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 communication filed on July 15, 2025, 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 July 15, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
4. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
5. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a collection/refinement module, an AI module, a valuation service module”, recited in claim 1; “a raw-data collection unit, a preprocessing unit, a base-data generation unit, a training-data generation unit, a statistical-data generation unit, an evaluation-criteria-data generation unit” recited in claim 4; “a training-data preprocessing unit, an AI training unit, a training-optimization unit, a key-variable output unit” recited in claim 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof (The Specification described in page 13, lines 1-20 that “the terms "... unit,""... apparatus," and "... module" as used in the specification denote a unit that processes at least one function or operation, and may be implemented in hardware, software, or a combination of hardware and software. The apparatuses described in the present invention are constituted of hardware including at least one processor, a memory device, and a communication device, and store, in a designated location, a program that is executed in conjunction with the hardware).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
6. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
7. Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1:
Line 8, “them” is unclear whether it refers to “the statistical data”, “the AI data set” or both. For the examination purposes, “them” will be treated as --the statistical data--.
Line 28, “the relevant industry” lacks proper antecedent basis. For the examination purposes, it will be treated as --a relevant industry--.
Lines 47-48 cannot be clearly understood. More specifically, it is not clear how “an expert-evaluated IP commercialization risk premium; and an industry-specific sales growth rate” are related to the rest of recited limitations.
Line 49, “the number” lacks proper antecedent basis. For the examination purposes, it will be treated as --a number--.
Line 51, “the individual patents” lacks proper antecedent basis. For the examination purposes, it will be treated as --an individual patent--.
Line 52, “the respective individual patents” lacks proper antecedent basis. For the examination purposes, it will be treated as --the individual patent--.
Line 55, remove “—” before “among”. Further, “the industries” lacks proper antecedent basis. For the examination purposes, it will be treated as --industries-
Line 57, “the individual patents” lacks proper antecedent basis. For the examination purposes, it will be treated as --the individual patent--.
Lines 60-61, “the respective individual patents” lacks proper antecedent basis. For the examination purposes, it will be treated as --the individual patent--.
Lines 64-65, “the respective individual patents” lacks proper antecedent basis. For the examination purposes, it will be treated as --the individual patent--.
Line 68, “the representative industry” lacks proper antecedent basis. For the examination purposes, it will be treated as – a representative industry --.
Claim 2:
Line 2, “the patent registration number” lacks proper antecedent basis. For the examination purposes, it will be treated as --a patent registration number-
Claim 3:
Line 6, “the metrics” lacks proper antecedent basis. For the examination purposes, it will be treated as --metrics--.
Claim 6:
Line 1, “the statistical data” is unclear whether it refers to “statistical data” in line 5 of claim 1 or line 9 of claim 4. For the examination purposes, “statistical data” in line 9 of claim 4 will be treated as –the statistical data--.
Applicant is strongly advised to review entire claims for further needed corrections.
Claim Rejections - 35 USC § 101
8. 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.
9. 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: outputting the prediction variables, computing a value of the target IP…, generating a valuation report including the IP value and the statistical data, identifying patent classification information…, identifying industry classification information matched…, ascertaining a Technology Cycle Time median for the patent classification information…, reflecting the prediction-variable values, outputting the key variables…, when past sales of a business entity owning the target IP are confirmed, sets an initial sales revenue…, and 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…, 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.
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…”; “a collection/refinement module that collects and processes the raw data…”; “an AI module for outputting the first through fourth key variables, trains using the AI training dataset, two or more AI models, outputs a first/second/third/fourth prediction variable and a first/second/third/fourth key-variable value through a first/second/third/fourth explanatory-variable set.” The claim also recites that the steps of “computing a value of the target IP…, generating a valuation report including the IP value and the statistical data, identifying patent classification information…, identifying industry classification information matched…, ascertaining a Technology Cycle Time median for the patent classification information…, reflecting the prediction-variable values, outputting the key variables…, when past sales of a business entity owning the target IP are confirmed, sets an initial sales revenue…, and derives a sales growth rate from the representative industry of the target portfolio to generate a fourth prediction variable…” are performed by a valuation service module.
The additional elements “a valuation database that include, as raw data, reference information…” and “a collection/refinement module that collects and processes the raw data…” 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 “an AI module for outputting the first through fourth key variables, trains using the AI training dataset, two or more AI models, outputs a first/second/third/fourth prediction variable and a first/second/third/fourth key-variable value through a first/second/third/fourth explanatory-variable set” 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 “an AI module for outputting the first through fourth key variables, trains using the AI training dataset, two or more AI models, outputs a first/second/third/fourth prediction variable and a first/second/third/fourth key-variable value through a first/second/third/fourth explanatory-variable set” 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 “an AI module for outputting the first through fourth key variables, trains using the AI training dataset, two or more AI models, outputs a first/second/third/fourth prediction variable and a first/second/third/fourth key-variable value through a first/second/third/fourth explanatory-variable set” also merely indicate a field of use or technological environment in which the judicial exception is performed. Although the additional elements “an AI module for outputting the first through fourth key variables, trains using the AI training dataset, two or more AI models, outputs a first/second/third/fourth prediction variable and a first/second/third/fourth key-variable value through a first/second/third/fourth explanatory-variable set”, 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 “computing a value of the target IP…, generating a valuation report including the IP value and the statistical data, identifying patent classification information…, identifying industry classification information matched…, ascertaining a Technology Cycle Time median for the patent classification information…, reflecting the prediction-variable values, outputting the key variables…, when past sales of a business entity owning the target IP are confirmed, sets an initial sales revenue…, and derives a sales growth rate from the representative industry of the target portfolio to generate a fourth prediction variable”, are recited as being performed by the valuation service module. The valuation service module 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 valuation service module, 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).
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 “an AI module for outputting the first through fourth key variables, trains using the AI training dataset, two or more AI models, outputs a first/second/third/fourth prediction variable and a first/second/third/fourth key-variable value through a first/second/third/fourth explanatory-variable set” 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…” and “a collection/refinement module that collects and processes the raw data…” 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…” and “a collection/refinement module that collects and processes the raw data…” 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).
As discussed in Step 2A, Prong Two above, the recitation of the valuation service module to perform the limitations “computing a value of the target IP…, generating a valuation report including the IP value and the statistical data, identifying patent classification information…, identifying industry classification information matched…, ascertaining a Technology Cycle Time median for the patent classification information…, reflecting the prediction-variable values, outputting the key variables…, when past sales of a business entity owning the target IP are confirmed, sets an initial sales revenue…, and derives a sales growth rate from the representative industry of the target portfolio to generate a fourth prediction variable…”, 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 the patent registration number of the target IP, 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 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 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 4, the claim recites the additional elements “a raw-data collection unit, a preprocessing unit, a base-data generation unit, a training-data generation unit, a statistical-data generation unit, an evaluation-criteria-data generation unit”, 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 evaluation-criteria-data generation unit finally computes…”, 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 “a training-data preprocessing unit, an AI training unit, a training-optimization unit, a key-variable output unit”, 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.
Conclusion
10. Claims 1-8 are rejected.
11. The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure:
Thomas (US 2012/0011032) discloses a comprehensive platform for merchandising intellectual property (IP) and conducting IP transactions. A standardized data collection method enables IP assets to be characterized, rated and valuated in a consistent manner.
Neifeld et al. (US 7,676,375) disclose a computer system implementing a macro economic model based upon macroeconomic data and relative value characteristics data of patents that determines nominal values for (1) goods and services and (2) profits generated by sales that are covered by the rights of a patent, implements an income value theory to value the patent based upon the predicted values of profits or goods and services covered by the patent, determines patent terms from patent filing, publication, and issue dates, determines patent assignees from patent data, and uses the value of a company's patents.
Frank et al. (US 7,801,830) disclose systems and methods for intellectual property marketing, management, and maintenance.
Poltorak (US 7,792,728) discloses Patent valuation method uses discounted present value analysis and statistical adjustment techniques to compute an estimate of the value of a patent or portfolio of patents.
Grim, III et al. (US 7,747,537) disclose a system and method for providing an intellectual property marketplace (IM) using a secured information vault so that individual owners of intellectual property (IP) may control and manage the access and dissemination of the IP.
Del Vecchio et al. (US 2003/0036945) disclose a method for assessing the value of a company's intellectual property comprising the steps of gathering intellectual property data, performing an assessment of the intellectual property data and generating a report based on the assessment of the intellectual property data.
Shah et al. (US 2014/0164261) disclose interactively calculating the value of a patent portfolio held by a company. The invention allows users to input estimated future yearly licensing and/or royalty revenues, as well as a discount factor. The user inputs are interactive so that a user can conduct a sensitivity analysis of the value of the patent portfolio in real-time.
Grune et al. (US 8,326,851) disclose a system and method for a web-enabled tool that allows simultaneous intelligent searching, knowledge management-based problem solving, valuation, and modeling of intellectual property and scientific information.
Tabata et al. (US 2015/0178847) disclose a patent portfolio management system, comprising: a patent value calculation unit that calculates a value score of an individual application stored in the patent information storage unit.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to examiner NGA B NGUYEN whose telephone number is (571) 272-6796. The examiner can normally be reached on Monday-Friday 7AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth Boswell can be reached on (571) 272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NGA B NGUYEN/Primary Examiner, Art Unit 3625 February 18, 2026