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 .
Introduction
The following is a non-final Office Action in response to Applicant’s submission filed on 12/17/2024. Currently claims 1-20 are pending and claims 1, 8, and 13 are independent. Priority to provisional application 63/611,400 filed 12/18/2023 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/14/2025 appears to be in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the Examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 11 and 14 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Specifically, claims 11 and 14 contains the trademark/trade name “Microsoft” and “Java”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe document preparation and workflow tools and, accordingly, the identification/description is indefinite.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea), specifically an abstract idea, without significantly more. With respect to claims 1-20, following the guidance for 101 rejections contained within MPEP 2106, the inquiry for patent eligibility follows two steps: Step 1: Does the claimed invention fall within one of the four statutory categories of invention? Step 2A (Prong 1): Is the claim “directed to” an abstract idea? Step 2A (Prong 2): Is the claim integrated into a practical application? Step 2B: Does the claim recite additional elements that amount to “significantly more” than the abstract idea?
In accordance with these steps, the Examiner finds the following:
Step 1: Claim 1 and its dependent claims (claims 2-7) are directed to a statutory category, namely a system/machine. Claim 8 and its dependent claims (claims 9-12) are directed to a statutory category, namely a method. Claim 13 and its dependent claims (claims 14-20) are directed to a statutory category, namely a system/machine.
Step 2A (Prong 1): Claims 1, 8, and 13, which are substantially similar claims to one another, are directed to the abstract idea of “Certain methods of organizing human activity”, or more particularly, “Concepts relating to commercial or legal interactions (including: advertising, marketing or sales activities or behaviors; business relations) (See MPEP 2106).” In this application that refers to using a computer system to manage and analyze the process of gathering data and then creating a company’s regulatory compliance report. To clarify this further, the Applicant’s disclosed invention is a conceptual system meant to perform the same function that compliance manager might perform for a large organization. The abstract elements of claims 1, 8, and 13, recite in part “Receive request…Process request…Generate data collection request…Determine entities to contact…Collect data…Input data…Generate report…”. Dependent claims 2-7, 9-12, 14-18, 20 add to the abstract idea the following limitations which recite in part “Integrate collected data…Generate report…Report includes…Receive and process feedback…Revise report…Include desired metric…Include optimization recommendation…Include regulation request…Include summary…Determine entities to contact…Transmit request…Collect data…Report includes…Generate follow up request…Transmit follow up request…Collect follow up…Input follow up…Generate revised report…Report includes…”. All of these additional limitations, however, only serve to further limit the abstract idea, and hence are nonetheless directed towards fundamentally the same abstract idea as independent claims 1, 8, and 13. Dependent claim 19 does not include any limitations that are directed toward the abstract idea and will be addresses in either the Step 2A (Prong 2) or Step 2B analysis below.
Step 2A (Prong 2): Independent claims 1, 8, and 13, which are substantially similar claims to one another, do not contain additional elements, either considered individually or in combination, that effectively integrate the exception into a practical application of the exception. These claims do include the limitation that recites in part “Interface…Controllers…Data collection module…Data modeling Module…Report module…Processors…Machine readable instructions…Data model…” which limits the claims to a networked/computer based environment, but this is insufficient with respect to integration into a practical application because it is merely applying the abstract idea to a general computer (See MPEP 2106.05(f)).
Dependent claim 2, 19, 20 adds the additional element which recites in part “Structured model…Internal data model…External data model…Scenario model……” which again limits the claims to a networked/computer based environment, but this is again insufficient with respect to integration into a practical application because it is just applying the abstract idea to a general computer (See MPEP 2106.05(f)).
Additionally, dependent claims 3-7, 9-12, 14-18 do not include any additional elements to conduct a further Step 2A (Prong 2) analysis.
Step 2B: Independent claims 1, 8, and 13, which are substantially similar claims to one another, include additional elements, when considered both individually and as an ordered combination, which are insufficient to amount to significantly more than the judicial exception. The additional elements of these claims recite in part “Interface…Controllers…Data collection module…Data modeling Module…Report module…Processors…Machine readable instructions…Data model…”. These items are not significantly more because these are merely the software and/or hardware components used to implement the abstract idea (manage and analyze the process of gathering data and then creating a company’s regulatory compliance report) on a general purpose computer (See MPEP 2106.05(f)). This is exemplified in the Applicant’s specification in [0095] – “In this regard, embodiments can take the form of a computer program accessible via computer readable medium providing program code for use by a computer or any other instruction execution system.”
Dependent claims 2, 19, 20 include additional elements, when considered both individually and as an ordered combination and in view of their respective independent claims, which are insufficient to amount to significantly more than the judicial exception. Specifically, dependent claims 2, 19, 20 include the additional element which recites in part “Structured model…Internal data model…External data model…Scenario model …” These are essentially the same additional elements that are addressed above in claims 1, 8, and 13, and are not significantly more because these are again merely the software and/or hardware components used to implement the abstract idea (manage and analyze the process of gathering data and then creating a company’s regulatory compliance report) on a general purpose computer (See MPEP 2106.05(f)).
Additionally, dependent claims 3-7, 9-12, 14-18 do not include any additional elements to conduct a further 2B analysis.
Accordingly, whether taken individually or as an ordered combination claims 1-20 are rejected under 35 USC § 101 because the claimed invention is directed to a judicial exception, an abstract idea, without significantly more.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meehan et al. (US 20120166616 A1)
Regarding claims 1, 8, and 13, Meehan discloses a workflow system, comprising (Meehan ABS - A system for resource performance management): an interface configured to receive a request (Meehan ¶45 - Users interact with EPM systems of the invention through dashboard 200, which generally is delivered to users via end user browser 130, but which can be delivered as dedicated client software applications or mobile applications), wherein the request includes one or more of a certification request, an audit request, a sustainability report request, or a comparative analysis request (Meehan ¶47 - Analysis and planning module 201 is in effect a user interface to the user-interactive elements of data aggregation and reporting service 121 and initiative generation, modeling, and analysis services 123, although some aspects of the latter are optionally carried out in impact assessment module 205… Similarly, track execution module 203 provides a user interface to initiative monitoring and reporting service 124. Track execution module 203 also provides an interface for managing and submitting required compliance reports, such as EPA's mandatory reporting requirements (MRR)); and one or more controllers or components communicatively coupled with the interface and configured, alone or in combination, to process the request, the one or more controllers including: a data collection module configured to determine one or more entities to contact based on the request, to generate a targeted data collection request for the one or more entities, to transmit the targeted data collection request to the one or more entities, and to collect data from the one or more entities (Meehan Fig. 1 – 120 - Meehan ¶52 - Data collection services 312 correspond to the various activities discussed in detail above with reference to data collection service 120. According to one embodiment, data collection services 312 includes an invoice collection service which is configurable to receive invoice data from a plurality of suppliers via batch uploads (using Secure File Transfer Protocol SFTP), either based on a schedule or manually triggered, and including provision for automated receipt of invoices from suppliers going forward) ; a data modeling module configured to input the data collected from the one or more entities into a data model (Meehan ¶52 - Among other functions, data modeling services 315 provides means for normalizing energy and sustainability data across an enterprise); and a report module configured to receive the data collected from the one or more entities and generate a report based on at least one of the data model or the data collected from the one or more entities (Meehan Fig. 1 – 124, 121 – Meehan ¶44 - initiative monitoring and reporting service 124 enables users of an enterprise to closely monitor the progress of a given initiative… Meehan ¶39 - Referring again to FIG. 1, the second core function described above of systems and methods using the present invention--the data aggregation, summarization, and reporting function--is carried out by a data aggregation and reporting service 121).
Regarding claim 2, Meehan discloses the data model comprises a plurality of structured models (Meehan ¶52 - Among other functions, data modeling services 315 provides means for normalizing energy and sustainability data across an enterprise); and the data modeling module is configured to integrate the data collected from the one or more entities into at least one structured model of the plurality of structured models (Meehan ¶52 - Similarly, data aggregation and reporting service 121 is broken down, in the exemplary embodiment illustrated in FIG. 3, into three elements, namely data reporting services 313, data aggregation services 314, and data modeling services 315 These three elements also carry out the functions of initiative monitoring and reporting service 124, thus illustrating the wide variety of architectures and logical distributions of functions that may be present in various embodiments of the invention).
Regarding claim 3, Meehan discloses the report module is configured to generate the report based on the at least one structured model of the plurality of structured models (Meehan ¶52 - Similarly, data aggregation and reporting service 121 is broken down, in the exemplary embodiment illustrated in FIG. 3, into three elements, namely data reporting services 313, data aggregation services 314, and data modeling services 315 These three elements also carry out the functions of initiative monitoring and reporting service 124, thus illustrating the wide variety of architectures and logical distributions of functions that may be present in various embodiments of the invention) ; and the report includes at least one certification report, compliance audit, sustainability assessment, or market comparison (Meehan ¶33 - Finally, the fourth core element of the preferred embodiment of the invention is the monitoring and evaluation of initiatives that are selected for implementation. According to the embodiment, data pertaining to the energy resources affected by the initiative continues to be collected (or, if new resources are added, data collection is started), and fed into the EPM database. This function has already been briefly discussed above. As time progresses, actual performance of systems affected by an initiative is displayed to an enterprise user, who is provided with analytical tools to assess the effectiveness of the initiative in achieving its target goals. For example, if an initiative called for certain conservation measures to take place, then actual energy consumption following implementation of the initiative is compared to energy consumption before implementation of the initiative).
Regarding claim 4, Meehan discloses the report includes a description of one or more of a process of the data collection module, a process of the data modeling module, or a process of the report module (Meehan ¶40 - The model, which is developed using a series of web forms served by initiative generation, modeling, and analysis services 123, is very analogous to a project plan in traditional project management techniques. It consists of a series of implementation steps and associated costs, and it includes expected returns and how they will be measured {i.e. report process}).
Regarding claim 5, Meehan discloses the interface is configured to receive feedback corresponding to the report; the one or more controllers are configured, alone or in combination, to process the feedback; and the report module is configured to generate a revised report based on the feedback (Meehan ¶44 - Additionally, in some embodiments initiative monitoring and reporting service 124 allows revised forecasts of initiative or portfolio returns and risks to be generated as new data is gathered {i.e. feedback}, so that a likely cumulative effect of any deviations from an original plan or forecast is made evident).
Regarding claim 6, Meehan discloses the sustainability report request includes a desired metric; the data collected from the one or more entities includes data of a system composed of components (Meehan ¶39 - For example, a user may subscribe to a regularly scheduled report showing carbon reductions in European facilities of an enterprise, and a user may ask for an ad hoc report of the last four quarters' carbon reductions in Western Europe in particular. In general, data aggregation and reporting service 121 is capable of filtering along one or more of temporal, geographical, or organizational dimensions); and the report includes an optimization recommendation for the system based on the data collected from the one or more entities and the desired metric (Meehan ¶45 - Among the first activities likely to be undertaken by users when working with an EPM system according to the invention is goal setting 202. Goals are generally set based on regulatory requirements (for instance, "achieve at least 20% renewable energy sources by 2020"), management mandate (for instance, "I want us to lower our carbon footprint by 20% by 2020") - Meehan ¶76 - In a preferred embodiment of the invention, a key function of the system is to make recommendations 770).
Regarding claim 7, Meehan discloses the sustainability report request further includes a regulation request; and the report includes one or more of a summary of regulatory changes or an optimization recommendation (Meehan ¶48 - All of these end user modules interact with a model library 210, which contains models of existing, past, and potential future initiatives, models of energy use throughout the enterprise, and models of expected future behavior of extrinsic variables such as energy prices, regulatory changes, and so forth).
Regarding claim 9, Meehan discloses determining one or more entities to contact based on the request (Meehan ¶35 - Energy usage data 110 may also comprise bulk-loaded data from third-party sources); and transmitting, prior to collecting data, the targeted data collection request to the one or more entities via one or more of email, text, or telephone call (Meehan ¶55 - Communications services 333 provide a variety of services that allow users and services to communicate with each other, either synchronously or asynchronously, and either on a scheduled basis or an ad hoc basis. Examples of communications services provided in embodiments of the invention include, but are not limited to, notification services, email services, instant messaging services, social media integration services (for example, a service that allows an alert to be sent via Twitter.TM.), file transfer protocol services (FTP or SFTP), and the like).
Regarding claim 10, Meehan discloses the one or more entities include one or more of an internal party or an external party (Meehan ¶35 - Energy usage data 110 may also comprise bulk-loaded data from third-party sources).
Regarding claims 11 and 14, Meehan discloses the collected data is from one or more of the following formats: Portable Document Format, Comma Separated Values, Microsoft Excel Open Extensible Markup Language Spreadsheet, Microsoft Word Document, JavaScript Object Notation, Message Queuing Telemetry Transport, Application Programing Interface, Enterprise Resource Planning, Hypertext Markup Language (Meehan ¶52 - According to one embodiment, data collection services 312 includes an invoice collection service which is configurable to receive invoice data from a plurality of suppliers via batch uploads (using Secure File Transfer Protocol SFTP), either based on a schedule or manually triggered, and including provision for automated receipt of invoices from suppliers going forward. Invoices can be retrieved as Excel spreadsheets, comma-separated-values files, plain text files, electronic data interchange (EDI), or via a more modern web service using XML-derived formats).
Regarding claim 12, Meehan discloses the report includes one or more of: a description of one or more of a process of the collecting data step, a process of the inputting the collected data into the data model step, or a process of the generating the report step (Meehan ¶40 - The model, which is developed using a series of web forms served by initiative generation, modeling, and analysis services 123, is very analogous to a project plan in traditional project management techniques. It consists of a series of implementation steps and associated costs, and it includes expected returns and how they will be measured {i.e. report process}); a proposal, a product comparison, a compliance report, or an impact analyses; or an environmental product declaration, a health product declaration, or a declare label declaration (Meehan ¶60 - Also, in many cases a bulk upload of historical data, for instance of past utility bills and past compliance reporting to environmental regulators, are obtained in this step).
Regarding claim 15, Meehan discloses the report includes one or more of a scenario analysis or a comparison analysis (Meehan ¶54 - Accordingly, reduction modeling services 322 and financial modeling services 323 allow the analyst to explore a wide variety of "what if?" scenarios to build a model of each initiative that build various best case, most likely, and worst case models, and to assemble a group of initiatives into a portfolio).
Regarding claim 16, Meehan discloses generate a follow-up data collection request for the one or more entities based on the report; transmit the follow-up data collection request to the one or more entities; collect follow-up data from the one or more entities based on the follow-up data collection request; input the follow-up data collected from the one or more entities into the data model; and generate a revised report based on the data model (Meehan ¶44 - Additionally, in some embodiments initiative monitoring and reporting service 124 allows revised forecasts of initiative or portfolio returns and risks to be generated as new data is gathered, so that a likely cumulative effect of any deviations from an original plan or forecast is made evident. Additionally, in a preferred embodiment initiative monitoring and reporting service 124 provides alerts to appropriate users when an initiative or portfolio has been determined to be deviating from its forecast by some predetermined amount, or alarm set point).
Regarding claim 17, Meehan discloses the report includes one or more of: a description of one or more of the data collected from the one or more entities, the data model, or the report; a proposal, a product comparison, a compliance report, or an impact analyses; or an environmental product declaration, a health product declaration, or a declare label declaration (Meehan ¶47 - Analysis and planning module 201 is in effect a user interface to the user-interactive elements of data aggregation and reporting service 121 and initiative generation, modeling, and analysis services 123, although some aspects of the latter are optionally carried out in impact assessment module 205. Impact assessment module 205 and analysis and planning module 201 are exemplary of one mode of dividing up necessary functions of an initiative-oriented, portfolio-capable EPM system).
Regarding claim 18, Meehan discloses the report is a certification report and includes one or more of a template, a task tracker, or a task assignor (Meehan ¶47 - Similarly, track execution module 203 provides a user interface to initiative monitoring and reporting service 124. Track execution module 203 also provides an interface for managing and submitting required compliance reports, such as EPA's mandatory reporting requirements (MRR)).
Regarding claim 19, Meehan discloses the data model is an internal data model or an external data model (Meehan ¶52 - Among other functions, data modeling services 315 provides means for normalizing energy and sustainability data across an enterprise {i.e. internal}).
Regarding claim 20, Meehan discloses the data model includes a scenario model (Meehan ¶30 - By building a library of such forecast models, and possibly even building alternative models for one or more initiatives (typically where the costs and returns themselves are highly uncertain, as when adopting a new alternative energy source), an enterprise user is able, according to the invention, to run any number of complex "what if" scenarios); and the report includes analyses for design or carbon reduction strategies (Meehan ¶40 - In a preferred embodiment of the invention, a number of key functions are provided by web-based initiative generation, modeling, and analysis services 123. One of these is the ability to define an arbitrary number of initiatives to be considered. Initiatives are goal-oriented sequences of actions or investments that can be undertaken by an enterprise to pursue energy conservation, energy diversification, GHG footprint reduction, reduction in wastewater generation, and the like).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
HORIGUCHI (JP 2023016344 A)
Hunn et al. (US 20240111946 A1)
Lee (US 20220108069 A1)
Jeffries (US 20150262105 A1)
Murthy et al. (US 20220027810 A1)
and
IBM “Method and System for Automating Workflow Participation.” An IP.com Prior Art Database Technical Disclosure (2009) [online], [retrieved on 2026-04-04]. Retrieved from the Internet <https://priorart.ip.com/IPCOM/000184058>
These pieces of prior art are cited because they disclose variations on process flow management, particularly related to regulatory compliance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael R Koester whose telephone number is (313)446-4837. The examiner can normally be reached Monday thru Friday 8:00AM-5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerry O'Connor can be reached at (571) 272-6787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL R KOESTER/Examiner, Art Unit 3624
/Jerry O'Connor/Supervisory Patent Examiner,Group Art Unit 3624