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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 27, 2026 has been entered.
Status of Claims
• This action is in reply to the RCE filed on May 27, 2026.
• Claims 1, 7, 9-10, and 20 have been amended and are hereby entered.
• Claims 2-3, 8, have been canceled.
• Claims 1, 4-7, and 9-20 are currently pending and have been examined.
• This action is made Non-FINAL.
Response to Arguments
Applicant’s arguments filed May 27, 2025 have been fully considered but they are not persuasive.
The Examiner is withdrawing the 35 USC § 112 rejections due to Applicant’s amendments.
The Examiner is withdrawing the 35 USC § 103 rejections due to Applicant’s amendments.
Applicant’s arguments with respect to 35 USC § 101 have been fully considered and are not persuasive.
Regarding Applicant’s argument on page 12, that the claims do not recite an abstract idea, the Examiner respectfully disagrees. Applicant further argues on page 12 that the claims recite specific technical operations. The argument is not persuasive. As indicated in the 35 USC § 101 rejection below, the claimed invention allows for analyzing metrics of intellectual property asset based on financial metrics, including for analyzing risk (see Specification of the instant application at paragraph [0041]-[0043], [0087]). The Specification at [0001] discloses “Disclosed herein are improvements in technology and solutions to technical problems that can be used to, among other things, analyze and generate visual representations of intellectual-property portfolios of various entities.” The Specification and claims focus on an improvement to the process of analyzing intellectual property portfolios, which is a fundamental economic principles or practices of mitigating risk and commercial and legal interaction, specifically a commercial interaction of marketing or sales activities or behaviors and business relations which falls within the category of Certain Methods of Organizing Human Activity and therefore is an abstract idea.
Regarding Applicant’s arguments on page 12 that the claims recite a specific technical process that cannot be performed mentally or through human organization, the argument has been considered and is not persuasive. In response to this argument, the Examiner notes that “Mental Processes” are not the only category of abstract idea recognized in the MPEP. The MPEP also recognizes that fundamental economic principles or practices of mitigating risk and commercial and legal interaction, specifically a commercial interaction of marketing or sales activities or behaviors and business relations are among the enumerated groups of abstract ideas (MPEP §2106.04(a)). Furthermore, Examiners are directed to continue to use the Mayo/Alice framework (incorporated as Steps 2A and Step 2B) to resolve questions of eligibility and that Examiners should determine whether a claim recites an abstract idea by (1) identifying the claimed concept (the specific claim limitation(s) in the claim under examination that the examiner believes may be an abstract idea), and (2) comparing the claimed concept to the concepts previously identified as abstract ideas by the courts to determine if it is similar (see MPEP 2106.04(a)).
Regarding Applicant’s arguments on page 13 that the claims integrate the abstract idea into a practical application, the Examiner respectfully disagrees. Under the Patent Subject Matter Eligibility analysis, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that generally link the use of the judicial exception into a particular technological environment or field of use-see MPEP 2106.05(h). Here the claims reciteone or more processors; and one or more non-transitory computer-readable media comprising instructions that, when executed by the one or more processors, cause the one or more processors to perform claim operations; a machine learning model; a network protocol or interface over a network; a user device; an application on the user device; and display data such that they amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (e.g., a computer network) (see MPEP 2106.05(h)).
Furthermore, and in response to Applicant’s arguments on page 13 that the claims improve the functioning of the computer system, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., a generic processor, a memory storing a computer program executable by the processor to perform the claimed method steps and system functions. The processor, memory and system are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications.
Furthermore, the Specification describes a problem and improvement to a business or commercial process at least at [0001], disclosing “Disclosed herein are improvements in technology and solutions to technical problems that can be used to, among other things, analyze and generate visual representations of intellectual-property portfolios of various entities.”
Regarding Applicant’s arguments on page 13 that the ordered combination of claim features amounts to significantly more than the abstract idea and that the combination of steps are not well-understood, routine, or conventional, the Examiner respectfully disagrees. The limitations are directed to an abstract idea and when determining if the claims are directed to significantly more, the additional limitations of the claims in addition to the abstract idea are analyzed. In the instant application, the additional elements of the claim include one or more processors; and one or more non-transitory computer-readable media comprising instructions that, when executed by the one or more processors, cause the one or more processors to perform claim operations; a machine learning model; a network protocol or interface over a network; a user device; an application on the user device; and display data. The additional limitations, when considered both individually and in combination, do not affect an improvement to another technology or technological field; the claims do not amount to an improvement to the functioning of the computer itself; and the claims do not move beyond a general link of use of an abstract idea to a particular technological environment. Therefore, the claims merely amount to merely generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., a computer network), and is considered to amount to nothing more than requiring a generic computer network to carry out the abstract idea itself. The specifics about the abstract idea do not overcome the rejection.
The claims are not patent eligible.
For the reasons above, Applicant’s arguments are not persuasive.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 4-7, and 9-20 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. Independent claims 1, 7, and 20 are directed to a method (claims 1 and 7) and a system (claim 20). Therefore, on its face, each independent claim 1, 7, and 20 are directed to a statutory category of invention under Step 1 of the Patent Subject Matter Eligibility analysis (see MPEP 2106.03).
Under Step 2A, Prong One of the Patent Subject Matter Eligibility analysis (see MPEP 2106.04), claims 1, 7, and 20 recite, in part, a method and a system of organizing human activity. Claim 1 recites generating a model based, at least in part, on a first financial metric associated with a first IP asset within a technology area, the first IP asset being associated with a first entity; identifying a second IP asset associated with the technology area, wherein identifying the second IP asset comprises: vectorizing the first IP asset to form a first vector representation of the first IP asset; generating a target IP asset list including the second IP asset; and deriving a similarity score for each target IP asset of the target IP asset list by applying the first vector representation to each target IP asset, the second IP asset having a similarity score equal to or greater than a threshold value; automatically determining, via the model, a second financial metric associated with the second IP asset based, at least in part, on the first financial metric and on the second IP asset being associated with the technology area, wherein the second financial metric is determined based at least in part on an average financial metric of multiple financial metrics of multiple other IP assets having a similarity score that is equal to or greater than the threshold value; identifying a second entity associated with the second IP asset; and sending data to cause to enable and to provide the second financial metric, the second IP asset, the second entity, or a combination thereof.
Claim 7 recites similar limitations as claim 1 above except for the limitation of: the second financial metric is determined based at least in part on an average financial metric of multiple financial metrics of multiple other IP assets having a similarity score that is equal to or greater than the threshold value.
Claim 20 recites similar limitations as claim 1 above.
The limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers fundamental economic principles or practices and commercial and legal interactions (certain methods of organizing human activity), but for the recitation of generic computer components. The claimed inventions allows for analyzing metrics of intellectual property asset based on financial metrics, including for analyzing risk (see Specification of the instant application at paragraph [0041]-[0043], [0087]), which is a fundamental economic principles or practices of mitigating risk and commercial and legal interaction, specifically a commercial interaction of marketing or sales activities or behaviors and business relations. The mere nominal recitation of a one or more processors; and one or more non-transitory computer-readable media comprising instructions do not take the claim out of the methods of organizing human activity grouping. Thus, the claims recite an abstract idea.
Under Step 2A, Prong Two of the Patent Subject Matter Eligibility analysis (see MPEP 2106.04), the judicial exception is not integrated into a practical application. In particular, the additional elements of one or more processors; and one or more non-transitory computer-readable media comprising instructions that, when executed by the one or more processors, cause the one or more processors to perform claim operations; a machine learning model; a network protocol or interface over a network; a user device; an application on the user device; and display data are recited at a high-level of generality (i.e., as a generic computer components performing generic computer functions of generating metrics, identifying assets, determining metrics, and sending data) such that it amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (e.g., a computer network).-see MPEP 2106.05(h).
Accordingly, the combination of the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
Under Step 2B of the Patent Subject Matter Eligibility analysis (see MPEP 2106.05), the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements in the claims amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Generally linking the use of the judicial exception to a particular technological environment or field of use using generic computer components cannot provide an inventive concept.
The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 6, 13, and 19 simply further describes the technological environment. Dependent claims 4-5 and 9-18 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claims 1, 4-7, and 9-20 are ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20100057533 A1 (“Martinez”) discloses a predetermined number of manifest or measurable variables is extracted from each of a plurality of patent documents obtained from a data base or another source and from these manifest variables four or more first order latent variables are defined comprising: knowledge stock, technological scope, international scope and patent value for each patent document and a dependency or causality relationship between the manifest and latent variables and between latent variables is defined
US 20220188322 A1 (“Adel”) discloses retrieve a data list from the electronic database based at least in part on the query, count data with common player names from the data list, sort by count to generate a discrete distribution, apply power law analysis to the discrete distribution to determine the value of an exponent S of the discrete distribution and use the exponent S as a metric of consolidation of the data list. Said exponent may then be stored in a lossy compressed database.
US 20020178029 A1 (“Nutter”) discloses an intellectual property evaluation method includes the steps of receiving a plurality of input scores for each of a plurality of patents by a intellectual property management software program. The plurality of input scores are combined to form a scale value for each of the plurality of patents. The scale values are compared to determine a select group of patents. A plurality of additional information is received by the intellectual property management software program for each of the select group of patents.
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/RAVEN E YONO/Primary Examiner, Art Unit 3694
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