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
This Final Office Action is in response to Applicant’s Amendment/Request for Reconsideration filed 01/20/2026.
The effective filing date of the present application is 08/09/2021.
Claims 1, 4, 6 – 9, 12, 14 – 27 are pending; claims 2, 3, 5, 10, 11, and 13, being presently cancelled, claims 22 – 27 being new.
Response to Amendment
Applicant's remarks of 01/20/2026 have been entered.
Applicant’s amendments to claims 7 and 15 have rendered a previous rejection under 35 U.S.C. § 112(b) as moot; therefore, the previous rejection for these claims is withdrawn.
The examiner will address applicant's remarks at the end of this office action.
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, 4, 6 – 9, 12, 14 – 27, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
At Step 1 of analysis, the instant claims are directed towards a method and a system. Thus, all claims fall within one of the four statutory categories and are considered eligible subject matter.
At Step 2A, Prong One, of analysis, the amended claims set forth a method for checking a building information file for compliance and outputting a report as to the file. This describes a mental process which includes observations (checking), evaluations, (analysis), judgments, (passed a check), and opinions (output report). Checking a file, conducting analyses, and generating an output are steps that can practically be performed in the human mind. Therefore, they recite a mental process and an abstract idea.
Claim 1, which is illustrative of claim 9, contains those elements that define this abstract idea (and are highlighted below):
A method comprising: storing, by a computing device, a first building information model (BIM) file for a building project, wherein the first BIM file comprises a building permit application file having a design for the building project;
storing, by the computing device, a second BIM file for the building project, wherein the second BIM file comprises an integrated thermal infrared and LiDAR point cloud data file showing a progress in construction of the building project;
checking, by the computing device, the building permit application file for building code compliance with computable files defining building codes;
conducting variance analysis of permitted plans and actual onsite construction phases by comparing the second BIM file to the first BIM file;
generating, by the computing device, an output report indicating whether the building permit application file has passed a check for the building code compliance and identifying variances between the permitted plans and the actual onsite construction; and
transmitting, by the computing device, the output report to a client device of an applicant associated with the building permit application file, wherein the computing device comprises a blockchain node, wherein the first BIM file is stored by the blockchain node in a permissioned blockchain network, wherein the building permit application file is checked for building code compliance in accordance with a smart contract of the permissioned blockchain network.
At Step 2A, Prong Two, of eligibility analysis, the Examiner has determined that the identified abstract idea (judicial exception) is not integrated into a practical application because the additional elements are merely instructions to apply the abstract idea to a computer, as described in MPEP 2106.05(f). Further, in MPEP 2106.05(f) it is noted that "[use] of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more.” Therefore, according to the MPEP, this is not solely limited to computers but includes other technology that, recited in an equivalent to “apply it,” is a mere instruction to perform the abstract idea on that technology.
Claims 1 and 9 recite only the following additional elements:
a computing device;
an integrated thermal infrared and LiDAR point cloud data file;
a client device;
wherein the computing device comprises a blockchain node;
a permissioned blockchain network;
a smart contract of the permissioned blockchain network;
a system comprising: at least one processor; and memory configured to communicate with the at least one processor, wherein the memory stores instructions.
Certain elements describe mere instructions to apply the abstract idea to a computer, per MPEP 2106.05(f). These include: a computing device; a client device; a system comprising: at least one processor. Applicant has described the system generically in their disclosure, at Specification [0035-0036], and Figure 4, as filed.
Certain other additional elements, an integrated thermal infrared and LiDAR point cloud data file, involves the use of “a portable tablet or similar portable devices equipped with LiDAR, digital photography, Thermal InfraRed (TIR), or a digital laser scanner for visual inspection”. This describes insignificant extra-solution activity, such as data gathering, and does not amount to an inventive concept, particularly because of the conventional manner and component, defined above, used to gather the data. See MPEP 2106.05(g).
Lastly, the claims add additional elements that describe the use of use of blockchain – a permissioned blockchain network and smart contract. The steps of the BIM file being “stored by the blockchain node in permissioned blockchain network” describes the use of blockchain in its ordinary fashion - to securely receive, store, or transmit data. Noting that blockchain is a generic term for a distributed ledger, and a network meaning the ledgers are at multiple locations simultaneously, these additional elements describe merely describe the use of blockchain as noted above. This system in described in a generic way, at Specification [0024-0027] and Figure 3. This includes: “…a DLT framework for virtual permitting process includes a main blockchain that connects to other external blockchain networks.”; as well as: “[a] chaincode or smart contract is an application-level code stored on the ledger as a part of a transaction.” Therefore, the Examiner has determined that using blockchain is also the use of a computer or other machinery in its ordinary capacity and does not provide for significantly more. See MPEP 2106.05(f).
At Step 2B of eligibility analysis, the Examiner has determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not amount to more than simply instructing one to practice the abstract idea within a computer environment to perform the steps that define the abstract idea. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of: (a computing device; a client device; a permissioned blockchain network; a system comprising: at least one processor; and memory configured to communicate with the at least one processor, wherein the memory stores instructions), amounts to no more than mere instructions to implement an abstract idea on a computer and is equivalent to the words “apply it,” per MPEP 2106.05(f) and 2106.05(g).
Dependent claims 4 and 12 contain further embellishments to the same abstract idea found in claims 1 and 9. Recitations of transmitting the file to an authority entity for review is a further recitation to the entity who is doing the evaluation; therefore, it is directed to the abstract idea. Further, these claims rely on the computing device recited earlier and is a further reliance on computers to perform the abstract idea, per MPEP 2106.04(d). This does not integrate the judicial exception into a practical application.
Dependent claims 2, 5, 10, and 13, contain further embellishments to the same abstract idea found in claims 1 and 9. Recitations to a permit application are refinements of the contents of the file that are to be evaluated and opined on. Further, these claims rely on a blockchain for storing the data. This is a further reliance on computers to perform the abstract idea, per MPEP 2106.04(d). Blockchain technology being generically described throughout the disclosure. This does not integrate the judicial exception into a practical application.
Dependent claims 6, 7, 14, and 15, contain further embellishments to the same abstract idea found in claims 1 and 9. Recitations to digital laser scanned and digital photographs and Lidar point cloud data are refinements of the data collected that make up contents of the files. Thus, directed to the abstract idea identified. This data is further defined by ways it can be collected. Recitations to the thermal imaging, LiDAR, digital laser scanning, digital photographs, as collected by a drone, are generically defined within the disclosure. This includes, “… point cloud and image captures can be obtained via the drone or by the inspector or specialist on the premises with a portable tablet or similar portable devices equipped with LiDAR, digital photography, Thermal InfraRed (TIR), or a digital laser scanner”. The drone is also generically defined and no specific drone is required. See Specification [0020]. Therefore, these elements are considered to instruct one to use a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data). This does not integrate a judicial exception
into a practical application. See MPEP 2106.05(f).
Dependent claims 8, and 17 – 20, contain further embellishments to the same abstract idea found in claims 1 and 9. Recitations to a MEP details, and architectural, and safety and hazard inspections, are refinements of the building information that is evaluated and a report filed. Therefore, these elements are directed to the mental process which includes observations (inspections), evaluations, judgments, and opinions (reports). These claims also rely on data stored on the computing device recited earlier and is a further reliance on computers to perform the abstract idea, per MPEP 2106.04(d). This does not integrate the judicial exception into a practical application.
Dependent claims 16 and 21 contain further embellishments to the same abstract idea found in claim 9. Recitations to a design model and artificial intelligence techniques are directed to the system of claim 9. Noting that 2D and 3D as well as artificial intelligence are accomplished via the processor, this is merely instructing one to apply the abstract idea to a computer, as described in MPEP 2106.05(f). This does not provide for integration into a practical application.
New dependent claims 22, 23, 25, and 26, contain further embellishments to the same abstract idea found in claims 1 and 9. Recitations to data comprised of structural steel rebar is a further definition of the building information evaluated and reported on. These claims are directed to the abstract idea, Further, these recitations employ the use of the components that provide infrared or Lidar capability. These components involve the use of “a portable tablet or similar portable devices equipped with LiDAR, digital photography, Thermal InfraRed (TIR), or a digital laser scanner for visual inspection”. This describes insignificant extra-solution activity, such as data gathering, and does not amount to an inventive concept, particularly because of the conventional manner and component used to gather the data. See MPEP 2106.05(g).
New dependent claims 24 and 27 contain further embellishments to the same abstract idea found in claims 1 and 9. References to the permissioned blockchain network and a Hyperledger Sawtooth blockchain platform is employed using blockchain technology in its ordinary fashion - to securely receive, store, or transmit data. This platform and system in described in a generic way, at Specification [0024-0027] and Figure 3. This includes: “…a DLT framework for virtual permitting process includes a main blockchain that connects to other external blockchain networks.”; as well as: “[a] chaincode or smart contract is an application-level code stored on the ledger as a part of a transaction.” Therefore, the Examiner has determined that using blockchain is also the use of a computer or other machinery in its ordinary capacity and does not provide for significantly more. See MPEP 2106.05(f).
Therefore, for the reasons cited above, claims 1, 4, 6 – 9, 12, 14 – 27, are directed to an abstract idea without integration into a practical application and without reciting significantly more.
Response to Arguments
Applicant's arguments filed 01/20/2026 have been fully considered but they are not fully persuasive. Applicant first remarks on rejection of all prior claims under 35 U.S.C. § 101. See page 9. Applicant argues that the claims integrate any alleged judicial exception into a practical application because the amended claims provide an improvement to computer functionality per MPEP § 2106.05(a). Based on the reasoning that follows, the Examiner respectfully disagrees with Applicant’s arguments.
Applicant further remarks the present application combines a number of technological concepts that cannot be practically be performed by human work mentally. The Examiner respectfully disagrees. Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception.
A claim recites a judicial exception when the judicial exception is “set forth” or “described” in the claim. As detailed above, the amended claims set forth checking a building information file for compliance and outputting a report as to the file. This describes a mental process which includes observations (checking), evaluations, (analysis), judgments, (passed a check), and opinions (output report). Checking a file, conducting analyses, and generating an output are steps that can practically be performed in the human mind. Therefore, they recite a mental process and an abstract idea.
The Examiner adds that courts have found claims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind; as well as noting that a general-purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014).
The Examiner further notes that those elements that do not recite an abstract idea, for example, transactions in blockchain networks, as argued by Applicant on page 11, were not pointed to by the Examiner to set forth an abstract idea. As detailed above, a computing device; an integrated thermal infrared and LiDAR point cloud data file; a client device; a permissioned blockchain network; a system comprising: at least one processor; and memory configured to communicate with the at least one processor, wherein the memory stores instructions, were all found to be additional elements and would need to further analyzed to show any integration into a practical application as follows.
At Step 2A, Prong Two, a judicial exception is integrated into a practical application if the additional elements describe certain conditions that show this integration. These considerations are set forth in MPEP 2106.05(a) through (c), and MPEP 2106.05(e) through (h). No such additional elements are present within the instant amended claims that would show integration. As detailed above, the additional elements identified above merely describe mere instructions to apply the abstract idea to a computer, per MPEP 2106.05(f). These include: a computing device; a client device; a system comprising: at least one processor.
Certain other additional elements, an integrated thermal infrared and LiDAR point cloud data file, involves the use of “a portable tablet or similar portable devices equipped with LiDAR, digital photography, Thermal InfraRed (TIR), or a digital laser scanner for visual inspection”. This describes insignificant extra-solution activity, such as data gathering, and does not amount to an inventive concept, particularly because of the conventional manner and component, defined above, used to gather the data. See MPEP 2106.05(g).
Lastly, the claims add additional elements that describe the use of use of blockchain – a permissioned blockchain network and smart contract. The steps of the BIM file being “stored by the blockchain node in permissioned blockchain network” describes the use of blockchain in its ordinary fashion - to securely receive, store, or transmit data. Noting that blockchain is a generic term for a distributed ledger, and a network meaning the ledgers are at multiple locations simultaneously, these additional elements describe merely describe the use of blockchain as noted above. This system in described in a generic way, at Specification [0024-0027] and Figure 3. Therefore, the Examiner has determined that using blockchain is also the use of a computer or other machinery in its ordinary capacity and does not provide for significantly more. See MPEP 2106.05(f). Accordingly, all of the amended claims are directed to an abstract idea without integration into a practical application and without significantly more. Applicant’s arguments are not persuasive.
The Examiner notes that Applicant ties the inventive concept to a BIM file environment. One skilled in the art would recognize a general use of BIM to rely on a digital, perhaps 3D, collaborative, and system-centric system. Applicant describes a background of BIM within industry, however, mainly claims the use of BIM for storing data. The amended claims recite a first BIM file is comprised of a building permit application and a design for the building project. No criticality is required that this data is in digital form. The claims describe perhaps, paper forms for permits and blueprints drawn up for a design. This does not describe an inherent digital environment for use in checking plans versus progress reports. Applicant’s amended claims describe certain components that perform infrared and LiDAR functions. These recitations do show concepts that do not recite mental processes because they cannot be practically performed in the human mind, as exemplified at MPEP 2106.04(a)(2)(III)(A).
Applicant next discusses rejection of all claims under 35 U.S.C. §§ 102 and 103. See pages 12 – 16. In view of the amendments to the claims and after a further search, the Examiner finds these arguments persuasive. A further discussion is below.
Claims Distinguished Over Prior Art
Regarding claims 1 and 9, the prior art does not teach nor suggest a system or method as claimed. Upon updated research, it is concluded that the prior art of record does not disclose the claimed combination of elements, in combination, as recited within the noted claims. Various prior art teaches methods for building plan compliance, (Roth and Blackburn). Newly cited art teaches an automated method for inspection using the instant methodologies, (Telleria).
However, the prior art of record does not disclose the following claimed elements, either alone, or in combination within claims 1 and 9:
a method comprising: storing, by the computing device, a second BIM file for the building project, wherein the second BIM file comprises an integrated thermal infrared and LiDAR point cloud data file showing a progress in construction of the building project;
conducting variance analysis of permitted plans and actual onsite construction phases by comparing the second BIM file to the first BIM file;
generating, by the computing device, an output report indicating whether the building permit application file has passed a check for the building code compliance and identifying variances between the permitted plans and the actual onsite construction.
Regarding claims 4, 6 – 9, 12, and 14 – 27, based on their dependency to independent claims 1 and 9, they inherit the distinguished claim limitations and are therefore, also not disclosed by the prior art.
Noting that patentability of any claimed invention under 35 U.S.C. §§ 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101, the Examiner points to other rejections within this Office Action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Telleria discloses a scanning system to capture the features and measurements of a room for inspection purposes.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON EDMONDS whose telephone number is (571) 272-6171. The examiner can normally be reached M-F 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Monfeldt can be reached at (571) 270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DONALD J. EDMONDS
Examiner
Art Unit 3629
/SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629
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