DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 2/2/2026 have been fully considered but they are not persuasive.
Applicant’s representative argues that:
“that the amended claims recite patent eligible subject matter as the claims recite a practical
application of the alleged abstract idea and recite significantly more than the abstract idea”.
The Examiner respectfully disagrees with the applicant’s arguments.
The Examiner’s response to the claims as now amended, is found in the rejection found 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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Specifically, claims 2 and 15 are directed to a method. Claim 8 is directed to a system. Each of the claims falls under one of the four statutory classes of invention. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
Claim 2 recites:
(Currently Amended) A method comprising:
generating a data structure configured to be implemented in a computer-centric database accessible to multiple computing devices, the data structure corresponding to a technology taxonomy including classifications of products;
determining a classification of a product based at least partly on a technical feature of the product;
identifying a patent claim that corresponds to the product based at least partly on the patent claim being associated with the classification;
identifying words included in the patent claim:
determining a metric of the patent claim utilizing one or more linguistic analysis techniques, the metric indicating a degree of coverage of the patent claim;
identifying a portion of the technology taxonomy associated with the classification;
determining a portion of revenue to apportion to the patent claim based at least partly on the metric of the patent claim with respect to other patent claims included in the portion of the technology taxonomy; and
determining a measure of value of the patent claim based at least partly on the portion of the revenue apportioned to the patent claim.
Claim 3 recites: applying a discount factor to the measure of value, the discount factor based at least partly on: a first exposure value corresponding to invalidation of the patent claim; and
a second exposure value corresponding to a probability of litigation with respect to the patent claim.
Claim 4 recites:
wherein the classification comprises a first classification, and the method further comprises:
determining the second exposure value based at least partly on a first number of litigation events taking place with respect to patents having the first classification relative to a second number of litigation events taking place with respect to patents having a second classification.
Claim 5 recites: determining the first exposure value based at least partly on a prosecution history event related to the patent claim.
Claim 6 recites: determining the first exposure value based at least partly on a first metric associated with a first examiner related to the patent claim relative to a second metric of a second examiner included in an art unit that is associated with the first examiner, at least one of the first metric or the second metric including at least one of:
a number of notices of allowance product over a period of time;
an average number of office actions before producing a notice of allowance;
a number of notices of appeal filed over the period of time; or
a number of reversals in appeal decisions over the period of time.
Claim 7 recites: wherein: the patent claim is assigned to an organization and the revenue of the product is provided to the organization; and
determining the discount factor comprises determining the discount factor based at least partly on a number of patent claims other than the patent claim that are assigned to the organization and that correspond to the product.
Claim 8 recites:
one or more processors; and
non-transitory computer-readable media storing instructions that, when executed by the one or more processors, cause the one or more processors to perform operations comprising:
generating a data structure configured to implemented in a computer-centric database accessible to multiple computing devices, the data structure corresponding technology taxonomy including classifications of products and services;
determining a classification of at least one of a product or a service based at least partly on a feature of the at least one of the product or the service;
identifying a patent claim of an intellectual-property asset that corresponds to the at least one of the product or the service based at least partly on the patent claim being associated with the classification;
identifying words included in the patent claim;
determining a metric of the patent claim utilizing one or more linguistic analysis techniques, wherein the metric indicates a degree of coverage of the patent claim; identifying a portion of the technology taxonomy associated with the classification;
determining a portion of revenue to apportion to the patent claim based at least partly on the metric of the patent claim with respect to other patent claims included in the portion of the technology taxonomy; and
determining a measure of value of the patent claim based at least partly on the portion of the revenue apportioned to the patent claim.
Claim 9 recites:
wherein determining that the at least one of the product or the service corresponds to the intellectual-property asset includes at least one of: receiving input data indicating that the at least one of the product or the service corresponds to the intellectual-property asset; or
identifying information indicating that the at least one of the product or the service corresponds to the intellectual-property asset, the information at least one of: stored in a datastore of an organization; or accessible via a website of the organization.
Claim 10 recites: the operations further comprising:
generating a user interface including one or more user-interface elements configured to receive financial data;
identifying, utilizing a datastore of an organization, a portion of the financial data corresponding to the at least one of the product or the service; or
identifying, utilizing information from one or more websites, the portion of the financial data corresponding to the at least one of the product or the service.
Claim 11 recites: wherein identifying the patent claim of the intellectual-property asset that corresponds to the at least one of the product or the service includes:
determining, based at least in part on an intellectual-property document associated with the intellectual-property asset, first words of the intellectual-property document;
determining, based at least in part on information related to the at least one of the product or the service, second words included in the information;
determining a similarity metric between at least a portion of the first words and at least a portion of the second words; and
determining that the similarity metric meets at least a threshold similarity metric.
Claim 12 recites: wherein the determining the classification is based at least in part on:
determining a first classification and a second classification;
determining, based at least in part on information corresponding to the at least one of the product or the service, the feature of the at least one of the product or the service;
determining, based at least in part on the feature and a first criterion associated with the first classification, a first similarity metric;
determining, based at least in part on the feature and a second criterion associated with the second classification, a second similarity metric; and
determining that the at least one of the product or the service corresponds to the first classification based at least partly on the first similarity metric being at least a threshold value and the second similarity metric being less than the threshold value.
Claim 13 recites: wherein the feature comprises a first feature, and the operations further comprise:
determining a second feature of the intellectual-property asset;
determining, based at least in part on the second feature and the first criterion, a third similarity metric;
determining, based at least in part on the second feature and the second criterion, a fourth similarity metric; and
determining that the intellectual-property asset corresponds to the first classification based at least partly on the third similarity metric being at least the threshold value and the fourth similarity metric being less than the threshold value.
Claim 14 recites: the operations further comprising:
determining a discount factor to associate with the first classification, the discount factor based at least partly on a first degree of exposure corresponding to invalidation of the patent claim and a second degree of exposure corresponding to probability of litigation with respect to the patent claim; and
determining, based at least partly on the discount factor, a modified amount of the revenue to use in determining the measure of value.
Independent Claim 15 recites:
receiving financial data corresponding to at least one of a product or a service, the financial data indicating revenue for the at least one of the product or the service;
identifying an intellectual-property asset of an organization;
utilizing one or more linguistic analysis techniques to determine first features of the at least one of the product or the service, the first features including at least one of: a first physical feature of the at least one of the product or the service;
or a first technical feature of the at least one of the product or the service;
utilizing one or more linguistic analysis techniques to determine second features of the
intellectual-property asset, the second features including at least one of: a second physical feature of the intellectual-property asset; or a second technical feature of the intellectual-property asset;
determining a similarity metric between the at least one of the product or the service and the intellectual-property asset based at least partly on an analysis of the first features and the second features;
determining, based at least partly on the similarity metric, that the at least one of the product or the service corresponds to the intellectual-property asset;
determining a first measure of coverage of the first intellectual-property asset based at least partly on a first number of physical features of the first intellectual-property asset in relation to a second number of physical features of a second intellectual-property asset;
identifying a portion of a data structure configured to be implemented in a computer-centric database accessible to multiple computing devices, the data structure corresponding technology taxonomy associated with the first intellectual-property asset; and
determining a portion of revenue to attribute to the first intellectual-property asset with respect to other intellectual-property assets included in the portion of the technology taxonomy.
Claim 16 recites: receiving information about the at least one of the product or the service from at least one of: a website associated with the at least one of the product or the service;
a datastore of the organization; or a user interface including one or more user-interface elements configured to capture data related to at least one of products or services; and
wherein at least one of the first features is determined based at least in part on the information.
Claim 17 recites: determining a classification of multiple classifications to associate with the at least one of the product or the service based at least partly on the first features, the classification being associated with at least one of first features or the second features; and
determining that the intellectual-property asset corresponds to the classification based at least partly on the classification being associated with the at least one of the first features or the second features.
Claim 18 recites: wherein the intellectual-property asset includes a trademark asset, and the method further comprises determining the second features based at least in part on a description of goods and services of the trademark asset.
Claim 19 recites: determining an amount of discount to apply to a portion of the revenue attributed to the trademark asset based at least partly on at least one of:
a number of litigation events related to trademark assets included in a classification associated with the trademark asset;
a number of oppositions related to the trademark assets included in the classification; or
first metrics of an examiner associated with the trademark asset in relation to second metrics of examiners associated with the trademark assets included in the classification.
Claim 20 recites: wherein determining the first features comprises determining the first features utilizing a trained machine learning model.
Claim 21 recites: wherein determining the first measure of coverage comprises determining the first measure of coverage utilizing a trained machine learning model.
As per claims 2, 8 and 15, the functions of “determining, “identifying” and “generating” involve mental processes and/or generic computer functions. The functions of “determine” or “determining” are also viewed as being involved mental processes and a mathematical function.
Claim 3 recites values to be applied to the functions of claim 2.
Claims 4, 5, 6, 7 also recite a “determining” function which also involves a mental and/or mathematical function.
As per claim 9, the “receiving” function involves a data gathering function. The identifying function involve a mental/manual process.
Claim 10 recites a “determining” and “identifying” functions which also involve a mental and/or mathematical function.
Claims 11, 12, 13 and 14 recite a “determining” function which also involves a mental and/or mathematical function.
Also as per claim 16, the “receiving” function involves a data gathering function.
Claim 17 and 18 also recite a “determining” function which also involves a mental and/or mathematical function.
Claim 18 further recites a type of parameter to apply to the functions of claim 15.
Claim 19 recites a type of parameters to apply to the functions of claim 15.
Claims 20 and 21 recite a “determining” function which also involves a mental and/or mathematical function.
Here, the claimed concept falls into the category of functions of organizing human activities such as mental processes (concepts performed in the human mind including an observation, evaluation, judgment and opinion).
Applicant is directed to In re Grams, 888 F .2d 835, 837 n.1 (Fed. Cir. 1989) in stating that ("Words used in a claim operating on data to solve a problem can serve the same purpose as a formula."); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (noting that analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, are essentially mental processes; Applicant is also directed to the 84 Fed. Reg. at 52 (listing exemplary mental processes including observations, evaluations, and judgments).
Although the claims recite an abstract idea based on these methods of organizing human activity, mental processes, and mathematical concepts, the Examiner must then determine whether the abstract idea is integrated into a practical application, namely whether the claim applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limit on the abstract idea, such that the claims are more than a drafting effort designed to monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54--55. To this end, we (1) identify whether there are any additional recited elements beyond the abstract idea, and (2) evaluate those elements individually and collectively to determine whether they integrate the exception into a practical application.
Step 2A, Prong Two: The judicial exception is not integrated into a practical application, In particular, the clams recite the following above noted bolded limitations being understood to be the additional limitations.
The limitations of “receiving” or “receive”, the functions of “analyze” or “analyzing”, “generate”
or generating”, determine” or determining”, and “identify” or “identifying” amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(1)), also see applicant's specification for guiding interpretation of these claim features, describing implementation with generic commercially available devices or any machine capable of executing a set of instructions, similarly describing usage of general and special purpose computer, and any kind of digital computer.
The claimed “processors” of independent claim 8 is similarly understood in light of applicant's specification as mere usage of any arrangement of computer software or hardware intermediate components potentially using networks to communicate with instructions are properly understood to be mere instructions to apply the abstraction using a computer or device or computer system.
Performing steps or functions by a generic machine, computing device or one or more processors with memories merely limit the abstraction to a computer field by execution by generic computers. See MPEP 2106.05(h).
The claimed processors of independent claim 8, the claimed “machine learning model” of claims 20 and 21 and “database” or user interface” are noted only to be used as tools to perform functions.
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to
insignificant extra-solution activity, and limitations which amount to generally linking to a particular technological environment do not integrate a practical exception into a practical application.
Furthermore, the claimed functions of “generate” or “generating” and “identify” or “identifying”, “determine” or “determining” of data are similar to Allappat, which as noted in MPEP 2106. 05(b)(1) is superseded, and the correct analysis is to look whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. The claims in the instant application are performed by a processor or computing device using a communication interface (as specifically recited in claim 20) to generate or determine data.
Consideration of these steps as a combination does not change the analysis as they do not add anything compared to when the steps are considered separately. The claims recite a particular sequence or function for generating a natural language explanation based on attribute data values.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the clams fail to recite additional elements which, when considered individually and in combination, amount to significantly more. Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis.
The receiving of data by a computing device or electronic means or hardware amounts to receiving data over a network has been recognized by the courts as routine, and conventional (See MPEP 2106.05(d)UD, citing Symantec, 835 F.3d at 1321, 120 OSPQ2d at 1362 (Utilizing an intermediary computer to forward information); TL Communications LEC v. AV Auto. LLC, 823 F.3d 607, G10, L18 USPO2d 1744, 1748 (ed. Cir. 2016) Casing a telephone for image transmission); OFF Techs., fac. v. Amazon.com, fic., 788 B.Ad 1359, 1363, Lis USPO2d 1090, 1093 (ed, Cir. 2015) (sending messages over a network}, buySAFE, fic. v. Google, Inc.. 768 F.3d 1350, 1355, 112 USPQ2d 1093, 1996 (Pod, Cyr. 2014) (computer receives and sends information over a network).
Positively reciting a “processor with memories”, or a “machine learning model and a database does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer.
These claimed elements also as found in the dependent claims are also recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
In processing the claims, it is noted that the recitation of these additional elements do not impact the analysis of the claims because these elements in combination are noted only to be a general purpose computer for performing basic or routine computer functions. These claimed elements are noted to a be a generic computer for receiving data and performing conventional functions. These additional elements do not overcome the analysis as these elements are merely considered as additional elements which amount to instructions to be applied to the generic computer.
The judicial exception is not integrated into a practical application. In particular, the claimed “processors with memories” in communication with an interface, a database and a “machine learning model” are recited at a high level of generality such they amount to no more than mere instructions to apply the exception using generic components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Accordingly, claims 2-21 are directed to an abstract idea.
The dependent claim(s) when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
The prior art taken alone or in combination failed to teach:
“determining a metric of the patent claim utilizing one or more linguistic analysis techniques, the
metric indicating a degree of coverage of the patent claim; identifying a portion of the technology taxonomy associated with the classification; determining a portion of revenue to apportion to the patent claim based at least partly on the metric of the patent claim with respect to other patent claims included in the portion of the technology taxonomy; and determining a measure of value of the patent claim based at least partly on the portion of the revenue apportioned to the patent claim” as recited in independent claim 2.
“determining a metric of the patent claim utilizing one or more linguistic analysis techniques,
wherein the metric indicates a degree of coverage of the patent claim; identifying a portion of the technology taxonomy associated with the classification; determining a portion of revenue to apportion to the patent claim based at least partly on the metric of the patent claim with respect to other patent claims included in the portion of the technology taxonomy; and determining a measure of value of the patent claim based at least partly on the portion of the revenue apportioned to the patent claim” as recited in independent claim 8.
“determining, based at least partly on the similarity metric, that the at least one of the product or
the service corresponds to the intellectual-property asset; determining a first measure of coverage of the first intellectual-property asset based at least partly on a first number of physical features of the first intellectual-property asset in relation to a second number of physical features of a second intellectual-property asset; identifying a portion of a technology taxonomy associated with the first intellectual-property asset; and determining a portion of revenue to attribute to the first intellectual-property asset with respect to other intellectual-property assets included in the portion of the technology taxonomy” as recited in independent claim 15.
THIS ACTION IS MADE FINAL. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANTZY POINVIL whose telephone number is (571)272-6797. The examiner can normally be reached M-Th 7:00AM to 5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANTZY POINVIL/Primary Examiner, Art Unit 3693
February 16, 2026