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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/12/2026 has been entered.
Response to Arguments
101 Rejection: Applicant's arguments filed 08/12/2026 have been fully considered but they are not persuasive. Applicant argues the amended claims do not recite an abstract idea. Examiner disagrees because the claim limitations “comparing, for each such element, an identifier of the element against the monitoring item identifiers of the plurality of entries”, “generates the second calculation formula” are abstract ideas, and “calculate a data size from the start address and the last address”.
103 Rejection: Applicant’s arguments, see remarks, filed 08/12/2026, with respect to claims 1-9, 12-14 have been fully considered and are persuasive. The 103 rejection of claims 1-9, 12-14 has been withdrawn.
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 1-9, 12-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The following is Examiner's analysis of the claimed invention under the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG)
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. Claims 1 recites a machine (device), claim 2 recites a machine (device), claim 12 recites a manufacture (non-transitory computer readable storage medium), claim 13 recites a manufacture (non-transitory computer readable storage medium).
STEP2A Prong one: Does the Claim Recite an Abstract Idea, Law of Nature, or Natural Phenomenon? Yes. Claim 1 (and similar claim 12) recites “the operation information having an association of a second calculation formula obtained by modifying the first calculation formula using the monitoring item of the project data, with a label attached to a result of operation of the second calculation formula, wherein the label includes identifier information which identifies a record in the operation information” which falls within the mathematical concepts grouping of abstract ideas. The recitation of a “second calculation formula” is the recitation of a mathematical algorithm; therefore, the claim recites an abstract idea.
Claim 1 (and similar claim 12) recites “determine whether all monitoring items corresponding to elements forming the first calculation formula are included in the project data by comparing, for each such element, an identifier of the element against the monitoring item identifiers of the plurality of entries” which falls within the mental processes grouping of abstract ideas. The step of “determining items are included in project data” covers the performance of the limitation in a human mind; therefore, the claim recites an abstract idea.
Claim 1 (and similar claim 12) recites “wherein, in a case where all of the monitoring items corresponding to the elements forming the first calculation formula are included in the project data, the device profile generation circuitry automatically generates and displays the second calculation formula on a calculation formula setting screen, and wherein, in a case where some of the monitoring items are not included in the project data, the device profile generation circuitry does not generate the second calculation formula corresponding to the first calculation formula” which falls within the mathematical concepts grouping of abstract ideas. The recitation of a “second calculation formula” is a mathematical algorithm. Accordingly, the claimed invention is directed to a judicial exception (abstract idea).
Claim 2 recites “wherein the device profile generation circuitry is configured to detect a start address and a last address of the device for which the monitoring items grouped are retained, calculate a data size from the start address and the last address” which falls within the mathematical concepts grouping of abstract ideas. The step of calculating data size is a mathematical calculation. Accordingly, the claimed invention is directed to a judicial exception (abstract idea).
Claim 13 recites “wherein the procedure of generating a device profile comprises detecting a start address and a last address of the device for which the monitoring items grouped are retained, calculating a data size from the start address and the last address” which falls within the mathematical concepts grouping of abstract ideas. Accordingly, the claimed invention is directed to a judicial exception (abstract idea).
STEP2A Prong two: Does the Claim Recite Additional Elements That Integrate the Judicial Exception into A Practical Application? No. Claim 1 recites “a design support device comprising: a project memory to store project data including device information that is information about a device and monitoring information that is information about a monitoring item and is linked to the device information” which amounts to merely including instructions to implement an abstract idea on a computer.
Claim 12 recites “a non-transitory computer readable storage medium in which a design support program is stored, the design support program being configured to cause a computer to execute: a procedure of storing project data including device information that is information about a device and monitoring information that is information about a monitoring item and is linked to the device information” which amounts to merely including instructions to implement an abstract idea on a computer.
Claim 1 (and similar claim 12) recites “the project data having information necessary to control the device, stored therein; a specification memory to store, therein, specification data that is data in which a specification serving as a design guideline of a device profile is defined” which amounts to merely including instructions to implement an abstract idea on a computer.
Claim 1 (and similar claim 12) recites “and includes an operated monitoring item name defined by a first calculation formula; and device profile generation circuitry to generate a device profile including device- monitoring item information and operation information on the basis of the project data, the device-monitoring item information having a description of the monitoring information according to a common format that is not dependent on the device” which is mere necessary data gathering because all uses of the recited judicial exception require such data gathering or data output.
Claim 2 recites “a design support device comprising: a project memory to store project data including device information that is information about a device, monitoring information that is information about a monitoring item and is linked to the device information, wherein the project data further includes information used to group the monitoring items, and a communication system representing a communication protocol for acquiring the monitoring item, the project data having information necessary to control the device, stored therein” which amounts to merely including instructions to implement the abstract idea on a computer.
Claim 2 recites “and device profile generation circuitry to generate a device profile including device- monitoring item information and protocol information on the basis of the project data, the device-monitoring item information having a description of the monitoring information according to a common format that is not dependent on the device, and the protocol information specifying a method of acquiring data of the monitoring item of the device-monitoring item information by the communication system, and wherein the common format is a file format including at least one of text, Comma- Separated Values (CSV), or eXtensible Markup Language (XML)” which is mere necessary data gathering and outputting because all uses of the recited judicial exception require such data gathering or data output.
Claim 13 recites “a procedure of storing project data including device information that is information about a device, monitoring information that is information about a monitoring item and is linked to the device information, wherein the project data further includes information used to group the monitoring items, and a communication system representing a communication protocol for acquiring the monitoring item, the project data having information necessary to control the device, stored therein; and a procedure of generating a device profile including device-monitoring item information and protocol information on the basis of the project data, the device-monitoring item information having a description of the monitoring information according to a common format that is not dependent on the device, and the protocol information specifying a method of acquiring data of the monitoring item of the device-monitoring item information by the communication system” which is mere necessary data gathering and outputting because all uses of the recited judicial exception require such data gathering or data output.
Claim 2 (and similar claim 13) recites “generate an instruction to acquire the monitoring items grouped at a time, with use of the start address and the data size” which is insignificant extra-solution activity tangentially related to the invention. Adding a final step of acquiring items does not add a meaningful limitation to the abstract ideas.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined merely including instructions to implement the abstract idea on a computer does not qualify as “significantly more” when recited in a claim with a judicial exception (See Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984).
The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Claim 2 (and similar claim 13) recites “generate an instruction to acquire the monitoring items grouped at a time, with use of the start address and the data size” which is retrieving information from memory. The courts have determined storing and retrieving information in memory is well‐understood, routine, and conventional functionality when claimed in a merely generic manner (see Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015)).
Taken alone, the additional elements of the dependent claims do not amount to significantly
more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an
ordered combination adds nothing that is not already present when looking at the elements taken
individually. There is no indication that the combination of elements improves the functioning of a
computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
For the reasons above, claims 1, 2, 12, and 13 are rejected as being directed to nonpatentable
subject matter under §101. This rejection applies equally to the dependent claims. The additional limitations of the dependent claims are addressed briefly below:
Regarding claim 3
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the project data further includes a communication system representing a communication protocol for acquiring the monitoring item, and the device profile generation circuitry generates the device profile further including protocol information that specifies a method of acquiring data of the monitoring item in the device-monitoring item information by the communication system” which amounts to merely including instructions to implement an abstract idea on a computer.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined merely including instructions to implement the abstract idea on a computer does not qualify as “significantly more” when recited in a claim with a judicial exception (See Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984).
Regarding claim 4
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the protocol information further includes a method of acquiring a result of operation of the second calculation formula in the operation information” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 5
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (device).
STEP2A Prong one: Does the Claim Recite an Abstract Idea, Law of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does the Claim Recite Additional Elements That Integrate the Judicial Exception into A Practical Application? No. The claim recites “wherein the device profile generation circuitry generates the device profile including the protocol information that specifies a method of acquiring data of one of the monitoring items in the device-monitoring item information” which is mere necessary data gathering and outputting.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 6
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (device).
STEP2A Prong one: Does the Claim Recite an Abstract Idea, Law of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does the Claim Recite Additional Elements That Integrate the Judicial Exception into A Practical Application? No. The claim recites “wherein the project data further includes information used to group the monitoring items, and the device profile generation circuitry generates the device profile including the protocol information that specifies a method of collectively acquiring data of a plurality of the monitoring items grouped in the device-monitoring item information” which is mere necessary data gathering and outputting.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 7
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “the calculation formula setting screen including a calculation formula display area in which a second calculation formula obtained by modifying the first calculation formula using the monitoring item in the project data is displayed, a label name setting field in which a label attached to a result of operation of the second calculation formula is set” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the device profile generation circuitry displays a calculation formula setting screen on a display and generates the operation information according to contents set on the calculation formula setting screen; and a storage area setting field in which a storage area storing the result of operation of the second calculation formula is set” which amounts to merely including instructions to implement an abstract idea on a computer.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 8
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the device profile generation circuitry checks whether a monitoring item corresponding to an element constituting the first calculation formula is present in the project data, and displays the first calculation formula for which all the monitoring items corresponding to elements constituting the first calculation formula are present in the project data as the second calculation formula in the calculation formula display area” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 9
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. Claim 9 recites “network analysis circuitry to acquire route information of the device connected via a network; and a project data reader to communicate with the device using the route information and read project data held by the device” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 14
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (device).
STEP2A Prong one: Does the Claim Recite an Abstract Idea, Law of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does the Claim Recite Additional Elements That Integrate the Judicial Exception into A Practical Application? No. The claim recites “network analysis circuitry to acquire route information of the device connected via a network; and a project data reader to communicate with the device using the route information and read project data held by the device” which amounts to merely including instructions to implement the abstract idea on a computer.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined merely including instructions to implement the abstract idea on a computer does not qualify as “significantly more” when recited in a claim with a judicial exception (See Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984).
Taken alone, the additional elements of the dependent claims do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brooks Hale whose telephone number is 571-272-0160. The examiner can normally be reached 9am to 5pm est.
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/B.T.H./Examiner, Art Unit 2166
/SANJIV SHAH/Supervisory Patent Examiner, Art Unit 2166
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