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 .
Status of the Application
This is a Final Action in response to the amendments and remarks submitted on 11/04/2025.
Claims 1-7, 9-10, 12, 17 and 18 are amended.
Claims 8, 11 and 15 are canceled.
Claims 1-7, 9-10, 12-14 and 16-20 are pending and examined herein.
Claim Objections
Claim 7 is objected to because of the following informalities: Claim 7 have the claim identifier as (Currently Amended), however no amendment was presented. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7, 9-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the PCF value" in line 20. There is insufficient antecedent basis for this limitation in the claim. For examination purposes the claim is interpreted as best understood.
Claim 1 recites the limitation "the taxonomy module" in line 29. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the term is related to “taxonomy data module” as previously introduced. Applicant is advised to keep consistency among the terminology to avoid indefiniteness. Appropriate correction is required.
Claim 1 recites the limitation “the PCF results” in lines 53 and 59, however it is unclear if the term is related to the “PCF results” introduced in line 18 or the term introduced in line 37. It is unclear of all the terms are the same or if the claim requires two different sets of “PCF results”. For examination purposes the claim is interpreted as best understood.
Claim 1 recites the limitation “the PCF value” in line 57, however it is unclear if the term is related to the “PCF value” in line 20 or the term introduced in line 33. It is unclear of all the terms are the same or if the claim requires two different sets of “PCF value”. For examination purposes the claim is interpreted as best understood.
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 1-7, 9-10, 12-14 and 16-20 are rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea without significantly more.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the method, and system are directed to at least one potentially eligible category of subject matter (i.e., process and machine,). Thus, Step 1 of the Subject Matter Eligibility test for claims 1-7, 9-10, 12-14 and 16-20 is satisfied.
With respect to Step 2A Prong One, it is next noted that the claims recite an abstract idea that falls under the “Mental Processes” and “Certain Methods of Organizing Human Activity” groups within the enumerated groupings of abstract ideas set forth in the MPEP 2106 since the claims set forth steps that recite concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and managing personal behavior or relationships or interactions between people (including following rules or instructions). Claims 1 and 12 recites the abstract idea of orchestrating the determination of product carbon footprint in a plurality of industries and users in order to obtain PCF results and perform an evaluation of such results (see paragraphs 024). This idea is described by the following claim steps:
generate a PCF determination package, wherein the PCF determination package comprises a methodology element, a PCF data element, a taxonomy data element, an emissions data element, a translation element, a data contract, and instructions that are customized for a customer system of a customer based on query information provided by the customer system, wherein the data contract is configured to receive a plurality of inputs in the form of emission-related data, wherein the query information comprises a name of the customer, an industry of the customer, and information about the customer system, and wherein the data contract and instructions are configured to instruct the customer system as to how to format the emission-related data;
send the PCF determination package to the customer system,;
obtain PCF results from the customer system after the customer system uses the data contract following the instructions of the PCF determination package, wherein the PCF results comprise the PCF value; and
evaluate the PCF results, wherein the emission-related data used by the customer system to generate the PCF results remains resident on the customer system and is not accessed;
accept the PCF determination package generated;
autonomously implement, using the taxonomy element of the PCF determination package, a hierarchical data structure that organizes the emission-related data into classes of data on the customer system;
autonomously seek and retrieve, using the emissions data element of the PCF determination package, the emission-related data needed to generate a PCF value from within the customer system;
autonomously perform calculations, following the data contract and the instructions of the PCF determination package and using a plurality of inputs comprising the emission- related data, to generate PCF results;
autonomously format and prepare, using the translation element of the PCF determination package, the emission-related data on the customer system for use with the data contract;
autonomously orchestrate data preparation activities, using the methodology element of the PCF determination package, on the emission-related data from emissions schema of the customer system to target schema for the data contract;
autonomously generate, using the methodology element of the PCF determination package and customized for the customer system, a scoping predicate;
autonomously apply the scoping predicate, using the methodology element of the PCF determination package, to filter and allocate the emission-related data on the customer system;
autonomously map, using the methodology element of the PCF determination package, the emission-related data by linking each source of the emission-related data to the data contract customized for the customer system;
autonomously generate, using the PCF data element of the PCF determination package, the PCF results on the customer system using the data contract according to the instructions and the emission-related data processed with the translation element, the taxonomy data element, the emissions data element, and the methodology element;
store, using the PCF data element of the PCF determination package, the emission- related data used to generate the PCF value and make the stored emission-related data immutable for future comparison or audit; and
send the PCF results.
This idea falls within Mental Processes because the idea is directed to towards an observation, and evaluation of data in order to form an opinion such that as required when evaluating PCF results. The noted abstract idea is also directed to managing interactions between people such as that required during communications when orchestrating the determination of PCF conforms to the requirements of more than one party when transmitting the results of the analysis.
Because the above-noted limitations recite steps falling within the Mental Processes and Certain Methods Of Organizing Human Activity abstract idea groupings of the MPEP 2106, they have been determined to recite at least one abstract idea when evaluated under Step 2A Prong One of the eligibility inquiry.
Therefore, because the limitations above set forth activities falling within the Mental Processes and Certain Methods Of Organizing Human Activity abstract idea groupings described in the MPEP 2106, the additional elements recited in the claims are further evaluated, individually and in combination, under Step 2A Prong Two and Step 2B below. Claim 12 and recites similar limitations as claim 1 and is therefore determined to recite the same abstract idea.
With respect to Step 2A Prong Two, the judicial exception is not integrated into a practical application. The additional elements that fail to integrate the abstract idea into a practical application are:
a PCF orchestrator;
a controller comprising a first hardware processor;
various modules;
the customer system comprising a second hardware processor;
wherein the customer system is in communication with the controller of the PCF orchestrator;
However, using a computer environment such as a controller, various modules and other recited computer elements amounts to no more than generally linking the use of the abstract idea to a particular technological environment. Orchestrating the determination of product carbon footprint in a plurality of industries and users in order to obtain PCF results and perform an evaluation of such results can reasonably be performed by pencil and paper until limited to a computerized environment by requiring a controller to perform the claimed steps.
These additional elements have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or computer-executable instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), and alternatively serve to link the use of the judicial exception to a particular technological environment. See MPEP 2106.05(f) and 2106.05(h).
Regarding the limitation “autonomously”, the examiner views this as a step that can be performed by a person autonomously, that is independently and not subject to any rule or control of another.
In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As noted above, the claims as a whole merely describes a method, computer system, and computer program product that generally “apply” the concepts discussed in prong 1 above. (See MPEP 2106.05 f (II)) In particular applicant has recited the computing components at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. As the court stated in TLI Communications v. LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) merely invoking generic computing components or machinery that perform their functions in their ordinary capacity to facilitate the abstract idea are mere instructions to implement the abstract idea within a computing environment and does not add significantly more to the abstract idea. Accordingly, these additional computer components do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea and as a result the claim is not patent eligible.
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrates the abstract idea into a practical application. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
For the reasons identified with respect to Step 2A, prong 2, claims 1, and 12 fail to recite additional elements that amount to an inventive concept. For example, 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 (e.g., a commercial or legal interaction or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)). In addition, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application (see MPEP 2106.05(h)).
Dependent claims 2-7, 9-10 and 13-14, 16-20 recite the same abstract idea as recited in the independent claims, and when evaluated under Step 2A Prong One are found to merely recite details that serve to narrow the same abstract idea recited in the independent claims accompanied by the same generic computing elements or software as those addressed above in the discussion of the independent claims, which is not sufficient to amount to a practical application or add significantly more, or other additional elements that fail to amount to a practical application or add significantly more, as noted above.
Dependent claims 2-7, 9-10 and 13-14, 16-20 further limits the abstract idea by narrowing the abstract idea by introducing limitations that provide further details that merely embellishes the abstract idea. Further embellishing that the invention is capable of processing information in a generic computing environment does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore the claims are also non-statutory subject matter.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the collective functions merely provide high level of generality computer implementation. Therefore, whether taken individually or as an order combination, the claims are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
For more information see MPEP 2106.
Response to Arguments
Applicant's arguments filed 11/04/2025 have been fully considered.
Applicant’s arguments, see Remarks, filed 11/04/2025, with respect to the previously presented 35 USC 102 for claims 1-20 have been fully considered and are persuasive. The rejection of claims 1-20 has been withdrawn.
Regarding the previously presented 35 USC 101, Applicant argues:
Page 10, “Applicant asserts that the process captured in amended Claim 1 provides a significant technological advancement over technology…the PCF determination package are designed specifically for the customer, which allows for more complete and accurate results… eliminates the security risks and concerns over the release of the customer’s confidential information… eliminates the need for human interaction or input, thereby contributing to the completeness and accuracy of the PCF results.” Examiner respectfully disagrees. Examiner finds that the claim limitations as currently written are performing a mental process in a computer environment. Furthermore, it appears that the Applicant is arguing business solutions provided by automating a manual process rather than an improvement in technology. That is, automating a process provides solutions such as accurate results, eliminating need for human interaction as argued by the Applicant. However, the Examiner finds the argument non-persuasive and concludes that no improvement to the functioning of a computer or technical field is obtained by the claims as written.
Page 12 “It is well established that software-based claims that have multiple steps that are deemed to recite steps that amount to a method of organizing human activity may still be patent eligible under Step 2A Prong 2 when the claim recites a combination of additional elements in such a way that the claim as a whole integrates the method of organizing human activity into a practical application. See, e.g., Claim 1 of Example 42 of the Subject Matter Eligibility Examples. In this case, the various modules of the PCF determination package that are used by the customer system are autonomously configured to perform all of the functions listed above so that an accurate PCF value can be promptly generated. Consequently, Applicant respectfully asserts that the PCF determination package used by the customer system as set forth in amended independent Claim 1 show an integration into a practical application, and so satisfies Step 2A, Prong 2.” Examiner respectfully disagrees. The additional elements recited in Example 42 recite a specific improvement over the prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user. In contrast, the claims at hand are silent and not comparable to the improvements cited in claim 1 of Example 42. The abstract idea identified in the claims is not integrated into a practical application because the elements used in the steps of the claim are merely generic computing devices implemented on a generic computer wherein the generic computing devices are used as a tool to perform the abstract process and merely used to facilitate a cumbersome manual process.
Page 12 “Under Step 2B, it is well known that when any element or combination of elements of a claim is sufficient to amount to significantly more than the judicial exception, then the claim is eligible. See, e.g., Example 34 of the Subject Matter Eligibility Examples. As described in paragraphs [0002]-[0004] of the Specification, off-the-shelf software is the best available tool that a company has to determine PCF data, and this tool is often insufficient because these off-the-shelf software solutions do not have the flexibility required to accommodate a company's portfolio and because these off-the-shelf software solutions rely on human input and human data manipulation, which is often error prone. In addition, these off-the-shelf software solutions require that a third party (e.g., the software vendor) has control of the company's data, which can lead to security risks and concerns over the release of confidential information.” Examiner respectfully disagrees. In the instant case there is no determination or elements or combination of elements that amount to significantly more than the judicial exception as argued. The elements recited in the claims are generic computer elements used as a tool to perform the abstract process. Furthermore, there is no analysis and comparison to Example 34 other than a generic mention, therefore the argument is moot and found non-persuasive.
Page 13, “As discussed above, without the PCF determination package, the customer system is unable to accurately and promptly generate a PCF value. Instead, extensive human intervention would be required with an off-the-shelf product, thereby significantly increasing the amount of time and the likelihood of errors (e.g., through omission of necessary data, through errors in formatting and/or otherwise processing emissions-related data), thereby generating an inaccurate PCF value. By contrast, the PCF determination package, residing on the customer system, may be used by the customer system to accurately and promptly generate a PCF value. Applicant respectfully asserts that the Specification provides a technical explanation as to how to implement the invention in a manner such that the improvement is apparent to one of ordinary skill in the art. Further, Applicant asserts that amended independent Claim 1 reflects the disclosed improvement in the performance of the customer system and in the technical field of generating PCF values.” Examiner respectfully disagrees. It appears that the Applicant is arguing business solutions provided by automating a manual process rather than an improvement in technology. That is, automating a process provides solutions such as the ones argued by the Applicant. However, the Examiner finds the argument non-persuasive and concludes that no improvement to the functioning of a computer or technical field is obtained by the claims as written.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
LIU, US Patent Publication 2014/0032380 COMPUTERIZED CARBON FOOTPRINT INVENTORY OF PRODUCTS AND COMPUTNG DEVICE FOR INVENTORYING CARBON FOOTPRINT OF THE PRODUCTS. The present disclosure is related to a method and a computing device for a carbon footprint inventory of a product.
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 MARIA C SANTOS-DIAZ whose telephone number is (571)272-6532. The examiner can normally be reached Monday-Friday 8:00AM-5:00PM.
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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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/MARIA C SANTOS-DIAZ/Primary Examiner, Art Unit 3629