DETAILED ACTION
This communication is a Final Rejection Office Action in response to the 2/5/2026 submission filed in Application 17/897,177. Claims 1-3, 5-17, 19-20 are now presented.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments files 2/5/2026 with respect to the prior art have been fully considered and are persuasive. The prior art rejection have been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Regarding the rejection under 101, the Applicant further argues “It is allegedly that the claimed invention integrates the elements, e.g., the additional elements, into a practical application because, for example in the carbon asset management digital platform, by which a carbon asset management method is performed through the carbon asset management digital platform. The claims claiming the "carbon asset management digital platform" and "carbon asset management method executed in a carbon asset management digital platform" do not recite any about mental process, human activity organization or mathematical relationships.”
The Examiner respectfully disagrees. In the instant case, the limitations of integrating organizational greenhouse gas inventory information and product carbon footprint information, and performing version control for upstream and downstream supply chains outside each of a plurality of operational boundaries, so as to obtain a full scope of the organizational greenhouse gas inventory and the product carbon footprint information throughout product life cycles for one or more brands in the enterprise; establishing a carbon asset network of the enterprise based on a report of an operational boundary of the enterprise, and the carbon asset network includes one or more external operational boundaries of one or more external enterprises associated with the enterprise; wherein, when carbon emissions information of any of the associated one or more external operational boundaries is changed, updating the operational boundary of the enterprise by using the carbon emissions information of the associated one or more external operational boundaries, and performs version control on emission factor and emissions cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “a processor” nothing in the claim element precludes the steps from being performed in the human mind.
Regarding the rejection under 101, the Applicant further argues “It is worth noting that the practical application of the claimed invention is to provide an application programming interface (API) to establish a connection between one or more carbon asset management digital platforms of each of a plurality of brands of the one or more external enterprises for receiving data for at least one stakeholder, an internal carbon asset management digital platform, one or more external carbon asset management digital platforms, one or more external carbon asset management report formats, and/or carbon inventory data obtained through one or more automated customized questionnaires, to automatically integrate organizational greenhouse gas inventory information and product carbon footprint information and perform version control for upstream and downstream supply chains outside each of a plurality of operational boundaries, and to update the operational boundary of the enterprise by using the carbon emissions information of the associated one or more external operational boundaries, and perform version control on emission factor and emissions by using a carbon asset network update module when carbon emissions information of any of the associated one or more external operational boundaries is changed, which are obviously not possible to be done mentally with the aid of a pen and paper.”
The Examiner respectfully disagrees. Further, the receiving of reports from stakeholders; obtaining information through an application program interface are directed to insignificant data gathering which the MPEP says is insignificant extra solution activity (see MPEP 2106.05(g). Further, configuring the connection manner between the operational boundary of the enterprise and the associated one or more external operational boundaries amounts to generally linking the use of a judicial exception to a particular technological environment or field of use. That is, the recited abstract ideas are linked to the particular technological environment of a connection manner between parties involved in the carbon asset network system. Viewing the generic computer elements in combination with the generally link to a particular technological environment and the receipt of data does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to an inventive concept.
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 1-3, 5-17, 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, in step 2A prong 1 it must then be determined whether the claim is recite a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim recites a judicial exception, under step 2A prong 2 it must additionally be determined whether the recites additional elements that integrate the judicial exception into a practical application. If a claim does not integrate the Abstract idea into a practical application, under step 2B it must then be determined if the claim provides an inventive concept.
In the Instant case Claims 14-17, 19-20 are directed toward a carbon asset management method executed in a carbon asset management digital platform that realizes a carbon inventory executed for an enterprise. As such, each of Claims 14-17, 19-20 is directed to one of the four statutory categories of invention.
Claims 1-3, 5-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The system claim merely comprises instructions, which makes the system claim software per se. Software per se claims are not one of the four statutory classes of invention and therefore claims 1-3, 5-13 are directed to non-statutory subject matter
MPEP 2106.04 II. A. explains that in step 2A prong 1 Examiners are to determine whether a claim recites a judicial exception. MPEP 2106.04(a) explains that:
To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
As per step 2A prong 1 of the eligibility analysis, claim 1 is directed to the abstract idea of determining one or more root causes of one or more plan exceptions resulting from the plan solver solving the multi-objective hierarchical linear optimization which falls into the abstract idea categories of certain methods of organizing human activity and mental processes.
The elements of Claim 1 that represent the Abstract idea include:
Carbon asset management platform;
Executing a carbon asset management network;
an internal carbon asset management digital platform, one or more external carbon asset management digital platforms, and/or carbon inventory data obtained through one or more automated customized questionnaires, and
receiving one or more external carbon asset management report formats from at least one stakeholder;
automatically integrating organizational greenhouse gas inventory information and product carbon footprint information, and
performing version control for upstream and downstream supply chains outside each of a plurality of operational boundaries, so as to obtain a full scope of the organizational greenhouse gas inventory and the product carbon footprint information throughout product life cycles for one or more brands in the enterprise;
establishing a carbon asset network of the enterprise based on a report of an operational boundary of the enterprise, and the carbon asset network includes one or more external operational boundaries of one or more external enterprises associated with the enterprise;
wherein, the one or more carbon asset management report formats include a self-owned report format provided by each of the stakeholders to the enterprise, and the full scope of the organizational greenhouse gas inventory and the product carbon footprint information throughout the product life cycles are managed in a form of reports; and
wherein, when carbon emissions information of any of the associated one or more external operational boundaries is changed, updating the operational boundary of the enterprise by using the carbon emissions information of the associated one or more external operational boundaries, and performs version control on emission factor and emissions.
MPEP 2106.04(a)(2) II. states:
The phrase "methods of organizing human activity" is used to describe concepts relating to:
fundamental economic principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and
managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).
The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
In the instant case, the limitations of obtaining data through questionnaires; receiving one or more external carbon asset management report formats from at least one stakeholder; automatically integrating organizational greenhouse gas inventory information and product carbon footprint information, and performing version control for upstream and downstream supply chains outside each of a plurality of operational boundaries; establishing a carbon asset network of the enterprise based on a report of an operational boundary of the enterprise, and the carbon asset network includes one or more external operational boundaries of one or more external enterprises associated with the enterprise; wherein, the one or more carbon asset management report formats include a self-owned report format provided by each of the stakeholders to the enterprise, and the full scope of the organizational greenhouse gas inventory and the product carbon footprint information throughout the product life cycles are managed in a form of reports; and
wherein, when carbon emissions information of any of the associated one or more external operational boundaries is changed, updating the operational boundary of the enterprise, and performs version control on emission factor and emissions are directed to fundamental business practice of determining and managing the carbon footprint of an enterprise.
MPEP 2106.04(a)(2) states:
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions
In the instant case, the limitations of integrating organizational greenhouse gas inventory information and product carbon footprint information, and performing version control for upstream and downstream supply chains outside each of a plurality of operational boundaries, so as to obtain a full scope of the organizational greenhouse gas inventory and the product carbon footprint information throughout product life cycles for one or more brands in the enterprise; establishing a carbon asset network of the enterprise based on a report of an operational boundary of the enterprise, and the carbon asset network includes one or more external operational boundaries of one or more external enterprises associated with the enterprise; wherein, the one or more carbon asset management report formats include a self-owned report format provided by each of the stakeholders to the enterprise, and the full scope of the organizational greenhouse gas inventory and the product carbon footprint information throughout the product life cycles are managed in a form of reports; and wherein, when carbon emissions information of any of the associated one or more external operational boundaries is changed, updating the operational boundary of the enterprise by using the carbon emissions information of the associated one or more external operational boundaries, and performs version control on emission factor and emissions cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “a processor” nothing in the claim element precludes the steps from being performed in the human mind.
Under step 2A prong 2 the examiner must then determine if the recited abstract idea is integrated into a practical application. MPEP 2106.04 states:
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e)
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
In the instant case, this judicial exception is not integrated into a practical application. In particular, Claim 1 recites the additional elements of:
An automated carbon asset network system, comprising:
a carbon asset management digital platform executed for an enterprise through a computer system;
wherein the carbon asset management digital platform includes a carbon asset network establishing module, a carbon asset network connection module, and a carbon asset network update module;
wherein the automated carbon asset network system executes a carbon asset management method through the carbon asset management digital platform;
wherein the automated carbon asset network system receives one or more external carbon asset management report formats from at least one stakeholder,
obtained information through an application program interface, and
wherein the carbon asset network connection module configures a connection manner between the operational boundary of the enterprise and the associated one or more external operational boundaries, and wherein the application program interface is used to establish a connection manner between one or more carbon asset management digital platforms of each of a plurality of brands of the one or more external enterprises, the one or more carbon asset management report formats, and/or the one or more automated customized questionnaires; or, the connection manner between the operational boundaries is not configured
However, the computer elements (executing a digital platform including the recited modules through a computer system) are recited at a high level of generality and given the broadest reasonable interpretation are simply generic computers performing generic computer functions. Generic computers performing generic computer functions, alone, do not amount to significantly more than the abstract idea and mere instructions to implement an abstract idea on a computer.
Further, the receiving of reports from stakeholders; obtaining information through an application program interface are directed to insignificant data gathering which the MPEP says is insignificant extra solution activity (see MPEP 2106.05(g).
Further, configuring the connection manner between the operational boundary of the enterprise and the associated one or more external operational boundaries amounts to generally linking the use of a judicial exception to a particular technological environment or field of use. That is, the recited abstract ideas are linked to the particular technological environment of a connection manner between parties involved in the carbon asset network system.
Viewing the generic computer elements in combination with the generally link to a particular technological environment and the receipt of data does not add anything further than looking at the 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.
In step 2B, the examiner must determine whether the claim adds a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d).
As discussed with respect to Step 2A Prong Two, the elements amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Further, nothing in the claim indicates that the retrieval of information is anything other than conventional. See MPEP 2106.05(d) that states “Receiving or transmitting data over a network, e.g., using the Internet to gather data is conventional when claimed in a merely generic manner (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); 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).
Also see MPEP 2106.05(d) that states storing and retrieving information in memory is conventional when claimed in a merely generic manner (see 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).
As discussed with respect to Step 2A Prong Two, a general link to a particular technological environment. cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Viewing the generic computer elements in combination with the generally link to a particular technological environment and the receipt of data does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to an inventive concept.
Further Claims 2-3, 5-13 further limit the abstract idea of an analysis that can be performed mentally or certain methods of human activity that were already rejected in claim 1, but fail to remedy the deficiencies of the parent claim as they do not impose any limitations that amount to significantly more than the abstract idea itself.
Accordingly, the Examiner concludes that there are no meaningful limitations in claims 2-3, 5-13 that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The analysis above applies to all statutory categories of invention. As such, the presentment of claim 1 otherwise styled as a method or computer program product, for example, would be subject to the same analysis. Therefore, Claims 1-3, 5-13 are rejected for the same rational that applied to claims 14
.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DEIRDRE D HATCHER/Primary Examiner, Art Unit 3625
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