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 .
This office action is in response to communication filed on 12/29/2025.
Claims 1-20 are presented for examination.
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.
Step 1: Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter). (MPEP 2106.03)
Claims 1-10 recite tangible system components, thus falling within one of the four statutory classes; i.e., machine. Claims 11-20 recite a series of steps, thus falling within one of the four statutory classes; i.e., process.
2Step 2A, Prong One: Evaluating whether the claim(s) recite(s) a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. (MPEP 2106.04).
Taking claim 11 as a representative:
recite tangible system components, thus falling within one of the four statutory classes; i.e., machine.
receiving, a plurality of successor carbon data relating to one or more successor components of a successor;
receiving, a plurality of initial carbon data relating to one or more initial components of an initial;
generating, a comparison coefficient as a function of the successor and the initial , wherein the comparison coefficient compensates for a usage capacity of the initial compared to the successor;
and displaying, a carbon report as a function of the plurality of successor carbon data, the plurality of initial carbon data, and the comparison coefficient.
The above limitations recite concepts of calculating comparisons coefficient compensates for carbon data usage capacity of an initial to a successor. e.g. a human can look, compare carbon usage data of an initial user to a successor user. These limitations, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas. Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claim 11 is an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the Alice/Mayo test, returning to representative claim 11, the claim recites processor for receiving, and a graphical user interface for displaying and machine model for receiving data, predicting and adjusting. These limitations are generic, computer component and amounts to not more than mere instructions to apply the exception using generic computer components. As such, under Prong Two of Step 2A of the Alice/Mayo test, when considered both individually and as a whole, the limitations of claim 11 does not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05.
As discussed above with respect to Prong Two of Step 2A, Furthermore, as discussed above with respect to Prong Two of Step 2A, claim 11 the abstract idea of ranking a plurality of subject lines based on predicted scores, when considered as an ordered combination, do not add anything that is not already present when they are considered individually . In Alice Corp., the Court considered the additional elements “as an ordered combination,” an determined that “the computer components...‘[a]dd nothing. ..that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claim 11 is and abstract idea itself. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claim 11 that transforms the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, independent system claim 1 is also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as claims above. Claim 1 further recites a memory at a high-level of generality (i.e. generic processors) such that they amount no more than mere instructions to apply the exception using generic computer components.
Dependent claims 2-10 and 12-20 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend. In addition, claims 10 and 20 further recite machine learning model using comparison data at a high level, and is considered as “apply it”, as the claims invoke the computer as a tool to perform the abstract idea. There’re no additional elements that transform the recited abstract idea into a patent eligible invention because these claims merely recite further abstract limitations that provide no more than simply narrowing the recited abstract idea.
Allowable Subject Matter
Claims 1-20 are allowable over prior art of record.
The closest prior art of record teaches Kaminsky teaches generate a comparison of the successor device and the initial device, wherein the comparison compensates for a usage capacity of the initial device compared to the successor device (compare the carbon emission amounts at 420 and At step 130, offset costs may be determined. This may include multiplying the weight and distance (ton miles) with emission factors, adding up the total (as appropriate), and multiplying the total with the offset cost). Kaminsky doesn’t teach: “a comparison coefficient as a function of the successor device and the initial device, wherein the comparison coefficient compensates for a usage capacity of the initial device compared to the successor and predicting a plurality of comparison coefficients corresponding to pairs of successor devices and initial devices as a function of the identified relationships”.
Other references of record:
Stopwaste Partnership GHG “Greenhouse Gas Reductions Calculator” (hereinafter Greenhouse) discloses a calculator that calculates a user's total greenhouse gas (GHG) reductions based on materials that are recycled or composted by the user instead of discarding them.
Farhan (10,037,778) teaches specified threshold and can transmit the one or more reclamation operations 970 to reclaim the storage locations in the second region 924 associated with the record entries that have been marked as deleted.
CN 117422210 teaches preset carbon emission prediction model is invoked (S14) to process each carbon emission source information and a corresponding carbon emission factor to obtain a carbon footprint data prediction value. The emission reduction measure is determined (S15) based on the initial flow information to obtain a target flow if the predicted value of the carbon footprint data exceeds a preset carbon emission threshold.
Response to Arguments
The 101 rejections have been maintained. Applicant argues that the claims do not pertain to a mental process. The Examiner disagrees with Applicant because the claims pertain to: calculating comparison coefficients for dissimilar datasets of carbon data usage of an initial device to a successor device, wherein the comparison coefficient compensates for a usage capacity of the initial deice compared to a successor device. e.g. a human can look, compare carbon usage data of an initial user to a successor user. These limitations, under their broadest reasonable interpretation, fall within the “Mental Processes”. The additional elements of: processor for receiving, and a graphical user interface for displaying and machine model for receiving data, predicting and adjusting. The recitation of the machine learning is basically any machine learning, namely using training data points and optimizing the model therefrom, and is considered as “apply it”, as the claims invoke the computer as a tool to perform the abstract idea. The additional elements do not amount to significantly more than the abstract idea.
Applicant argues that the claims in Ex Parte Guillaume Desjardins pertained to a practical application because the invention improved how the machine learning model operated, including reducing storage requirements and system complexity, the improvements were analogous to a technological improvement in computer functionality (similar to Enfish) which can support patent eligibility, which is not the case in the present claims which do not disclose the algorithms, steps by steps how the machine learning model operates/learns, or how it improves a computer functionality.
The instant application is not similar to McRO. McRO is an example of inventions that the court found not to be abstract. The instant application lacks the rules for lip sync and facial expression animation of McRO which proved to the elements that was determine to be non-abstract.
Bascom is an example of inventions that the court found not to be abstract. The instant application lacks the filtering Internet content of Bascom which proved to the elements that was determine to be to be illegible under 2B. Therefore, Enfish, McRO and Bascom are not applicable to the instant case.
Conclusion
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 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.
Point of contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQUEL ALVAREZ whose telephone number is (571)272-6715. The examiner can normally be reached Mondays thru Thursdays 8:30-6:30.
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/RAQUEL ALVAREZ/Primary Examiner, Art Unit 3621