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
1. This is in response to the applicant's communication filed on 12/12/2025, wherein:
Claims 1-4 are pending. Claims 5-6 has been canceled by the Applicant.
The Examiner’s Note:
2. Amended independent claim 1 as a whole recites a combination of limitations that has been found as define over prior art of record {The combination of Williams; (US 2019/0072397 A1), Abdelsamie; (US 2019/0026750 A1), and Herb et al; (US 2023/0017632 A1)}. Therefore, rejection under 103 for independent claim 1 and its dependency has been withdrawn.
However, please note that independent claim 1 and its dependency are still rejected under 101 below.
Claim Rejections - 35 USC § 112
3. 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.
4. Rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for claim 4 has been withdrawn since Applicant has amended claim 4.
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.
5. The claimed invention (Claims 1-4) are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) abstract ideas including “Certain Methods of Organizing Human Activity”, and/or “Mental Process”, and/or Mathematical Concepts, which has/have been identified/found by the courts as abstract ideas in MPEP 2106.04(a). This judicial exception is not integrated into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because It/they is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications:
6. Step 1: Does the Claim Fall within a statutory Category?
Claims 1-4: Yes, these claims are method, and therefore are directed to the statutory class of process.
7. Step 2A prong 1, Step 2A prong 2 and Step 2B:
Independent claim 1 (Step 2A, Prong I): is directed to an abstract idea of “Certain Methods of Organizing Human Activity”, and/or “Mental Process”, and/or Mathematical Concepts,:
Claim 1, steps 1-5 of gathering and categorizing a plurality of provider profiles, each profile comprising data related to a provider's capabilities on at least one of delivery, removal or disposal capabilities of construction materials (step 1); receiving a first request for matching from a user identifying a need for at least one of delivery, removal or disposal of construction materials (step 2) determining an initial set of potential matches for the first request from the plurality of provider profiles based on the user’s need and on the provider's capabilities, minimizing the environmental impact from the delivery, removal, or disposal sought, and calculating a set of potential matches based on what carbon scores and carbon credits are available (step 3); calculating at least one most suitable match based on the data related to environmental impact and the data related to the carbon scores and credits to identify at least one matched provider (step 4); and notifying the user of the identity of at least one matched provider (step 5) fall within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps mainly describe the concepts of commercial or legal interactions (advertising, marketing or sales activities or behaviors; business relations); and/or managing personal behavior or relationships or interactions between people (including following rules or instructions) because they mainly describe matching the user request (e.g., for matching from a user identifying a need for at least on of delivery, removal or disposal of construction materials) with the providers’ profiles; identifying at least one most suitable matched providers based on minimizing environmental impact and data related to carbon scores and credits; and notify the user of the identity of at least one matched provider.
Also, in claim 1, the identified steps 3-4 mentioned above of determining an initial set of potential matches for the first request from the plurality of provider profiles based on the user’s need and on the provider's capabilities, minimizing the environmental impact from the delivery, removal, or disposal sought, and calculating a set of potential matches based on what carbon scores and carbon credits are available (step 3); calculating at least one most suitable match based on the data related to environmental impact and the data related to the carbon scores and credits to identify at least one matched provider (step 4) are also fall within the abstract “Mental Processes” grouping of abstract ideas since these limitations covers performance of the limitations in the mind. For example, a human being can observing/evaluating/comparing the user’s need from the user first request against the provider's capabilities from the plurality of provider profiles in order to identify a set of potential matched providers. Further, the human being can observing/evaluating/comparing the environmental impact, data related to carbon scores and credits of each of the providers in the initial set of potential matched providers in order to identify at least one most suitable matched provider.
In addition, part of step 3 and step 4 mentioned above of calculating a set of potential matches based on what carbon scores and carbon credits are available (step 3); calculating at least one most suitable match based on the data related to environmental impact and the data related to the carbon scores and credits to identify at least one matched provider (step 4) also fall under Mathematical Concepts (Mathematical Relationships/ Mathematical Calculations), grouping of abstract idea because it must involve operator/ algorithm and/or formulas in order to calculating a set of potential matches based on what carbon scores and carbon credits, and calculating at least one most suitable match based on the data related to environmental impact and the data related to the carbon scores and credits.
Independent claim 1, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. In particular, the claim recites underlined additional elements (i.e., over a computer via a network, a server) to perform abstract steps/limitations 1-5 mentioned above. The additional element(s) in all of the steps is/are -recited at a high-level of generality such that it amounts no more than mere instructions to apply the judicial exception(s) using a generic computer component(s) ( i.e., over a computer via a network, a server ….….); thus, they do not integrate the identified abstract idea into a practical application. See MPEP 2106.05(f). Further, in claim 1, the steps 1-2 of “gathering a plurality of provider profiles over a computer via a network……” (step 1); “receiving over the computer via the network……” (step 2) are merely gathering data/receiving data, which are considered as insignificant extra solution activity; thus, do not integrate the identified abstract idea into a practical application. See MPEP 2106.05(g). Again, these above additional element(s) does/do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. As discussed above with respect to integration of the abstract idea into a practical application, again, the additional element of using generic computer components (i.e., over a computer via a network, a server …) to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. see MPEP 2106.05(f). For the above-mentioned reasons, viewed the claim as a whole, the additional elements/additional limitations individually and in combination do not integrate the identified abstract idea into a practical application. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself. Independent claim 1 (step 2B): The additional element in claim 1 (i.e., over a computer via a network, a server ….) is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. In other word, the underlined additional elements “i.e., over a computer via a network, a server” is/are amounts no more than mere instructions to apply the judicial exception(s) of steps/limitations 1-5 mentioned above; thus, they are not significantly more than the identified abstract idea. see MPEP 2106.05(f). Further, in claim 1, the steps 1-2 of “gathering a plurality of provider profiles over a computer via a network……” (step 1); “receiving over the computer via the network……” (step 2) are merely gathering data/receiving data, which are considered as insignificant extra solution activity; thus, are not significantly more than the identified abstract idea. See MPEP 2106.05(g).
When reevaluating steps 1-2 of “gathering a plurality of provider profiles over a computer via a network……” (step 1); “receiving over the computer via the network……” (step 2) in step 2B here, receiving data/ gathering data is also well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer to receive information and transmit information/send information through an unspecified generic computer does not impose any meaningful limit on the computer implementation of the abstract idea. According to MPEP 2106.05 (d), elements that the Courts have recognized as well-understood, routine, conventional activity in particular fields are e.g., "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); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93” (evidence as required by Berkheimer’s memo).
Thus, evidences have been provided above to show these additional elements are well-understood, routine, conventional activity according to MPEP 2106.07 (a) (III). Viewed as a whole, even in combination, the above steps again do not amount to significantly more because these steps in combination merely applying the abstract idea to a generic computer and insignificant extra solution activity. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
Dependent claims 2-4 are merely add further details of the abstract steps/elements recited in claim 1 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Looking at the limitations as an ordered combinations adds nothing that is not already present when looking at the elements taken individually. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself. Therefore, dependent claims 2-4 are also non-statutory subject matter.
Claim Rejections - 35 USC § 103
8. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
8. Rejection under 103 for independent claim 1 and its dependency has been withdrawn since amended independent claim 1 as a whole recites a combination of limitations that has been found as define over prior art of record.
Prior Art that is pertinent to Applicant’s disclosure
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kilburn; (US 2021/0049559 A1), wherein teaches A system for providing on demand geofenced waste management is configured to receive requests for waste pickup from a plurality of users spread across a geographic region. Pickup requests describe the location and type of waste, which may include landfill waste, but may also include recyclables, items for donation, and items having particular disposal requirements (e.g., some chemicals and electronics). The system is configured to geo-map requests to particular waste management providers and, once accepted by those providers, produce optimized pickup routes for one or more vehicles associated with the provider. Route optimization may be performed by a process such as a genetic algorithm that receives input such as the number and type of vehicles available, costs associated with operating each vehicle (e.g., cost-per-mile, cost-per-pickup, cost-per-hour), the number of pickups accepted by the field provider over a period of time, and the location and distance between locations of pickups.
Evenson et al; (US 2015/0170111 A1), wherein teaches A system manages handling and disposition of environmentally sensitive items. The disposition management system presents one or more environmentally sensitive questions indicative of the condition of an environmentally sensitive item, the disposition of which is to be managed and tracked. Based on answers to the environmentally sensitive questions, the system determines a disposition procedure for the item and generates a disposition label uniquely identifying the item so that it may be tracked from its entry into the waste stream to its disposition with an outbound disposition provider.
Lipcon; (US 2010/0217715 A1), wherein teaches A closed waste management system and method is disclosed. The system and method of the invention allows a waste generator and a system operator to maximize value for the processing of collected waste according to variable costs and benefits that may depend on location and intangible benefits to the waste generator. The system and method of the invention allows for accurate accounting of costs and value within the organization of the waste generator and also allows for accurate record-keeping for compliance issues relating to waste disposal.
Abramowitz; (US 2024/0078492 A1), wherein teaches a carbon credit marketplace (CCM) implements a platform for the exchange, and rating, of carbon credits and associated offsets. The platform receives entity carbon credit data as well as structured and unstructured data from disparate sources including general economic data sources, government data sources, and proprietary data sources. The received data is used by a carbon credit rating model to assign a carbon credit rating for a particular carbon credit, offset, or capture. Compliance with governmental regulations is achieved through the exchange, or sale of carbon credits and/or offsets.
Furthermore, see additional art cited in PTO-892.
Response to Arguments
26. Regarding 112(b): Rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for claim 4 has been withdrawn since Applicant has amended claim 4.
Regarding 103: Amended independent claim 1 as a whole recites a combination of limitations that has been found as define over prior art of record. Therefore, rejection under 103 for independent claim 1 and its dependency has been withdrawn.
Regarding 101: The Office respectfully submits that Applicant’s arguments have been fully considered but are not persuasive. Please see the Office’s responses back to the Applicant below.
27. Responding back to the Applicant’s arguments regarding 101 on pages 7-8 of the Applicant’s remarks:
On page 8 Applicant argued: “ For Step 2A, Prong 2, the abstract idea exception has been integrated into practical application in some other meaningful way through additional meaningful elements as required by MPEP2106.05(e). Referring to Applicant's Specification, there is no good system for matching the wide variety of people involved with construction materials that takes into account not only the ability to deliver, remove or dispose waste but also lessening environmental impact by both limiting the carbon footprint of moving the materials while also generating the potential for selling or trading carbon credits because of the carbon score. Thus, the gathering and categorizing of provider profiles including their capabilities, receiving the request, and then determining a match based on minimizing the environmental impact and the carbon scores and credits available is not merely a mental process, and the features of Claim 1 are performed by various hardware components. Applicant respectfully submits that Claim 1 does not recite a judicial exception, and thus, Claim 1 is eligible (Step 2A, Prong One: NO). Since Claim 1 has eligible subject matter, there is no reason to proceed to Step 2A, Prong 2. Nonetheless, for completeness, Applicant notes the features of the claims is more than mere data gathering in that further processes are required to both minimize environmental impact by checking, for example, the carbon footprint of the truck, while determining availability of carbon scores and carbon credits. Thus, the answer to Step 2A, Prong 2 is YES.”
The Office’s response: However, the Office respectfully submits that what Applicant are referring above {e.g., there is no good system for matching the wide variety of people involved with construction materials that takes into account not only the ability to deliver, remove or dispose waste but also lessening environmental impact by both limiting the carbon footprint of moving the materials while also generating the potential for selling or trading carbon credits because of the carbon score…….,the gathering and categorizing of provider profiles including their capabilities, receiving the request, and then determining a match based on minimizing the environmental impact and the carbon scores and credits available….; data gathering in that further processes are required to both minimize environmental impact by checking, for example, the carbon footprint of the truck, while determining availability of carbon scores and carbon credits} are abstract idea and/or solution of the abstract idea but not “additional meaningful elements” as asserted above by the Applicant.
In other word, looking at Applicant’s arguments, many of these claimed features/limitations that were called “Abstract Idea(s)” (e.g., gathering and categorizing of provider profiles including their capabilities, receiving the request, and then determining a match based on minimizing the environmental impact and the carbon scores and credits available) by the Office as indicated above (Step 2A Prong 1) are said to be “additional meaningful element” (Step 2A Prong 2 and 2B) by the Applicant. Therefore, Applicant’s arguments are not persuasive.
Further, the “various hardware components” mentioned above by Applicant in claim 1 (i.e., over a computer via a network, a server ….) is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. In other word, the underlined additional elements “i.e., over a computer via a network, a server” is/are amounts no more than mere instructions to apply/implement the identified judicial exception(s) in step 2A Prong 1 above; thus, do not integrate the identified abstract idea into a practical application, and are not significantly more than the identified abstract idea. See MPEP 2106.05(f).
Furthermore, the Office respectfully submits that Step 2A prong 2 is to “Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s), and Evaluating those additional elements to determine whether they integrate the exception into a practical application of the exception”. According to the new 2019 guideline, in step 2A prong 2: “limitations are not indicative of integration into a practical application when recited in a claim with a judicial exception include: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f); and/or Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP 2106.05(g); and/or Generally linking the use of the judicial exception to a particular technological environment or field of use, as discussed in MPEP 2106.05(h)”.
As already pointed out under 101 rejection in Step 2A prong 2 of claim 1, the additional elements/additional limitations (e.g., over a computer via a network, a server ) are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Also, the additional elements in steps 1-2 of gathering data and receiving data over the computer via the network are considered as “Adding insignificant extra-solution activity” to the judicial. Please see details under Step 2A Prong 2 of 101 rejection above. Therefore, again the Office respectfully submits that viewed the claim as a whole, the additional elements individually and in combination do not integrate the identified abstract idea into a practical application. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself. As the result, the answer to Step 2A, Prong 2 is “NO”. For the above mentioned reasons, the Office respectfully disagrees with the Applicant’s assertion that “Claim 1 does not recite a judicial exception, and thus, Claim 1 is eligible (Step 2A, Prong One: NO). Since Claim 1 has eligible subject matter, there is no reason to proceed to Step 2A, Prong 2…..”
Moreover, the Office respectfully submits that even though, claim 1 as a whole recites a combination of limitations that has been found as novelty; however, this novelty is abstract idea. Please note that specific/narrow/novel abstract idea is still an abstract idea. See the July 2015 update page 3, the Courts indicate: "When identifying abstract ideas, examiners should keep in mind that judicial exceptions need not be old or long-prevalent, and that even newly discovered judicial exceptions are still exceptions, despite their novelty. For example, the mathematical formula in Flook, the laws of nature in Mayo and the isolated DNA in Myriad were all novel, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were ‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection”. Please also see at least Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750 (Fed. Cir. 2014) as an example. Further, please see buySAFE, Inc. v. Google, Inc., 112 USPQ2d 1093 (Fed. Cir. 2014), which stated that “in defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow. Mayo, 132 S. Ct. at 1303”. In other word, buySAFE , Flook, Myriad, and Ultramercial are examples of where a narrow/specific abstract or novel abstract idea are still considered abstract ideas. Further, see the recent case: SAP America v. Investpic (Fed Cir, 2017-2081, 5/15/2018), wherein the Court indicates a new or novel abstract idea is not enough to pass 101. Further, see MPEP 2106.05 d(i).
For the above-mentioned reasons, rejections under 35 U.S.C. 101 for independent claim 1 still remain and/or given. Dependent claims are dependent of their base claim 1. Applicant did not have any further argument for the dependent claims beyond their dependency on the independent claim, which have been addressed above. Therefore, the rejections on these claims remain and/or given.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thuy Nguyen whose telephone number is 571-272-4585 and fax number is 571-273-4585. The examiner can normally be reached on Mon-Fri, 8:30 am to 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Ilana Spar can be reached on 571-270-7537. The FAX number for the organization where this application or proceeding is assigned is 571-273-4585.
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/THUY N NGUYEN/Primary Examiner, Art Unit 3622.