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 .
Notice to Applicant
The following is a Final Office action. In response to Examiner’s Non-Final Rejection of 2/5/26, Applicant, on 3/6/26, amended claims. Claims 1, 3, 6-9, 11, 14-17, 19, and 21 are pending in this application and have been rejected below.
Response to Amendment
Applicant’s amendments are acknowledged.
The 103 rejections are overcome at this time, but new 112(a) and 112(b) issues remain; so depending on how the claims are amended, it is possible a 103 rejection is applied in the future.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 6-9, 11, 14-17, 19, and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 introduces “transport data” on line 11, then states that it “includes” [line 12] “generating transportation related to transporting the equipment from the manufacturing location to the delivery location” [line 15-16] but on lines 17-20 it recites “removing, from the element-level parameters, a cost of transport, the cost of transport associated with at least one of freight, packaging weight, or customs-related expenses different from the cost of transport with respect to the neutral reference plane,” but on line 23-24 recites “separately calculating location-specific shipping and installation costs for the delivery location.” It is unclear how the cost of transport is removed “with respect to the neutral reference plane,” but independent of the “transport,” is now calculating “shipping” costs. The “shipping” here is somehow recited in a manner unrelated from the “transport.” [0071] as published states “The element-level parameter may be in a non-neutral reference plan (e.g., time, location, etc. may be different from the neutral reference plane) and may include a variety of factors that may be adjusted or removed in order to place the element-level parameter in the neutral reference plane.” First, it is unclear why there is a list with only the last one (customs) being “with respect to the neutral reference plane.” It appears punctuation or an added phrase “wherein the cost of transport is different…” can clarify this aspect. The current claim somehow removes a variety of costs of transport that are “not” neutral, but then also still calculates “location-specific shipping” – with no reference to any earlier limitations. The various changing of terms (transport is different than shipping? the same as shipping?) makes it unclear how this is supported. Examiners’ best guess is perhaps portions of [0071, 0074-0075] as published is what is intended possibly. Perhaps the claim is not intending to “remove” all costs of transport, but rather, based on [0075] stating “ factors may be removed or adjusted to account for these changes, so as to permit a comparison with the prices of elements from other projects. In at least some embodiments, normalizing equipment costs for manufacturing location considers the likely costs incurred by equipment vendors in manufacturing the equipment”. Examiners’ best guess is “shipping” and “transport” refer to the same type of costs, and some combination of “removing a 1st set of factors specific to a 1st location” is what was removed [if supported], then the same type of cost, based on “normalized transport cost” is used to compute “location-specific transport cost” for a 2nd location? As constructed, it is unclear how it is supported to entirely remove the transport cost, but then “separately” calculate the shipping cost, without any regard for any earlier limitation.
Independent claims 9 and 17 recite similar limitations and are rejected for the same reasons.
Claims 3, 6-8, 11, 14-16, 19, and 21 depend from claims 1, 9, and 17 and are rejected for the same reasons.
Claim 9 is a “computing system” where instructions are executed to cause the computing system to perform operations: … “providing control instructions to the equipment to conduct the operations for the project at the facility using the equipment according to the equipment parameter.” As best understood, it appears the only support is [0065] as published and in FIG. 3 “Further, the method 300 may include implementing (physically) the facility development determinations, e.g., building the facility, sourcing equipment, sourcing labor, etc., and conducting operations using the facility, as at 314. For example, such determinations may be implemented by selecting a particular type of equipment over another, a manufacturing location, adjusting throughput, etc., and building at least a portion of the facility based at least in part on the determinations.” Given that claim 9 is with regard to equipment parameter-level data of either transport data, location data, installation data, or time data, [0065] as published and FIG. 3 only support a manual step of a person “physically” using the equipment. The disclosure as filed does not support a “computer” automatically conducting/controlling transport, or operating the equipment, nor “sending control instructions to equipment” as now claimed. Examiner suggests cancelling the claim limitation, or explaining how the “computer” could support automated control of equipment as the claim currently covers.
Independent claim 17 has a “computing system to perform operations” and ends with a similar limitation of “providing control instructions to the equipment to conduct the operations for the project using the equipment according to the equipment parameter.” Claim 17 is rejected for similar reasons as claim 9, as there is no support for a computer automatically controlling/using the equipment.
Claims 11, 14-16, and 19 depend from claims 1, 9, and 17 and are rejected for the same reasons.
Claim Rejections - 35 USC § 112
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.
Claims 1, 3, 6-9, 11, 14-17, 19, and 21 are 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 1 introduces “transport data” on line 11, then states that it “includes” [line 12] “generating transportation related to transporting the equipment from the manufacturing location to the delivery location” [line 15-16] but on lines 17-20 it recites “removing, from the element-level parameters, a cost of transport, the cost of transport associated with at least one of freight, packaging weight, or customs-related expenses different from the cost of transport with respect to the neutral reference plane,” but on line 23-24 recites “separately calculating location-specific shipping and installation costs for the delivery location.” It is unclear how the cost of transport is removed “with respect to the neutral reference plane,” but independent of the “transport,” is now calculating “shipping” costs. The “shipping” here is somehow recited in a manner unrelated from the “transport.” First, it is unclear why there is a list with only the last one (customs) being “with respect to the neutral reference plane.” It appears punctuation or an added phrase “wherein the cost of transport is different…” can clarify this aspect. The various changing of terms (transport is different than shipping? the same as shipping?) makes it unclear what is being referred to for “transport” and “shipping” and how they differ. Examiners’ best guess is they refer to the same type of costs, and some combination of “removing a 1st set of factors specific to a 1st location” is what was removed [if supported], then the same type of cost, based on “normalized transport cost” is used to compute “location-specific transport cost.”
Independent claim 9 and 17 recite similar limitations as claim 1 and are rejected for the same reasons.
Claims 3, 6-8, 11, 14-16, 19, and 21 depend from the independent claims and are rejected for the same reasons.
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, 3, 6-9, 11, 14-17, 19, and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. an abstract idea) without reciting significantly more.
Step One - First, pursuant to step 1 in MPEP 2106.03, the claim 1 is directed to a method which is a statutory category.
Step 2A, Prong One - MPEP 2106.04 - The claim 1 recites–
“A method, comprising:
for a facility development plan of a project, the project including equipment, receiving user-defined input data representing element-level parameters of the equipment, wherein the equipment includes one or more pressure vessels (Applicant’s [0064] as published states “development determinations at 310… whether to proceed with a project at all… decisions… so as to maximize equipment usage and/or reduce costs by eliminating some equipment; [0067] as published states “The element-level data may include the element-level parameter (e.g., element cost), as well as other factors that may impact the parameter value, such as size, labor location/rates, dates, times, etc.”; [0075] as published – normalizing equipment costs for manufacturing location considers the likely costs incurred by equipment vendors in manufacturing the equipment and making it available for transport at the operating location of the facility under development (e.g., the factory gate)) – accordingly, limitation treated as part of Abstract idea grouping of Certain methods of Organizing Activity - making a plan that is followed);
determining, …, that the user-defined input data includes user-defined non-normalized input data and user-defined normalized input data, wherein the user-defined non-normalized input data is not normalized to a neutral reference plane;
for the user-defined non-normalized input data, generating…, new normalized input data by normalizing the user-defined non-normalized input data to the neutral reference plane, wherein normalizing includes:
normalizing the element-level parameters based on transport data, wherein normalizing based on the transport data includes:
determining that a manufacturing location of the equipment is different from a delivery location of the equipment;
removing, from the element-level parameters, a cost of transport, the cost of transport associated with at least one of freight, packaging weight, or customs-related expenses different from the cost of transport with respect to the neutral reference plane;
normalizing the element-level parameters based on at least one of location data, installation data, or time data;
separately calculation location-specific shipping and installation costs for the delivery location;
merging, …, the new normalized input data, the user-defined normalized input data, and platform accessible data (Applicant’s [0046] states “Platform-accessible data 208 may include data stored internally 209, e.g., facility planner data points, and/or external data 211, such as data that is available from other sources, e.g., vendor databases, public databases, etc.” – so this is just considered data that is available for the platform/computer) to form a merged … of element-level parameter data, the platform-accessible data normalized to the neutral reference plane ([0047] is only portion mentioning “merge”, but there are no details, and it is only to combine “all” the data for the cost estimate, not to any database technical aspects.);
adjusting, …, one or more parameter curves for the equipment using the merged database;
generating, for the operations at the facility using the equipment, a desired throughput to achieve an output rate for an input rate of raw materials;
generating a weight of the one or more pressure vessels based on pressure, volume, and corrosion characteristics of the raw materials to achieve the desired throughput;
using the one or more parameter curves, generating, …, an equipment determination for the equipment to perform the operations for the project based on the desired throughput, the equipment determination including an equipment parameter;
conducting the operations for the project at the facility using the equipment according to the equipment parameter at the desired throughput using the input rate of raw materials to generate the output rate, wherein conducting the operations includes conducting fluid processing operations using the one or more pressure vessels (Applicant’s specification indicates this could be any labor/person using the equipment – see e.g. [0048-0049] as published. [0064] as published talks about “equipment usage” for reducing labor and equipment costs. Accordingly, at this time, the limitation is viewed as instruction a person to “use the equipment” in some cost-saving manner. Under broadest reasonable interpretation in light of the specification, the claim covers a method where a person is given the plan to follow to minimize the costs while they manually operate the equipment for a project, which falls under “Certain Methods of Organizing Human activity).
As drafted, this is, under its broadest reasonable interpretation, within the Abstract idea groupings of “Mathematical concepts (mathematical relationships) [estimating costs, normalizing based on different locations, and adjusting cost curves based on the normalization] and “certain methods of organizing human activity” [a) fundamental economic principles or practices (planning to minimize costs); and b) “managing personal behavior or relationships or interactions between people (including following rules or instructions) – where a plan of minimizing costs is made, and a person is given the plan to follow to minimize the costs; different types of data to also include (e.g. normalizing for weight; removing different data related to freight/weight/customs to normalize; possibly applying a factor for different location costs or converting between currencies [claim 6; possibly that’s what “separately considering transport and transportation data” is referring to?]; correcting for inflation [claim 7]; and reach a desired throughput while they transport equipment for a project, and follow a plan to conduct operations for a project]. Accordingly, claim 1 is directed to an abstract idea.
Step 2A, Prong Two - MPEP 2106.04 - This judicial exception is not integrated into a practical application. In particular, the claim 1 recites additional elements that are:
A method, comprising:
determining, via a computing device, that the user-defined input data includes user-defined non-normalized input data and user-defined normalized input data…;
for the user-defined non-normalized input data, generating, via the computing device, new normalized input data …:
merging, via the computing device, the new normalized input data, the user-defined normalized input data, and platform-accessible data to form a merged database of element-level parameter data…; and
adjusting, via the computing device, one or more parameter curves for the equipment using the merged database;
using the one or more parameter curves, generating, via the computing device, an equipment determination for the equipment to perform the operations for the project based on the desired throughput, the equipment determination including an equipment parameter;
conducting the operations for the project at the facility using the equipment according to the equipment parameter at the desired throughput using the input rate of the raw materials to generate the output rate, wherein conducting the operations includes conducting the operations using the equipment for extracting from the reservoir and the one or more pressure vessels [only support is that “plan” is given to a person to conduct these operations, so noting here this limitation is not considered an additional element, since the claim is a method for a “plan” of a “project”, and the “plan” is for conducting the operations manually by a person; so the step at most is extra-solution activity – a person manually following instructions from the disclosure invention of estimating/determining/generating parameter curves and desired throughput].
As an initial starting point, Examiner suggests Applicant recite a computer performing each step – but within what is supported by the disclosure. Nonetheless, even if a computer performs each step, in addition to the currently recited “computing device,” “database” and “platform-accessible data”, MPEP 2106.05f applies – limitations in claim involve a computer, , and is considered “apply it” [the abstract idea] on a computer; merely uses a computer as a tool to perform an abstract idea; and having a merged database [i.e. data storage] along with data being accessible, is “field of use” MPEP 2106.05h.
***Examiner notes, as stated in the 112a and 112b rejection, and the claim interpretation of the last step here in the 101 and the 103, the last step appears to only be supported as instructing a person to do some operation, for the “plan” of a project.
Step 2B in MPEP 2106.05 - The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, when viewing limitations individually or in combination. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of database, and possibly a computer to execute operations are MPEP 2106.05(f) (Mere Instructions to Apply an Exception – “Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible.” Alice Corp., 134 S. Ct. at 235) and “field of use” (MPEP 2106.05h). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
In addition, the adding data to a database is viewed as a conventional computer function at step 2B (See MPEP 2106.05d(II)(iv) - Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306).
Independent claim 9 is directed to a system at step 1, which is a statutory category. Claim 9 recites similar limitations as claim 1 and is rejected for the same reasons at step 2a, prong one; 2a prong 2; and step 2b. Claim 9 also recites processors, memory storing instructions to perform each step/operation. As stated above at step 2a, prong 2 and step 2B, even with a computer performing each step, this is viewed as MPEP 2106.05f (apply it [abstract idea] on a computer). The claim is not patent eligible.
Independent claim 17 is directed to an article of manufacture at step 1, which is a statutory category. Claim 17 recites similar limitations as claim 1 and claim 9 and is rejected for the same reasons at step 2a, prong one; step 2a, prong 2 and step 2b. Claim 17 recites a computer-readable medium storing instructions, executed by a computer. . As stated above at step 2a, prong 2 and step 2B, even with a computer performing each step, this is viewed as MPEP 2106.05f (apply it [abstract idea] on a computer).
Claims 3, 11, and 19 narrow the abstract idea by identifying projects and making further predictions to the element-level parameters (costs) based on project-level data. Claim 3 also has “predict element-level parameters from project-level data.” This is also treated as being part of the mathematical relationships here. At step 2a, prong two and step 2B, the “training a machine learning model” is an additional element, and is considered MPEP 2106.05f (apply it [abstract idea] on a computer). See July 2024 Subject Matter Eligibility Update, Example 47, claim 2; the “training by the data processor” here is “mere instructions to implement abstract idea on a computer at MPEP 2106.05f; no details on the training itself.” The claim in combination is also viewed as “field of use” (MPEP 2106.05h) in light of combination with claim 1 limitations.
Claims 6, 14; 7, 15 narrow the abstract idea by various mathematical operations and specifying different types of data to also include (e.g. normalizing includes applying a factor for different location costs or converting between currencies; correcting for inflation).
Claims 8, 16 narrow the abstract idea by making a facility development determination based on adjusted curves, meaning making a site selection based on estimated costs. Visualising the data of the “determination” can just be recommending a location or not (See [0064] as published).
Claim 21 narrows the abstract idea by having further element-level parameters, further normalizing them, updating them for adjusted parameter curves, and then as part of the plan, adjusting the operations to adjust the throughput [0053] as published is the support for this –“ updating of the cost curves (including a determination of whether to update the curves based on new data or whether to consider the data unreliable”; “normalized cost data points for every equipment in the facility planner”).
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
For more information on 101 rejections, see MPEP 2106.
Response to Arguments
Applicant's arguments filed 3/6/26 have been fully considered but they are not persuasive and/or are moot in view of the new rejections.
With regards to 112, Applicant seems to be arguing that the claim can recite “removing” transport data, then calculating shipping as newly presented. Remarks, pages 10-11. In response, Examiner respectfully disagrees. New rejections with new suggestions is provided in response to the new claim amendments.
Applicant then argues that [0064] (0065 as published) supports claims 9 and 17 having a computer “controlling” equipment. Remarks, page 12. In response, Examiner respectfully disagrees. The paragraph states:
The method 300 may also include displaying or “visualizing” data representing the facility development determinations, e.g., for comparison between different scenarios, as at 312. Accordingly, facility development personnel can quickly observe different options for locations, equipment, etc., and compare parameters and make the aforementioned decisions. Further, the method 300 may include implementing (physically) the facility development determinations, e.g., building the facility, sourcing equipment, sourcing labor, etc., and conducting operations using the facility, as at 314. For example, such determinations may be implemented by selecting a particular type of equipment over another, a manufacturing location, adjusting throughput, etc., and building at least a portion of the facility based at least in part on the determinations.
The disclosure here does have visualizing data. The data is then used by personnel, but the “implement the facilities development determinations” in 314 is physically by a person. This is supported by [0077] as published stating “ the model (including facility development decisions made based at least in part on the cost projections) may be physically implemented by one or more users, e.g., to build a facility more efficiently.” It is unclear how this supports automatic control by the computer.
With regards to 101, Applicant argues the claim is not directed to an abstract idea because of limitations “conducing the operations for the project at the facility using the equipment according to the equipment parameter at the desired throughput using the input rate of the raw materials to generate the output rate…” Remarks, pages 13-15. In response, Examiner respectfully disagrees. First, the arguments are moot over the new rejections necessitated by the amendments. Second, the disclosure as filed, as explained in the revised rejection citing to the specification to provide claim interpretation for the 101 and 103 rejections and in the 112a rejection, supports using the equipment based on the cost analysis. However, there is no support (112a) for the computer itself controlling equipment as the claim 9, 17 now covers. Claim 1 covers a person following the “plan” to conduct the operations. Since the claim covers the situation of providing an instruction to a person, in a cost-effective manner, and, as the first limitation states, is “for a facility development plan of a project,” it is still viewed as “directed to an abstract idea” when viewing the limitations individually or in combination at this time, where it is giving instructions to humans to follow the instructions and/or calculate the desired weight for a desired output. The claim covers having a “plan”, and the final limitation is viewed as giving instructions to a user in light of the disclosure as filed as understood at this time.
Applicant argues the claims cannot be performed in the human mind. Remarks, pages 15-16. In response, Examiner respectfully disagrees with this analysis. “Mental process” is not part of the identified abstract idea grouping, so these arguments are moot. In addition, the arguments that is “time consuming” to determine the costs, but having a computer determine the costs does not weigh towards eligibility. See MPEP 2106.05(a)(I) Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089 (Fed. Cir. 2016).
Applicant then argues that the claims improve a technological process, as there is a database with updated data “recursively”. Remarks, pages 16-18. In response, Examiner respectfully disagrees. It is unclear how the claims have a database improvement. [0047] is only portion mentioning “merge”, but there are no details, and it is only to combine “all” the data for the cost estimate, not to any database technical aspects. [0003] refers to the normalization of data in the database. However, normalization throughout the claims and the specification here is considered part of the abstract idea as the normalization covers converting costs, such as including “commodity prices, cost indices, inflation index, equipment price escalation” [0048] or normalizing to a selected currency based on location (e.g. US dollars) in [0076] (claims 6-7). Just having “a computer” perform the normalization itself; and storing data in a database while “removing” extraneous data (e.g. [0050] as published “Normalizing” the data refers to adjusting the data to account for such changes, thereby bringing the data from a different reference plane to the neutral reference plane. Gathering more business data on costs does not make the claim an “improvement to database.” Many of Applicant’s arguments are not persuasive as each of the independent claims 1, 9, and 17 are “for a facility development of a plan” of a project.
Applicant then appears to argues that step 2B needs art citations or conventional art. Remarks, pages 18-19. In response, Examiner respectfully disagrees. First, step 2B is not a search for prior art. Second, With regards to step 2B, only those additional elements (analyzed under 2B) that are deemed “conventional” need to comply with Berkheimer. When elements are just part of “apply it” [abstract idea] on a computer, under MPEP 2106.05(f); or “field of use” under MPEP 2106.05h, no evidence is needed. Since that is the case here (as it points to 2106.05f and 2106.05h in the 101 rejection), no further evidence is needed at step 2B.
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.
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/IVAN R GOLDBERG/Primary Examiner, Art Unit 3619
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