments, and claims 1, 3-6, 9, 11-14, 17, and 19-20 remain rejected under § 103. Please see the current § 103 rejections below.
Claim Objections
Claim 17 is objected to because of the following informalities:
Claim 17 recites “a plurality of building design metrics,” which appears to be a typo intended to recite “a plurality of building design energy consumption metrics”
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“passing, via a data pipeline…the extracted building design data…” of claim 1 and the similar limitations of claims 9 and 17
This “data pipeline” appears to be disclosed as an application programming interface in ¶ 0045 of the spec. filed 1/09/2024 (“In various embodiments, the building construction form tool 134 is configured to access the BIM design application's data repository and user interface using an API (Application Programming Interface) for the BIM design application 132. In this way, an automated pipeline is enabled for passing data from the BIM design model file 505 to the electronic building construction form template and the resulting form.”).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 3-6, 9, 11-14, 17, and 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. an abstract idea) without significantly more.
Step 1:
Claims 1 and 3-6 recite “A method…” (i.e. a process); claims 9 and 11-14 recite “A system comprising: at least one processor; and memory…” (i.e. a machine); and claims 17 and 19-20 recite “A non-transitory computer-readable medium…” (i.e. an article of manufacture). These claims fall under one of the four categories of statutory subject matter and as a result, pass Step 1 of the subject matter eligibility test. However, “Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter) in Step 1 does not end the eligibility analysis, because claims directed to nothing more than abstract ideas (such as a mathematical formula or equation), natural phenomena, and laws of nature are not eligible for patent protection.” See MPEP 2106.04. Accordingly, the examiner continues the subject matter eligibility analysis below.
Step 2A Prong One:
Independent claim 1 (and similar claims 9 and 17) recite limitations for:
generating…a [BIM] design…of a building construction project;
retrieving…a building construction form template,
wherein the building construction form template specifies fields for holding building design data and a plurality of building design energy consumption metrics,
wherein the building construction form template corresponds to a building construction form required by a building energy code of a government authority to obtain a building construction permit,
wherein the building construction form comprises an energy code compliance form for the building construction project;
accessing…a data repository…
extracting…building design data from the data repository…and building design data…of the building construction project,
calculating…the plurality of building design energy consumption metrics using the extracted building design data,
wherein the calculated building energy consumption design metrics include: a comparison of one or more building component parameters to one or more prescribed energy consumption values specified in a statutory or regulatory building energy code, a determination of energy consumption performance of the building construction project in comparison to a first baseline energy consumption value, and a comparison in energy consumption costs of the building construction project to a second baseline energy consumption value;
and passing [inputting]…the extracted building design data and the one or more of the calculated metrics to the specified fields of the building construction form template and generating a populated version of the building construction form
The limitations of independent claims 1, 9 and 17 above are determined to recite an abstract idea (i.e. generating a building design, receiving a building construction form required for a building construction permit, extracting building design data and calculating building design energy consumption metrics from the extracted building design data, and filling in fields of the building construction form using the building design data and calculated building design energy consumption metrics, to generate a populated building construction form) for the reasons discussed in the following continued Step 2A Prong One analysis.
As described in MPEP 2106.04(a)(2)(II), claim limitations which recite commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations) or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) fall into the “certain methods of organizing human activity” category of judicial exceptions. Therefore, since the processes described by the limitations above amount to a commercial interaction or managing interactions between people (i.e. generating a building design, receiving a building construction form required for a building construction permit, extracting building design data and calculating building design energy consumption metrics from the extracted building design data, and filling in fields of the building construction form using the building design data and calculated building design energy consumption metrics, to generate a populated building construction form – which corresponds to commercial activity/business relations, e.g. generating a building design and filling out a energy compliance form to obtain permits to construct a building according to the building design parameters), the claims fall into the “certain methods of organizing human activity” grouping of abstract ideas.
As described in MPEP 2106.04(a)(2)(III), “[T]he "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.” and “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.” The limitations recited by the representative independent claims 1, 9 and 17 above, under the broadest reasonable interpretation and but for the use of generic computer components, cover concepts (e.g. observation, evaluation, judgment, and opinion) that can reasonably be performed in the human mind or by the human mind with the aid of simple tools such as pen and paper. For example, the “retrieving” and “accessing” steps amount to observations, while the “generating,” “extracting,” “calculating,” “passing,” and “generating” steps fall under evaluations, judgments, or opinions. Note that generating a building design file is otherwise analogous to a person manually drawing and developing a building design using a drawing pad and drawing utensils, and passing data to the specified fields of the building construction form template and generating a populated building construction form is analogous to a person filling out a building construction form based on obtained data. Therefore, as the processes above described by the representative independent claims 1, 9 and 17 can be characterized as mental processes (i.e. observation, evaluation, judgment, and opinion), but for the recitation of generic computer components in the claims, the claims fall under the “mental processes” category of judicial exceptions (i.e. abstract ideas).
As claims 1, 9 and 17 are identified by the examiner as reciting concepts that fall under more than one abstract idea grouping (i.e. “certain methods of organizing human activity” and “mental processes”), the examiner considers the limitations together as a single abstract idea for the purposes of the Step 2A Prong Two and Step 2B analysis, in accordance with MPEP 2106.04(II)(B).
Step 2A Prong Two:
The judicial exception (i.e. abstract idea) recited in claims 1, 9 and 17 is not integrated into a practical application because the claims recite mere instructions to apply the abstract idea (i.e. generating a building design, receiving a building construction form required for a building construction permit, extracting building design data and calculating building design energy consumption metrics from the extracted building design data, and filling in fields of the building construction form using the building design data and calculated building design energy consumption metrics, to generate a populated building construction form) using generic computers/computer components (i.e. “a Building Information Model (BIM) design application executed on a computing device,” “a BIM design file,” and “an add-in application for the BIM design application on the computing device,” “by the add-in application…,” “the add-in application further comprises an Application Programming Interface to the BIM design application,” “a data repository of the BIM design application,” and “a data pipeline of the add-in application…” of claim 1; “A system comprising: at least one processor; and memory configured to communicate with the at least one processor, wherein the memory stores instructions that, in response to execution by the at least one processor, cause the at least one processor to perform operations…,” “a Building Information Model (BIM) design application executed by the at least one processor,” “a BIM design file,” “executing an add-in application for the BIM design application on the computing device,” “by the add-in application…,” “wherein the add-in application further comprises an Application Programming Interface to the BIM design application,” “a data repository of the BIM design application,” and “a data pipeline of the add-in application…” of claim 9; and “A non-transitory computer-readable medium having instructions stored therein, wherein the instructions, when executed by a processor, cause the processor to…,” “a Building Information Model (BIM) design application executed on a computing device,” “a BIM design file,” “execute an add-in application for the BIM design application on the computing device,” “an Application Programming Interface to the BIM design application,” “by the add-in application of the computing device,” “a data repository of the BIM design application,” and “a data pipeline” of claim 17). See MPEP 2106.05(f), showing “[C]laims 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.” Also see Credit Acceptance Corp. v. Westlake Services, showing “[M]ere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”
The limitations for generating, by a Building Information Model (BIM) design application executed on a computing device, a BIM design file of a building construction project simply links the performance of the abstract idea to a particular technological environment and limits the performance of generating a building design to a CAD/computer environment – but does not recite a specific technical solution directed to how a computer generates building design files that would indicate an improvement to the functioning of computers, or otherwise integrate the judicial exception into a practical application as per MPEP 2106.04(d)(I).
The limitations for providing or executing an add-in application for the BIM design application on the computing device, and wherein the add-in application further comprises an Application Programming Interface to the BIM design application, generally link the performance of the abstract idea to a particular technological environment or field of use – which does not integrate the abstract idea into a practical application. The recited use of an add-in application does not improve the functioning of a computer or improve any other technology, nor do the claims indicate an improved computing device or application programming interface. Similarly, that the extracted building design data was extracted by accessing a data repository of the BIM design application and extracting building design data referenced in the “BIM design file” also at most generally links the performance of the abstract idea (“extracting…building design data”) to a particular technical environment (using data from BIM files) and does not recite limitations that would integrate the judicial exception into a practical application as per MPEP 2106.04(d)(I). The features for accessing a data repository of the BIM design application by an add-in application, and extracting data from the data repository and the BIM design file appear to describe generic data processing techniques used to retrieve/extract data from a database by a computer, and transfer the data to fill out a form. Furthermore, passing data via a “data pipeline” does not improve how computers receive or transmit data, but instead seems to recite a generic computer element for receiving or transmitting data at a high level of generality. These limitation not add anything beyond the use of computers in their ordinary capacity to receive or transmit data or retrieve stored information from a database (i.e. generic computer implementation).
Because the claims, considered as a whole, do not recite anything that integrates the abstract idea into a practical application, the claims are directed to an abstract idea.
Step 2B:
Claims 1, 9 and 17 do not include additional elements that are sufficient to amount to significantly more than the judicial exception (i.e. abstract idea) because as mentioned above, the claims recite mere instructions to apply the abstract idea(i.e. generating a building design, receiving a building construction form required for a building construction permit, extracting building design data and calculating building design energy consumption metrics from the extracted building design data, and filling in fields of the building construction form using the building design data and calculated building design energy consumption metrics, to generate a populated building construction form) using generic computers/computer components (i.e. “a Building Information Model (BIM) design application executed on a computing device,” “a BIM design file,” and “an add-in application for the BIM design application on the computing device,” “by the add-in application…,” “the add-in application further comprises an Application Programming Interface to the BIM design application,” “a data repository of the BIM design application,” and “a data pipeline of the add-in application…” of claim 1; “A system comprising: at least one processor; and memory configured to communicate with the at least one processor, wherein the memory stores instructions that, in response to execution by the at least one processor, cause the at least one processor to perform operations…,” “a Building Information Model (BIM) design application executed by the at least one processor,” “a BIM design file,” “executing an add-in application for the BIM design application on the computing device,” “by the add-in application…,” “wherein the add-in application further comprises an Application Programming Interface to the BIM design application,” “a data repository of the BIM design application,” and “a data pipeline of the add-in application…” of claim 9; and “A non-transitory computer-readable medium having instructions stored therein, wherein the instructions, when executed by a processor, cause the processor to…,” “a Building Information Model (BIM) design application executed on a computing device,” “a BIM design file,” “execute an add-in application for the BIM design application on the computing device,” “an Application Programming Interface to the BIM design application,” “by the add-in application of the computing device,” “a data repository of the BIM design application,” and “a data pipeline” of claim 17). See MPEP 2106.05(f), showing “[C]laims 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.” Also see Credit Acceptance Corp. v. Westlake Services, showing “[M]ere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”
The limitations for generating, by a Building Information Model (BIM) design application executed on a computing device, a BIM design file of a building construction project simply links the performance of the abstract idea to a particular technological environment and limits the performance of generating a building design to a CAD/computer environment – but does not recite a specific technical solution directed to how a computer generates building design files that would indicate an improvement to the functioning of computers, or otherwise add significantly more than the judicial exception (i.e. abstract idea).
The limitations for providing or executing an add-in application for the BIM design application on the computing device, and wherein the add-in application further comprises an Application Programming Interface to the BIM design application, generally link the performance of the abstract idea to a particular technological environment or field of use – which does not add significantly more than the abstract idea. The recited use of an add-in application does not improve the functioning of a computer or improve any other technology, nor do the claims indicate an improved computing device or application programming interface. Similarly, that the extracted building design data was extracted by accessing a data repository of the BIM design application and extracting building design data referenced in the “BIM design file” also at most generally links the performance of the abstract idea (“extracting…building design data”) to a particular technical environment (using data from BIM files) and does not recite limitations that add significantly more. The features for accessing a data repository of the BIM design application by an add-in application, and extracting data from the data repository and the BIM design file appear to describe generic data processing techniques used to retrieve/extract data by a computer, and transfer data to fill out a form. Furthermore, passing data via a “data pipeline” does not improve how computers receive or transmit data, but instead seems to recite a generic computer element for receiving or transmitting data at a high level of generality. These limitations do not add anything beyond the use of computers in their ordinary capacity to receive or transmit data or retrieve stored information from a database (i.e. generic computer implementation).
The courts have also found that “Receiving or transmitting data over a network, e.g., using the Internet to gather data,” (see MPEP 2106.04(d)(II) citing Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)) and “Storing and retrieving information in memory” (See MPEP 2106.04(d)(II) citing Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93) describes well-understood, routine, and conventional computer activity.
Therefore, claims 1, 9 and 17 do not recite additional elements that add significantly more than the judicial exception (i.e. abstract idea).
Dependent Claims 3-6, 11-14, and 19-20:
Dependent claims 3-6, 11-14, and 19-20 are directed to the same abstract idea as independent claims 1, 9 and 17 above as they do not recite anything that integrates the abstract idea into a practical application or amounts to significantly more than the abstract idea.
Claims 3-6, 11-14, and 19-20 recite the following limitations, which do not recite additional elements beyond those already addressed above, but merely further describe the abstract idea: “wherein the one or more building design energy consumption metrics of the energy code compliance form requires a calculation of a baseline energy consumption load for a model home and a proposed energy consumption load for the building construction project” (claims 3, 11, 19); “wherein the energy code compliance form requires input of specific building component parameters, wherein the building design data comprises the specific building component parameters” (claims 4, 12, 20); “wherein the one or more building design energy consumption metrics of the energy code compliance form requires…” (claims 5, 13); and “wherein the building design data and building design energy consumption metrics comprise…” (claims 6, 14).
Therefore, claims 1, 3-6, 9, 11-14, 17, and 19-20 are ineligible under § 101 as being directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 6, 9, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 20180113959 A1 to Tierney et al. (Tierney) in view of US 20230131463 A1 to Pantel, and further in view of US 20110246381 A1 to Fitch et al. (Fitch).
Claim 1: Tierney teaches:
A method (Tierney: ¶ 0001 “The present invention relates generally to building information models (BIMs), and in particular, to a method, apparatus, system, and article of manufacture for generating construction metrics and documentation for a BIM”; also see at least Fig. 5, ¶ 0064-0070 showing process and Figs. 3A-3B, ¶ 0046-0057 components and associated functions) comprising:
generating, by a Building Information Model (BIM) design application (Tierney: ¶ 0077 “a commercial BIM modeling software (e.g., applications such as REVIT, DYNAMO, FORMIT, SKETCHUP, TEKLA, ADVANCED STELL, or MODELCENTER)”) executed on a computing device, a BIM design file of a building construction project (Tierney: ¶ 0057-0058, ¶ 0077-0079 showing generating BIM (building information model) using design software on a computer, i.e. a BIM file);
providing an add-in application for the BIM design application on the computing device (Tierney: ¶ 0077 “The designer 303A installs and opens a plug-in 302A to a commercial BIM modeling software…”, i.e. an add-in application for an “external application” on a computer - ¶ 0078 “The plugin 302A communicates with the server 310, sending the BIM and/or extracted BIM parameters. The server 310 correlates these parameters with the rates input by a contractor 303B to generate construction metrics (that are stored in database 304”; also see ¶ 0015, ¶ 0050, ¶ 0057, ¶ 0068 showing plug-in),
wherein the add-in application further comprises an Application Programming Interface to the BIM design application (Tierney: ¶ 0057 “designer(s) 303A submits a BIM(s)/extracted BIM parameter(s) 301A to the API server 311 (e.g. on a cloud based server 310) using a plugin 302A (e.g., written in C#) embedded in commercial modeling platform (e.g. REVIT)”; see Fig. 3B explicitly showing Plugin 302A comprises an API that connects back to the designer(s) running the modeling software and to an API server);
With respect to the following limitations, Tierney teaches an information gathering mechanism of the plug in application that gathers documents and cost estimate information (Tierney: ¶ 0047) and also describes the generation of construction metrics and documentation for each step of the construction process in a building including for structural code compliance and LEED certification (Tierney: ¶ 0070, ¶ 0083-0084), but Tierney does not explicitly teach the following functions for retrieving form information. However, Pantel teaches:
retrieving, by the add-in application of the computing device, a building construction form template (Pantel: ¶ 0082 showing the user may choose/select desired permits, and the system retrieves the appropriate permitting forms),
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the retrieval of the needed building permit forms of Pantel in the building design and documentation system of Tierney with a reasonable expectation of success of arriving at the claimed invention, with the motivation that “the resulting plans and any corresponding reports may be developed more expediently and efficiently” (Pantel: ¶ 0004). It would have also been obvious to one of ordinary skill in the art before the effective filing date of the invention to do so, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
With respect to the limitation:
wherein the building construction form template specifies fields for holding building design date and a plurality of building design energy consumption metrics,
wherein the building construction form template corresponds to a building construction form required by a building energy code of a government authority to obtain a building construction permit,
wherein the building construction form comprises an energy code compliance form for the building construction project
Tierney teaches generation of construction metrics and documentation for each step of the construction process in a building including for structural code compliance and LEED certification (Tierney: ¶ 0070, ¶ 0083-0084), but does not teach retrieval of a form template as per above.
However, Pantel teaches retrieving building construction forms required to obtain permits from a government authorization (Pantel: ¶ 0082, ¶ 0063) and wherein the building construction form template specifies fields for holding building design data and a plurality of building design metrics, wherein the building construction form template corresponds to a building construction form required by a government authority to obtain a building construction permit (Pantel: ¶ 0063 “query those building permit forms required by a given state or municipality, identify the relevant fields within the permit form, and use the input and/or output data of the job in question to populate the permit form for inclusion in a report; note that as per ¶ 0082 these forms are populated with stored job information, which as per ¶ 0026, ¶ 0033-0036, ¶ 0044, ¶ 0047-0060 showing various building design information for the project and metrics about the installation and/or building for which the installation is being performed on). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the retrieval of the specific building permit forms and fields required by a government of Pantel in the building design and documentation system of Tierney/Pantel with a reasonable expectation of success of arriving at the claimed invention, for the same reasons described with respect to the limitations above.
Still, Tierney/Pantel do not explicitly teach that the metrics correspond to energy consumption metrics, that the form pertains to a building energy code. However, Fitch teaches the retrieving energy usage metrics for compliance with an energy building code and for comparison against a baseline design (Fitch: ¶ 0027-0028, ¶ 0032, ¶ 0050-0056, ¶ 0100-0106, ¶ 0114), and which are further used in generating reports related to energy code compliance or LEED certification (Fitch: ¶ 0094, ¶ 0106-0112, Fig. 10), which when viewed in combination with Tierney/Pantel, renders the concept of retrieving building forms that pertain to energy code compliance and energy consumption metrics obvious to one of ordinary skill in the art. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included use of the energy metrics and reports for energy code compliance of Fitch in the building design and documentation system of Tierney/Pantel with a reasonable expectation of success of arriving at the claimed invention, with the motivation “to assist investors and construction professionals to predict energy usage, sustainability and costs for a building, based on incomplete building information, to facilitate decision-making before starting a construction project” (Fitch: ¶ 0001). Further, it would have also been obvious to one of ordinary skill in the art before the effective filing date of the invention to do so, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Tierney, as modified above, further teaches:
accessing, by the add-in application of the computing device, a data repository of the BIM design application (Tierney: ¶ 0047-0049, ¶ 0057, ¶ 0078-0079 showing BIM data may be stored in database 304 and later accessed to extract BIM parameters; and also see ¶ 0042 showing computer system used to implement the disclosed system which is operating by accessing data in a database)
extracting, by the add-in application of the computing device, building design data from the data repository that are referenced in the BIM design file and building design data that are contained within the BIM design file of the building construction project (Tierney: ¶ 0067-0068 “At step 504, a digital BIM is acquired…At step 506, fabrication and construction parameters are extracted from the BIM…The extraction may be performed by a set of one or more plugins to a modeling application”; and see ¶ 0078, ¶ 0015, ¶ 0047-0050, ¶ 0057 showing extraction of BIM building design parameters including building design information, which may have been previously stored in database 304),
With respect to the limitation:
calculating, by the add-in application of the computing device, the plurality of building design energy consumption metrics using the extracted building design data,
Tierney teaches an add-in application of a computing device installed in conjunction with a building design/modeling software of a computing device as per above (Tierney: ¶ 0077-0078, Fig. 3B, ¶ 0015, ¶ 0050, ¶ 0057, ¶ 0068), and Tierney teaches calculating…the plurality of building design metrics using the extracted building design data (Tierney: ¶ 0048, ¶ 0051-0055, ¶ 0069-0070, ¶ 0078-0079) – but Tierney/Pantel merely differ from the claimed limitation in that the metrics are not “energy consumption” metrics and that the calculation is performed at a cloud server receiving the extracted data from the add-in application, rather than performing the calculations via an “add-in” application running on the computing device.
However, Fitch teaches using a modeling system being executed on, or displayed and accessed through a user computing device (Fitch: Fig. 1/¶ 0025-0032, Fig. 8/¶ 0060-0063 – both configs. being corresponding to an “add-in application on a computing device,” – in view of the specific “add-in application” configuration already taught by Tierney above) for performing calculation/analysis of building design parameters based on data from a building design/model and including a plurality of modeled energy consumption and energy performance metrics (Fitch: ¶ 0021, ¶ 0028-0029, ¶ 0052-0054, ¶ 0062, ¶ 0064, ¶ 0079-0084, ¶ 0090-0091, ¶ 0100-0103, ¶ 0106, ¶ 0114 showing calculating various energy usage/consumption, energy performance, and cost related metrics pertaining to building model according to modeled features).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the calculation of design metrics via the application on or accessed through a computing device of Fitch in the building design system of Tierney/Pantel/Fitch with a reasonable expectation of success of arriving at the claimed invention, for the same reasons discussed in the limitations above.
With respect to the following limitations, Tierney also teaches calculating construction metrics and cost estimates based on the extracted building parameters from a BIM file (Tierney: ¶ 0048, ¶ 0056, ¶ 0058-0062), but Tierney/Pantel do not explicitly teach the following examples of generated building design energy consumption metrics. However, Fitch teaches:
wherein the calculated building design energy consumption metrics include:
a comparison of one or more building component parameters to one or more prescribed energy consumption values specified in a statutory or regulatory building energy code (Fitch: ¶ 0033, ¶ 0050, ¶ 0079 – with ¶ 0079 showing calculation of building parameters based on building codes associated with the location and ¶ 0033-0035 calculating energy efficiency factors in comparison to baseline models meeting building code standards; and ¶ 0051 showing modeling and calculating energy usage values in comparison to baseline model using requirements required by building code for the particular region),
a determination of energy consumption performance of the building construction project in comparison to a first baseline energy consumption value (Fitch: ¶ 0048-0055 showing comparing calculated values for energy performance and energy usage of the building model in comparison to a baseline model; also see ¶ 0062-0064, ¶ 0007, ¶ 0028-0030, ¶ 0114), and
a comparison in energy consumption costs of the building construction project to a second baseline energy consumption value (Fitch: ¶ 0101-0102, ¶ 0108-0111, ¶ 0064, showing determining baseline costs associated with baseline model and comparing changes made by applying energy efficiency factors/user inputs to the baseline; see Fig. 10 and ¶ 0106-0109 showing various energy related costs, including cost 1016 associated with the updated model, energy CO2 costs, etc. comparing the current building profile to the values of the baseline profile);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the calculated building design metrics as taught by Fitch above in the building design system of Tierney/Pantel/Fitch with a reasonable expectation of success of arriving at the claimed invention, for the same reasons described in the limitations above.
Claim Interpretation Note: The claims are read in light of the specification and the specification, at most, only broadly touches on costs associated with the building designs in general and does not appear to specifically define the energy consumption values (e.g. any values for energy usage) or energy consumption costs (e.g. any costs related to energy usage or consumption, whether financial, running costs, utility costs, or environmental costs related to energy usage). Specific types of energy consumption costs are never defined in any detail. For example, ¶ 0043 of the spec. filed 1/09/2024 (“Lastly, a third option is a performance method which compares the proposed design to a baseline design that minimally meets the Illinois Energy Code (2018 IECC with Illinois amendments) to show that the proposed design will be no more costly to operate than the baseline.”) at most simply describes comparison using some operating cost of a building design that is nominally related to energy usage. While the examiner finds that the disclosure is sufficient to meet the requirements of § 112(a), these limitations are still examined under the broadest reasonable interpretation. Therefore, any values that could reasonably reads on energy consumption values or energy consumption costs would read on the respective terms as used in the claimed invention.
With respect to the remaining limitations, while Tierney teaches an add-in application (Tierney: ¶ 0077-0078, Fig. 3B, ¶ 0015, ¶ 0050, ¶ 0057, ¶ 0068) as per above, Tierney does not explicitly teach the following limitations. However, Pantel teaches:
and passing, via a data pipeline (Pantel: ¶ 0060-0062, ¶ 0095-0096 network interface) of the add-in application of the computing device, the extracted building design data and one or more of the calculated metrics to the specified fields of the building construction form template (Pantel: ¶ 0063 “the system may query those building permit forms required by a given state or municipality, identify the relevant fields within the permit form, and use the input and/or output data of the job in question to populate the permit form”; ¶ 0082 “Once selected, the system then retrieves the appropriate permitting forms and populates the permits 530 with stored job information, information contained in the finalized reports, and the like as necessary to complete the forms. The system then uploads these permits to an online portal 540 or otherwise makes them available to the user via download, mail, email, or the like, at which point the user may receive or retrieve 550 the permits and/or permitting requests which have been prepared”) and generating a populated version of the building construction form (Pantel: ¶ 0063 and ¶ 0082 as above, showing generating populated/completed form)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the population of building form data of Pantel in the building design system of Tierney/Pantel/Fitch with a reasonable expectation of success of arriving at the claimed invention, with the motivation that “the resulting plans and any corresponding reports may be developed more expediently and efficiently” (Pantel: ¶ 0004).
Claim 6: Tierney/Pantel/Fitch teach claim 1. With respect to the following limitations, Tierney/Pantel do not explicitly teach, however, Fitch teaches:
wherein the building design data and building design energy consumption metrics comprise
conductive, convective, and radiative heat gain and loss through walls, roof/ceilings, doors, floors, windows, and skylights (Fitch: ¶ 0051 “energy efficiency strategy A can include R-31 roofing insulation or a radiant barrier, as compared to R-19 insulation required by the building code for the particular region”; and ¶ 0034 “selecting a particular type of roof-insulation, a particular type of envelope material, particular types of windows”);
solar radiant heat gain from windows and skylights;
heat storage effects of different types of thermal mass (Fitch: ¶ 0028, ¶ 0034, ¶ 0051 amount and type of insulation – noting that an R-value as per ¶ 0051 indicates an insulation material's capacity to resist heat flow, indicating how effectively the building envelope would store heat);
building operating schedules for people, lighting, equipment, and ventilation;
space conditioning system operation including equipment part energy load performance (Fitch: ¶ 0002 showing it is well known that factors such as “system design (such as HVAC (heating, ventilating, and air-conditioning, security systems and other systems)” impact energy performance, and ¶ 0028 showing efficiency of the equipment);
covered process mechanical equipment (kitchens, laboratories, parking garages, etc.) (Fitch: ¶ 0051 “Energy efficiency strategy B could be solar water heaters, as compared to gas or electric water heaters”);
duct sizing for HVAC systems;
R-Value parameters for walls; and/or
U-Factor computations
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the consideration of the building design data as taught by Fitch above in the building design system of Tierney/Pantel/Fitch with a reasonable expectation of success of arriving at the claimed invention, with the motivation “to assist investors and construction professionals to predict energy usage, sustainability and costs for a building, based on incomplete building information, to facilitate decision-making before starting a construction project” (Fitch: ¶ 0001) and “to assist in a decision-making process such that the finished project meets appropriate environmental goals while at the same time meeting a builder's requirements of profitability” (Fitch: ¶ 0003).
Claim 9: See the rejection of claim 1 above teaching analogous limitations. Tierney further teaches: A system comprising: at least one processor; and memory configured to communicate with the at least one processor, wherein the memory stores instructions that, in response to execution by the at least one processor, cause the at least one processor to perform operations comprising… (Tierney: ¶ 0030-0031, ¶ 0034, ¶ 0037 showing computer system with one or more processors, and memory storing instructions executed by the processor to perform operations).
Claim 14: See the rejection of claim 6 above.
Claim 17: See the rejection of claim 1 above teaching analogous limitations. Tierney further teaches: A non-transitory computer-readable medium having instructions stored therein, wherein the instructions, when executed by a processor, cause the processor to… (Tierney: ¶ 0037 showing non-transitory CRM storing instructions for execution by a processor).
Claims 3-5, 11-13, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 20180113959 A1 to Tierney et al. (Tierney) in view of US 20230131463 A1 to Pantel, and further in view of US 20110246381 A1 to Fitch et al. (Fitch), and further in view of NPL Reference U (hereinafter “Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020,” see the 8/12/2025 PTO-892).
Note: Though a copy of the NPL Reference relied upon above was attached with the 8/12/2025 office action, a historical capture by archive.org (from Oct 15, 2021) can alternatively be found at https://web.archive.org/web/20211015210718/https://up.codes/viewer/new_york/irc-2018/chapter/11/re-energy-efficiency#11.
Claim 3: Tierney/Pantel/Fitch teach claim 1. With respect to the following limitations, Tierney/Pantel/Fitch do not explicitly teach, however, “Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020” teaches:
wherein the one or more building design energy consumption metrics of the energy code compliance form requires a calculation of a baseline energy consumption load for a model home and a proposed energy consumption load for the building construction project (“Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020”: Pgs. 28-29 showing requirement of a calculation of energy consumption of a standard reference design and a proposed design for the construction project)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the building code requirement for calculation of energy consumption a reference model and a proposed model of “Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020” in the building design system of Tierney/Pantel/Fitch, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 4: Tierney/Pantel/Fitch teach claim 1. With respect to the following limitations, Tierney/Pantel/Fitch do not explicitly teach, however, “Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020” teaches:
wherein the energy code compliance form requires input of specific building component parameters, wherein the building design data comprises the specific building component parameters (“Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020”: Pgs. 23-24, Pg. 23 specifically showing “A compliance report submitted with the application for building permit shall include the following… An inspection checklist documenting the building component characteristics of the proposed design as indicated in Table N1105.5.2(1). The inspection checklist shall show results for both the standard reference design and the proposed design with user inputs to the compliance software to generate the results”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the building code requirement to specify building component parameters and characteristics in a permit application/supplemental documents of “Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020” in the building design system of Tierney/Pantel/Fitch, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 5: Tierney/Pantel/Fitch teach claim 1. With respect to the following limitation, Tierney/Pantel/Fitch do not explicitly teach, however, “Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020” teaches:
wherein the one or more building energy consumption design metrics of the energy code compliance form requires the energy consumption performance of the building construction project to be a specified percentage better than the first baseline energy consumption value (“Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020”: Pgs. 28-29 showing requirement that the energy compliance report include “an ERI analysis requires that the rated design be shown to have an ERI less than or equal to the appropriate value indicated in Table N1106.4 when compared to the ERI reference design; see Table N1106.4 showing required energy rating index, which is a representation of a minimum level of energy performance in comparison to the ERI Reference Design, i.e. an ERI of 100 as specified by Pg. 3 “ERI REFERENCE DESIGN. A version of the rated design that meets the minimum requirements of the 2006 International Energy Conservation Code, and that establishes the index value of 100 on the Energy Rating Index scale”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the building code requirement for an ERI of a rated building design to be a threshold amount better than an ERI reference design as indicated by an energy rating index of “Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020” in the building design system of Tierney/Pantel/Fitch, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claims 11-13: See the rejections of claims 3-5 above, respectively.
Claims 19-20: See the rejections of claims 3-4 above, respectively.
Conclusion
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/HUNTER MOLNAR/Examiner, Art Unit 3628
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