DETAILED ACTION
The following is a Final Office Action in response to communications filed on June 26, 2026. Claims 1 and 3 are amended, and claims 14–16 are newly added. Currently, claims 1–11 and 13–16 are pending.
Response to Amendment/Argument
Applicant’s Response is sufficient to overcome the previous rejection of claims 1–11 and 13 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Accordingly, the previous rejection of claims 1–11 and 13 under 35 U.S.C. 112(b) is withdrawn.
However, Applicant’s Response necessitates new grounds of rejection under 35 U.S.C. 112(b), and Examiner directs Applicant to the relevant explanation below.
With respect to the previous rejection of claims 1–11 and 13 under 35 U.S.C. 101, Applicant’s remarks have been fully considered but are not persuasive.
Applicant first asserts that the claims are directed to patentable subject matter in view of Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) because “the principles laid out by the ARP apply equally to the claims at issue”. Examiner disagrees. As noted by Applicant, the claims of Ex Parte Desjardins were deemed eligible under 35 U.S.C. 101 based on technical improvements in machine learning. Further, MPEP 2106.05(a)(II) distinguishes between technical improvements and business improvements by indicating that business improvements do not improve computers or technology.
Here, the pending claims do not embody any improvements in technology. Instead, the additional elements for “displaying a graphical representation” and “overlaying the graphical representation” are recited generically within the claims, and Applicant’s Specification describes the claimed functions without disclosing any corresponding technical improvements. As a result, the pending claims utilize generic technical elements to achieve an improvement in a business process for determining a lowest cost layout, such that the pending claims are not analogous to the claims of Ex Parte Desjardins. Accordingly, Applicant’s remarks are not persuasive.
With respect to Step 2A Prong One, Applicant asserts that the claims cannot recite mental processes because the claims embody technological improvements by dynamically incorporating user-assigned grades and soil information. Examiner disagrees. As an initial matter, Examiner notes that the rejection of record asserts that the claimed elements recite both mental processes and certain methods of organizing human activity, and Applicant has not presented any arguments indicating that the claims do not recite certain methods of organizing human activity. As a result, even if the claims do not recite mental processes, Applicant’s remarks are not persuasive because the claims recite certain methods of organizing human activity under Step 2A Prong One.
Regarding mental processes, MPEP 2106.04(a)(2)(III) sets forth the proposition that the “courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation.” Here, Examiner maintains that the recited elements embody observations and evaluations that could be practically performed using pen and paper because the elements require nothing more than arranging and evaluating layout data to determine costs associated with a layout.
Further, to the extent that Applicant asserts that the “dynamic” nature of the pending claims amounts to a technological improvement, Examiner submits that Applicant’s remarks are not commensurate with the scope of the claims. Merriam-Webster defines the term “dynamic” as “marked by usually continuous and productive activity or change”. However, neither the claims nor the Specification disclose continuous operations or analysis, and Applicant’s remarks do not point to any portion of the claims or Specification that could reasonably disclose continuous operation. Instead, the claims receive individual instances of data in a linear process to determine a lowest cost layout, and the Specification merely states that “there are no known methods that incorporate soil information dynamically,” without disclosing any dynamic functions possessed and/or implemented by Applicant. As a result, Applicant’s remarks are not persuasive.
Under Step 2A Prong Two, Applicant first asserts that the rejection “fails to consider the claim as a whole”. Examiner disagrees. As noted previously and below, the Step 2A Prong Two analysis considers the additional elements “in view of the claim as a whole”. As a result, Applicant’s remarks do not accurately address the rejection of record and are not persuasive.
Applicant’s remaining arguments under Step 2A Prong Two and Step 2B have been fully considered but are not persuasive for the same reasons as stated above. Specifically, Examiner maintains that the improvements recited in the claim and described in the Specification are not technical improvements. Instead, the disclosed improvements are business improvements in the area of layout planning that are embodied in the claim elements identified as abstract under Step 2A Prong One. Further, the abstract, business improvements are achieved using a generic technological environment that neither integrates the abstract idea into a practical application under Step 2A Prong Two nor amounts to significantly more than the recited abstract idea under Step 2B for the same reasons as asserted above and below. As a result, Applicant’s remarks are not persuasive because the alleged improvements are business improvements that do not embody a technical improvement under either Step 2A Prong Two or Step 2B.
Accordingly, the previous rejection under 35 U.S.C. 101 is maintained, and Examiner directs Applicant to the relevant explanation below.
Claim Objections
Claim 16 is objected to because of the following informalities:
Claim 16 recites “comparing the first layout a length of the first layout to a length of the second layout”. Examiner recommends amending the claim to recite “comparing .
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites “determining a first percentage … that comprises a very good soil aptitude class”. However, claim 16 subsequently recites “determining a second percentage … that comprises a very good soil aptitude class”. Examiner submits that the second recitation of “a very good soil aptitude class” renders the scope of the claim indefinite because it is unclear whether Applicant intends for the second recitation to reference the first recitation or intends to introduce second, different “very good soil aptitude class”.
For purposes of examination, the claim is interpreted as reciting “determining a second percentage … that comprises [[a]] the very good soil aptitude class”.
In view of the above, claim 16 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
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 1–11 and 13–16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 1–11 and 13–16 are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea.
With respect to Step 2A Prong One of the framework, claim 1 recites an abstract idea. Claim 1 includes elements for “generating a soil aptitude map based at least in part on soil aptitude information, wherein the soil aptitude information comprises slope information and Topographic Wetness Index (TWI) information for the area”; “dividing the soil aptitude map into soil mapping units based at least in part on the soil aptitude information and soil-type information”; “receiving a first user input, the first using input comprising assigning a grade to at least one of the soil mapping units”; “collating soil aptitude information with relief information and hydrography information”; “determining a soil aptitude class for each soil mapping unit based on each assigned grade, the soil aptitude information, the relief information, and the hydrography information”; “receiving a second user input, the second user input comprising defining a destination point and an origin point on the soil aptitude map”; “determining, based on each soil aptitude class, the origin point, and the destination point, a lowest cumulative distance cost for each portion of the soil aptitude map”; and “determining, based on each lowest cumulative distance cost, a lowest cost layout from the origin point to the destination point.”
The limitations above recite an abstract idea. More particularly, the elements above recite mental processes because the elements describe observations or evaluations that can be practically performed in the mind or by a human using pen and paper. The elements further recite certain methods of organizing human activity for fundamental economic principles or practices and/or managing personal behavior or interactions or relationships between people because the elements recite a process for determining a lowest cost infrastructure layout based on user inputs. As a result, claim 1 recites an abstract idea under Step 2A Prong One.
Claims 2–11 and 13–16 further describe the process for determining a lowest cost layout and further recite mental processes and/or certain methods of organizing human activity for the same reasons as stated above. As a result, claims 2–11 and 13–16 recite an abstract idea under Step 2A Prong One.
With respect to Step 2A Prong Two of the framework, claim 1 does not include additional elements that integrate the abstract idea into a practical application. Claim 1 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include steps for displaying a graphical representation and overlaying the graphical representation. When considered in view of the claim as a whole, the additional elements do not integrate the abstract idea into a practical application because the additional display elements do no more than generally link the use of the recited abstract idea to a particular technological environment. As a result, claim 1 does not include any additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
Claims 2, 9, and 14 include additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include a step for “generating a raster file” (claim 2); a processor of a computing device (claim 9); and a display, an electronic device, and an element for “displaying” on the display (claim 14). When considered in view of the claims as a whole, the additional elements do not integrate the abstract idea into a practical application because the additional computer elements are generic computing components that are merely used as a tool to perform the recited abstract idea, and the additional elements for “generating a raster file” and “displaying” do no more than generally link the use of the recited abstract idea to a particular technological environment. As a result, claims 2, 9, and 14 do not include additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
Claims 3–8, 10–11, 13, and 15–16 do not include any additional elements beyond those included in the claims from which claims 3–8, 10–11, 13, and 15–16 depend. As a result, claims 3–8, 10–11, 13, and 15–16 do not include any additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two for the same reasons as stated above.
With respect to Step 2B of the framework, claim 1 does not include additional elements amounting to significantly more than the abstract idea. As noted above, claim 1 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include steps for displaying a graphical representation and overlaying the graphical representation. The additional elements do not amount to significantly more than the recited abstract idea because the additional display elements do no more than generally link the use of the recited abstract idea to a particular technological environment. Further, looking at the additional elements as an ordered combination adds nothing that is not already present when considering the additional elements individually. As a result, claim 1 does not include any additional elements that amount to significantly more than the recited abstract idea under Step 2B.
Claims 2, 9, and 14 include additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include a step for “generating a raster file” (claim 2); a processor of a computing device (claim 9); and a display, an electronic device, and an element for “displaying” on the display (claim 14). The additional element does not amount to significantly more than the recited abstract idea because the additional computer elements are generic computing components that are merely used as a tool to perform the recited abstract idea, and the additional elements for “generating a raster file” and “displaying” do no more than generally link the use of the recited abstract idea to a particular technological environment. Further, looking at the additional elements as an ordered combination adds nothing that is not already present when considering the additional elements individually. As a result, claims 2, 9, and 14 do not include additional elements that amount to significantly more than the recited abstract idea under Step 2B.
Claims 3–8, 10–11, 13, and 15–16 do not include any additional elements beyond those included in the claims from which claims 3–8, 10–11, 13, and 15–16 depend. As a result, claims 3–8, 10–11, 13, and 15–16 do not include any additional elements that amount to significantly more than the recited abstract idea under Step 2B for the same reasons as stated above.
Therefore, the claims are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea. Accordingly, claims 1–11 and 13–16 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 WILLIAM S BROCKINGTON III whose telephone number is (571)270-3400. The examiner can normally be reached M-F, 8am-5pm, EST.
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/WILLIAM S BROCKINGTON III/Primary Examiner, Art Unit 3623
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