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 Arguments
112(a) Rejections
Applicants’ arguments, filed 12/19/2025, with respect to the rejection of claims 2-21 under 35 U.S.C. § 112(a) have been fully considered and are persuasive. The 35 U.S.C. § 112(a) rejection is Withdrawn. However, upon further consideration, a new ground of rejection is made in view of amended claim language.
112(b) Rejections
Applicants’ arguments filed with respect to the rejection of the claims under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The 35 U.S.C. § 112(b) rejection is Withdrawn.
101 Rejections
Applicants’ arguments filed with respect to the rejection of the claims under 35 USC 101 have been fully considered and are not persuasive.
With respect to the rejection under 35 U.S.C. § 101, the Applicants argument asserting that the claims are directly analogous to Ex Parte Desjardins, Appeal No. 2024-00567 (PTAB September 26, 2025) because the abstract ideas of mathematical concepts are integrated into a practical application, are not persuasive. The applicants’ assertions, on pages 13-15, that the data arrangement, normalization, filtering, sorting, binning, and transformations to calibrate disparate sources of data into a common format, are not persuasive, but an attempt to assert that general purpose data manipulations to calibrated data between databases is a patentable invention, where the functions are, in fact, abstract ideas performed on general purpose computing structures, independent of the automatic nature. The automatic nature discloses that the claims are performing data manipulations in an automated fashion, i.e. automating functions that were historically performed by a person. The further actions of parsing data for keywords, matching keywords, and identifying unique keywords not in the prior art, are also automations of historically human tasks. Even when these tasks are performed on a large amount of data, both the claims and the specification recite or disclose generic general-purpose computing structures performing business functions that attempt to cover any solution to the problem with no restrictions on how the results are accomplished and no description of the mechanism for accomplishing the results. The claims perform the tasks historically performed by a patent examiner or other patent IP professional, including the business relations between the IP professionals and/or inventors.
The Applicants’ assertion on page 13, that the tasks in ¶ 4 above, when performed manually, are impractical due to the complex nature of patent portfolios with patent matters across multiple countries due to the volume of documents requiring review and comparison, are not persuasive. MPEP 2106.05(f) specifically considers the improved speed and efficiency of automating historically human performed tasks, by use of a computer, stating that these improvements amount to merely “apply it.”
The Applicants’ assertions, on page 15, that the claims cannot be practically be performed in the human mind at the recited scale, are not persuasive. The mental processes category in MPEP 2106.04(C), explicitly discloses that automating tasks performed by a human as mental processes, implemented using a computer as a tool, are not indicative of a practical application.
The Applicants’ assertions, on at least pages 15-19, that the claims specifically perform automatic transformation operations to normalize data and automatically parse and compare data combined present a technical solution to patent portfolio management, are not persuasive. Both the claim and the specification recite or disclose generic general-purpose computing structures performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result. Therefore, the claims do not specifically recite a technological improvement under the basis of 35 U.S.C. § 101, because the claims do not recite a specific solution or a restricted manner or mechanism for accomplishing the results. That is, the claims recite any manner of performing and any mechanism used for performing schema mapping, conflict resolution, automated parsing, comparison, keyword extractions, comparisons, matching, and unique keyword identification, or the filtering used to isolate jurisdictions throughout the performance of the other data manipulations. The only mechanisms recited in the claims, for which the specification can only define, but not append, are the general-purpose computing structures. We know that merely applying claims, i.e. abstract ideas, on general purpose computing structures, where the general-purpose computing structures are present only as a tool used in the implementation, amount to “apply it,” which is not a practical application of the additional elements. In this instant application, no other elements are identified as additional elements. The additional elements being applied as tools, are generally linked to the abstract ideas, and are not specialized nor imperative outside of fulfilling judicial requirements in Step 1 of 35 U.S.C. § 101. Without implementing the general-purpose computing structures, the claims would be ineligible. Therefore, these additional elements are generally linked to the use of the abstract ideas, which are both generally linked to the field of use, and do not show an improvement in either. Insofar as the judicial exceptions fail at being used in some other meaningful way, such that the claims recite any manner and any mechanism of performing the tasks, the claims are no more than a drafting effort designed to monopolize the exception to perform the tasks long performed in IP law for patents, since before the computer.
Since the current rejection of the claims does not rely on extra solution activity at step 2A pong 2, the Applicants’ assertions regarding well understood, routine, and conventional activities, on pages 18-19, regarding this subject are Moot.
The Applicants’ assertions, on page 19, that the claims recite a specific application of automated data processing and keyword analysis technology that are not recited at a high of a level of generality, which account for the specific technical limitations that demonstrate the improvements, are not persuasive. The additional elements are general-purpose computing structures, which are recited and disclosed at a high level of generality, such that the invention may be implemented on any similarly featured general purpose computing structures. The function of transforming data into a normalized structure, automatically performing keyword analysis by: parsing text, extracting keywords, comparing keywords, filtering for country, and identifying unique keywords are being applied using the general-purpose computing structures, amounting to “apply it.” Therefore, as a whole, the additional elements are not indicative of integration of the abstract ideas into a practical application, nor do the additional elements amount to significantly more.
The Applicants’ assertions, on page 22, arguing that the claims cannot be practically performed in the human mind because the human mind is not equipped to simultaneously access and transform data across databases, and parse and compare keywords across documents, are not persuasive. As disclosed above, the claims recite these functions without specificity of the mechanism or manner of attaining the results. The claims do not specify that these data manipulations must occur in any particular order, speed, individually, or simultaneously. Further, these tasks are historically performed by IP professionals across the world in order to make business decisions and interact with others involved in the patent decision landscape, such that the claims do not differentiate the functions from occurring as a Patent professional’s functions, but for the general-purpose computing structures, generally linked and applied as tools. The specification discloses that the instant invention requires human intervention as disclosed in the instant specification in at least ¶’s [0016-0019] with further ¶’s presented in the 35 U.S.C. § 101 rejection below. The claims do not recite any particular mechanisms, outside of the additional elements, that are indicative of anything more than generally linking the claims to the general-purpose computing structures, and to the technological environment.
The Examiner has evaluated the arguments presented in pages 13-24. The responses underscore each categorical argument, attempting to avoid duplicating answers to duplicated arguments. Please find the updated 35 U.S.C. § 101 analysis below reflecting the amendments. The arguments are not persuasive and the 35 U.S.C. § 101 is Maintained.
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 2-21 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.
Claims 2, 9 and 16 recites the limitation, “thereby enabling jurisdiction-specific patent portfolio analysis that cannot practically be performed manually for portfolios exceeding 100 patent matters across multiple countries.” This limitation is not supported in the written description. Since this particular limitation is an intended result of the keyword analysis, it does not carry patentable weight, but it is nonetheless, not supported in the written disclosure.
The specification does disclose in ¶ [0038] “Patent reference documents and/or other prior art may be manually or automatically stored, cross-cited, and associated with related family matters, for example.” Specification ¶ [0054] discloses “mapping module may present user interfaces that allow a user to rank and rate matters stored in matter database 204,” and ¶ [0091] discloses that “a user may pick the combination of keywords” and “Also, a user may search for and map concepts to cited art that are not shown,” which incorporate manual processes practically performed by humans as part of the patent portfolio analysis. The particular filtering function, focused on jurisdiction or country specific data, is disclosed in ¶ [0058] as a feature that allows a user to filter data according to a user preference, which may include filtering by country as disclosed in ¶ [0046] which can be performed as part of a system function as disclosed in ¶ [0156]. ¶ [0146] discloses “may be helpful to a user in understanding whether the respective applications are of increased value to the owner or are “stuck” applications.” These specification sections, above, disclose that the specification does not support the statement made in the claim, that the analyses may not be practically performed manually, and does not disclose any sections that discuss portfolios of 100 patent matters across multiple countries in terms of the practicality of performance.
The remaining claims, 3-8, 10-15, and 17-21 inherit the 112(a) rejection and are therefore rejected for the same reasons as the independent claims for which they depend.
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 2-21 are rejected under 35 U.S.C. §101 because the claimed invention is directed to judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Independent Claims
Step 2A Prong 1: Claims 2, 9, and 16 recite: generating analytics including quantification of unique keywords overlap, generating a portfolio strength metric to quantify coverage effectiveness based on data and analytics, which are abstract ideas in the category of mathematical concepts in the sub-categories of both mathematical relationships and mathematical calculations (see MPEP 2106.04(a)(2)(I)). Mathematical relationships are recited because they are identified by the relationships between a solution and the calculations for deriving the solution, i.e. organizing information, and manipulating information through mathematical correlations. Mathematical calculations are recited because calculations are required to determine the analyses, metrics, analytics, and quantifications.
The claims recite: transforming data fields for the first and second data into common fields by: identifying common fields, mapping disparate fields, and resolving field inconsistencies using predetermined rules, then for a highlighted country, automatically performing keyword analysis by: parsing data from matter and prior art, extracting keywords from matter, extracting keywords from prior art by country, comparing keywords of matter to prior art, identifying unique keywords from matter data that are not in prior art data, creating a first portfolio including data which are in the category of certain methods of organizing human activity, in the subcategory of managing personal behavior or relationships or interactions between people because the claims perform the tasks historically performed by a patent examiner or other patent IP professional that incorporate the business relations and behaviors between IP professionals and inventors. These behaviors of individuals or between people include following rules or instructions to identify related prior art or patentable subject matter according to the laws and rules for the particular jurisdiction. This is similar in nature to MPEP 2016.04 a mental process that a neurologist should follow when testing a patient for nervous system malfunctions, In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982) because the claims perform the same mental tasks that a patent/IP professional would follow when evaluating any patent application for patentability, including matching data fields from disparate data sources, analyzing the data for keywords/keyphrases, determining that the instant matter has keywords/phrases that are unique, creating a portfolio of related patents and applications, all filtered by a particular jurisdiction/country.
The instant invention claims automate the historically human performed tasks of analyzing database data to normalize database fields across disparate data sources, analyzing intellectual property according to metrics and analytics to make determinations of patentability based on parsing and comparing text to identify unique keywords over prior art for different countries and from different IP databases, and creating portfolios of related art to store the findings, leading to assessments which are also mental processes, but for the general purpose computing structures, i.e. processor, databases, and graphical user interface in claims 2, 9, and 16, memory in claim 9, and non-transitory machine readable medium in claim 16. These findings are supported at least in the instant specification ¶’s [0016-0019] which describe the patenting lifecycle performed by the instant invention. ¶ [0017] discloses: “At each stage, one or more parties may determine the best course of action to take with respect to the invention,” describing the tasks performed by this instant invention as a hands-on process, where the disclosure and claims provide an interface for humans to make business decisions based on automations of historically human performed tasks. The disclosure further supports these findings in ¶ [0018] “a full picture of a patent portfolio can be viewed and understood with greater clarity from both a quantitative and qualitative sense,” such that the automations require human input, analyses, and determinations as this invention eases the load of a patent examiner or IP professional. Merely automating tasks that have been performed by a human are still considered mental processes because the claims are still performing observations, evaluations, judgments, and opinions, performed historically by humans, such that the tasks recited above are also in the abstract idea categories of mental processes. The instant application specification ¶ [0019] discloses “a patent portfolio management system … may include tools to help the parties involved in the patenting process make decisions at each stage of a patent asset’s life,” disclosing that this instant application performs these mental processes to assist a human in making decisions involved in the patenting process.
The claims recite: receiving first and second data, displaying data on a map, highlighting data on a map according to location found in data, receiving a country selection, receiving analytics data, displaying received data, filtering, sorting, or otherwise organizing data by data field characterizations like country or location, issued patent, patent application, or specific metrics, and receive user input. These amount to receiving data, organizing data, sorting data, filtering data, displaying data, and displaying data characterizations (highlighted countries on a display), which are not abstract ideas. The specification does not reveal that the core of the invention relates to advances in sending, receiving, displaying, sorting, filtering, or organizing data, or to the characterizations or characterized display of the characterizations of data. These limitations are not indicative of integration into a practical application.
Aside from the disclosure of using country, foreign or US/domestic geographies, and regions to filter data, the claims recite that the manipulated data is associated directly with the location, or with the matters specific to locations. Therefore, the filtering of the data by geography is not related to the manipulation steps recited in the abstract ideas beyond providing filtration of a data characterization held in the databases. This is evidenced in the specification in ¶’s [0031, 0033, 0037, 0038, 0044, 0049, 0063, 0064, 0080, 0084, 0089, 0094, 0095, 0098, 00100, 00123, 00124, 00127, 00154, 00156, 00157, 00158, 00176, and 00177] under the Detailed Description, which outline that the data includes different data characterizations, i.e. data in data fields, which may include further characterizations according to the associated geography characterizations, i.e. by country, as foreign, from the U.S./ as domestic, or via regions, i.e. jurisdictions. Unlike the claims, which draw on the geographical jurisdictions or countries, i.e. characterized data fields, the specification clearly discloses that the location data is used only for further filtering data. The specification does not reveal that the core of the invention is drawn to advances data filtering, or that data filtering is a core part of the analysis steps outside of generally filtering data to be analyzed or that has already been analyzed based on data that was received.
The additional elements recited are: A government database, a docketing database, structures for each of the databases, a normalized database structure, a user interface, a map display element, a processor, patent portfolios (database), country specific patent portfolios (characterized database), in claim 9: a portfolio management system, a memory, instructions performed by a processor, and in claim 16: a non-transitory machine readable medium, instructions stored on the machine readable memory and executed by a machine, and a machine. These additional elements are disclosed in the specification and recited in the claims at a high level of generality. The specification further discloses that these elements are general purpose computing structures that may be characterized, including numerous characterized databases. The claims recite and the specification discloses general-purpose computing structures performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results. The general-purpose computing structures are tools used to implement the abstract ideas, i.e. they amount to “apply it.” Therefore, the claims amount to instructions to apply the Judicial Exceptions in a technical field of patent analytics generation for patent portfolio management, utilizing and generally linked to the general-purpose computing structures that perform the abstract ideas, and generally linked to the technical field (MPEP 2106.05(f) and (h)). Since the limitations are merely adding the words “apply it,” they do not improve on the functioning of a computer, for which they are applied with, according to MPEP 2016.05(a).
Since the additional elements are general purpose computing structures merely being applied in the field of patent portfolio management systems, the claims are limiting the field of use to a particular technical field. Since the additional elements are generally linked to the use of the abstract ideas, the claims are further generally linking the use of the abstract idea the field of use in patent portfolio management systems, without improving the technical field, when viewed as a whole. The improvements asserted in the 12/19/2025 arguments are "R&D budget planning, litigation response strategy, competitive technology analysis, acquisition analysis, portfolio maintenance cost management, or licensing revenue evaluation" through automated analysis capabilities.” None of these improvements disclose a relationship to improvements to the functioning of a computer or relate directly to the claimed limitations. These improvements are not recited in the claims, where the claims recite no financial management functions, and the claims in light of the specification, require human interaction to manage litigation response strategies, competitive technology analysis, and acquisition analyses. Therefore, the generally linked, general purpose computing structures are the only additional elements aside from the abstract ideas. These additional elements are not indicative of improvements to the function of a computer or to any other technology or technical field, when viewed as a whole.
The claims recite characterized data, which is non-functional descriptive information. Characterized data is not patentably distinctive cannot be utilized to integrate the abstract ideas into a practical application.
These functions are data manipulations of analyzing, parsing, identifying, comparing, matching, and filtering, implemented using general purpose computing structures as a tool to perform these abstract ideas. The specification does not reveal that the core of the invention discloses advances to these data manipulation techniques. The claims are focused on the characterizations of the data and the data manipulations performed by general-purpose computing structures. These computing structures are disclosed as performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results.
The claims recite performing general business functions performed in any manner, returning the solution without specificity regarding the mechanisms utilized. According to MPEP 2106.05(f)(2), invoking general purpose computing structures to perform abstract ideas that historically were performed by hand in order to increase speed or efficiency of general-purpose computing structures, i.e. the additional elements, are not a practical application.
The Applicant states and the claims recite that the claims cannot be practically performed manually for over 100 data matters, however, the specification discloses in:
¶ [0018] “hand-classified data sets,”
¶ [0020] “This qualitative analysis may require further classification by human or statistical means to arrive at patent mappings that reflect the breadth of the patent claims,”
¶ [0038] “documents and/or other prior art may be manually or automatically stored, cross-cited, and associated with related family matters,”
¶ [0052] “a user of patent management system 102 may then examine the flagged data and manually enter the information,”
¶ [0082] “allow manual addition of synonyms to enhance analysis,”
¶ [0091] “(a user may pick the combination of keywords). Also, a user may search for and map concepts to cited art that are not shown. Prior art rejections may be mapped to specific paragraphs of document and shown in a workroom or in a spreadsheet. Examiner statistics may also be part of the office action workroom, or examples of other rejections by examiner. Other rejections on the same references, or reference history, may be shown as well,”
¶ [00111-000181] various manual user operations that are also performed by the claims.
These sections of the specification disclose that human intervention may be required or implemented in the instant application to perform functions of the claims refuting the argument that the limitations are not practically performed manually for portfolios exceeding 100 patent matters, where the specification does not delineate user operations that may or may not be practical for portfolio of any size. Examiner Note: This application is over 100 patent matters and the Examiner performed the search and analysis of the claims manually across more than 100 related prior art patent, patent application, and NPL documents, by jurisdiction, with the aid of a computing structure in a similar manner to that presented in the claims.
The recited abstract ideas are not used in some other meaningful way beyond being generally linked to the additional elements, i.e. the general-purpose computing structures, or beyond being generally linked to patent portfolio management systems. Therefore, the claims are no more than a drafting effort designed to monopolize the exceptions.
Step 2B: Additionally, the analysis for Step 2B is commensurate with the analysis above for step 2A, Prong 2, therefore, for the same reasons stated above, since these the additional elements do not integrate the judicial exception into a practical application, it is also asserted that these additional elements, when taken individually and in combination, do not result in the claim as a whole amounting to significantly more than the identified judicial exceptions. The claim is directed to an abstract idea without significantly more.
Dependent Claims
Regarding Claims 3, 10, and 17: The claim passively defines how unique keywords are determined, without positively reciting claim limitations. The claims define how the unique keywords are determined, in terms of passive identification techniques that are positively recited in the independent claims. Since the claims are passively defining how the unique keywords are determined, without positively recited claim limitations, the claims do not recite abstract ideas. Therefore, the additional elements cannot be used to integrate the claim into a practical application, nor can they amount to significantly more.
Regarding Claims 4, 11, and 18: the claims recite: in response to country filtered patent portfolio creation, identifying data related to a profile, automatically assigning a name to the profile using a profile identifier and at least one patent specific data, creating a second portfolio with the automatically assigned name, and adding the profile related identified document data to the second portfolio. These limitations are in the categories of mental processes and certain methods of organizing human activity, managing personal behaviors or relationships or interactions between people. The claims are similar in nature to a mental process that a neurologist should follow when testing a patient for nervous system malfunctions, In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982) because they follow the process a patent/IP professional should follow when making patent based decisions including identifying data related to a profile in a patent portfolio management system, assigning a name for the first profile portfolio using profile data, creating a second profile portfolio based on the original profile with the automatically assigned name, and adding the identified data to the second portfolio. The claims automate the historically human performed tasks of analyzing intellectual property according to metrics in order to produce a file, name a file, and move data into the file, with human analysis and decision intervention disclosed in the instant specification ¶ [0019] that “may include tools to help the parties involved in the patenting process make decisions at each stage of a patent asset’s life.” These limitations are also mental processes because they automate processes of performing observations, evaluations, judgments, and opinions that are historically performed by the human mind or with the aid of tools as further discussed above in the independent claims. The claims perform the tasks historically performed by a patent examiner or other patent IP professional, including the managing business relations between the IP professionals and/or inventors.
The additional elements recited are the same elements of the independent claim, i.e. general-purpose computing structures. The claims recite general-purpose computing structures performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results. The general-purpose computing structures are used as tools used to implement the abstract ideas, i.e. they amount to “apply it.” Therefore, the claims amount to instructions to apply the Judicial Exceptions in a technical field of patent portfolio management, i.e. the abstract ideas are generally linked to the general-purpose computing structures and the technical field of use (MPEP 2106.05(f) and (h)). Since the limitations are merely adding the words apply it, they do not improve on the functioning of a computer or the field of use according to MPEP 2016.05(a). Lastly, as shown in the independent claims, the claim limitations are no more than a drafting effort designed to monopolize the exceptions.
Step 2B: Additionally, the analysis for Step 2B is commensurate with the analysis above for step 2A, Prong 2, therefore, for the same reasons stated above, since these the additional elements do not integrate the judicial exception into a practical application, it is also asserted that these additional elements, when taken individually and in combination, do not result in the claim as a whole amounting to significantly more than the identified judicial exceptions. The claim is directed to an abstract idea without significantly more.
Regarding Claims 5 and 13 the claims recite: generate a graphical user interface (GUI), for display and display two indications, which are not abstract ideas. The specification does not reveal that the core of the invention advances GUI generation, display technologies, or characterized display elements. Therefore, the additional elements, inherited from the independent claims, cannot be integrated into a practical application or amount to significantly more.
Regarding Claims 6 and 12, the claims further define the profile, limiting it to be based on the inventor, owner, or the patent itself. Since the claims are further defining the profile, the claims do not recite abstract ideas. Therefore, the additional elements, inherited from the independent claims, cannot be integrated into a practical application or amount to significantly more.
Regarding Claims 7, 14, and 20: the claims recite generating analytics, included in creating the first portfolio, which is an abstract idea in the categories of mathematical concepts including mathematical relationships and calculations, mental processes, and certain methods of organizing human activity, in the subcategory of commercial or legal interactions for business relations. Since mathematical relationships form the basis of analytics, without specificity of the particular analytics that are generated in these claims, the broadest reasonable interpretation is that the claims generates analytics that both show mathematical relationships between different metrics and that result in the calculations of the non-specific analytics themselves. The claims automate the historically human performed business, legal, and corporate task of analyzing intellectual property to generate analytics to be included in the portfolio, with human analysis and decision intervention disclosed in the instant specification ¶ [0019] that “may include tools to help the parties involved in the patenting process make decisions at each stage of a patent asset’s life.” These limitations are also mental processes because they automate processes of performing observations, evaluations, judgments, and opinions that are historically performed by the human mind or with the aid of tools as further discussed above in the independent claims. The claims perform the tasks historically performed by a patent examiner or other patent IP professional, including the business relations between the IP professionals and/or inventors.
The additional elements recited are the same elements of the independent claim, i.e. general-purpose computing structures. The claims recite general-purpose computing structures performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results. The general-purpose computing structures are used as tools used to implement the abstract ideas, i.e. they amount to “apply it.” Therefore, the claims amount to instructions to apply the Judicial Exceptions in a technical field of patent portfolio management, i.e. the abstract ideas are generally linked to the general-purpose computing structures and the technical field of use (MPEP 2106.05(f) and (h)). Since the limitations are merely adding the words apply it, they do not improve on the functioning of a computer or the field of use according to MPEP 2016.05(a). Lastly, as shown in the independent claims, the claim limitations are no more than a drafting effort designed to monopolize the exceptions.
Step 2B: Additionally, the analysis for Step 2B is commensurate with the analysis above for step 2A, Prong 2, therefore, for the same reasons stated above, since these the additional elements do not integrate the judicial exception into a practical application, it is also asserted that these additional elements, when taken individually and in combination, do not result in the claim as a whole amounting to significantly more than the identified judicial exceptions. The claim is directed to an abstract idea without significantly more.
Regarding Claims 8 and 15: the claims recite, upon selection of a second user interface element, automatically generating analytics which is an abstract idea in the categories of mathematical concepts including mathematical relationships and calculations, mental processes, and certain methods of organizing human activity, in the subcategory of commercial or legal interactions for business relations. Since mathematical relationships form the basis of analytics, without specificity of the particular analytics that are generated in these claims, the broadest reasonable interpretation is that the claims generates analytics that both show mathematical relationships between different metrics and that result in the calculations of the non-specific analytics themselves. The claims automate the historically human performed business, legal, and corporate task of analyzing intellectual property to generate analytics to be included in the portfolio, with human analysis and decision intervention disclosed in the instant specification ¶ [0019] that “may include tools to help the parties involved in the patenting process make decisions at each stage of a patent asset’s life.” These limitations are also mental processes because they automate processes of performing observations, evaluations, judgments, and opinions that are historically performed by the human mind or with the aid of tools as further discussed above in the independent claims. The claims perform the tasks historically performed by a patent examiner or other patent IP professional, including the business relations between the IP professionals and/or inventors.
The additional elements recited are the same elements of the independent claim, i.e. general-purpose computing structures. The claims recite general-purpose computing structures performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results. The general-purpose computing structures are used as tools used to implement the abstract ideas, i.e. they amount to “apply it.” Therefore, the claims amount to instructions to apply the Judicial Exceptions in a technical field of patent portfolio management, i.e. the abstract ideas are generally linked to the general-purpose computing structures and the technical field of use (MPEP 2106.05(f) and (h)). Since the limitations are merely adding the words apply it, they do not improve on the functioning of a computer or the field of use according to MPEP 2016.05(a). Lastly, as shown in the independent claims, the claim limitations are no more than a drafting effort designed to monopolize the exceptions.
Step 2B: Additionally, the analysis for Step 2B is commensurate with the analysis above for step 2A, Prong 2, therefore, for the same reasons stated above, since these the additional elements do not integrate the judicial exception into a practical application, it is also asserted that these additional elements, when taken individually and in combination, do not result in the claim as a whole amounting to significantly more than the identified judicial exceptions. The claim is directed to an abstract idea without significantly more.
Conclusion
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ANGELA HATCH
Examiner
Art Unit 3626
/ANGELA HATCH/Examiner, Art Unit 3626
/NATHAN C UBER/Supervisory Patent Examiner, Art Unit 3626