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 1-20 were pending and were rejected in the previous office action. Claims 1, 5, 9, 13, and 17 were amended. Claims 7-8 and 15-16 were canceled. Claims 1-6, 9-14, and 17-20 remain pending and are examined in this office action.
Priority
This application claims priority U.S. provisional application no. 61/414,382, filed January 10, 2023.
Response to Arguments
Claim Objections:
Claims 5 and 13 were previously objected to for informalities. Claims 5 and 13 are amended to address the previous issues, and the previous objections are withdrawn.
35 USC § 101:
Applicant’s arguments regarding the § 101 rejection of claims 1-20 (pgs. 10-12, remarks filed 11/12/2025) have been fully considered but they are not persuasive.
Applicant argues that the claims recite a technological improvement rooted in computer technology, in view of the plug-in (or “add-in”) software. The examiner respectfully disagrees. First, the alleged improvement ("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”) describes nothing more than the automation of form filling on computers and computer software – which does not describe a technological improvement. 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.” Credit Acceptance Corp. is further cited in MPEP 2106.05(a)(I) as an example of the types of subject matter that are insufficient to show an improvement in computer-functionality.
Furthermore, “add-in application for an external application” as claimed represents no more than a generic software module used to retrieve data and automate a building design and form filling process as described by the various abstract functions recited in claims 1, 9 and 17. Thus, the “add-in application” acts as no more than a tool used to apply the abstract idea (“apply it”). That this application is for use with an external application for building information modeling design, and that the add-in application comprises a generic API to the external application, does not add any meaningful limitations to the claims beyond generally linking the performance of the abstract idea to a particular technological environment or field of use. Applicant’s 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. Instead, the claims as currently recited still recite mere instructions to apply the abstract idea on generic computer components.
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.” and “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).”
Therefore, the § 101 rejection is maintained – please see the current § 101 rejection of claims 1-6, 9-14, and 17-20 below, as claims 7-8 and 15-16 are canceled.
35 USC § 103:
Applicant’s arguments regarding the previous § 103 rejections of claims 1-20 (pgs. 12-17, remarks filed 11/12/2025) have been considered but are moot as they do not apply to the current grounds of rejection applied in the § 103 rejections below, necessitated by applicant’s amendments.
Claims 7-8 and 15-16 were canceled. Please see the current § 103 rejections of claims 1-6, 9-14, and 17-20 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 1-6, 9-14, and 17-20 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 1-6 recite “A method…” (i.e. a process); claims 9-14 recite “A system comprising: at least one processor; and memory…” (i.e. a machine); and claims 17-20 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:
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 metrics,
wherein the building construction form template corresponds to a building construction form required by a government authority to obtain a building construction permit;
extracting…building design data…of a building construction project,
calculating…the plurality of building design metrics using the extracted building design data,
wherein the calculated building design metrics include: a comparison of one or more building component parameters to one or more prescribed values specified in a statutory or regulatory code, a determination of energy performance of the building construction project in comparison to a first baseline value, and a comparison in costs of the building construction project to a second baseline value;
and inputting…the extracted building design data and the one or more of the calculated metrics in 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. receiving a building construction form required for a building construction permit, extracting building design data and calculating building design metrics from the extracted building design data, and filling in fields of the building construction form using the building design data and calculated 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. receiving a building construction form required for a building construction permit, extracting building design data and calculating building design metrics from the extracted building design data, and filling in fields of the building construction form using the building design data and calculated metrics, to generate a populated building construction form – which corresponds to commercial activity/business relations intended to obtain permission to construct a building), 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” step amounts to an observation, while the “extracting,” “calculating,” “inputting,” and “generating” steps fall under evaluations, judgments, or opinions. 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. receiving a building construction form required for a building construction permit, extracting building design data and calculating building design metrics from the extracted building design data, and filling in fields of the building construction form using the building design data and calculated metrics, to generate a populated building construction form) using generic computers/computer components (i.e. “an add-in application for an external application on a computing device,” “by the add-in application of the computing device,” and “a Building Information Model (BIM) file” 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 comprising: executing an add-in application for an external application on a computing device,” “by the add-in application of the computing device,” and “a Building Information Model (BIM) file” 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: execute an add-in application for an external application on a computing device,” “by the add-in application of the computing device,” and “a Building Information Model (BIM) file” 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 providing or executing an add-in application for an external application on a computing device, and the limitations “wherein the external application comprises a building information modeling design software installed on the computing device, wherein the add-in application further comprises an Application Programming Interface to the external application” generally links the performance of the abstract idea to a particular technological environment or field of use – which does 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 from a “Building Information Model (BIM) file” and “wherein the BIM file is generated from an external application” also at most generally links the performance of the abstract idea (“extracting…building design data”) to a particular technical environment (using BIM files generated from an external application), but does not recite specific technical details pertaining to how BIM files are generated or implemented in the claimed invention that would indicate an improvement to the functioning of computers, or recite other limitations that would integrate the judicial exception into a practical application as per MPEP 2106.04(d)(I).
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. receiving a building construction form required for a building construction permit, extracting building design data and calculating building design metrics from the extracted building design data, and filling in fields of the building construction form using the building design data and calculated metrics, to generate a populated building construction form) using generic computers/computer components (i.e. “an add-in application for an external application on a computing device,” “by the add-in application of the computing device,” and “a Building Information Model (BIM) file” 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 comprising: executing an add-in application for an external application on a computing device,” “by the add-in application of the computing device,” and “a Building Information Model (BIM) file” 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: execute an add-in application for an external application on a computing device,” “by the add-in application of the computing device,” and “a Building Information Model (BIM) file” of claim 17).
As above, providing or executing an add-in application for an external application on a computing device, and the limitations “wherein the external application comprises a building information modeling design software installed on the computing device, wherein the add-in application further comprises an Application Programming Interface to the external application” only generally link the performance of the abstract idea to a particular technological environment or field of use – which does integrate the abstract idea into a practical application. Similarly, that the extracted building design data was extracted from a “Building Information Model (BIM) file” and “wherein the BIM file is generated from an external application” at most, generally links the performance of the abstract idea (“extracting…building design data”) to a particular technical environment (using BIM files generated from an external application), but does not recite a technical improvement in how BIM files are generated or recite other limitations that would that add significantly more. Considering the additional elements as an ordered combination does not indicate anything other mere instructions to “apply it,” or otherwise provide anything that adds significantly more than the abstract idea.
Dependent Claims 2-6, 10-14, and 18-20:
Dependent claims 2-6, 10-14, and 18-20 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 2-6, 10-14, and 18-20 recite the following limitations, which do not recite additional elements beyond those already addressed above, but merely further describe the abstract idea: “wherein the building construction form comprises an energy code compliance form for the building construction project” (claims 2, 10, 18); “wherein the one or more building design 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 metrics of the energy code compliance form requires…” (claims 5, 13); and “wherein the building design data and building design metrics comprise…” (claims 6, 14).
Therefore, claims 1-6, 9-14, and 17-20 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 1-2, 6, 9-10, 14, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 20180113959 A1 to Tierney et al. (Tierney) in view of US 20110246381 A1 to Fitch et al. (Fitch), and further in view of US 20230131463 A1 to Pantel.
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:
providing an add-in application for an external application on a 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 external application comprises a building information modeling design software installed on the computing device (Tierney: ¶ 0077 “a commercial BIM modeling software (e.g., applications such as REVIT, DYNAMO, FORMIT, SKETCHUP, TEKLA, ADVANCED STELL, or MODELCENTER)” used to design a building information model; see ¶ 0057, ¶ 0068, ¶ also showing the “external application on a computing device” to which the plug-in is connected is a building design/modelling software),
wherein the add-in application further comprises an Application Programming Interface to the external 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);
Claim Interpretation Note: While the claim recites the term “external application,” the external application is described as being installed on the computing device. Similarly, the “add-in application” is described as being “the add-in application of the computing device.” Therefore, despite being called an “external application,” both of these elements appear to be part of the computing device.
With respect to the following limitations, Tierney teaches an information gathering mechanism of the plug in application that gathers documents, cost estimate information (Tierney: ¶ 0047) and also describes the generation of construction documentation for each step of the construction process in a building (Tierney: ¶ 0070), 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),
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);
Tierney, as modified above, further teaches:
extracting, by the add-in application of the computing device, building design data from a Building Information Model (BIM) file of a 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”; also see ¶ 0078, ¶ 0015, ¶ 0050, ¶ 0057 showing extraction of BIM parameters including building design information),
wherein the BIM file is generated from the external application to the add-in application (Tierney: ¶ 0058 “The different building information modelling applications 402-402B enable the ability to design a building information model (BIM)”; and ¶ 0077-0078 showing “The designer 303A installs and opens a plug-in 302A to a commercial BIM modeling software (e.g., applications such as REVIT, DYNAMO, FORMIT, SKETCHUP, TEKLA, ADVANCED STELL, or MODELCENTER). The designer 303A specifies the current project they are designing in the plug-in interface 302A (multiple building developers may have invited the designer 303A to multiple projects). Thereafter, the designer 303A creates a BIM…The plugin 302A communicates with the server 310, sending the BIM and/or extracted BIM parameters”; also see ¶ 0057, ¶ 0015, ¶ 0050; i.e. the BIM file was designed/generated in the BIM modeling software and passed to the plug-in application for extraction);
With respect to the limitation:
calculating, by the add-in application of the computing device, the plurality of building design 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 merely differs from the claimed limitation in 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 (Fitch: ¶ 0028-0029, ¶ 0052-0054, ¶ 0062, ¶ 0064, ¶ 0079-0084, ¶ 0091, ¶ 0100-0101 showing calculating various 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 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.
With respect to the following limitations, Tierney also teaches calculating cost estimates based on the extracted building parameters from a BIM file (Tierney: ¶ 0056, ¶ 0058-0062), but does not explicitly teach the following examples of building design metrics. However, Fitch teaches:
wherein the calculated building design metrics include:
a comparison of one or more building component parameters to one or more prescribed values specified in a statutory or regulatory 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 performance of the building construction project in comparison to a first baseline value (Fitch: ¶ 0048-0055 showing comparing calculated values for energy performance of the building model in comparison to a baseline model; also see ¶ 0062-0064, ¶ 0007, ¶ 0028-0030, ¶ 0114), and
a comparison in costs of the building construction project to a second baseline value (Fitch: ¶ 0101-0102, ¶ 0108-0111, ¶ 0064, showing determining baseline costs associated with baseline model and comparing changes made by applying efficiency factors/user inputs to the baseline);
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/Fitch with a reasonable expectation of success of arriving at the claimed invention, for the same reasons described in the limitations above.
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/Fitch do not explicitly teach the following limitations. However, Pantel teaches:
and inputting, by the add-in application of the computing device, the extracted building design data and one or more of the calculated metrics in 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/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 2: Tierney/Fitch/Pantel teach claim 1. With respect to the following limitations, Tierney does not explicitly teach, however, Fitch teaches:
wherein the building construction form comprises an energy code compliance form for the building construction project (Fitch: ¶ 0090, ¶ 0094 showing generating LEED reports, LEED checklists)
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 generating reports, i.e. forms pertaining to energy code compliance/certification forms of Fitch in the building design system of Tierney/Fitch/Pantel with a reasonable expectation of success of arriving at the claimed invention, with the motivation to “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 6: Tierney/Fitch/Pantel teach claim 2. With respect to the following limitations, Tierney does not explicitly teach, however, Fitch teaches:
wherein the building design data and building design 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 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)”, and ¶ 0028 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/Fitch/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) 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 10: See the rejection of claim 2 above.
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: execute an add-in application on a computing device (Tierney: ¶ 0037 showing non-transitory CRM storing instructions for execution by a processor).
Claim 18: See the rejection of claim 2 above.
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 20110246381 A1 to Fitch et al. (Fitch), further in view of US 20230131463 A1 to Pantel, 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/Fitch/Pantel teach claim 2. With respect to the following limitations, Tierney/Fitch/Pantel do not explicitly teach, however, “Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020” teaches:
wherein the one or more building design 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/Fitch/Pantel, 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/Fitch/Pantel teach claim 2. With respect to the following limitations, Tierney/Fitch/Pantel 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/Fitch/Pantel, 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/Fitch/Pantel teach claim 2. With respect to the following limitation, Tierney/Fitch/Pantel do not explicitly teach, however, “Chapter 11 [RE] Energy Efficiency: New York State Residential Code 2020” teaches:
wherein the one or more building design metrics of the energy code compliance form requires the energy performance of the building construction project to be a specified percentage better than the first baseline 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/Fitch/Pantel, 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/HUNTER MOLNAR/Examiner, Art Unit 3628
/SHANNON S CAMPBELL/Supervisory Patent Examiner, Art Unit 3628