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 .
Applicant’s Reply
Applicant's response of 07/03/26 has been entered. The examiner will address applicant's remarks at the end of this office action.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a method (claims 1-3), a system (claims 4-7) a non-transitory storage medium with instructions (claim 8), and a device (claim 9); therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of evaluating the adaptive reuse of an existing building. The abstract idea is evaluating a building to determine its suitability for reuse based on data and a math equation.
Using claim 1 as a representative example that is applicable to claims 8, 9, the abstract idea is defined by the elements of:
acquiring research data of a to-be-evaluated residential building;
obtain an evaluation result;
substituting the evaluation result into a reuse mode decision-making matrix to obtain distribution of the to-be-evaluated residential building in the reuse mode decision-making matrix, wherein the distribution presents a reuse mode of the to-be-evaluated residential building at a region position of the reuse mode decision-making matrix, each region of the reuse mode decision-making matrix corresponds to one reuse mode for the existing residential buildings; reuse modes at least include a structure retention mode, a structure deformation mode, a component recombination mode, a material regeneration mode, and a demolition mode; and providing guidance for renovation design of the to-be-evaluated residential building according to the distribution of the to-be-evaluated residential building in the reuse mode decision-making matrix,;
wherein the research data of the to-be-evaluated residential building includes current quality data and reuse value data;
the adaptability evaluation system is:
xp=sP1+sP2, yp=sP3+sP4;
sP1=∑i=15sP1i∙WP1i,sP2=∑i=16sP2i∙WP2i,sP3=∑i=13sP3i∙WP3i,sP4=∑i=13sP4i∙WP4i,
where xp denotes the current quality data of a sample P; yp refers to the reuse value data of the sample P; sP1 is maintenance status data of the sample P; sP2 is structure status data of the sample P; sP3 is historical and regional value data of the sample P; sP4 is activation utilization value data of the sample P; sP1i is an absolute value of a maintenance status evaluation factor with a serial number i, WP1i is a weight value of the maintenance status evaluation factor with the serial number i; sP2i is an absolute value of a structure status evaluation factor with the serial number i, WP2i is a weight value of the structure status evaluation factor with the serial number i; sP3i is an absolute value of a historical and regional value evaluation factor with the serial number i, WP3i is a weight value of the historical and regional value evaluation factor with the serial number i; sP4iis an absolute value of an adaptive reuse value evaluation factor with the serial number i, and WP4i is a weight value of the adaptive reuse value evaluation factor with the serial number i
For claim 4
establish an adaptability evaluation system based on a hierarchy built by an analytic hierarchy process, wherein the hierarchy comprises a target layer, an index layer, and an evaluation factor layer, the target layer is used to present current quality data and reuse value data, the index layer is used to present a plurality of first sub-data of the current quality data and a plurality of second sub-data of the reuse value data,
the evaluation factor layer is used to present an evaluation factor of each of the first sub-data, an evaluation factor of each of the second sub-data, and a weight of each of the evaluation factor, the adaptability evaluation system is established based on each of the evaluation factor and each of the weight, and the adaptability evaluation system is used to obtain an evaluation result of a to-be-evaluated residential building;
form a reuse mode decision-making matrix by intersecting the reuse value data and the current quality data, wherein each region of the reuse mode decision-making matrix corresponds to one reuse mode for the existing residential buildings; and
judge a region of the evaluation result in the reuse mode decision-making matrix, and determine a reuse mode of the to-be-evaluated residential building
provide guidance for renovation design of the to-be-evaluated residential building according to distribution of the to-be-evaluated residential building in the reuse mode decision- making matrix
The above limitations are reciting a process by which an adaptive reuse for a building is being determined, such as when a building is being evaluated to determine if it can be used further or if the building cannot be used and needs to be demolished, as is recognized in the specification on page 9. The evaluation of a building to determine if it can be reused and to what extent it can be reused, is a commercial practice that has long been performed by people albeit manually. People such as property owners and interested buyers will evaluate a building for its reuse potential to determine if it can be used as it is now, or if it can be used with some modification, or a determination that it cannot be reused and must be demolished. This is something that is a commercial practice in the real estate industry as far as evaluating a building for its ability to be reused. This represents a certain method of organizing human activities type of abstract idea. Additionally, the examiner notes that the heart of the invention lies in the equation that is claimed in claim 1, which is what the applicant states is the adaptability evaluation system itself. The inventive concept is the use of a math equation to determine the quality data and the reuse data so that it can be plotted on an x/y graph. The claim can also be viewed as the performance of a math equation due to the claim reciting that the residential building information is being substituted into the adaptability evaluation system, that is itself defined in the claim as being a math equation. That means that the claim is setting forth the act of executing a math equation. This can also be considered as reciting the abstract idea of a math equation. Put another way, the certain method of organizing human activities that is evaluating a residential building for its reuse potential is accomplished by executing a math equation that is itself reciting a judicial exception (the equation itself and its execution). For these reasons the claims are considered to be reciting an abstract idea at step 2A as they set forth and/or describe a judicial exception in the claim scope.
For claim 1, the additional elements of the claim are the recited processor that is used to perform the acquiring step and the substituting step.
For claim 4, the additional elements of the claim are the recitation to at least one memory configured to store a program and a processor configured to load the program to cause the claimed abstract idea to occur.
For claims 8, 9, the additional elements are the non-transitory computer storage medium with instructions to perform the method of claim 1, and the device that comprises at least one memory and at least one processor that are used to execute the method of claim 1.
For claims 1, 4, 8, 9, the judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device with a processor and memory that is being merely used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor and memory, to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer, which is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination with the claim as a whole because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device with a processor and memory that is being merely used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor and memory, to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer Again, applicant is referred to MPEP 2106.05(f). The rationale set forth for the 2nd prong of the eligibility test above is also applicable to step 2B in this regard so no further comments are necessary.
For claims 2, 3, 5-7, the further recitation to the data that comprises the quality data and the reuse value are elements that are further defining the abstract idea of claim 1. The same is noted for the claimed x and y axis and the recited modes of the regions that are representative of where a data point falls on the graph, and that is indicative of the reuse for the building. These elements are reciting a further embellishment of the same abstract idea that was recited for claims 1 and 4. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
Therefore, for the above reasons, claims 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Response to arguments
The claims have been amended to remove language that was invoking 112f. The comments to such extent are persuasive.
The traversal of the 35 USC 101 rejection is not persuasive. On page 12-13 of the reply the applicant argues that the claims recite steps that provided for additional technical features as follows:
"acquiring, by a processor, research data of a to-be-evaluated residential building"
"substituting, by the processor, the evaluation result into a reuse mode decision-making matrix to obtain distribution of the to-be-evaluated residential building in the reuse mode decision-making matrix, wherein the distribution presents a reuse mode of the to-be-evaluated residential building at a region position of the reuse mode decision-making matrix, each region of the reuse mode decision-making matrix corresponds to one reuse mode for the existing residential buildings; reuse modes at least include a structure retention mode, a structure deformation mode, a component recombination mode, a material regeneration mode, and a demolition mode"
(c) "providing guidance for renovation design of the to-be-evaluated residential building according to the distribution of the to-be-evaluated residential building in the reuse mode decision-making matrix."
The claimed functions/steps of acquiring the research data, substituting the evaluation result into the claimed matrix, and providing the claimed guidance are elements that serve to define the abstract idea and are not technical in nature. The applicant argues that the claims limit the data to research data for a to be evaluated building (argued as specific data). The research data itself is part of the abstract idea and claiming a specific type of data does not somehow render the claims as being non-abstract. The research data is part of the abstract idea in the form of information per se. The argument is not persuasive. The applicant argues the transforming of the result into a specific decision through use of the matrix. This element is also found to be part of the abstract idea, not an additional element that is technical in nature. The links of the claimed information as argued, is also arguing the abstract idea. The arguments are not persuasive for this reason.
The applicant argues that the claims define a specific set of rules that transform research data into an evaluation result. What has been argued is the abstract idea. The applicant refers to McRo and argues that claiming a result that cannot be achieved by human judgement alone makes a claim eligible. This is not persuasive. First, the pending claims do not serve to improve technology in any manner so McRo is not instructive in that regard. The fact that the claims use specific rules and a math equation to determine an evaluation result does not mean it cannot be done by a human, and the applicant has not offered any explanation of why this is the case. Narrowly drafted abstract ideas are still abstract ideas. In buySAFE, Inc. v. Google, Inc. (Fed. Cir. 2014), the court stated that "abstract ideas, no matter how groundbreaking, innovative, or even brilliant, are outside what the statute means by "new and useful process, machine, manufacture, or composition of matter", and reference is made to Myriad by the court for this position. Also stated in buySAFE is "In defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow. Mayo, 132 S. Ct. at 1303. The Court in Mayo rejected the contention that the very narrow scope of the natural law at issue was a reason to find patent eligibility, explaining the point with reference to both natural laws and one kind of abstract idea, namely, mathematical concepts.
Therefore, arguing that the claims recite specific rules to determine an evaluation result is not persuasive to show that the claims are eligible. Technology is not being improved as a result of performing the claimed steps, with the only technology of the claims being a processor. The processor is not being improved in any manner. The determination of what to do with a building (reuse) is not technical in nature and is what defines the abstract idea. The specificity with which the abstract idea is claimed does not make the abstract idea non-abstract.
On page 14 the applicant argues that claim 1 recites providing guidance for renovation design, and argues that the matrix serves as a map to be utilized in urban planning and building renovation practice. This is arguing the abstract idea. The claimed output from the equation is what defines the abstract idea, where the abstract idea includes the output being used to make recommendations on building renovations. This is what defines the abstract idea. This is not an additional element that renders the claims eligible and is not something that serves to improve technology in any manner.
The applicant argues that conventional building reuse assessments rely on human judgement and argues that the invention provides a quantitative framework that did not exist before. This is not persuasive. First, the claim recites an abstract idea and the fact that it uses rules or a math equation does not mean it is not reciting or directed to an abstract idea. Second, the issue of whether or not something existed before is not dispositive to the eligibility issue. See SAP AMERICA, INC., Plaintiff-Appellee v. INVESTPIC, LLC”
We affirm. We may assume that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness) (Symantec). The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations (in the plot of a probability distribution function). No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm. An advance of that nature is ineligible for patenting.
The same rationale can be applied to the pending claims. A novel math equation does not make a claim eligible because the lack of prior art for the math equation. The lack of prior art for the pending claims does not equate to eligibility. The argument is not persuasive. Claim 1 does not impose meaningful limits on the judicial exception as argued on page 15. The claims do no more than to instruct one to practice the abstract idea by using a processor and a program stored in memory. That is the same as reciting “apply it” with a computer for the abstract idea.
The applicant argues that the lack of prior art for the claims makes them eligible on page 15. This has been addressed above and is not persuasive. Even novel and non-obvious abstract ideas are still abstract ideas.
The reliance on Diehr is not persuasive on page 15-16 of the reply. The applicant argues that the use of the equation to generate renovation guidance is a practical technological application. This is not persuasive. Unlike Diehr, the claimed invention is not using a math equation to do anything other than produce a result that is part of the abstract idea. Just because a process uses a math equation, such as calculating a credit score using a specific equation, does not mean it is similar to Diehr as there is nothing physical being transformed from one state to another, like the tire in Diehr. The argument is not persuasive.
The applicant argues “the claimed invention does not merely collect, analyze, and present information. Rather, the reuse mode decision-making matrix is used to generate a specific renovation design guidance associated with physical treatment options for a building, including structure retention, structure deformation, component recombination, material regeneration, and demolition.”. The argued matrix that is used to generate specific renovation design guidance associated with a building as claimed is collecting research data to be analyzed in order to present information in the form of an evaluation result and guidance, which is defining the abstract idea. Claims do not have to broadly recite collection, analysis, and presentation of a result to considered to be reciting an abstract idea. Even narrowly drafted abstract ideas are still abstract ideas. The argument is not persuasive.
The applicant argues on page 16 that the claimed invention is eligible because it recites an evaluation framework, a matrix, and linkage to design guidance, and alleges that this integrates any abstract idea into a practical application. This is not persuasive because the extent of any additional elements is that the applicant is claiming the use of a processor. That is nothing more than an instruction for one to practice the abstract idea using a generic computer. That does not provide for integration into a practical application. See MPEP 2106.05(f). The applicant refers to MPEP 2106.05(a), but the problem is that the claim result is providing of guidance on how to renovate or reuse a building. That does not serve to improve technology or a technical field because determining how best to reuse a building is a certain method of organizing human activities. That is not something that is technical in nature. People did this very thing before computers were invented so it cannot be said that it is a technical field where the claim serves to improve technology. The argument is not persuasive. The 35 USC 101 rejection is being maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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/DENNIS W RUHL/ Primary Examiner, Art Unit 3626
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