DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office action is in response to Applicant’s communication filed on November 13, 2025. Claim 1 is pending and has been examined. The rejections are stated below.
Claim Rejections - 35 USC § 101
2. 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.
3. Claim 1 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim recites an asset evaluation system including generating asset analysis results for the end-user based, at least in part, on the value scores associated with the plurality of assets, which is considered a judicial exception because it falls under the category of “Certain Methods of organizing human activity” such as fundamental economic practice as well as commercial or legal interactions including agreements as discussed below. This judicial exception is not integrated into a practical application as discussed below. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Analysis
Step 1: In the instant case, exemplary claim 1 is directed to a system.
Step 2A – Prong One: The limitations of “An asset evaluation system comprising one or more processing devices and one or more non-transitory storage devices for storing instructions, wherein execution of the instructions by the one or more processing devices causes the one or more processing devices to execute functions comprising:
collecting, by a data collection module stored on the one or more non-transitory storage devices, multi-modal asset data corresponding to a plurality of assets;
extracting, by an artificial intelligence (AI) analysis engine executed by the one or more processing devices, asset features from the multi-modal asset data, at least in part, by analyzing image content and textual content included in the multi-modal asset data, wherein extracting the asset features includes:
executing one or more computer vision functions to extract visual features from the image content included in the multi-modal asset data, the one or more computer vision functions at least including one or more object detection tasks and/or one or more classification tasks performed on the image content; and
executing one or more natural language processing (NLP) functions to extract textual features from the textual content included in the multi-modal asset data;
wherein the asset features comprise both the visual features extracted by the one or more computer vision functions and the textual features extracted by the one or more NLP functions;
creating a user profile that stores personalization data corresponding to an end-user;
generating, by a value scoring module executed by the one or more processing devices, value scores for each of the plurality of assets, at least in part, by correlating the asset features extracted by the AI analysis engine with the personalization data stored in the user profile; and
generating, based on execution of the instructions by the one or more processing devices, asset analysis results for the end-user based, at least in part, on the value scores associated with the plurality of assets” as drafted, when considered collectively as an ordered combination without the italicized portions, is a process that, under the broadest reasonable interpretation, covers the category of “Certain Methods of organizing human activity” such as fundamental economic practice as well as commercial or legal interactions including agreements.
Asset evaluation system including generating asset analysis results for the end-user based, at least in part, on the value scores associated with the plurality of assets is a fundamental economic practice such as asset/investment analysis.
The steps of “creating a user profile that stores personalization data corresponding to an end-user;
generating, by a value scoring module executed by the one or more processing devices, value scores for each of the plurality of assets, at least in part, by correlating the asset features extracted by the AI analysis engine with the personalization data stored in the user profile; and
generating, based on execution of the instructions by the one or more processing devices, asset analysis results for the end-user based, at least in part, on the value scores associated with the plurality of assets” considered collectively is a form of fulfilling agreements in the form of contracts between the parties involved. Hence, the steps of the claim, considered collectively as an ordered combination without the italicized portions, covers the abstract category of “Certain Methods of organizing human activity”.
That is, other than, one or more processing devices and one or more non-transitory storage devices for storing instructions, a data collection module, an artificial intelligence (AI) analysis engine, one or more computer vision functions, one or more natural language processing (NLP) functions, and a value scoring module, nothing in the claim precludes the steps from being performed as a method of organizing human activity. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A – Prong Two: The judicial exception is not integrated into a practical application. In particular, the claim only recites the additional elements of one or more processing devices and one or more non-transitory storage devices for storing instructions, a data collection module, an artificial intelligence (AI) analysis engine, one or more computer vision functions, one or more natural language processing (NLP) functions, and a value scoring module to perform all the steps. A plain reading of Figures 1A – 5, and associated descriptions in the Applicant’s Specification reveals that the one or more processing devices and one or more non-transitory storage devices for storing instructions may be a generic processing devices and generic storage devices may be suitably programmed for performing their respective functions. The data collection module and value scoring module may be generic software suitably programmed for performing their associated functions. The artificial intelligence (AI) analysis engine, the one or more computer vision functions and the one or more natural language processing (NLP) functions are broadly interpreted to include generic software suitably programmed for performing their associated functions. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements in all the steps are recited at a high-level of generality (i.e., as generic computer components performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, claim 1 is directed to an abstract idea.
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements (identified above) to perform the claimed steps amounts to no more than mere instructions to apply the exception using a generic computer component. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Hence, claim 1 is not patent eligible.
Double Patenting
4. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
5. Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,293,414 (herein after ‘414). This is a statutory double patenting rejection.
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
7. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12,499,488 (herein after ‘488). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2 of the issued Patent recites all the limitations of the claims in the instant application.
For example, claim 1 of ‘488 recites the limitations of
“1. A system for performing artificial intelligence inference locally on an end-user device comprising:
an end-user device comprising one or more processing devices and one or more non-transitory storage devices that store instructions corresponding to an asset evaluation system, wherein execution of the instructions by the one or more processing devices causes the end-user device to:
receive, by the end-user device, multi-modal asset data corresponding to assets;
extract, by an artificial intelligence (Al) architecture stored and executed locally by the end-user device, asset features from the multi-modal asset data, wherein extracting the asset features includes:
executing one or more computer vision functions locally on the end- user device to extract visual features from image content included in the multi-modal asset data; and
executing one or more natural language processing (NLP) functions locally on the end-user device to extract textual features from textual content included in the multi-modal asset data;
wherein the asset features comprise both the visual features extracted by the one or more computer vision functions and the textual features extracted by the one or more NLP functions;
generate scores for each of the assets, at least in part, by correlating the asset features extracted by the Al architecture with personalization data associated with an end- user; and
generate, by the end-user device, asset analysis results for the end-user based, at least in part, on the scores associated with the assets.”
Similarly claim 2 of ‘488 recites “The system of claim 1, wherein the Al architecture is stored locally on the end-user device and comprises: at least one computer vision model configured to execute the one or more computer vision functions and extract the visual features; and at least one NLP model configured to execute the one or more NLP functions and extract the textual content” (all the limitations of claim 1 of the instant application).
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
(a) Ayoub; Georges et al. (US Patent 12,277,605 B2) discloses a system and methodology that operate, in one embodiment, to provide a set of cloud-based applications through which creators, initial investors and secondary investors can all interact so that content catalogs can be valued, initially invested in and traded on a secondary basis. As a result, content creators can source valuable capital for growth and expansion as well as other purposes. Separately, the system and methodologies of the present invention provide the unique opportunity for investors to invest in an interesting asset class which is diverse from other typical investment vehicles. The ability to rely on automated valuations at the time of the initial offering as well as the liquidity provided via secondary trading enhances the desirability of the content catalog asset class as well as the revenue streams associated therewith.
(b) Jayathirtha; Srihari et al. (US Pub. 2022/0398665 A1) discloses various embodiments related to providing a dashboard visualization for a portfolio of assets. In this regard, a request to obtain asset data for a dashboard visualization associated with a portfolio of assets is transmitted to a server system. The request comprises an asset descriptor and a user identifier. In response to the request, the asset data is received from the server system. The asset data is configured based on the asset descriptor and the user identifier, and the asset data comprising prioritized actions for the portfolio of assets. Furthermore, in response to the request, the dashboard visualization is rendering based on the asset data and via an electronic interface of a user computing device. The dashboard visualization is configured to provide the prioritized actions for the portfolio of assets as respective interactive display elements via the electronic interface.
9. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Narayanswamy Subramanian whose telephone number is (571) 272-6751. The examiner can normally be reached Monday-Friday from 9:00 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Abhishek Vyas can be reached at (571) 270-1836. The fax number for Formal or Official faxes and Draft to the Patent Office is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Narayanswamy Subramanian/
Primary Examiner
Art Unit 3691
September 28, 2026
