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 .
DETAILED ACTION
Status of Claims
This First Office action is in reply to the application filed on 21 May 2024.
Claims 1-20 are currently pending and have been examined. The Information Disclosure Statement filed 25 July 2025 has been considered by the Examiner. A signed copy is enclosed with this Office Action.
Inventorship
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the Examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicants are advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the Examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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 1-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) without significantly more. The claims as a whole recite certain grouping of an abstract idea and are analyzed in the following step process:
Step 1: Claims 1- 20 are each focused to a statutory category of invention, namely “method; system” sets.
Step 2A: Prong One: Claims 1-20 recite limitations that set forth the abstract ideas, namely, the claims as a whole recite the claimed invention as directed to an abstract idea without significantly more. Representative Claim 1 outlines a computer-implemented workflow where a processor evaluates an image of an original material, finds a replacement, and commands an external machine to produce it. Under established USPTO Patent Eligibility Guidelines, the claim fails the Step 2A Prong 1 test as it is directed to an abstract idea and does not recite a practical application. The claims recite steps for:
“receiving, by a processor and from an electronic device, an image of an original material;
generating, by the processor, representative data characterizing the original material based upon the image;
identifying, by the processor and based on the representative data, the replacement material that corresponds to the original material;
providing, by the processor, information unique to the replacement material, to the electronic device;
receiving, by the processor and from the electronic device, a request to replace the original material with the replacement material;
based on the request, generating, by the processor, an executable instruction indicating an amount of the replacement material;
and providing, by the processor, the executable instruction to an additional electronic device, the executable instruction causing the additional electronic device to generate the amount of the replacement material”
As detailed in the MPEP 2106 and commensurate to the two-part subject matter eligibility framework decision in the Federal court decision in Alice Corp. Pty. Ltd. V. CLS Bank International et al., (Alice), 2019 revised patent subject matter eligibility guidance (2019 PEG) and the October 2019 Update: Subject Matter Eligibility (“October 2019 Update), and the new “July 2024 Guidance Update on Patent Subject Matter Eligibility Examples, including on Artificial Intelligence”, the 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter. The 35 U.S.C. 101 Step 2A, Prong One analysis focuses on whether a claim recites a judicial exception by evaluating if it falls into one of three specific groupings: mathematical concepts, mental processes, or certain methods of organizing human activity. Based on the provided steps above in bolded, the analysis for Step 2A Prong One is as follows:
Mathematical Concepts / Data Manipulation: mathematical relationships, mathematical formulas or equations, mathematical calculations. The claim heavily recites generating representative data characterizing the original material. Mathematical concepts, formulas, and data representation models are considered abstract ideas.
Certain methods of organizing human activity –managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The flow outlines a process for commerce and the communication of information (requesting a replacement and providing information unique to the replacement material to a device).
Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). The steps of generating representative data, identifying a replacement material, and generating an executable instruction to determine the amount all describe cognitive operations or mental steps that can be performed entirely in the human mind (or with pen and paper.
See MPEP § 2106.04(a) III C. Hence, the claims are ineligible under Step 2A Prong one. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception.
Prong Two: Claims 1-20: With regard to this step of the analysis (as explained in MPEP § 2106.04(d)), the judicial exception is not integrated into a practical application. Claims 1-20 recite additional elements directed to generic computer components, such as a "a processor; a non-transitory storage medium; and a set of computer readable instructions stored in the non-transitory storage medium” (e.g., see Applicants’ published Specification ¶’s 52-62). Therefore, the claims contain computer components that are cited at a high level of generality and are merely invoked as a tool to perform the abstract idea. Simply implementing an abstract idea on a computer is not a practical application of the abstract idea. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible. See MPEP § 2106.05(f) (h).
Step 2B: As explained in MPEP § 2106.05, Claims 1-20 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea nor recites additional elements that integrate the judicial exception into a practical application. The additional elements of “a processor; a non-transitory storage medium; and a set of computer readable instructions stored in the non-transitory storage medium”, etc. are generically-recited computer-related elements that amount to a mere instruction to “apply it” (the abstract idea) on the computer-related elements (see MPEP § 2106.05 (f) – Mere Instructions to Apply an Exception). These additional elements in the claims are recited at a high level of generality and are merely limiting the field of use of the judicial exception (see MPEP §2106.05 (h) – Field of Use and Technological Environment). There is no indication that the combination of elements improves the function of a computer or improves any other technology. While the claim ends with causing an additional electronic device to generate the amount of the replacement material (e.g., 3D printing or manufacturing), the claim provides no specific, unconventional technological means for doing so. It claims the end result of automated replacement rather than the specific technological process of replacement. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible.
The Examiner interprets that the steps of the claimed invention both individually and as an ordered combination result in Mere Instructions to Apply a Judicial Exception (see MPEP §2106.05 (f)). These claims recite only the idea of a solution or outcome with no restriction on how the result is accomplished and no description of the mechanism used for accomplishing the result. Here, the claims utilize a computer or other machinery (e.g., see Applicants’ published Specification ¶’s 52-62) regarding using existing computer processors as well as program products comprising machine-readable media for carrying or having machine-executable instructions or data structures stored. “processor 232” in its ordinary capacity for performing tasks (e.g., to receive, analyze, transmit and display data) and/or use computer components after the fact to an abstract idea (e.g., a fundamental economic practice and certain methods of organization human activities) and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)). Software implementations are accomplished with standard programming techniques with logic to perform connection steps, processing steps, comparison steps and decisions steps. These claims are directed to being a commonplace business method being applied on a general-purpose computer (see Alice Corp. Pty, Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357, 110 USPQ2d 1976, 1983 (2014)); Versata Dev. Group, Inc., v. SAP Am., Inc., 793 D.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015)) and require the use of software such as via a server to tailor information and provide it to the user on a generic computer. Based on all these, Examiner finds that when viewed either individually or in combination, these additional claim element(s) do not provide meaningful limitation(s) that raise to the high standards of eligibility to transform the abstract idea(s) into a patent eligible application of the abstract idea(s) such that the claim(s) amounts to significantly more than the abstract idea(s) itself. Accordingly, Claims 1-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e. abstract idea exception) without significantly more.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Labrie et al. (Labrie) (US 2015/0073864).
With regard to Claims 1, 13, 17, Labrie teaches a computer-implemented method/system a processor; a non-transitory storage medium; and a set of computer readable instructions stored in the non-transitory storage medium that, when executed by the processor (In FIG. 1A, processor 125 communicates over data bus 105 with input devices 115, display 120, network communications interface 110, storage medium 130, and memory 135. Though FIG. 1A shows only a single processor, multiple processors or a multi-core processor may be present in some embodiments. Input devices 115 include, for example, a keyboard, a mouse or other pointing device, or other devices that are used to input data or commands to computer system 100 to control its operation. Network communications interfaces 110 may include, for example various serial or parallel interfaces for communicating with a network or one or more peripherals), cause the processor to for generating/partial replacement material (the different inspection-related data that can be used to enable a decision related to repairing, replacing, or taking some other action related to damage to a building facet. In some embodiments, inspection data can be applied to CAD data. Upon receiving inspection data, analysis related to whether to repair, replace, or take some other action can be performed for each directionality of the building facets. Each building facet can have other building facets linked to it that are identified for replacement, for repair, as not damaged, or by some other indicator depending on the analysis) (see at least paragraphs 41-48, 59), the computer-implemented method comprising:
providing, by a processor, a claims handling application for installation on an electronic device of a user (For example, a steel exhaust vent would rarely be damaged by hail. Accordingly, the "replace steel exhaust vent" variable would be set to low when the damage-causing event was a hail storm, the insurance claim was for hail damage, or both. The material type that goes into the determination can be obtained, for example, from the photo recognition as described above, from other digital inspection data, CAD data) (see at least paragraph 146);
collecting, by the processor, claims data transmitted by the electronic device through the claims handling application (As part of the process, if items are tagged with repair or replace because of their directionality and the damage type, for example, and those items are tagged with low likelihood of damage factors because, for example their material and the damage type or damage causing event, the claim can be flagged for review) (see at least paragraph 146);
receiving, by a processor and from an electronic device, an image (property repair analysis, comprising: receiving digital building facet data for a first building facet of a set of one or more building facets; receiving digital inspection data for the first building facet; determining an amount of building material required to repair damage to an area of the first building facet, including determining a first amount of waste building material; determining a repair indicator for the first building facet, the determining a repair indicator based at least in part upon the digital facet data for the first building facet and the inspection data for the first building facet; determining an appropriate waste container based upon the first amount of waste material; and displaying an electronic image of the set of one or more building facets) of an original material (Criteria for evaluating the repair indicator for linked building facets can include the linked building facets current repair indicator, if there is one; the directionality of the linked building facet; the area or size of the linked building facets; cost to repair or replace the linked building facet; material type of the linked building facet, and the like. Those of skill in the art can appreciate the different inputs to a repair indicator that can be required) (see at least paragraphs 19, 62);
generating, by the processor, representative data characterizing the original material based upon the image (receiving digital building facet data for a first building facet of a set of one or more building facets; receiving digital inspection data for the first building facet; determining an amount of building material required to repair damage to an area of the first building facet, including determining a first amount of waste building material; determining a repair indicator for the first building facet, the determining a repair indicator based at least in part upon the digital facet data for the first building facet and the inspection data for the first building facet; determining an appropriate waste container based upon the first amount of waste material; and displaying an electronic image of the set of one or more building facets) (see at least paragraphs 19, 62);
identifying, by the processor and based on the representative data, the replacement material that corresponds to the original material (decisions related to repairing, replacing, or taking other action can be made. Inspection data from an onsite roof inspector can be received. The inspection data can include data such as type of roofing; different inspection-related data that can be used to enable a decision related to repairing, replacing, or taking some other action related to damage to a building facet. In some embodiments, inspection data can be applied to CAD data. Upon receiving inspection data, analysis related to whether to repair, replace, or take some other action can be performed for each directionality of the building facets. Each building facet can have other building facets linked to it that are identified for replacement, for repair, as not damaged, or by some other indicator depending on the analysis) (see at least paragraphs 58-65);
providing, by the processor, information unique to the replacement material, to the electronic device (a repair indicator can also be set based on a sliver threshold. A sliver threshold for repair indicators can be based on a geometric value of the building facet, for example size, including the number of shingles or other material units for the particular facet or facet area; replacement cost of the building facet) (see at least paragraphs 58-65);
receiving, by the processor and from the electronic device, a request to replace the original material with the replacement material (Criteria for evaluating the repair indicator for linked building facets can include the linked building facets current repair indicator, if there is one; the directionality of the linked building facet; the area or size of the linked building facets; cost to repair or replace the linked building facet; material type of the linked building facet, and the like. Those of skill in the art can appreciate the different inputs to a repair indicator that can be required) (see at least paragraphs 58-65);
based on the request, generating, by the processor, an executable instruction indicating an amount of the replacement material (Criteria for evaluating the repair indicator for linked building facets can include the linked building facets current repair indicator, if there is one; the directionality of the linked building facet; the area or size of the linked building facets; cost to repair or replace the linked building facet; material type of the linked building facet, and the like. Those of skill in the art can appreciate the different inputs to a repair indicator that can be required) (see at least paragraphs 58-65);
providing, by the processor, the executable instruction to an additional electronic device, the executable instruction causing the additional electronic device to generate the amount of the replacement material (Referring still to FIG. 3, a system can include building material and building material type options for a user to customize material tagging for one or more building facets. A building facet can be tagged with a "REPLACE" repair indicator and the system can provide options for assigning one or more building material types to the building facet. For example, building facet 215 can be automatically assigned a "REPAIR" repair indicator and automatically tagged with a building material of shingles. The system can provide the ability to tag the building facet 215 with a "REPLACE" repair indicator and building materials of shingles and water shield. Further, the installation procedures of some building materials require the installation of other, related building materials) (see at least paragraphs 58-65).
With regard to Claims 2, 20, Labrie teaches: determining, by the processor, if the replacement material is not available in a needed amount, determining, by the processor, if the original material is aged beyond a predetermined threshold (see at least paragraphs 8-11);
identifying, by the processor, an additional replacement material and an additional amount of the additional replacement material (see at least paragraphs 8-11).
With regard to Claim 3, Labrie teaches wherein the replacement material corresponds to a partial replacement in an insured loss (see at least paragraph 147).
With regard to Claim 4, Labrie teaches wherein the original material includes at least one of siding for a building, a roofing material, a window material, a plumbing material, an automotive material, or a construction material (see at least paragraphs 11-18, 138-145).
With regard to Claim 5, Labrie teaches receiving an input, via the electronic device, indicative of a selection of the image, the electronic device providing the image to the processor based on the input (see at least paragraphs 109, 138-145).
With regard to Claim 6, Labrie teaches: accessing, by the processor, reference data for each of a plurality of different materials (see at least paragraphs 93, 138-145);
and identifying, by the processor, the replacement material from the plurality of different materials based on the representative data and the reference data (see at least paragraphs 93, 138-145).
With regard to Claim 7, Labrie teaches wherein the reference data includes reference characteristic data associated with each of the plurality of different materials, and the reference characteristic data includes at least one of: a color, a texture, a construction material type, a construction material style, a construction material face characteristic, a construction material profile characteristic, or a construction material manufacturer name (see at least paragraphs 93, 138-145).
With regard to Claim 8, Labrie teaches: sending, by the processor, the amount of the replacement material to the custom manufacturing facility (see at least paragraphs 93, 138-145);
sending, by the processor and to the additional electronic device, a second instruction to generate the amount of the replacement material by manufacturing the amount of the replacement material using an additive manufacturing process at the custom manufacturing facility (see at least paragraphs 93, 138-145).
With regard to Claim 9, Labrie teaches providing, by the processor, to the additional electronic device, and from a reference database, electronic files executable by the additional electronic device for performing the additive manufacturing process at the custom manufacturing facility (see at least paragraphs 93, 138-145).
With regard to Claim 10, Labrie teaches wherein the image includes a digital image of a transferred ink pattern of the original material (see at least paragraphs 93, 138-145).
With regard to Claims 11, 15, Labrie teaches wherein the replacement material includes a veneer layered on a substrate (see at least paragraphs 93, 138-145).
With regard to Claims 12, 19, Labrie teaches:
segmenting, by the processor, a texture region from the image (see at least paragraphs 93, 138-145);
extracting, by the processor, a feature of the original material from the texture region (see at least paragraphs 93, 138-145);
generating, by the processor and based on the feature, the representative data for the original material (see at least paragraphs 93, 138-145).
With regard to Claims 14, 18, Labrie teaches wherein the executable instruction further causes the additional electronic device to use an additive manufacturing process to manufacture the replacement material (see at least paragraphs 93, 138-145).
With regard to Claim 16, Labrie teaches wherein the set of computer readable instructions further include instructions that cause the processor to access a reference database that stores design specifications for additive manufacturing of a plurality of different materials (see at least paragraphs 93, 138-145).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Labrie et al. (US 9721264)
WU et al. (US 2019/0287299)
Schotte Tine (BE 1027852 B1)
Balasbaneh, Ali Tighnavard, Abdul Kadir Bin Marsono, and Adel Gohari. "Sustainable materials selection based on flood damage assessment for a building using LCA and LCC." Journal of Cleaner Production 222 (2019): 844-855.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS L MANSFIELD whose telephone number is (571)270-1904. The examiner can normally be reached M-Thurs, alt. Fri. (9-6).
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THOMAS L. MANSFIELD
Examiner
Art Unit 3623
/THOMAS L MANSFIELD/Primary Examiner, Art Unit 3624
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