DETAILED ACTION
This Final Office Action is in response Applicant communication filed on
9/15/2025. In Applicant’s amendment, claims 21, 33, and 37 were amended.
Claims 21-40 are currently pending and have been rejected as follows.
Response to Amendments
Rejections under 35 USC 101 are maintained.
Response to Arguments
Applicant’s 35 USC 101 rebuttal arguments and amendments have been fully considered but they are not persuasive to overcome the rejection.
Applicant argues on p. 9-12 that the amended claims integrate the abstract idea into a practical application at Step 2A, Prong 2 because they recite concrete steps for improving prediction accuracy through iterative model optimization, which represents a specific technological improvement to machine learning systems. Examiner respectfully disagrees. Under Step 2A, Prong 2, examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Here, the claimed additional elements such as a system, comprising: a processor configured to provide a trend detection interface; and a database in data communication with the processor; non-transitory computer-accessible medium having stored thereon computer-executable instructions, generating an artificial intelligence (AI) model, and using the model to generate a dashboard are not an improvement to a computer or a technology, nor do they provide new computer functionality. The alleged integration is merely employing the use of a computer to execute mathematical calculations, create/gather data, making parameter adjustments based on feedback, optimizing through iterations, and presenting updated results in a dashboard. There is no clear improved or new function of computers or model training identified in the claims or specification. Improvement to the accuracy of the output of the model is an improvement to the recited abstract idea. Conclusively, Applicant's invention is patent-ineligible. When viewed both individually and as a whole, Claims 21-40 are directed toward an abstract idea without integration into a practical application and lacking an inventive concept.
Claim Objections
Claims 21, 33, and 37 objected to because of the following informalities: The amended feature of the independent claims recite “updating the dashboard” before “generating a dashboard.” 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 21-40 are clearly drawn to at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (method, system, and non-transitory computer-accessible medium). Claims 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without integrating the abstract idea into a practical application or amounting to significantly more than the abstract idea.
Regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance (‘2019 PEG”), Claims 21-32 are directed toward the statutory category of a process (reciting a “method”). Claims 33-36 are directed toward the statutory category of a machine (reciting a “system”). Claims 37-40 are directed toward the statutory category of an article of manufacturer (reciting a “non-transitory computer-accessible medium”).
Regarding Step 2A, prong 1 of the 2019 PEG, Claims 21, 33 and 37 are directed to an abstract idea by reciting … detect a correlation of a first business with a second business, the generation comprising: generating a dataset for training the model, the dataset including a location, a time, a merchant type, and a transactions history longevity from each retailer; and training the AI model on the generated dataset using a k-nearest neighbor method in conjunction with one of divisive or Agglomerative clustering algorithms to generate an optimized prediction model that improves accuracy of business correlation predictions by iteratively adjusting model parameters based on feedback data; and applying the optimized prediction model to automatically identify and categorize business correlations across different urban renewal project types; and dynamically updating the dashboard in real-time based on newly received transaction data to display updated correlation predictions and trends; … showing past performance of the first business and a second business and predicted future performance of the first business and the second business, wherein the dashboard identifies one or more trends associated with the first business and the second business, a measure of similarity between the first business and the second business, and an indication of profitability of the second business, wherein at least one of the one or more trends includes the correlation of the first business with the second business, a correlation strength indicator, and a correlation project categorization comprising at least one selected from the group of an inner city renewal project, an industrial manufacturing site renewal project, a port renewal project, a waterfront renewal project, and a historic renewal project (Example Claim 21).
The claim elements collect business related data, apply known modeling algorithms, and present an output with analysis, predictions and correlations. The claims are considered abstract because the claimed generating steps encompass mental choices or evaluations and the claimed training step encompasses performing mathematical calculations.
Regarding Step 2A, prong 2 of the 2019 PEG, the judicial exception is not integrated into a practical application because the claims (the judicial exception and the additional elements such as generating an artificial intelligence (AI) model; using the model to generate a dashboard; a system, comprising: a processor configured to provide a trend detection interface; and a database in data communication with the processor; non-transitory computer-accessible medium having stored thereon computer-executable instructions) are not an improvement to a computer or a technology, the claims do not apply the judicial exception with a particular machine, the claims do not effect a transformation or reduction of a particular article to a different state or thing nor do the claims apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment such that the claims as a whole is more than a drafting effort designed to monopolize the exception (see MPEP §§ 2106.05(a-c, e)). Using the model to generate a dashboard provides nothing more than mere instructions to implement an abstract idea on a generic computer see MPEP 2106.05(f).
Claims 31, 34, and 38 include wherein the model executes on an artificial intelligence (AI) infrastructure configured for model tuning. Here, the computer is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f).
Claims 32, 25, and 39 include wherein … AI infrastructure includes receiving feedback data and updating the dataset with the feedback data.
Dependent claims 22-32, 34-36, and 38-40 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the limitations recite mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea ‐ see MPEP 2106.05(f).
Regarding Step 2B of the 2019 PEG, the additional elements have been considered above in Step 2A Prong 2. The claim limitations do not amount to significantly more than the judicial exception because they are directed to limitations referenced in MPEP 2106.05I.A. that are not enough to qualify as significantly more when recited in a claim with an abstract idea because the limitations recite mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea ‐ see MPEP 2106.05(f).
Applicant's claims mimic conventional, routine, and generic computing by their similarity to other concepts already deemed routine, generic, and conventional [Berkheimer Memorandum, Page 4, item 2] by the following [MPEP § 2106.05(d) Part (II)]. The claims recite steps like: “Receiving or transmitting data over a network, e.g., using the Internet to gather data,” Symantec, “Performing repetitive calculations,” Flook, and “storing and retrieving information in memory,” Versata Dev. Group, Inc. v. SAP Am., Inc. (citations omitted), by performing steps of “generating” a dataset and “training” a model, “applying” the optimized prediction model, “updating” the dashboard, and “generate” a dashboard showing past performance and future performance (Example Claim 21).
By the above, the claimed computing “call[s] for performance of the claimed information collection, analysis, and display functions ‘on a set of generic computer components' and display devices” [Elec. Power Group, 830 F.3d at 1355] operating in a “normal, expected manner” [DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d at 1245, 1258 (Fed. Cir. 2014)].
Conclusively, Applicant's invention is patent-ineligible. When viewed both individually and as a whole, Claims 21-40 are directed toward an abstract idea without integration into a practical application and lacking an inventive concept.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20190378050 A1; WO 2021207627 A1; Abe et al., On optimizing the selection of business transformation projects, 2007.
THIS ACTION IS MADE FINAL. 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 extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED EL-BATHY whose telephone number is (571)270-5847. The examiner can normally be reached on M-F 8AM-4:30PM.
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, PATRICIA MUNSON can be reached on (571) 270-5396. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMED N EL-BATHY/Primary Examiner, Art Unit 3624
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