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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 31, 2025 has been entered.
Status of the Claims
Claims 1-16 were previously pending. Claims 1, 4, 6-7, 12, and 15 were amended, claims 8-10 were canceled, and new claims 17-19 were added in the reply filed December 31, 2025. Claims 1-7 and 11-19 are currently pending.
Response to Arguments
Applicant's amendments do not overcome the objection to claim 12, which still lacks a transitional phrase such as "comprising."
Applicant's amendments overcome the rejection made under § 112(a) and it is withdrawn.
Applicant's amendments overcome the rejection made under § 112(b) and it is withdrawn.
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive. Where arguments are cumulative and/or repetitive they are addressed together below.
With respect to mental steps, Applicant argues that a human cannot modify their internal algorithm (see Remarks, 29-30, 34) or process large sets of data (Remarks, 31, 33-34, 43, 48, 61). While mental steps is no longer a basis of the rejection, there is no reason why a human cannot mentally reevaluate their priors based upon new data. Large data sets are not required by the claim and, moreover, it is a generic ability of all computers to process large data sets. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[Sjimply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted)).
With respect to certain methods of organizing human activities, Applicant argues that the self-calibration routine removes the claims from that category (Remarks, 30, 34). However, analysis of economic data is still the focus of the claim. Updating an algorithm that analyzes economic data still fits into the category. Similarly, with respect to Enfish and McRO (Remarks, 30), the categorization, validation, and error correction are all being performed with respect to economic/financial data, rather than data particular to computer operations as was the situation in those cases (Enfish—computer memory configuration; McRO—computerized animation techniques). With respect to the incompatibility of the data sources (Remarks, 30, 32), the data sources in question ("financial ledger" and "operational service log") are also not data particular or specific to computers and instead describe abstract economic data regarding real estate maintenance and repair.
With respect to the Natural Language Models (Remarks, 31, 43, 48), these are generic tools for recognizing text. As held in Content Extraction and Transmission. v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014) and other cases, recognizing abstract textual data using computers as tools is not a patent-eligible improvement.
"Since, as per the Applicant's assessment, the now revised Claim 1 and 12, go beyond mere manipulation of abstract data and instead brings out in a novel and non-obvious way. Along with providing well- defined boundaries, it now also brings forth significant improvements/advancements in the methods/systems of obtaining recurring issue-categories of a desired property in the independent claim, while eventually leading up to an estimation of maintenance-burdens expected for a user desired property within the subsequent dependent claims." Remarks, 33. "The claims are now directed to a specific computational method for transforming raw, unreliable data into a clean set of real-estate data, that may be utilised objectively to obtain virtual constructs (formerly, average property), to then compare issue categories pertinent to the desired property against this virtual construct, while simultaneously recalibrating and re-reviewing the identified issue-categories for any detected errors in such issue-categorization, thus distinctly solving a technical problem rooted in computer technology and its specific implementation." Remarks, 42. Even as characterized by Applicant in these passages, this is an abstract data analysis of economic/financial data regarding real estate.
"While the end-result of the invention (cost-estimate/maintenance-burden) pertains to economic value, the process claimed (self-calibration, textual sanitization, anomaly detection) is absolutely technical." Remarks, 33. A process that starts with data, applies an algorithm to the data, and then ends with a new form of data is abstract. Recognicorp, LLC v. Nintendo Co, Ltd., 855 F.3d 1322 (Fed. Cir. 2017).
With respect to novelty and obviousness in view of the prior art (Remarks, 44-46), this is not the test for eligibility. "The 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). "[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Similarly, Applicant argues that the claims are not shown as being well-understood, routine, and conventional under Berkheimer (Remarks, 45-47). However, "the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (emphasis added). The generic computer, server, etc. in the claims are unquestionably conventional, and using them to perform an improved abstract mathematical analysis of real estate data is not patent-eligible.
"As clearly elaborated above, the 'Virtual Construct' is not a real real-estate property; it is a dynamic, calculated baseline—a statistical object. Crucially, the specification notes that 'Each of these average properties is generated, based on the corresponding data obtained from the various real-estate data-sources.' This implies inherently the creation of multiple, source-specific virtual constructs (e.g., a 'Financial Virtual Construct' and an 'Operational Virtual Construct'). Remarks, 48. This describes an abstract virtual construct resulting from mathematical analysis of economic data. "Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible." Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). All of the elements highlighted as "significantly more" (see Remarks, 49-50) are not additional elements. Rather, they fit into the abstract categories of certain methods of organizing human activities and mathematical concepts.
"Similarly, in Thales Visionix Inc. v. United States, 850 F.3d 1343, 1348–49 (Fed. Cir. 2017), the improvement was in a physical tracking system. The use of mathematics to achieve an improvement no more changed the conclusion that improved physical things and actions were the subject of the claimed advance than it did in Diamond v. Diehr, 450 U.S. 175 (1981). Here, in contrast, the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results. Contrary to InvestPic’s suggestion, it does not matter to this conclusion whether the information here is information about real investments. As many cases make clear, even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract. Electric Power, 830 F.3d at 1353, 1355 (citing cases). Moreover, the 'investment' character of this information simply invokes a separate category of abstract ideas involved in Alice and many of our cases—'the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices.' Id. at 1354." SAP America, Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
With respect to the self-optimization (Remarks, 51), improvement of an algorithm evaluating economic data does not improve the computer itself or any other technology. Instead, it improves the abstract idea. Moreover, although the claims do not explicitly recite machine learning, the Federal Circuit has held that "[t]he requirements that the machine learning model be ‘iteratively trained’ or dynamically adjusted in the Machine Learning Training patents do not represent a technological improvement” because '[i|terative training using selected training material and dynamic adjustments based on real-time changes are incident to the very nature of machine learning.'" Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205, 1212 (Fed. Cir. 2025).
With respect to the comparisons to issued patents (Remarks, 52-61), the examination of any individual patent application turns on its own specific set of facts and the application of legal/statutory standards to particular claims. The nature of and time allotted for examination does not allow for detailed comparisons with the file wrappers of other applications/patents not in the continuity of the instant application.
"The 'maintenance-burden' is not the abstract idea; it is the output of a technical process that transforms 'unstructured failure data' into a 'normalized risk metric.' As the Federal Circuit held in Thales Visionix and McRO, using mathematical rules (or statistical baselines) to improve a computer's operation or control a specific object (the property maintenance schedule) is eligible. The invention transforms the 'article' of raw/incompatible real-estate data into a new state: a normalized/categorizable clean-set of real-estate data." Remarks, 61. As set forth above, applying an algorithm to abstract data that results in new abstract data (i.e., a property maintenance schedule) is not a patent-eligible improvement. Intangible data is not an "article" in the context of § 101, and mathematical improvements to the analysis of real estate data is not equivalent to improvements to sensor arrays (Thales) or computerized animation (McRO), which are particular to technology. Accordingly, the rejection is maintained.
Claim Objections
Claim 12 is objected to because of the following informalities: the claim lacks a transitional phrase. Appropriate correction is required.
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 1-7 and 11-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-7 and 11-19, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including:
a) Receiving inputs from a user with respect to a desired property, in order to obtain real-estate data from a plurality of different real-estate data-sources;
b) Processing the real-estate data, using a textual-analysis process to normalize all the real estate data, and then providing a clean-set of the real estate data, and categorize the clean-set of real-estate data into various issue-categories for each property of each different real-estate source, in order to obtain a plurality of issue-categories with respect to the desired property;
c) Calculating a frequency of service orders within each of the issue-categories of the desired property, and calculate the frequency of service orders for typical and non-typical types of issue-categories;
d) Generating a plurality of comparative datasets, by comparing the frequency of service orders requests for each issue-category of the desired property, with that of issue-categories of an average property, wherein the average property is a virtual construct that is individually obtained with respect to each of the plurality of different real-estate data-sources;
e) Reviewing, all recurring issue-categories, within each of the plurality of comparative datasets, wherein each of the recurring issue-category is one whose frequency of service order requests for the desired property exceeds that the average property by a predetermined statistical threshold; and
f) Obtaining all the recurring issue-categories as a first output for the user;
g) reviewing all the obtained issue-categories for errors, and, in case errors are identified makes correction to the corresponding issue-category; and
h) determining a cause of error of a wrong issue-categorization instance, then based on this determined cause, making modifications to algorithms, followed by performing a re-calibration of the real-estate data at disposal, to eliminate any previously overlooked errors in the issue-categorization process.
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information about common real estate issues that may need repair or maintenance (i.e., in the terminology of the 2019 Revised Guidance, fundamental economic practices (including mitigating risk); commercial interactions (including marketing or sales activities or behaviors; business relations)). Additionally, the claims recite mathematical relationships and calculations (i.e., Calculating a frequency of service orders; Generating a plurality of comparative datasets, by comparing the frequency of service orders requests for each issue-category of the desired property; Reviewing, all recurring issue-categories, within each of the plurality of comparative datasets, wherein each of the recurring issue-category is one whose frequency of service order requests for the desired property exceeds that the average property by a predetermined statistical threshold).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)—obtaining and comparing intangible data, which also characterizes the invention; Berkheimer v. HP, Inc., 890 F.3d 1369 (Fed. Cir. 2018)—parsing, comparing, storing, and editing data, which also characterizes the invention; University of Florida Research Foundation v. GE Company, 916 F.3d 1363 (Fed. Cir. 2019)—collecting, analyzing, manipulating, and displaying data, which also characterizes the invention; Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content, then displaying the results, similar because at another level of abstraction the claims could be characterized as process of gathering and analyzing information of real estate issue categories, then displaying the results; SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018)—mathematical analysis of financial data, which also characterizes the invention).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (computer, central server, user device, processing logic—all recited at a high level of generality). Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it."
Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (computer, central server, user device, processing logic—see Specification ¶ 0049 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the abstract idea without changing the analysis already presented (i.e., they merely narrow the same abstract idea identified above without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims (i.e., generic computer and user device). Claims 11 and 19 recite the additional element of natural language models. However, this is also recited at a high level of generality and only serves to link the abstract idea to a particular technological environment, while using NLP as a tool to perform abstract data analysis instead of improving any technical elements.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. Although they add the elements identified in 2A above (natural language models), these do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above (see ¶ 0038 describing it at a high level of generality and without appreciable technical specifics). Accordingly, they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
Conclusion
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shannon Campbell can be reached at 571-272-5587. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL VETTER/Primary Examiner, Art Unit 3628