DETAILED ACTION
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 the claimed amendment filed on April 22, 2026, in which claims 1-17 were canceled and claims 18-28 are presented for further examination.
Response to Arguments
Applicant's arguments filed on April 22, 2026 have been fully considered but they are not persuasive. (Examiner’s remark).
Remark
After further reviewed Applicant’s arguments in light of the specification, it is conceivable that the claimed amendment overcome the 35 USC 112 rejection. Therefore, the 35 USC 112 rejection set forth in the last rejection has hereby withdrawn.
In view of the 35 USC 101 rejection set forth in the last office action, Applicant asserted that because claims 18-28 of the instant application contain every limitation recited in claims 1-9 of the parent patent application (now granted patent), and claims 1-9 of the parent patent application are directed to statutory subject matter, claims 18-28 are also necessarily directed to statutory subject matter. Applicant is reminded that eligibility subject matter of the claim(s) is not evaluated based on whether the claimed invention has previously patented. But each individual US application is independently examined. Applicant is suggested to rely on the office action as filed and respond accordingly. Should a telephone interview be needed to expedite the prosecution of the instant application, the Applicant is welcome to contact the examiner to schedule a telephone interview.
Applicant further asserted that claim 18 is directed to patentable subject matter at least because the step of "calculating a joint probability of any single patent appearing in both the first patent class within the class pair and the second patent class within the class pair if the class pair was selected at random and each of the first patent class within the class pair and the second patent class within the class pair comprise unrelated technologies and multiplying said probability by a total number of patents in the patent system to obtain an expected number of patents in an unrelated class pair" is sufficient to integrate the invention into a practical application that renders claims 18-28 of the instant application patent eligible under 35 U.S.C. § 101. See Notice of Allowance dated June 27, 2024, in the application that issued as U.S. Patent No. 12, 099,572.
After further reviewed Applicant’s argument in light of the original disclosure, it is conceivable that claimed "calculating a joint probability of any single patent appearing in both the first patent class within the class pair and the second patent class within the class pair if the class pair was selected at random and each of the first patent class within the class pair and the second patent class within the class pair comprise unrelated technologies and multiplying said probability by a total number of patents in the patent system to obtain an expected number of patents in an unrelated class pair" is not sufficient to integrate the invention into a practical application that renders claims 18-28 of the instant application patent eligible under 35 U.S.C. § 101 (see MPEP § 2106.04(d) (for more information about evaluating whether a claim reciting a judicial exception is integrated into a practical application and MPEP § 2106.05(b) and MPEP § 2106.05(c)). The applicant fails to provide an evidence how the above mentioned limitations is sufficient to integrate into a practical application.
Furthermore, based on the Alice/Mayo two-part test to evaluate the eligibility of claims under examination, the examiner finds that the recited claimed elements “calculating a joint probability ……” under its broadest reasonable interpretation, cover a mathematical formula of abstract idea that is required to complete the method of claims 18-28 cited above. Note that “the Court in Gottschalk v. Benson “held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle”); Bilski v. Kappos, 561 U.S. 593, 611, 95 USPQ2d 1001, 1010 (2010) (“Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented, ‘an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.’” (quoting Diamond v. Diehr, 450 U.S. 175, 187, 209 USPQ 1, 8 (1981)) (emphasis in original)); Diehr, 450 U.S. at 187, 192 n.14, 209 USPQ at 10 n.14 (explaining that the process in Parker v. Flook was ineligible not because it contained a mathematical formula, but because it did not provide an application of the formula). See Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972); Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978)”.
The subject matter eligibility of the claimed of the instant application is evaluated as follow:
Step 1, Statutory Category (2106.01-Eligibility (step-1):
Claims 18-28 are directed to a method
Therefore, claims 18-28 fall into at least one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Step 2A, Prong One (Judicial exception recited, see MPEP 2106.04)
The limitation “creating a technology model that reflects a plurality of technology domains”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper create a technology model that reflects a plurality of technology domains.
The limitation “selecting a first plurality of patent classes from a first patent class type and a second plurality of patent classes from a second patent class type to form a plurality of class pairs, each of which reflects a potential technology domain”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper select a plurality of patent classes from the patent class type.
The limitation “determining a threshold overlap standard based on an expected number of patents lying in both patent class within the class pair and the patent class within the class pair”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper determine threshold overlap standard.
The limitation “determining a threshold overlap standard based on an expected number of patents lying in both patent class within the class pair and the patent class within the class pair”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper determine threshold overlap standard.
The limitation “calculating a joint probability of any single patent appearing in both the selected patent class within the class pair and the patent class within the class pair if the class pair was selected at random and each of the first patent class within the class pair and the second patent class within the class pair comprise unrelated technologies was multiplying said probability by the a total number of patents in the patent system to obtain an expected number of patents in any selected an unrelated class pair” as drafted, is a process that, under its broadest reasonable interpretation, covers a mathematical calculation for performing the method claim.
The limitation “comparing the a number of said identified patents in the class pair with the threshold overlap standard”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper compare number of said identified patents in the class pair with the threshold overlap standard.
The limitation “if the number of said identified patents in the class pair is below the threshold overlap standard, determining that the class pair is unlikely to encompass a meaningful technology domain and discarding the class pair”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper determine that the class pair is unlikely to encompass a meaningful technology domain and discarding the class pair.
The limitation “if the number of said identified patents in the class pair is equal to or above below the threshold overlap standard, determining that the class pair is likely to encompass a meaningful technology domain and retaining the class pair”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper determine that the class pair is likely to encompass a meaningful technology domain and retaining the class pair.
The limitation “updating the technology model, by calculating and storing, for each class pair, an average patent centrality value for the said identified patents within each class pair by analyzing a graph representation of said identified patents with a normalized search path node pair index and training a prediction model for the rate of improvement of technology domains”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper update the technology model for each class pair.
Step 2A, Prong Two (Integrated into a practical application):
This judicial exception is not integrated into a practical application. In particular, the claims recite the following additional elements:
The limitation “storing, for each class pair, an average patent centrality value for the said identified patents within each class pair by analyzing a graph representation of said identified patents with a normalized search path node pair index and training a prediction model for the rate of improvement of technology domains” recites insignificant extra-solution activity such as mere outputting of the result. The mere outputting of data does not meaningfully limit the abstract idea. Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application. (See MPEP 2106.05 (g)).
The limitation “applying the prediction model to obtain an estimated improvement rate based on said calculated average centrality value for each of the class pairs” recites insignificant extra-solution activity and amounts to more than a recitation of the words “apply it” or are more than mere instructions to implement an abstract idea or other exception on a computer.
Therefore, 35 USC 101 rejection is hereby sustained.
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 18-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract without significantly more.
Step 1, Statutory Category:
Claims 18-28 are directed to a method
Therefore, claims 18-28 fall into at least one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Step 2A, Prong One (Judicial exception recited, see MPEP 2106.04)
The limitation “creating a technology model that reflects a plurality of technology domains”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper create a technology model that reflects a plurality of technology domains.
The limitation “selecting a first plurality of patent classes from a first patent class type and a second plurality of patent classes from a second patent class type to form a plurality of class pairs, each of which reflects a potential technology domain”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper select a plurality of patent classes from the patent class type.
The limitation “determining a threshold overlap standard based on an expected number of patents lying in both patent class within the class pair and the patent class within the class pair”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper determine threshold overlap standard.
The limitation “determining a threshold overlap standard based on an expected number of patents lying in both patent class within the class pair and the patent class within the class pair”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper determine threshold overlap standard.
The limitation “calculating a joint probability of any single patent appearing in both the selected patent class within the class pair and the patent class within the class pair if the class pair was selected at random and each of the first patent class within the class pair and the second patent class within the class pair comprise unrelated technologies was multiplying said probability by the a total number of patents in the patent system to obtain an expected number of patents in any selected an unrelated class pair” as drafted, is a process that, under its broadest reasonable interpretation, covers a mathematical calculation for performing the method claim.
The limitation “comparing the a number of said identified patents in the class pair with the threshold overlap standard”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper compare number of said identified patents in the class pair with the threshold overlap standard.
The limitation “if the number of said identified patents in the class pair is below the threshold overlap standard, determining that the class pair is unlikely to encompass a meaningful technology domain and discarding the class pair”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper determine that the class pair is unlikely to encompass a meaningful technology domain and discarding the class pair.
The limitation “if the number of said identified patents in the class pair is equal to or above below the threshold overlap standard, determining that the class pair is likely to encompass a meaningful technology domain and retaining the class pair”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper determine that the class pair is likely to encompass a meaningful technology domain and retaining the class pair.
The limitation “updating the technology model, by calculating and storing, for each class pair, an average patent centrality value for the said identified patents within each class pair by analyzing a graph representation of said identified patents with a normalized search path node pair index and training a prediction model for the rate of improvement of technology domains”, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement, but for the recitation of generic computer components. One can manually with the aid of pen and paper update the technology model for each class pair.
Step 2A, Prong Two (Integrated into a practical application):
This judicial exception is not integrated into a practical application. In particular, the claims recite the following additional elements:
The limitation “querying a database of patents to identify patents lying in both a first patent class within the class pair and a second patent class within the class” amounts to data-gathering steps which is considered to be insignificant extra-solution activity, (See MPEP 2106.05(g)).
The limitation “storing, for each class pair, an average patent centrality value for the said identified patents within each class pair by analyzing a graph representation of said identified patents with a normalized search path node pair index and training a prediction model for the rate of improvement of technology domains” recites insignificant extra-solution activity such as mere outputting of the result. The mere outputting of data does not meaningfully limit the abstract idea. Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application. (See MPEP 2106.05 (g)).
The limitation “applying the prediction model to obtain an estimated improvement rate based on said calculated average centrality value for each of the class pairs” recites insignificant extra-solution activity and amounts to more than a recitation of the words “apply it” or are more than mere instructions to implement an abstract idea or other exception on a computer.
Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to the " querying a database of patents to identify patents lying in both a first patent class within the class pair and a second patent class within the class " identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);" and thus remains insignificant extra-solution activity that does not provide significantly more.
With respect to the “storing, for each class pair, an average patent centrality value for the said identified patents within each class pair by analyzing a graph representation of said identified patents with a normalized search path node pair index and training a prediction model for the rate of improvement of technology domains” identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional in displaying information as evidenced by the court cases in MPEP 2106.05(d)(II), " iv. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93" and "i. … transmitting data over a network, …Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)".
With respect to the "performing an action…" identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the Court found that the recitation of the computer in the claim amounted to mere instructions to apply the abstract idea on a generic computer. 573 U.S. at 225-26, 110 USPQ2d at 1984. The Supreme Court also discussed this concept in an earlier case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972),)".
Looking at the claim as a whole does not change this conclusion and the claim appears to be ineligible.
Accordingly, claim 18 is directed to an abstract idea.
The dependent claims 19-28 when analyzed and each taken as a whole are held to be patent ineligible under 35 USC 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea.
Claim 19 recites “querying a database of patents to identify having both a first patent class and the selected second patent class further comprises assigning patents common to multiple class pairs to the class pair comprising the largest overlap.”. This additional element is recited at a high level of generality and would function in its ordinary capacity for querying a database of patents, this additional element does not integrate the integrate the judicial exception into a practical application and does not amount to significantly more.
Claim 20 recites “wherein the step of querying a database of patents to identify both the selected first patent class and the selected second patent class further comprises assigning patents common to multiple class pairs to each of said multiple class pairs”. This additional element is recited at a high level of generality and would function in its ordinary capacity for assigning patents common to multiple class pairs to each of said multiple class pairs, this additional element does not integrate the integrate the judicial exception into a practical application and does not amount to significantly more.
Claim 21 recites “wherein the-an average patent centrality value is computed as of a date occurring after each patent was granted”. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. There is no additional elements recited which tie the abstract idea into a practical application and does not amount to significant more than the identified judicial exception.
Claim 22 recites “wherein an average patent centrality value is computed as of three years after each patent was granted”. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. There is no additional elements recited which tie the abstract idea into a practical application and does not amount to significant more than the identified judicial exception.
Claim 23 recites “wherein a first patent class type reflects the United States Patent Classification; and the a second patent class type reflects the International Patent Classification”. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. There is no additional elements recited which tie the abstract idea into a practical application and does not amount to significant more than the identified judicial exception.
Claim 24 recites “wherein the technology model includes combinations of each United States Patent Classification class with each International Patent Classification class”. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. There is no additional elements recited which tie the abstract idea into a practical application and does not amount to significant more than the identified judicial exception.
Claim 25 recites “wherein: the first patent class type reflects subclasses within United States Patent Classification; and the second patent class type reflects one or more of subclasses, groups, and subgroups within the International Patent Classification. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. There is no additional elements recited which tie the abstract idea into a practical application and does not amount to significant more than the identified judicial exception.
Claim 26 recites “wherein each patent class in the plurality of classes comprising the first patent class type comprises a plurality of patents, wherein each patent within said plurality of patents is directed to at least one purpose and at least one function to accomplish said at least one purpose, and wherein at least one purpose and at least one function of each of said patents within said plurality of patents is the same as a purpose and a function of each other of said patents within said plurality of patent”. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. There is no additional elements recited which tie the abstract idea into a practical application and does not amount to significant more than the identified judicial exception.
Claim 27 recites “wherein each patent class in the plurality of classes comprising the second patent class type a plurality of patents wherein each patent within the plurality of patents is addressed to a specific branch of scientific knowledge and wherein said specific branch of scientific knowledge is the same for each patent within the plurality of patent”. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. There is no additional elements recited which tie the abstract idea into a practical application and does not amount to significant more than the identified judicial exception.
Claim 28 recites “wherein each technology domain comprises a set of artifacts that fulfills a function utilizing a specific branch of scientific”. This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. There is no additional elements recited which tie the abstract idea into a practical application and does not amount to significant more than the identified judicial exception.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 9461876 B2 (involved in organizing a commonplace of information for intellectual property classification management service applications in an information technology field. Uses include but are not limited to ideation classification management service applications, intellectual property categorization classification management service applications, information asset categorization classification management service applications, product management classification management service applications, product line management classification management service applications, competitive analysis classification management service applications, study management classification management service applications, study outsourcing classification management service applications, development outsourcing classification management service applications, contract management classification management service applications and emergence games involving technology classification management service applications).
US 20070073748 (involved in measuring a number and type of relevance links between two or more data objects e.g. patent document, of interest. A probability transform function is applied to probabilistically determine an event probability that a particular defined relationship exists between the data objects. The transform function is formulated or determined via multi-variate regression analysis, where the existence or non-existence of the particular defined relationship is a dependent variable and the number and type of relevance links is provided as independent variables.)
US 20040220842 (involved in estimating the probability of a future event occurring relative to a particular identified intellectual property asset or group of intellectual property assets of interest, patent or group of patents, for use by patent valuation experts, investment advisors, economists and others to help guide future patent investment decisions, licensing programs, patent appraisals, tax valuations, transfer pricing, economic forecasting and planning, mediation and/or settlement of patent litigation lawsuits.)
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 JEAN M CORRIELUS whose telephone number is (571)272-4032. The examiner can normally be reached Monday-Friday 6:30a-10p(Midflex).
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, Ann J Lo can be reached at (571)272-9767. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEAN M CORRIELUS/Primary Examiner, Art Unit 2159 June 19, 2026
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