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 Amendment
This Final office action is responsive to Applicant’s amendment filed on
September 18, 2025. By the amendment, Applicant has amended claims 1, 13, and 14 and cancels claim 10. Claims 1-9 and 11-14 are pending and under examination.
Applicant’s amendment does not overcome the 35 U.S.C. §101 rejection. The 101 rejection is maintained below.
Response to Arguments
Applicant’s arguments with respect to the 35 U.S.C. §101 rejection filed on September 18, 2025 have been fully considered but they are not persuasive.
Applicant has amended independent claims 1, 13 and 14 and asserted on
page 10 that the Claims Do Not Recite a Judicial Exception under Prong One. Applicant further supported his assertion by arguing that when considered as a whole, such subject matter cannot be practically performed in the human mind
In response, the Examiner respectfully disagrees.
As per claims 1, 13 and 14, applicant is to be noted that the steps or functions of "create” or “creating" involve mental processes and/or generic computer functions or generic data analysis. The function of "outputting" involves an insignificant post solution activity.
None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means.
From this, it is noted that the claims do not recite the judicial exceptions of either natural phenomena or laws of nature.
Here, the claimed concept falls into the category of functions of organizing human activities such as managing commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). The claim concept also falls into the category of a mental process such as concepts performed in the human mind (including an observation, evaluation, judgment or opinion). The BRI of the claimed limitations describe functions of:
output the condition information, the evaluation function information, the facility information, or the operation information, and create the partial problem based on information related to creating the partial problem input in response to user operation based on the output condition information, evaluation function information, facility information, or operation information.
These functions can be seen as mental processes that can be performed by the human mind and/or via manual human activity with the aid of a generic computer.
This is also an example of concepts performed in the human mind as mental processes because the steps of create or creating, output or outputting mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See In re TLI Commc 'ns LLC Patent Litig., 823 F .3d 607,611 (Fed. Cir. 2016); FairWamingIP, LLC v. Jatric Sys., Inc., 839 F.3d 1089, 1093-1094 (Fed. Cir. 2016).
Claim 1 unlike the claims found non-abstract in prior cases, use generic computer technology to perform data transmission, display, reception, and analysis and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F .3 d 1299, 1314-1315 (Fed. Cir. 2016)
(finding claims not abstract because they "focused on a specific asserted improvement in computer animation"). As such, claims 1-9, and 11-14 recite receiving, determining, generating and transmitting data, and not a technological implementation or application of that idea.
Applicant further asserted that argues on page 13 that The Claims Integrate
a Practical Application under Prong Two. Applicant further supported his assertion by arguing that amended independent claim 1, as a whole, integrates the alleged abstract idea into a practical application because amended independent claim 1 recites additional elements that provide improvements to the technical field of solving large-scale facility planning problems.
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 recitation of a computer or processor into the claims does not generally alter the analysis at Mayo Step 2. It should be determined whether the claims do more than simply instruct the practitioner to implement the abstract idea on a generic computer." Alice, 57 3 U.S. at 225. They do not.
A function of creating and outputting data by electronic means or hard ware amounts to receiving, generating, and transmitting information over a network has been recognized by the courts as generic, routine, and conventional [computer activities that are performed only for their conventional uses]. (See MPEP 2106.05(d)(II), 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, G 10, Ll 8 USPO2d 1744, 1748 (ed. Cir. 2016) Casing a telephone for image transmission); OFF Techs., fac. v. Amazon.com, fie., 788 B.Ad 1359, 1363, LiS USPO2d 1090, 1093 (ed, Cir. 2015) (sending messages over a network}, buySAFE, fie. v. Google, Inc .. 768 F.3d 1350, 1355, 112 USPQ2d 1093, 1996 (Pod, Cyr. 2014) (computer receives, generates and transmits data over a network).
Positively reciting a device, a processor in a network as claimed does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer. Applicant is directed to In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 13 16 (Fed. Cir. 2011).
The judicial exception is not integrated into a practical application. In particular, the claimed "processor" is recited at a high level of generality such they amount to no more than mere instructions to apply the exception using a generic component. 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.
Applicant asserted that . Under Step 2B, the Claims Recite “Significantly
More”. Applicant further supported his assertion by arguing that the claims are not “directed to” an abstract idea, which means that the claims qualify as patent eligible subject matter, and further analysis under Step 2B is not required.
Amended independent claim 1 recites additional elements that amount to
significantly more than the judicial exception itself. The claim includes inventive concepts that are not well-understood, routine, or conventional in the field of learning of a solving large-scale facility planning problems.
In response, it has been clearly enumerated that claims directed to an abstract idea are patent-ineligible. Abstract ideas are characterized as concepts identified by the courts which include (1) mathematical concepts, (2) mental processes and (3) certain methods of organizing human activity. Among those concepts performed as being identified in the category of “Certain Methods of Organizing Human Activity” are “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
Like those concepts, limitations found in claim 1 and as similarly containing in claims 13 and 14 recite the concept of:
“processor is configured to output the condition information, the evaluation function information, the facility information, or the operation information, and create the partial problem based on information related to creating the partial problem input in response to user operation based on the output condition information, evaluation function information, facility information, or operation information”.
Each of these independent claims uses generic computer technology to perform data reception, and analysis and then sending a notification as such do not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F 3d 1299, 1314-1315 (Fed. Cir. 2016) ( finding claims not abstract because they "focused on a specific asserted improvement in computer animation"). As such, claims 1, 9 and 15 recite receiving data, determine data sending data as such is not a technological implementation or application of that idea.
Applicant is to be reminded that a system, apparatus, machine or method for performing business, however, novel, useful, or commercially successful, is not patentable apart from the means for making the system practically useful or carrying it out. The applicant is making use of a generic processor to create the partial problem based on information related to creating the partial problem….. The claims are void of anything significantly more than the abstract idea itself.
Amended independent claims 13 and 14 recite features similar to those discussed with respect to amended independent claim 1 and are not patent-eligible at Step 2B for at least similar reasons. Dependent claims 2-9, 11, and 12 are also not patent-eligible at Step 2B at least due to their dependence from a patent-eligible base claim 1.
Accordingly claims 1-9 and 11-14 are directed even as amended to an abstract idea.
Regarding the 35 USC 102 and 103 rejections, Applicant’s amendments have overcome the USC 102 and 103 rejections. The rejections are withdrawn.
Claim Rejections - 35 USC§ 101 Non-Statutory
4. 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.
5. Claims 1-9, and 11-14 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.
Representative Claim 1 recites:
create, by replacing a plurality of facilities with some of the plurality of facilities in a facility planning problem for creating a facility plan for operating any facility selected from the plurality of facilities, a partial problem of the facility planning problem, create a condition to be applied to the facility planning problem based on a solution to the created partial problem, and create the facility plan by seeking to solve a facility planning problem to which the created condition is added, wherein the facility planning problem includes condition information indicating constraint conditions of the facility planning problem, evaluation function information indicating an evaluation function for obtaining an evaluation value in a case where each of the plurality of facilities is selected, facility information related to selecting the facility, or operation information related to operating the facility, and the processor is configured to output the condition information, the evaluation function information, the facility information, or the operation information, and create the partial problem based on information related to creating the partial problem input in response to user operation based on the output condition information, evaluation function information, facility information, or operation information.
The claim limitations in the abstract idea have been indicated in non-bold and the additional elements in bold.
Similar limitations comprise the abstract ideas of Claims 13 and 14.
Under Step 1 of the analysis, claim 1 does belong to a statutory category, namely it is a system claim. Likewise, claim 13 is a computer-implemented process claim and claim 14 is a non-transitory computer readable medium.
Claim 2 further recites wherein the facility planning problem includes facility resource information related to resources consumed by selecting each of the plurality of facilities, and in a case where the facility planning problem includes the facility resource information, the processor is configured to create a plurality of partial problems reflecting resources consumed by sequential selection of the plurality of facilities based on the facility resource information.
Claim 3 further recites wherein the facility planning problem includes operation resource information related to resources consumed by operating each of the plurality of facilities, and in a case where the facility planning problem includes the operation resource information, the processor is configured to create a plurality of partial problems reflecting resources consumed by sequential operation of the plurality of facilities based on the operation resource information.
Claim 4 further recites wherein the processor is configured to create an initial value to be applied to the facility planning problem based on the solution of the partial problem, and seek to solve a facility planning problem to which the created initial value is added.
Claim 5 further recites wherein the facility planning problem includes evaluation function information indicating an evaluation function for obtaining an evaluation value in a case where each of the plurality of facilities is selected, and the processor is configured to create a limit value of the evaluation value to be applied to the facility planning problem based on the solution of the partial problem, and seek to solve a facility planning problem to which the created limit value is added.
Claim 6 further recites wherein the facility planning problem includes a plurality of facility information related to selecting the facility, in a case where the facility planning problem includes a plurality of facility inform the facility planning problem is sought to be solved for each of the facility information.
Claim 7 further recites wherein the facility planning problem includes a plurality of operation information related to operating the facility, and in a case where the facility planning problem includes a plurality of operation inform
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the facility planning problem is sought to be solved for each of the operation information.
Claim 8 further recites wherein the facility planning problem includes partial set information related to a partial set representing some of the plurality of facilities, and the processor is configured to create the partial set problem based on the partial set information.
Claim 9 recites wherein the partial set information includes facility ranking information indicating a priority order for each of the partial set.
Claim 11 further recites wherein the processor is configured to output information related to the solution of the partial problem, and create the condition based on information related to creating the condition input in response to user operation based on the output information related to the solution of the partial problem.
Claim 12 further recites wherein the created facility plan includes a facility to be selected from the plurality of facilities, and the processor is configured to output a facility to be selected from the plurality of facilities included in the created facility planning problem.
As per independent claims 1, 13 and 14, Applicant to be noted that the steps or functions of "create" involves mental processes and/or generic computer functions.
The functions of "output" involves an insignificant post solution activity.
Step 2A Prong 1, the claimed concept falls into the category of functions of organizing human activities such as performing a commercial or legal interaction (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) because it amounts to the functions of:
output the condition information, the evaluation function information, the facility information, or the operation information, and create the partial problem based on information related to creating the partial problem input in response to user operation based on the output condition information, evaluation function information, facility information, or operation information. These functions are also viewed as mental/manual processes.
Step 2A, prong 2 of the eligibility analysis evaluates whether the claim as a whole
integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
In particular, the clams recite the bolded limitations noted above as understood to be the additional limitations:
The claimed "processor" is similarly understood in light of applicant's specification (See Paragraph 0058 of the instant 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.
However, each of the additional elements recited in claim 1, as well as claims 13 and 14, comprise generic conventional data gathering, processing, and output steps, performed on and by generic conventional non-specific computer hardware and software elements, and conventional equipment generic in the art to which the invention relates, and is/are set forth at a highly generic level and each of which comprise an "insignificant extra-solution" activity(ies ). See MPEP 2106.0S(g) "Insignificant Extra-Solution Activity," Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
The generic data gathering, and processing steps, and other elements, are recited so generically (no details whatsoever are provided other than e.g.," memory," "a processor" that it represents no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the controller does not affect this analysis. See MPEP 2106.0S(g) "Insignificant Extra-Solution Activity," Parkerv. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978).
Thus, under Step 2A, prong 2 of the analysis, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception. No specific practical application is associated with the claimed system. For instance, nothing is done once the condition information, the evaluation function information, the facility information, or the operation information, and create the partial problem based on information related to creating the partial problem input in response to user operation based on the output condition information, evaluation function information, facility information, or operation information are output.
Under Step 2B, since the only steps outside the judicial exception are generic computer hardware and software and generic data gathering and processing steps, each of which is an insignificant extra-solution activity, the claim(s) does not include significantly more than the judicial exception.
As a result of the above analysis, claim 1, as well as claims 13 and 14, does not appear to be patent eligible under 101.
With regards to the dependent claims, claims 2-9, and 11-12, provide additional features/steps which are part of an expanded algorithm, so these limitations should be considered part of an expanded abstract idea of the independent claims.
6. The prior art taken alone or in combination fail to teach or suggest:
“wherein the facility planning problem includes condition information indicating constraint conditions of the facility planning problem, evaluation function information indicating an evaluation function for obtaining an evaluation value in a case where each of the plurality of facilities is selected, facility information related to selecting the facility, or operation information related to operating the facility, and the processor is configured to output the condition information, the evaluation function information, the facility information, or the operation information, and create the partial problem based on information related to creating the partial problem input in response to user operation based on the output condition information, evaluation function information, facility information, or operation information” as recited in independent claims 1, 13 and 14 .
- Aldajani (US Publication No. 20100004905) teaches facilities optimization method implemented on a computer for selecting efficient facility locations based on supply and demand laws.
- Banerjee et al “Knowledge-based facility planning: a review and a framework” teaches a method to generative task of creating a facility planning solution. The facility planning problem can be functionally divided into two interrelated issues, the technological knowledgebase design problem and the methodological knowledge-base design problem.
7. 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.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Romain Jeanty whose telephone number is (571)272-6732. The examiner can normally be reached M-F 9AM to 5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerry O'Connor can be reached at 571 272-6787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROMAIN JEANTY/Primary Examiner, Art Unit 3624