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 Office Action is in response to the Amendment filed on June 3, 2026, which paper has been placed of record in the file.
2. Claims 1-8 are pending in this application.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted March 4, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 101
4. 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. Claims 1-8 are rejected under 35 U.S.C. 101 because the claim invention is directed to a judicial exception (i.e., law of nature, natural phenomenon, or abstract idea) without significantly more.
Regarding independent claim 1, which is analyzing as the following:
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category. See MPEP 2106.03. The claim recites a system for evaluating intellectual property (IP). Thus, the claim is to a machine, which is one of the statutory categories of invention. (Step 1: YES).
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
The claim recites a system for evaluating intellectual property (IP). Specification described in pages 1-2 that experts perform IP valuation for a business entity, the valuation is conducted for a patent portfolio including several patents secured in connection with the business. The experts then provide the evaluation results for individual evaluation factors required to product a valuation output, and based on the input data, compute a patent value. The claim recites the steps: compute the statistical data…; outputting the first to fourth key variables; identify explanatory variables…; computing using explanatory variables values collected, corresponding prediction variable values…; outputs a first prediction variable…; outputs a second prediction variable…; outputs a third prediction variable…; outputs a fourth prediction variable…; computes a value of the target IP via a relief-from royalty method; generating a valuation report including the IP value and the statistical data; identifies patent classification information…; identifying industry classification information matched…; ascertains a Technology Cycle Time median for the patent classification information…by reflecting the first prediction variable value…, outputs the first key variable; ascertains a benchmark royalty rate…by reflecting the second prediction variable value…, outputs the second key variable; ascertains a cost of equity and its weight…by reflecting the third prediction variable value…, outputs the third key variable; when past sales of a business entity owning the target IP are confirmed, sets an initial sales revenue…by reflecting the fourth prediction variable value…, outputs the fourth key variable; derives a sales growth rate from the representative industry of the target portfolio to generate a fourth prediction variable for the target portfolio, sets an initial sales revenue based on past sales information of the business entity…by reflecting the fourth prediction variable value…, output a fourth key variable for the target portfolio, under its broadest reasonable interpretation when read in light of the Specification, falls within “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover fundamental economic principles or practices including hedging, insurance, mitigating risk; performance of commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations. See MPEP 2106.04(a)(2), subsection III.
Moreover, the claim recites the steps: compute the statistical data…; outputting the first to fourth key variables; identify explanatory variables…; computing using explanatory variables values collected, corresponding prediction variable values…; outputs a first prediction variable…; outputs a second prediction variable…; outputs a third prediction variable…; outputs a fourth prediction variable…; computes a value of the target IP via a relief-from royalty method; generating a valuation report including the IP value and the statistical data; identifies patent classification information…; identifying industry classification information matched…; ascertains a Technology Cycle Time median for the patent classification information…by reflecting the first prediction variable value…, outputs the first key variable; ascertains a benchmark royalty rate…by reflecting the second prediction variable value…, outputs the second key variable; ascertains a cost of equity and its weight…by reflecting the third prediction variable value…, outputs the third key variable; when past sales of a business entity owning the target IP are confirmed, sets an initial sales revenue…by reflecting the fourth prediction variable value…, outputs the fourth key variable; derives a sales growth rate from the representative industry of the target portfolio to generate a fourth prediction variable for the target portfolio, sets an initial sales revenue based on past sales information of the business entity…by reflecting the fourth prediction variable value…, output a fourth key variable for the target portfolio, is a process that, under its broadest reasonable interpretation when read in light of the Specification, covers performance of the limitations in the mind, can be practically performed by human in their mind or with pen/paper, but for the recitation of generic computer components. That is, other than reciting “a computer/processor/automatically”, nothing in the claim elements preclude the steps from practically being performed in the mind. The mere nominal recitation of generic computing devices does not take the claim limitation out of the Mental Processes grouping of abstract ideas. Thus, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, opinion). See MPEP 2106.04(a)(2), subsection III.
Therefore, the claim recites an abstract idea. (Step 2A, Prong One: YES).
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
The claim recites the additional elements “a valuation database that include, as raw data, reference information…”; “collect and processes the raw data…and store the statistical data and the AI training dataset in the valuation database”; “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models.” The claim also recites that the steps of “compute the statistical data…; outputting the first to fourth key variables; identify explanatory variables…; computing using explanatory variables values collected, corresponding prediction variable values…; outputs a first prediction variable…; outputs a second prediction variable…; outputs a third prediction variable…; outputs a fourth prediction variable…; computes a value of the target IP via a relief-from royalty method; generating a valuation report including the IP value and the statistical data; identifies patent classification information…; identifying industry classification information matched…; ascertains a Technology Cycle Time median for the patent classification information…by reflecting the first prediction variable value…, outputs the first key variable; ascertains a benchmark royalty rate…by reflecting the second prediction variable value…, outputs the second key variable; ascertains a cost of equity and its weight…by reflecting the third prediction variable value…, outputs the third key variable; when past sales of a business entity owning the target IP are confirmed, sets an initial sales revenue…by reflecting the fourth prediction variable value…, outputs the fourth key variable; derives a sales growth rate from the representative industry of the target portfolio to generate a fourth prediction variable for the target portfolio, sets an initial sales revenue based on past sales information of the business entity…by reflecting the fourth prediction variable value…, output a fourth key variable for the target portfolio” are performed by a processor.
The additional elements “a valuation database that include, as raw data, reference information…”; “collect and processes the raw data…and store the statistical data and the AI training dataset in the valuation database” are mere data gathering and outputting recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering and outputting, and, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering and outputting. See MPEP 2106.05. Moreover, these additional elements do not provide any improvement to the technology, improvement to the functioning of the computer, they are just merely used as general means for collecting and outputting data. It is similar to other concepts that have been identified by the courts Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48; Collecting information, analyzing it, and displaying certain results of the collection and analysis, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).
The additional elements “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” provide nothing more than mere instructions to implement an abstract idea on a generic computer. See MPEP 2106.05(f). MPEP 2106.05(f) provides the following considerations for determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer: (1) whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished; (2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and (3) the particularity or generality of the application of the judicial exception.
The additional elements “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” are used to generally apply the abstract idea without placing any limits on how the AI module functions. Rather, these limitations only recite the outcome of “outputting the prediction variables and the key-variable values” and do not include any details about how the solution is accomplished. See MPEP 2106.05(f).
The additional elements “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” also merely indicate a field of use or technological environment in which the judicial exception is performed. Although the additional elements “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” limit the outcome “outputting the prediction variables and the key-variable values”, this type of limitations merely confines the use of the abstract idea to a particular technological environment (Artificial Intelligent) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h).
Further, the steps of “compute the statistical data…; outputting the first to fourth key variables; identify explanatory variables…; computing using explanatory variables values collected, corresponding prediction variable values…; outputs a first prediction variable…; outputs a second prediction variable…; outputs a third prediction variable…; outputs a fourth prediction variable…; computes a value of the target IP via a relief-from royalty method; generating a valuation report including the IP value and the statistical data; identifies patent classification information…; identifying industry classification information matched…; ascertains a Technology Cycle Time median for the patent classification information…by reflecting the first prediction variable value…, outputs the first key variable; ascertains a benchmark royalty rate…by reflecting the second prediction variable value…, outputs the second key variable; ascertains a cost of equity and its weight…by reflecting the third prediction variable value…, outputs the third key variable; when past sales of a business entity owning the target IP are confirmed, sets an initial sales revenue…by reflecting the fourth prediction variable value…, outputs the fourth key variable; derives a sales growth rate from the representative industry of the target portfolio to generate a fourth prediction variable for the target portfolio, sets an initial sales revenue based on past sales information of the business entity…by reflecting the fourth prediction variable value…, output a fourth key variable for the target portfolio”, are recited as being performed by the processor. The processor is recited at a high level of generality and is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). The additional elements recite generic computer components the processor, a memory, and software programming instructions that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as 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 -- See MPEP 2106.05(f).
Moreover, these additional elements do not provide any improvements to the technology, improvements to the functioning of the computer, the processor, improvement to the AI models, or other technology. They just merely used as general means for performing the abstract idea. They do not recite a particular machine or manufacture that is integral to the claims, and do not transform or reduce a particular article to a different state or thing.
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO), and the claim is directed to the judicial exception (Step 2A, Prong One: YES).
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole, amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
As explained with respect to Step 2A, Prong Two, the additional elements of “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” are at best mere instructions to “apply” the abstract ideas, which cannot provide an inventive concept. See MPEP 2106.05(f).
The additional elements “a valuation database that include, as raw data, reference information…”; “collect and processes the raw data…and store the statistical data and the AI training dataset in the valuation database” were found to be insignificant extra-solution activity in Step 2A, Prong Two, because they were determined to be insignificant limitations as necessary data gathering and outputting. However, a conclusion that an additional element is insignificant extra solution activity in Step 2A, Prong Two should be re-evaluated in Step 2B. See MPEP 2106.05, subsection I.A. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g).
As discussed in Step 2A, Prong Two above, the additional elements of “a valuation database that include, as raw data, reference information…”; “collect and processes the raw data…and store the statistical data and the AI training dataset in the valuation database” are recited at a high level of generality. These elements amount to gathering and displaying data over a network and are well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II. The courts have recognized the following computer functions as well understood, routine, and conventional functions when they are claimed in a merely genetic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: 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); 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); 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.
As discussed in Step 2A, Prong Two above, the recitation of the processor to perform the limitations “compute the statistical data…; outputting the first to fourth key variables; identify explanatory variables…; computing using explanatory variables values collected, corresponding prediction variable values…; outputs a first prediction variable…; outputs a second prediction variable…; outputs a third prediction variable…; outputs a fourth prediction variable…; computes a value of the target IP via a relief-from royalty method; generating a valuation report including the IP value and the statistical data; identifies patent classification information…; identifying industry classification information matched…; ascertains a Technology Cycle Time median for the patent classification information…by reflecting the first prediction variable value…, outputs the first key variable; ascertains a benchmark royalty rate…by reflecting the second prediction variable value…, outputs the second key variable; ascertains a cost of equity and its weight…by reflecting the third prediction variable value…, outputs the third key variable; when past sales of a business entity owning the target IP are confirmed, sets an initial sales revenue…by reflecting the fourth prediction variable value…, outputs the fourth key variable; derives a sales growth rate from the representative industry of the target portfolio to generate a fourth prediction variable for the target portfolio, sets an initial sales revenue based on past sales information of the business entity…by reflecting the fourth prediction variable value…, output a fourth key variable for the target portfolio”, as discussed above in Step 2A, Prong One above, amounts to no more than mere instructions to apply the exception using a generic computer component.
Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer which do not provide an inventive concept. Therefore, the claim is not patent eligible.
(Step 2B: NO).
Regarding dependent claims 2-8, the dependent claims do not impart patent eligibility to the abstract idea of the independent claim. The dependent claims rather further narrow the abstract idea and the narrower scope does not change the outcome of the two-part Mayo test. Narrowing the scope of the claims is not enough to impart eligibility as it is still interpreted as an abstract idea, a narrower abstract idea.
Regarding dependent claim 2, the claim simply refines the abstract idea by further reciting wherein the target IP information is a patent registration number of the target IP, that fall under the category of Organizing Human Activity and Mental process groupings of abstract ideas as described above in the independent claim 1. Thus, the dependent claim does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Regarding dependent claim 3, the claim simply refines the abstract idea by further reciting wherein the reference information includes expert IP valuation result data…, that fall under the category of Organizing Human Activity and Mental process groupings of abstract ideas as described above in the independent claim 1. Thus, the dependent claim does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Regarding dependent claim 4, the claim recites the additional elements “wherein the processor is further configured to…”, which are recited at a high level of generality and is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). (See claim 1 above). Thus, the dependent claim does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Regarding dependent claim 5, the claim recites the additional elements “wherein the processor is configured to compute…”, which is recited at a high level of generality and is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). (See claim 1 above). Thus, the dependent claim does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Regarding dependent claim 6, the claim simply refines the abstract idea by further reciting wherein the statistical data comprise…, that fall under the category of Organizing Human Activity grouping of abstract ideas as described above in the independent claim 1. Thus, the dependent claim does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Regarding dependent claim 7, the claim recites the additional elements “wherein the processor is further configured to…”, provide nothing more than mere instructions to implement an abstract idea on a generic computer. (See claim 1 above). Thus, the dependent claim does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Regarding dependent claim 8, the claim simply refines the abstract idea by further reciting wherein the first explanatory-variable set for generating…, the second explanatory-variable set for generating…, the third explanatory-variable set for generating…, the fourth explanatory-variable set for generating…, that fall under the category of Organizing Human Activity grouping of abstract ideas as described above in the independent claim 1. Thus, the dependent claim does not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as significantly more than the abstract idea.
Accordingly, claims 1-8 are not draw to eligible subject matter as they are directed to an abstract idea without significantly more and are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Response to Arguments/Amendment
6. Applicant's arguments with respect to claims 1-8 have been fully considered but are not persuasive.
I. Claim Interpretation
The Amendment overcomes the Interpretation under 112(f).
Accordingly, the claim interpretation under 112(f) has been withdrawn.
II. Claim Rejections - 35 USC § 112(b)
The Amendment overcomes the rejection.
Accordingly, the rejection under 112(b) has been withdrawn.
III. Claim Rejections - 35 USC § 101
Claims 1-8 are rejected under 35 U.S.C. 101 because the claim invention is directed to a judicial exception (i.e., law of nature, natural phenomenon, or abstract idea) without significantly more. (See details above).
Step 2A, Prong 1:
In response to the Applicant’s arguments that “The Claims do not Recite an Abstract Idea”, the Examiner respectfully disagrees and submits that:
The claims recite a system for evaluating intellectual property (IP). Specification described in pages 1-2 that experts perform IP valuation for a business entity, the valuation is conducted for a patent portfolio including several patents secured in connection with the business. The experts then provide the evaluation results for individual evaluation factors required to product a valuation output, and based on the input data, compute a patent value. Thus, the claims, under its broadest reasonable interpretation when read in light of the Specification, falls within “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover fundamental economic principles or practices including hedging, insurance, mitigating risk; performance of commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations. See MPEP 2106.04(a)(2), subsection III.
Moreover, the recited steps in the claims, are processes that, under its broadest reasonable interpretation when read in light of the Specification, covers performance of the limitations in the mind, can be practically performed by human in their mind or with pen/paper, but for the recitation of generic computer components. That is, other than reciting “a computer/processor/automatically”, nothing in the claim elements preclude the steps from practically being performed in the mind. The mere nominal recitation of generic computing devices does not take the claim limitation out of the Mental Processes grouping of abstract ideas. Thus, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, opinion). See MPEP 2106.04(a)(2), subsection III.
Therefore, the claim recites an abstract idea.
The amended claims recite the features “directed to processing raw data and, generating AI training dataset, computing statistical data required therefor and the AI training dataset, storing the statistical data and the AI training dataset-in the valuation database, and in order to output the first through fourth key variables, training, using the AI training dataset, two or more AI models for each key variable, based on validation results for prediction values of the AI models, and setting an optimal combination of parameters for each AI model according to performance- metric results such that each of the two or more AI models are optimized models” are additional elements and analyzing under Step 2A, Prong 2.
Step 2A, Prong 2:
In response to the Applicant’s arguments that “The Claims are integrated into a practical application”, the Examiner respectfully disagrees and submits that:
The additional elements “a valuation database that include, as raw data, reference information…”; “collect and processes the raw data…and store the statistical data and the AI training dataset in the valuation database” are mere data gathering and outputting recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering and outputting, and, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering and outputting. See MPEP 2106.05.
The additional elements “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” provide nothing more than mere instructions to implement an abstract idea on a generic computer. See MPEP 2106.05(f).
The additional elements “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” are used to generally apply the abstract idea without placing any limits on how the AI module functions. Rather, these limitations only recite the outcome of “outputting the prediction variables and the key-variable values” and do not include any details about how the solution is accomplished. See MPEP 2106.05(f).
The additional elements “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” also merely indicate a field of use or technological environment in which the judicial exception is performed. Although the additional elements “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” limit the outcome “outputting the prediction variables and the key-variable values”, this type of limitations merely confines the use of the abstract idea to a particular technological environment (Artificial Intelligent) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h).
The additional element “the processor” is recited at a high level of generality and is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f).
Moreover, these additional elements do not provide any improvements to the technology, improvements to the functioning of the computer, the processor, improvement to the AI models, or other technology. They just merely used as general means for performing the abstract idea. They do not recite a particular machine or manufacture that is integral to the claims, and do not transform or reduce a particular article to a different state or thing.
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application.
Step 2B:
In response to the Applicant’s arguments that “The Claims Recite an Inventive Concept”, the Examiner respectfully disagrees and submits that:
As explained with respect to Step 2A, Prong Two, the additional elements of “train using the AI training dataset, two or more AI models, for each key variable, based on validation results for prediction values of the AI models to set an optimal combination of parameters for training each AI model according to performance-metric results such that each of the two or more AI models are trained optimized models” are at best mere instructions to “apply” the abstract ideas, which cannot provide an inventive concept. See MPEP 2106.05(f).
As discussed in Step 2A, Prong Two above, the additional elements of “a valuation database that include, as raw data, reference information…”; “collect and processes the raw data…and store the statistical data and the AI training dataset in the valuation database” are recited at a high level of generality. These elements amount to gathering and displaying data over a network and are well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II. The courts have recognized the following computer functions as well understood, routine, and conventional functions when they are claimed in a merely genetic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: 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); 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); 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.
As discussed in Step 2A, Prong Two above, additional element the processor to perform the recited limitations, amounts to no more than mere instructions to apply the exception using a generic computer component.
Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept.
Therefore, the claims are not patent eligible.
According, the 101 rejection is maintained.
Conclusion
7. 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.
8. Claims 1-8 are rejected.
9. The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure:
Roach, JR. et al. (US 2009/0271310) disclose a system and method for creating and managing a system for extracting value from intellectual property. The method includes the steps of collecting intellectual property assets in an investment vehicle, selling shares in the investment vehicle, and licensing the collected intellectual property through the investment vehicle. Shares in the investment vehicle may be traded privately or publicly.
Masuyama et al. (US 2006/0200395) disclose a device for automatically selecting a more preferable stock portfolio based on the results upon performing a comprehensive valuation of companies using a corporate valuation index containing an intellectual asset related index.
Elliott (US 2001/0042034) discloses methods of repeatedly valuing intellectual property assets and securitizing such assets.
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/NGA B NGUYEN/Primary Examiner, Art Unit 3625 June 13, 2026
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