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 .
Status of the Claims
This action is in response to applicant’s response on October 27, 2025.
Claims 1 and 6-7 are currently amended and are hereby entered.
Claims 1-4 & 6-7 are pending.
Response to Arguments
The claim objection has been withdrawn due to applicants’ amendments.
The 112 rejection has been withdrawn due to applicants amendments.
The art rejection under 35 USC 103 has been withdrawn do to applicants amendments and arguments.
With regard to the applicant’s arguments, on page 1, that the claims are directed to “positioning system(GPS) data, electronic payment data, and social networking service (SNS) data and that these limitations are directed to specific technical limitations rather than abstract mental processes, the examiner respectfully disagrees. The limitations pointed out is merely data being transferred over a network. All three elements do not describe receiving this data via sensors or external devices but merely input data, running the data through model, and outputting data. Very similar to electric power group.
With regard to the applicant’s arguments, on page 1, that the claims are directed to the details specific a technical operation of an analysis model that could not be performed mentally, the examiner respectfully disagrees. The Examiner respectfully disagrees with the applicant’s assertion that the claims recite limitations that could not practically be performed in the human mind. The MPEP provides clear guidance for determining whether a claim recites a mental process-type abstract idea. Specifically, the MPEP instructs that: “Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations.” In contrast, “claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions.” In addition, “Claims can recite a mental process even if they are claimed as being performed on a computer. … In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. … In these situations, the claim is considered to recite a mental process.” Upon review, the present claims, when given their broadest reasonable interpretation, do not recite specific improvements to computer technology or a particular machine, but instead recite steps of analyzing data and generating results. The claims are not limited to a specific technical solution or a technical improvement in computer functionality, but rather encompass steps that could be performed mentally or with the aid of pen and paper.
Therefore, the Examiner maintains that the claims are directed to a mental process-type abstract idea, as defined under MPEP § 2106.04(a)(2)(III), and are not eligible for patenting under 35 U.S.C. § 101 absent additional elements that integrate the judicial exception into a practical application or provide an inventive concept.
With regard to the applicant’s argument, on page 2, that the claims recite “specific user interface elements for setting non-transmission indices,” and that the specification describes a setting display on a terminal device allowing the user to set tasks and indices, thereby providing “a technical mechanism for users to control data transmission.” Applicant further asserts this improves computer functionality.
The Examiner has carefully considered the argument and reviewed the claims and specification, including paragraph [0131]. While the claims recite user interface elements for setting non-transmission indices, the Examiner does not find that these elements, as claimed, provide a specific improvement to the functioning of the computer or another technology or technical field as well as any extra insignificant solutions. A claim reciting a judicial exception is not directed to the judicial exception if it also recites additional elements demonstrating that the claim as a whole integrates the exception into a practical application. One way to demonstrate such integration is when the claimed invention improves the functioning of a computer or improves another technology or technical field. The application or use of the judicial exception in this manner meaningfully limits the claim by going beyond generally linking the use of the judicial exception to a particular technological environment, and thus transforms a claim into patent-eligible subject matter. Such claims are eligible at Step 2A because they are not “directed to” the recited judicial exception.
The Examiner notes that, as recited, the user interface elements for setting non-transmission indices merely allow a user to select or adjust parameters via a display. The claims do not specify how the interface or the underlying mechanism for controlling data transmission is implemented in a manner that improves the functioning of the computer itself or another technology, nor do they provide details regarding a particular technical solution to a technical problem. Rather, the claims describe generic user interface functionality—that is, displaying information and receiving user input—which does not, by itself, constitute an improvement to computer technology. Evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d).
In this case, the claims do not recite additional elements or a combination of elements that are more than well-understood, routine, and conventional user interface operations. The mere inclusion of user interface features for setting indices, without more, does not transform the judicial exception into patent-eligible subject matter.
Accordingly, the Examiner maintains the rejection under 35 U.S.C. § 101. The claims, as a whole, do not amount to significantly more than the abstract idea itself, as they do not provide a specific, technical improvement to computer functionality or another technology. If applicant wishes to overcome this rejection, it is recommended to amend the claims to recite specific details that provide a technical solution to a technical problem, as described in the MPEP.
With regard to the applicant’s argument, on page 2, that the claims “add concrete steps for user privacy control that further improves computer functionality,” citing the specification’s example of a confirmation message and user selection regarding the transmission of personal commuting route information.
The Examiner has carefully reviewed the claims and specification, including paragraph [0132]. While the claims recite steps for seeking user confirmation and allowing the user to select whether to transmit certain information, these steps, as claimed, do not amount to an improvement in computer functionality or another technology or technical field as required by the subject matter eligibility analysis.
According to the MPEP, “examiners should consider whether the claim ‘purport(s) to improve the functioning of the computer itself’ or ‘any other technology or technical field’” and whether the claim provides a technological solution to a technological problem. Merely adding steps for user interaction or privacy control, without more, is not sufficient if those steps are “well-understood, routine, conventional activity in the field” or simply append such activity to the judicial exception. Re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and Evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d).
In this instance, the recited steps for confirming with the user and allowing a privacy selection are generic user interface actions that are well-understood, routine, and conventional in the field of computer technology, particularly with respect to privacy controls and user consent dialogs. These steps do not, as claimed, provide a specific improvement to the functioning of a computer or another technology; rather, they represent the application of known privacy control techniques in the context of the claimed process. A claim reciting a judicial exception is not directed to the judicial exception if it also recites additional elements demonstrating that the claim as a whole integrates the exception into a practical application. One way to demonstrate such integration is when the claimed invention improves the functioning of a computer or improves another technology or technical field. The application or use of the judicial exception in this manner meaningfully limits the claim by going beyond generally linking the use of the judicial exception to a particular technological environment, and thus transforms a claim into patent-eligible subject matter. Such claims are eligible at Step 2A because they are not “directed to” the recited judicial exception.
However, in the present case, the claims do not recite a technical solution to a technical problem or a specific improvement to computer functionality. Instead, they describe a generic implementation of user privacy control, which does not transform the abstract idea into patent-eligible subject matter. Accordingly, the Examiner maintains the rejection under 35 U.S.C. § 101. The claims, as a whole, do not amount to significantly more than the judicial exception itself, as they do not provide a technical improvement to computer functionality or meaningfully integrate the exception into a practical application. If applicant wishes to overcome this rejection, it is recommended to amend the claims to recite additional elements that go beyond well-understood, routine, and conventional activities and provide a specific technological improvement.
With regard to the applicant’s arguments, on page 2, that the claims specify “concrete rules for transmission decisions”—such as, when the system determines that a user’s home position can be estimated, the decision unit decides not to transmit certain data—thereby improving computer functionality by reducing unnecessary data transmission and maintaining user privacy control. Applicant asserts that these technical implementations integrate the abstract idea into a practical application and are not merely applying an abstract idea on a computer. The Examiner has reviewed the claims and specification, including the cited example from paragraph [0135]. However, as described in the MPEP, to integrate a judicial exception into a practical application, the claims must do more than recite an abstract idea or generic computer implementation—they must provide a specific improvement to the functioning of a computer or another technology, or otherwise apply the exception in a meaningful way. However, as further described in the MPEP and relevant case law, merely implementing rules or decision logic on a general-purpose computer, without more, does not amount to a specific improvement to computer functionality as discussed in TLI Communications. Therefore, the Examiner maintains that, as currently claimed, the rules for transmission decisions do not integrate the abstract idea into a practical application nor do they amount to significantly more than the judicial exception. The claims do not recite a specific improvement to the functioning of a computer or another technology, but rather implement abstract decision logic using generic computer functions. Accordingly, the rejection under 35 U.S.C. § 101 is maintained. If the applicant wishes to overcome this rejection, it is recommended to amend the claims to recite additional elements that provide a specific technical solution to a technical problem, as described in MPEP §§ 2106.04(d)(1) and 2106.05(a).
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 1-4 & 6-7 are rejected under 35 U.S.C. 101, because the claimed invention is directed to an abstract idea without significantly more. Independent claim 1 is directed toward a system, independent claim 6 is directed toward a method, and independent claim 7 is directed toward a non-transitory storage medium. Therefore, each of the independent claims 1 & 6-7 along with the corresponding dependent claims 2-4 are directed to a statutory category of invention under Step 1.
Under Step 2A, Prong 1, the claims are analyzed to determine whether one or more of the claims recites subject matter that falls within one of the following groups of abstract ideas: (1) mental processes, (2) certain methods of organizing human activity, and/or (3) mathematical concepts. In this case, the independent claims 1 & 6-7 are directed to an abstract idea without significantly more. Specifically, the claims, under their broadest reasonable interpretation cover certain mental processes. The language of independent claim 1 is used for illustration:
An information processing device comprising: a processor, the processor is configured to:
acquire a data set in which each piece of data constituting the data set includes information regarding a position, and target data to be evaluated is included in the data set; (sending and receiving data between devices is considered extra-solution activity)
estimate, based on the data set, a position value indicating a value related to the target data using an estimation model, defined as a value estimation target, based on evaluation in a predetermined task of each of data sets including mutually different data; (a person can estimate a position using positional data and utilizing pre-set thresholds. This model would be generally linking to the abstract idea as they are mentioned at a high level and thus this limitation can be done in the mind.)
decide whether to transmit the target data to an external device based on a non- transmission index that is set based on evaluation for a predetermined task by a user, wherein the decision whether to transmit the target data to the external device comprises determining whether the position value estimates any item contained in the non- transmission index; (a person can decide whether or not to transmit data & sending and receiving data between devices is considered extra-solution activity.)
for the position value being determined as exceeding an evaluation threshold derived from the data set: (The limitations below are merely calculations which can be done in the mind. )
for the position value being determined as estimating an item contained in the non-transmission index, the target data is not transmitted to the external device and unnecessary data transmission is reduced; (sending and receiving data between devices is considered extra-solution activity)
for the position value being determined as not estimating any item contained in the non-transmission index, transmit the target data to the external device; and (sending and receiving data between devices is considered extra-solution activity)
for the position value being determined as not exceeding the evaluation threshold derived from the data set, the target data is not transmitted to the external device,
wherein the data set comprises positioning system (GPS) data, electric payment data, and social networking service(SNS) data. (sending and receiving data between devices is considered extra-solution activity)
As explained above, independent claim 1 recites at least one abstract idea. The other independent claims 6 & 7, which is of similar scope to claim 1, likewise recite at least one abstract idea under Step 2A, Prong 1.
Under Step 2A, Prong 2, the claims are analyzed to determine whether the claim, as a whole, integrates the abstract idea into a practical application. As noted in the MPEP, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements such as merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application”; see at least MPEP 2106.04(d).
In this case, the mental processes judicial exception is not integrated into a practical application. For example, independent claims 1 & 6-7 recite the additional elements of the computer system, method, and non-transitory computer-readable storage medium. These limitations amount to implementing the abstract idea on a computer, add insignificant extra solution activity, and/or generally link use of the judicial exception to a particular technological environment or field of use; see at least MPEP 2106.04(d). More specifically,
An information processing device comprising: a processor, the processor is configured to:…found in independent claim(s) 1. This limitation amounts to implementing the abstract idea on a generic computer.
acquire a data set in which each piece of data constituting the data set includes information regarding a position, and target data to be evaluated is included in the data set;…found in independent claim(s) 1. This limitation adds insignificant extra solution activity.
estimate, based on the data set, a position value indicating a value related to the target data using an estimation model, defined as a value estimation target, based on evaluation in a predetermined task of each of data sets including mutually different data,;…found in independent claim(s) 1. This limitation amounts to implementing the abstract idea on a generic computer.
decide whether to transmit the target data to an external device based on a non- transmission index that is set based on evaluation for a predetermined task by a user, wherein the decision whether to transmit the target data to the external device comprises determining whether the position value estimates any item contained in the non- transmission index…found in independent claim(s) 1. This limitation amounts to implementing the abstract idea on a generic computer.
for the position value being determined as estimating an item contained in the non-transmission index, the target data is not transmitted to the external device and unnecessary data transmission is reduced…found in independent claim(s) 1. This limitation adds insignificant extra solution activity.
and for the position value being determined as not estimating any item contained in the non-transmission index, transmit the target data to the external device…found in independent claim(s) 1. This limitation adds insignificant extra solution activity.
for the position value being determined as not exceeding the evaluation threshold derived from the data set, the target data is not transmitted to the external device, wherein the data set comprises positioning system (GPS) data, electric payment data, and social networking service(SNS) data.…found in independent claim(s) 1. This limitation adds insignificant extra solution activity.
An information processing method executed by a computer, the information processing method comprising…found in independent claim(s) 6. This limitation amounts to implementing the abstract idea on a generic computer.
A non-transitory computer readable storage medium storing an information processing program causing a computer to execute: acquiring a data set in which each piece of data constituting the data set includes information regarding a position…found in independent claim 7. This limitation amounts to implementing the abstract idea on a generic computer.
Therefore, taken alone, the additional elements do not integrate the abstract idea into a practical application. Furthermore, looking at the additional limitation(s) as an ordered combination or as a whole, the limitations add nothing significant that is not already present when looking at the elements taken individually. Because the additional elements, do not integrate the abstract idea into a practical application by imposing meaningful limits on practicing the abstract idea, independent claims 1 & 6-7 are directed to an abstract idea.
Under Step 2B, the claims do not include any 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 in Step 2A, Prong Two, the additional element of limiting the use of the idea to one particular environment employs generic computer functions to execute an abstract idea and, therefore, does not add significantly more. Limiting the use of the abstract idea to a particular environment or field of use cannot provide an inventive concept.
A conclusion that an additional element is insignificant extra solution activity in Step 2A must be re-evaluated in Step 2B to determine if the element is more than what is well-understood, routine, and conventional in the field. In this case, the additional limitations of An information processing device comprising: a processor, the processor is configured to; estimate, based on the data set, a position value indicating a value related to the target data using a learning model, defined as a value estimation target, based on evaluation in a predetermined task of each of data sets including mutually different data; decide whether to transmit the target data to an external device based on a non- transmission index that is set based on evaluation for a predetermined task by a user, wherein the decision whether to transmit the target data to the external device comprises determining whether the position value estimates any item contained in the non- transmission index; An information processing method executed by a computer, the information processing method comprising; A non-transitory computer readable storage medium storing an information processing program causing a computer to execute; are well-understood, routine, and conventional activities, because the background of the instant application recites that the processor, which is communicably coupled to the computer readable medium, is conventional, and the specification does not provide any indication that the vehicle controller is anything other than a conventional computer within the vehicle. Additionally, the remaining elements have all been deemed insignificant extra solution activity by one or more Courts; see at least MPEP 2106.05(d) and MPEP 2106.05(g):
estimate, based on the data set, a position value indicating a value related to the target data using a learning model, defined as a value estimation target, based on evaluation in a predetermined task of each of data sets including mutually different data,…Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.")
decide whether to transmit the target data to an external device based on a non- transmission index that is set based on evaluation for a predetermined task by a user, wherein the decision whether to transmit the target data to the external device comprises determining whether the position value estimates any item contained in the non- transmission index…is considered well-understood, routine, and conventional activity under 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);
An information processing device comprising: a processor, the processor is configured to:…the courts have found the additional elements to be mere instructions to apply an exception, because they recite no more than an idea of a solution or outcome include: Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315, 1331, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017);
An information processing method executed by a computer, the information processing method comprising…the courts have found the additional elements to be mere instructions to apply an exception, because they recite no more than an idea of a solution or outcome include: Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315, 1331, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017);
A non-transitory computer readable storage medium storing an information processing program causing a computer to execute; …the courts have found the additional elements to be mere instructions to apply an exception, because they recite no more than an idea of a solution or outcome include: Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315, 1331, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017);
Because the claims fail to recite anything sufficient to amount to significantly more than the judicial exception, independent claims 1 & 6-7 are patent ineligible under 35 U.S.C. 101.
Dependent claims 2-4 have been given the full two-part analysis, including analyzing the additional limitations, both individually and in combination. Dependent claims 2-4, when analyzed both individually and in combination, are also patent ineligible under 35 U.S.C. § 101 based on same analysis as above. The additional limitations recited in the dependent claims fail to establish that the dependent claims are not directed to an abstract idea. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea. Accordingly, claims 2-4 are patent ineligible. Therefore, claims 1-4 & 6-7 are patent ineligible under 35 U.S.C. 101.
Examiner notes that:
Claims 2-3 include limitations on the non-transmission index which has been deemed insignificant extra-solution activity: Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)
Claim 4 includes acquire external estimation data which has been deemed insignificant extra solution activity via OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network);
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL W ANDERSON whose telephone number is (571)270-0508. The examiner can normally be reached Monday - Thursday 9am-4pm.
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Mike Anderson
Supervisor Patent Examiner
Art Unit 3693
/Mike Anderson/Supervisory Patent Examiner, Art Unit 3693