DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Application
This Communication is a Final Office Action in response to the Amendments, Remarks, Arguments filed on the 23rd day of December, 2025. Currently Claims 1-8 are pending. Claim 9-10 have been cancelled. No claims are allowed.
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 1-8 are rejected under 35 U.S.C. §101 because the claimed invention is directed to judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) with no practical application and without significantly more.
Under MPEP 2106, when considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (step 1). If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (step 2A prong 1), and if so, it must additionally be determined whether the claim is integrated into a practical application (step 2A prong 2). If an abstract idea is present in the claim without integration into a practical application, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself (step 2B).
In the instant case, claims 1-8 are directed to a system. Thus, each of the claims falls within one of the four statutory categories (step 1). However, the claims also fall within the judicial exception of an abstract idea (step 2).
Under Step 2A Prong 1, the test is to identify whether the claims are “directed to” a judicial exception. Examiner notes that the claimed invention is directed to an abstract idea in that the instant application is directed to certain methods of organizing human activity specifically commercial interactions and behaviors and managing personal behavior and/or interactions between people (see MPEP 2106.04(a)(2)(II)) and mental processes (see MPEP 2106.04(a)(2)(III).
Examiner notes that claims 1-8 recite a worker selection system that selects a worker who performs restoration work on a device that failed, the system comprising: a manufacturer management server that receives a failure information including information about a content of the failure and information about an identification of the device from the device via a network; and a worker selection server that receives a worker selection request from the manufacturer management server via the network, wherein the device includes a failure analysis unit that receives sensor data from various sensors about the failure in the device; analyzes the sensor data to acquire an error code corresponding to the failure; and generates failure information about the content of the failure, wherein the error code is linked to a flag indicating whether the failure can be handled by the selected worker, and a flag indicating whether remote support is required, based on the failure information, the manufacturer management server transmits the worker selection request including a model number, a serial number of the device, the information about the content of the failure, a failure occurrence date and time, a location where the device is installed, and a failure restoration condition to the worker selection server, the worker selection server comprises: a storage unit that includes a worker information storage unit and an area information storage unit; and a controller that controls the worker selection server, wherein the worker information storage unit stores worker information including information about a failure handling ability of the worker and information about a location of the worker, and the area information storage unit stores an area information about a setting area that includes the location of the device having a failure and changes depending on the setting, the controller selects, based on the worker information and the area information, the worker who has an ability to handle the failure and is present in the setting area as a candidate to be dispatched, the controller creates a list of candidates by sorting workers in an estimated time order to arrive at the device, the controller transmits information of a worker selected by a user to a device of a worker in charge, and any worker positioned outside of the setting area is not selected regardless of a distance from the any worker to the location of the device, in a case where the error code indicates that the failure cannot be handled by the selected worker and the remote support is required, augmented reality is generated to provide the selected worker information necessary for failure restoration work, and the steps involved human judgments, observations and evaluations that can be practically or reasonably performed in the human mind, the claim recites an abstract idea consistent with the “mental process” grouping set forth in the see MPEP 2106.04(a)(2)(III).
Alternatively, Examiner notes that claims 1-8 recite a worker selection system that selects a worker who performs restoration work on a device that failed, the system comprising: a manufacturer management server that receives a failure information including information about a content of the failure and information about an identification of the device from the device via a network; and a worker selection server that receives a worker selection request from the manufacturer management server via the network, wherein the device includes a failure analysis unit that receives sensor data from various sensors about the failure in the device; analyzes the sensor data to acquire an error code corresponding to the failure; and generates failure information about the content of the failure, wherein the error code is linked to a flag indicating whether the failure can be handled by the selected worker, and a flag indicating whether remote support is required, based on the failure information, the manufacturer management server transmits the worker selection request including a model number, a serial number of the device, the information about the content of the failure, a failure occurrence date and time, a location where the device is installed, and a failure restoration condition to the worker selection server, the worker selection server comprises: a storage unit that includes a worker information storage unit and an area information storage unit; and a controller that controls the worker selection server, wherein the worker information storage unit stores worker information including information about a failure handling ability of the worker and information about a location of the worker, and the area information storage unit stores an area information about a setting area that includes the location of the device having a failure and changes depending on the setting, the controller selects, based on the worker information and the area information, the worker who has an ability to handle the failure and is present in the setting area as a candidate to be dispatched, the controller creates a list of candidates by sorting workers in an estimated time order to arrive at the device, the controller transmits information of a worker selected by a user to a device of a worker in charge, and any worker positioned outside of the setting area is not selected regardless of a distance from the any worker to the location of the device, in a case where the error code indicates that the failure cannot be handled by the selected worker and the remote support is required, augmented reality is generated to provide the selected worker information necessary for failure restoration work, and is similar to the abstract -idea identified in MPEP 2106.04(a)(2)(II) in grouping “II” in that the claims recite certain methods of organizing human activity such as managing interactions or personal behaviors. The limitations suggest a process similar to standard practice assigned needed jobs with available and able workers. This is common practice when instructing users to complete available jobs or tasks when they are needed. Because the limitations above closely follow the steps of managing interactions between people, or personal behaviors, and the steps of the claims involve organizing human activity, the claim recites an abstract idea consistent with the “organizing human activity” grouping set forth in the see MPEP 2106.04(a)(2)(II).
The conclusion that the claim recites an abstract idea within the groupings of the MPEP 2106.04(a)(2) remains grounded in the broadest reasonable interpretation consistent with the description of the invention in the specification. For example, [App. Spec 2], “a worker selection system that selects a worker who performs restoration work on a device that failed”. Accordingly, the Examiner submits claims 1-8, recite an abstract idea based on the language identified in claims 1-8, and the abstract ideas previously identified based on that language that remains consistent with the groupings of Step 2A Prong 1 of the MPEP 2106.04(a)(1).
If the claims are directed toward the judicial exception of an abstract idea, it must then be determined under Step 2A Prong 2 whether the judicial exception is integrated into a practical application. Examiner notes that considerations under Step 2A Prong 2 comprise most the consideration previously evaluated in the context of Step 2B. The Examiner submits that the considerations discussed previously determined that the claim does not recite “significantly more” at Step 2B would be evaluated the same under Step 2A Prong 1 and result in the determination that the claim does not integrate the abstract idea into a practical application.
The instant application fails to integrate the judicial exception into a practical application because the instant application merely recites words “apply it” (or an equivalent) with the judicial exception or merely includes instructions to implement an abstract idea. The instant application is directed to a method instructing the reader to implement the identified method of organizing human activity of legal interactions and risk management (i.e., managing personal behavior or relationships or interactions between people) on generically claimed computer structure. For instance, the additional elements or combination of elements other than the abstract idea itself include the elements such as “server”, “processor”, “device”, and “controller” recited at a high level of generality. These elements do not themselves amount to an improvement to the interface or computer, to a technology or another technical field. This is consistent with Applicant’s disclosure which states that the computing device “The manufacturer management server 10 is a computer terminal including a controller 11, a display unit 12, an input unit 13, and a storage unit 14. The manufacturer management server 10 is, for example, a computer terminal owned and managed by a manufacturer A of the recording device 1.”. (App. Spec. ¶ 31).
Accordingly, the claimed “system” read in light of the specification employs any wide range of possible devices comprising a number of components that are “well-known” and included in an indiscriminate “server”, “processor”, “device”, and “controller” (e.g., processing device, modules). Thus, the claimed structure amounts to appending generic computer elements to abstract idea comprising the body of the claim. The computing elements are only involved at a general, high level, and do not have the particular role within any of the functions but to be an computer-implemented method using a generically claimed “processor” and “memory” and even basic, generic recitations that imply use of the computer such as storing information via servers would add little if anything to the abstract idea.
Similarly, reciting the abstract idea as software functions used to program a generic computer is not significant or meaningful: generic computers are programmed with software to perform various functions every day. A programmed generic computer is not a particular machine and by itself does not amount to an inventive concept because, as discussed in MPEP 2106.05(a), adding the words “apply it” (or an equivalent) with the judicial exception, or more instructions to implement an abstract idea on a computer, as discussed in Alice, 134 S. Ct. at 2360, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)), is not enough to integrate the exception into a practical application. Further, it is not relevant that a human may perform a task differently from a computer. It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What matters is the application, “stating an abstract idea while adding the words ‘apply it with a computer’” will not render an abstract idea non-abstract. Tranxition v. Lenovo, Nos. 2015-1907, -1941, -1958 (Fed. Cir. Nov. 16, 2016), slip op. at 7-8.
Here, the instructions entirely comprise the abstract idea, leaving little if any aspects of the claim for further consideration under Step 2A Prong 2. In short, the role of the generic computing elements recited in claims 1-8, is the same as the role of the computer in the claims considered by the Supreme Court in Alice, and the claim as whole amounts merely to an instruction to apply the abstract idea on the generic computerised system. Therefore, the claims have failed to integrate a practical application (2106.04(d)). Under the MPEP 2106.05, this supports the conclusion that the claim is directed to an abstract idea, and the analysis proceeds to Step 2B.
While many considerations in Step 2A need not be reevaluated in Step 2B because the outcome will be the same. Here, on the basis of the additional elements other than the abstract idea, considered individually and in combination as discussed above, the Examiner respectfully submits that the claims 1-8, does not contain any additional elements that individually or as an ordered combination amount to an inventive concept and the claims are ineligible.
With respect to the dependent claims do not recite anything that is found to render the abstract idea as being transformed into a patent eligible invention. The dependent claims are merely reciting further embellishments of the abstract idea and do not claim anything that amounts to significantly more than the abstract idea itself.
Claims 2-8 are directed to further embellishments of the abstract idea in that they are directed to aspects of the central theme of the abstract idea identified above, as well as being directed to data processing and transmission which the courts have recognized as insignificant extra-solution activities (see at least M.P.E.P. 2106.05(g)). Data transmission is one of the most basic and fundamental uses there are for a generic computing device is not sufficient to amount to significantly more. The examiner takes the position that simply appending the judicial exception with such a well understood step of data transmission is not going to amount to significantly more than the abstract idea.
Therefore, since there are no limitations in the claim that transform the abstract idea into a patent eligible application such that the claim amounts to significantly more than the abstract idea itself, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. See MPEP 2106.
Response to Arguments
Applicant's arguments filed with respect to the rejection of the claims under 35 USC 101 have been fully considered but they are not persuasive. Applicant submits that the amendments amount to rendering the claims into patentable subject matter. Examiner respectfully disagrees.
The phrase "methods of organizing human activity" is used to describe concepts relating to: fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions). (MPEP 2106.04(a)(2)(II)).
The sub-grouping "managing personal behavior or relationships or interactions between people" include social activities, teaching, and following rules or instructions. Other examples of managing personal behavior recited in a claim include: i. filtering content, BASCOM Global Internet v. AT&T Mobility, LLC, 827 F.3d 1341, 1345-46, 119 USPQ2d 1236, 1239 (Fed. Cir. 2016) (finding that filtering content was an abstract idea under step 2A, but reversing an invalidity judgment of ineligibility due to an inadequate step 2B analysis);ii. considering historical usage information while inputting data, BSG Tech. LLC v. Buyseasons, Inc., 899 F.3d 1281, 1286, 127 USPQ2d 1688, 1691 (Fed. Cir. 2018) and Other examples of following rules or instructions recited in a claim include: ii. a series of instructions of how to hedge risk, Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1004 (2010). (MPEP 2106.04(a)(2)(II)(C)).
Alternatively, Examiner notes that claims 1-8 recite a worker selection system that selects a worker who performs restoration work on a device that failed, the system comprising: a manufacturer management server that receives a failure information including information about a content of the failure and information about an identification of the device from the device via a network; and a worker selection server that receives a worker selection request from the manufacturer management server via the network, wherein the device includes a failure analysis unit that receives sensor data from various sensors about the failure in the device; analyzes the sensor data to acquire an error code corresponding to the failure; and generates failure information about the content of the failure, wherein the error code is linked to a flag indicating whether the failure can be handled by the selected worker, and a flag indicating whether remote support is required, based on the failure information, the manufacturer management server transmits the worker selection request including a model number, a serial number of the device, the information about the content of the failure, a failure occurrence date and time, a location where the device is installed, and a failure restoration condition to the worker selection server, the worker selection server comprises: a storage unit that includes a worker information storage unit and an area information storage unit; and a controller that controls the worker selection server, wherein the worker information storage unit stores worker information including information about a failure handling ability of the worker and information about a location of the worker, and the area information storage unit stores an area information about a setting area that includes the location of the device having a failure and changes depending on the setting, the controller selects, based on the worker information and the area information, the worker who has an ability to handle the failure and is present in the setting area as a candidate to be dispatched, the controller creates a list of candidates by sorting workers in an estimated time order to arrive at the device, the controller transmits information of a worker selected by a user to a device of a worker in charge, and any worker positioned outside of the setting area is not selected regardless of a distance from the any worker to the location of the device, in a case where the error code indicates that the failure cannot be handled by the selected worker and the remote support is required, augmented reality is generated to provide the selected worker information necessary for failure restoration work, and is similar to the abstract -idea identified in MPEP 2106.04(a)(2)(II) in grouping “II” in that the claims recite certain methods of organizing human activity such as managing interactions or personal behaviors. The limitations suggest a process similar to standard practice assigned needed jobs with available and able workers. This is common practice when instructing users to complete available jobs or tasks when they are needed. Because the limitations above closely follow the steps of managing interactions between people, or personal behaviors, and the steps of the claims involve organizing human activity, the claim recites an abstract idea consistent with the “organizing human activity” grouping set forth in the see MPEP 2106.04(a)(2)(II).
Examiner notes that the claimed invention is more similar to the identified abstract ideas within BASCOM, BSG Tech. LLC, and Bilski.
Furthermore, the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). (MPEP 2106.04(a)(2)(III))
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer"). An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53. (MPEP 2106.04(a)(2)(III)(C)).
Examiner notes that claims 1-8 recite a worker selection system that selects a worker who performs restoration work on a device that failed, the system comprising: a manufacturer management server that receives a failure information including information about a content of the failure and information about an identification of the device from the device via a network; and a worker selection server that receives a worker selection request from the manufacturer management server via the network, wherein the device includes a failure analysis unit that receives sensor data from various sensors about the failure in the device; analyzes the sensor data to acquire an error code corresponding to the failure; and generates failure information about the content of the failure, wherein the error code is linked to a flag indicating whether the failure can be handled by the selected worker, and a flag indicating whether remote support is required, based on the failure information, the manufacturer management server transmits the worker selection request including a model number, a serial number of the device, the information about the content of the failure, a failure occurrence date and time, a location where the device is installed, and a failure restoration condition to the worker selection server, the worker selection server comprises: a storage unit that includes a worker information storage unit and an area information storage unit; and a controller that controls the worker selection server, wherein the worker information storage unit stores worker information including information about a failure handling ability of the worker and information about a location of the worker, and the area information storage unit stores an area information about a setting area that includes the location of the device having a failure and changes depending on the setting, the controller selects, based on the worker information and the area information, the worker who has an ability to handle the failure and is present in the setting area as a candidate to be dispatched, the controller creates a list of candidates by sorting workers in an estimated time order to arrive at the device, the controller transmits information of a worker selected by a user to a device of a worker in charge, and any worker positioned outside of the setting area is not selected regardless of a distance from the any worker to the location of the device, in a case where the error code indicates that the failure cannot be handled by the selected worker and the remote support is required, augmented reality is generated to provide the selected worker information necessary for failure restoration work, and the steps involved human judgments, observations and evaluations that can be practically or reasonably performed in the human mind, the claim recites an abstract idea consistent with the “mental process” grouping set forth in the see MPEP 2106.04(a)(2)(III).
Examiner notes that the claimed invention amounts to a mental process in that the system is collecting sensor and worker information, analyzing or processing the information to determine which worker to assign, and the subsequently performing the assignment based on the determination which is similar to the abstract ideas identified in Electric Power Group and Classen.
Computer Based Language
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without 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. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
An example of a case identifying a mental process performed on a generic computer as an abstract idea is Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018). In this case, the Federal Circuit relied upon the specification in explaining that the claimed steps of voting, verifying the vote, and submitting the vote for tabulation are "human cognitive actions" that humans have performed for hundreds of years. The claims therefore recited an abstract idea, despite the fact that the claimed voting steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were "the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries." 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
Both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes. For example, in Mortgage Grader, the patentee claimed a computer-implemented system and a method for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The Federal Circuit determined that both the computer-implemented system and method claims were directed to "anonymous loan shopping", which was an abstract idea because it could be "performed by humans without a computer." 811 F.3d. at 1318, 1324-25, 117 USPQ2d at 1695, 1699-1700. See also FairWarning IP, 839 F.3d at 1092, 120 USPQ2d at 1294 (identifying both system and process claims for detecting improper access of a patient's protected health information in a health-care system computer environment as directed to abstract idea of detecting fraud); Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1345, 113 USPQ2d 1354, 1356 (Fed. Cir. 2014) (system and method claims of inputting information from a hard copy document into a computer program). Accordingly, the phrase "mental processes" should be understood as referring to the type of abstract idea, and not to the statutory category of the claim.
Examples of product claims reciting mental processes include: An application program interface for extracting and processing information from a diversity of types of hard copy documents – Content Extraction, 776 F.3d at 1345, 113 USPQ2d at 1356; and A computer readable medium containing program instructions for detecting fraud – CyberSource, 654 F.3d at 1368 n. 1, 99 USPQ2d at 1692 n.1.
Examiner notes that the claimed in invention is similar to the Voter Verified, Inc., FairWarning, Mortgage Grader, Berkheimer, Content Extraction and CyberSource applications wherein the court identified computer system or “server”, “processor”, “device”, “sensors”, and “controller” is merely server as a generic computer, computing environment, or tool to perform the mental process.
The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72, 101 USPQ2d 1961, 1966 (2012)).
Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Because this approach considers all claim elements, the Supreme Court has noted that "it is consistent with the general rule that patent claims ‘must be considered as a whole.’" Alice Corp., 573 U.S. at 218 n.3, 110 USPQ2d at 1981 (quoting Diamond v. Diehr, 450 U.S. 175, 188, 209 USPQ 1, 8-9 (1981)). Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim. See, e.g., Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed. Cir. 2016) (process reciting combination of individually well-known freezing and thawing steps was "far from routine and conventional" and thus eligible); BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional).
Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)); and Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)).
It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data using image codes assigned to particular facial features held ineligible because the process did not require a computer).
Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016), iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential); vii. Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality," BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018).
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
Examples that the courts have indicated may not be sufficient to show an improvement to technology include: i. A commonplace business method being applied on a general purpose computer, Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
The claimed invention is more similar to the computing elements and use found in Alice, and Versata Dev. Group, Inc.
The claims stand rejected.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/Michael Young/Examiner, Art Unit 3626