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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/17/2025 has been entered.
Status of the Claims
Claims 1, 19-20 have been amended, and claims 15 and 16 have been canceled. Claims 1, 3-6, 9-14, 17-20 are pending.
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, 3-6, 9-14, 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims at a high level recite image enlargement for different files as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components.
Step 1: Does the Claim Fall within a Statutory Category?
Yes. Claims 1, 3-6 and 9-20 recite a method and a system and therefore, are directed to the statutory class of machine and a product.
The USPTO Guidance recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into a practical application (Step 2A, Prong 2). MPEP §§ 2106.04(a), (d).
Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look in Step 2B to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field; or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP § 2106.05(d).
Step 2A, Prong One: Is a Judicial Exception Recited?
First, determine whether the claims recite any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity, or mental processes). MPEP § 2106.04(a).
Claim 1 recites -
▪ cause a display to display a candidate screen that receives an operation performed by a user for specifying a first file from a file candidate (A generic computer functions of data display processing that are well-understood, routine, and conventional activities previously known to the industry. Generic computer implementation does not provide significantly more than the abstract idea);
▪ acquire file information serving as information about a-the first file specified by the user in response to the operation performed by the user for specifying the first file being received on the candidate screen (A generic computer functions of receiving and processing data that are well-understood, routine, and conventional activities previously known to the industry. Generic computer implementation does not provide significantly more than the abstract idea);
▪ cause the display, in response to user selection of a file image displayed on the display on which the candidate screen is not being displayed, to display an enlarged image corresponding to the file image, the file image being an image corresponding to a second file different from the first file (A generic computer functions of data display and analysis that are well-understood, routine, and conventional activities previously known to the industry. Generic computer implementation does not provide significantly more than the abstract idea)
▪ the enlarged image having a display size larger than a display size of the file image (is an abstract idea of “a mental process” because it recites a process that can be performed in the human mind (i.e., observation, determination, evaluation, judgment, and opinion. Here, an additional logical reasoning to determine a size of an image); and
▪ cause the display to display a corresponding image corresponding to the file information about the first file simultaneously with display of the enlarged image without an additional operation by the user (A generic computer functions of data display and analysis that are well-understood, routine, and conventional activities previously known to the industry. Generic computer implementation does not provide significantly more than the abstract idea).
These limitations, based on their broadest reasonable interpretation, recite a mental process, i.e. a judicial exception. In particular, the method of claim 1 recites selecting different data and corresponding larger image and displaying the larger image with other data. Therefore, claim 1 as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, except for “a processor” language, “acquiring” in the context of this claim encompasses the user selecting a small image and determining a larger image to display corresponding to the small image. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. For these reasons, the independent claim 1, as well as independents claims 19 and 20, which include limitations commensurate in scope with claim 1, recite a judicial exception.
A method, like the claimed method, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. See In re Meyer, 688 F.2d 789, 795—96 (CCPA 1982), which held that “a mental process that a neurologist should follow” when testing a patient for nervous system malfunctions was not patentable.
Accordingly, the claims recite an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application?
Next determine whether the claims recite additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)-(c), (e)-(h)). To integrate the exception into a practical application, the additional claim elements must, for example, improve the functioning of a computer or any other technology or technical field (see MPEP § 2106.05(a)), apply the judicial exception with a particular machine (see MPEP § 2106.05(b)), or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP § 2106.05(e)).
The term “additional elements” for claim features, limitations, or steps that the claim recites beyond the identified judicial exception.
Additional elements:
▪ a candidate screen and the display to display a corresponding image (Adding insignificant extra-solution activity to the judicial exception - see MPEP § 2106.05(g));
Claim 1 recites the additional elements of “an information processing system comprising: a processor”, claim 19 recites “a non-transitory computer readable medium. Claim 20 does not comprise any additional elements. However, claims do not recite any improvements to these additional elements, nor does the claims recite any particularly programmed or configured computer system, device, or machine learning. Rather, the additional elements in claim 1 serve merely to automate the abstract idea. See Int’l Bus. Machs. Corp. v. Zillow Group, Inc., 50 F. 4" 1371, 1382 (Fed. Cir. 2022) (“[A] patent that ‘automate[s] “pen and paper methodologies” to conserve human resources and minimize errors’ is a ‘quintessential “do it on a computer” patent’ directed to an abstract idea.”) (quoting Univ. of Fla. Rsch. Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019)). Therefore, none of these recited additional elements, whether considered individually or in combination, integrates the judicial exception into a practical application.
The additional elements listed above that relate to computing components are recited at a high level of generality (i.e., as generic components performing generic computer functions such as communicating and processing known data) such that they amount to no more than mere instructions to apply the exception using generic computing components. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Additionally, the claims do not purport to improve the functioning of the computer itself. There is no technological problem that the claimed invention solves. Rather, the computer system is invoked merely as a tool. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, these claims are directed to an abstract idea.
For these reasons, independent claim 1, as well as independent claims 20 and 19, which include similar additional elements as claim 1, are directed to an abstract idea.
Step 2B: Does the Claim Provide an Inventive Concept?
Next, determine whether the claims recite an “inventive concept” that “must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer.” BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016); see MPEP § 2106.05(d). There must be more than “computer functions [that] are “well-understood, routine, conventional activit[ies]’ previously known to the industry.” Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 225 (2014) (second alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)); see MPEP § 2106.05(d).
No “inventive concept” sufficient to transform the abstract method of organizing human activity into a patent-eligible application. See MPEP § 2106.05. Rather, the additional elements identified above are merely well-understood, conventional computer components, as confirmed by the Specification. See MPEP § 2106.05(d)(1). For example, the Specification refers to the additional elements in generic terms.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements relating to computing components amount to no more than applying the exception using a generic computing components. Mere instructions to apply an exception using a generic computing component cannot provide an inventive concept. Furthermore, the broadest reasonable interpretation of the claimed computer components (i.e., additional elements) includes any generic computing components that are capable of being programmed to communicate and process known data.
Additionally, the computer components are used for performing insignificant extra-solution activity and well understood, routine, and conventional functions. For example, the claimed processor and the medium merely communicates and processes known data. Activities such as these are insignificant extra-solution activity and, therefore, well understood, routine, and conventional. See MPEP 2106.05(d); see also, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d at 1363, 115 USPQ2d at 1092-93 (Presenting offers to potential customers and gathering statistics generated based on the testing about how potential customers responded to the offers; the statistics are then used to calculate an optimized price); CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (Obtaining information about transactions using the Internet to verify credit card transactions); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d at 715, 112 USPQ2d at 1754 (Consulting and updating an activity log); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) (Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016) (Recording a customer’s order); Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017) (Identifying undeliverable mail items, decoding data on those mail items, and creating output data); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015) (Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price). Furthermore, limitations such as integrating account details are well-understood, routine, and conventional activity. See Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log).
Independent system claim 1, 20 and 19 contain the identified abstract ideas, with the additional elements of a processor, hardware and the media, which is a generic computer component, and thus not significantly more for the same reasons and rationale above. Accordingly, independent claims 1, 19 and 20 are patent ineligible because they are directed to an abstract idea that does not recite an inventive concept that amounts to significantly more than the abstract idea.
Dependent claims 3-6, 9-14, 17-18 further describe the abstract idea. The additional elements of the dependent claims fail to integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea. Thus, as the dependent claims remain directed to a judicial exception, and as the additional elements of the claims do not amount to significantly more, the dependent claims are not patent eligible. Dependent claims 3-6, 9-14, 17-18 do not recite additional limitations that demonstrate integration of the abstract idea into a practical application or an inventive concept that amounts to significantly more than the abstract idea. Rather, the dependent claims simply recite further details of the abstract idea. The dependent claims are thus, also patent ineligible for the reasons discussed above. Therefore, the Office finds no improvements to another technology or field, no improvements to the function of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, based on the two-part Alice Corp. analysis, there are no limitations in any of the claims that transform the exception (i.e., the abstract idea) into a patent eligible application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-6, 9-14, 17-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
◊ Independent claims recite limitation -
“cause the display to display a corresponding image corresponding to the file information about the first file simultaneously with display of the enlarged image without an additional operation by the user.”
This limitation is not supported by the specification as originally filed. Paragraph [0148] (published version) instead teaches - “corresponding image 370 is to be displayed when a command for displaying the enlarged image 360 is given by the user, the corresponding image 370 may be displayed when the user performs a specific operation instead of giving the command for displaying the enlarged image 360.”
Therefore, -
- image 370 is to be displayed when a command for displaying the enlarged image 360 is given by the user
- the corresponding image 370 may be displayed when the user performs a specific operation instead of giving the command for displaying the enlarged image 360.
Displaying a corresponding image when a user performs an operation, instead of command, is not analogous to the claimed limitation “without an additional operation by the user.” Moreover, the specification actually requires a user to perform an operation or a command in order for the corresponding image to be displayed.
Thus, there is also no teaching of the “cause the display to display a corresponding image corresponding to the file information about the first file simultaneously with display of the enlarged image without an additional operation by the user.”
◊ Further, the limitations “without an additional operation by the user” and “a file image displayed on the display on which the candidate screen is not being displayed” are negative limitations.
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ( [the] specification, having described the whole, necessarily described the part remaining. ). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff d mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. Note that a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). See MPEP 2163 - 2163.07(b) for a discussion of the written description requirement of 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph.
The dependent claims further carry the same deficiency and likewise rejected.
Claim Construction
Independent claims 1, 19 and 20 are written in a somewhat broad, repetitive, unclear manner. Thus, each limitation is being interpreted on their merits in view of a broadest reasonable interpretation as follows -
(1) cause a display to display a candidate screen that receives an operation performed by a user for specifying a first file from a file candidate (It is not clear of what functionality is being required by citation of the “candidate screen” and “a file candidate” and how it differs from the display itself and the first file. Thus, for the purpose of examination, the limitation is interpreted as – a user specifies file on a screen, wherein specifying a first file is allowed to be a search, selection, mouse over etc.);
(2) acquire file information serving as information about the first file specified by the user in response to the operation performed by the user for specifying the first file being received on the candidate screen (Interpreted as – acquire information for the first file, which allowed to be anything – text, metadata, name, etc.);
(3) cause the display, in response to user selection of a file image displayed on the display on which the candidate screen is not being displayed, to display an enlarged image corresponding to the file image (First, “in response to user selection of a file” should be changed to “in response to the user selection of a file”. Otherwise it is not clear if there are multiple, different users making such selections. Thus, the limitation (3) is unrelated to the limitations (1) and (2). Thus, is interpreted as – some different user selects some file image, which allowed to be an icon of a file, which by the selection opens a file. I.e. each file typically have a small image icon for a file type – i.e.
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and clicking on the file image (icon) opens a larger image);
(4) the file image being an image corresponding to a second file different from the first file (It would be burdensome to determine any relationships between first and second file, as limitations are not related in any way, except for the term “display”);
(5) the enlarged image having a display size larger than a display size of the file image (Obvious, repetitive functionality, already required by the term “enlarged”. Also broadly reads on selecting a file in a computer folder).
(6) cause the display to display a corresponding image corresponding (370) to the file information about the first file simultaneously with display of the enlarged image (360) without an additional operation by the user (as shown in Figures 7A-B). The enlarged image (360) “associated with the selected icon 310S serving as a display source”, which corresponds to a PDF1 (360), which is first information file and not the enlarged image of the second file. Thus, given various Figures and paragraphs, it is not clear of the exact support for such limitation.
It is also not clear of what exactly requires by the last limitation (6), as it is also not clear of what is “corresponding image corresponding to the file information” (i.e. is the acquired file information is meant to be the corresponding image or is the corresponding image is created from the acquired file information). The applicant is advised (1) indicate the support for the limitation (6) and (2) clarify the required functionality for the limitation (6).
Thus, the claim 1 is construed to require –
a user specifies a first file on a display;
(2) acquire information for the first file (not an image);
(3) another user selects another file image on the display and enlarged image displayed, which is obviously not the same as the first file (because the first file is not an image);
(4) display together an image for the first file and the enlarged image of the second file.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3-6, 9-14, 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAN et al. (US 2013026887) in view of IKEDA et al, (US 20120075668) and in further vie of Mikawa (US 20090066730)
Regarding claim 1, HAN teaches an information processing system comprising: a processor configured to:
cause a display to display a candidate screen that receives an operation performed by a user for specifying a first file from a file candidate ([0094], F9:S900, F11 a user selects a weather app/ icon, which is a file);
acquire file information serving as information about the first file specified by the user in response to the operation performed by the user for specifying the first file being received on the candidate screen ([0121]-[0122], [0141], [0144], F9:S920, F12 wherein the acquired extended information is displayed);
cause the display, in response to user selection of a file image displayed on the display
the file image being an image corresponding to a second file different from the first file ([0258] “a first object 3070 about weather” (i.e. a weather app/file) and “second object 3080 about a calendar” (i.e. a calendar app/file) are different files) and
the enlarged image having a display size larger than a display size of the file image ([0113]-[0114], [0249] “second object is touched and dragged from among the plurality of objects, the second object may be enlarged”, [0178], [0258] “a second object 3080 about a calendar may be enlarged”, F12-15); and
cause the display to display a corresponding image corresponding to the file information about the first file simultaneously with display of the enlarged image ([0245], [0249]-[0250], [0256], [0258] “the enlarged region of the first object 3070 and the enlarged region of the second object 3080 may be displayed together on the screen of the device”) without an additional operation by the user ([0261] “when the music file icon music file icon is enlarged … the device downloads a music file from a server. In this case, information indicating a downloading degree of the music file may be displayed on the enlarged region of the music file icon)(see NOTE).
HAN does not explicitly teach, however Mikawa discloses cause the display, in response to user selection of a file image displayed on the display on which the candidate screen is not being displayed (F6:617)
Mikawa further discloses cause the display to display a candidate screen that receives an operation performed by the user (F6) and cause the display to display a corresponding image corresponding to the file information about the first file simultaneously with display of the enlarged image (F10 enlarged image 609 is simultaneously displayed with the file information about the first file IMG_0001).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teachings of HAN to include a candidate screen as disclosed by Mikawa. Doing so would facilitate a better comparison of images (Mikawa [0014]).
NOTE HAN does not explicitly teach “cause the display to display a corresponding image … without an additional operation by the user.” Instead HAN teaches when user enlarges the file icon, a device downloads and displays a corresponding image of the file being downloaded (F25-26, [0261]-[0265]). The display of the corresponding image (of a file download) is obviously performed “without an additional operation by the user,” as the user device generates the corresponding image.
However, to merely obviate such reasoning, IKEDA teaches cause the display to display a corresponding image corresponding to the file information about the first file simultaneously with display of the enlarged image without an additional operation by the user ([0025], [0029]).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teachings of HAN to include display of the enlarged image without an additional operation by the user as disclosed by IKEDA. Doing so would allow the user to easily and quickly select desired data to display.
Regarding claim 3, HAN as modified teaches the information processing system according to Claim 1, wherein the processor is configured to cause the display to display the corresponding image with a display size larger than the display size of the file image (HAN F13-15 and corresponding paragraphs).
Regarding claim 4, HAN as modified teaches the information processing system according to Claim 1, wherein the processor is configured to cause the display to display the enlarged image and the corresponding image without overlapping each other (HAN [0245], [0229], F13-15).
Regarding claim 5, HAN as modified teaches the information processing system according to Claim 4, wherein the processor is configured to:
set a display position of the enlarged image based on a display position of the selected file image (HAN [0109], [0133], [0142]); and set a display position of the corresponding image based on the display position of the enlarged image (HAN [0137]-[0139], [0144]).
Regarding claim 6, HAN as modified teaches the information processing system according to Claim 5, wherein the processor is configured to set the display position of the corresponding image based on a size of a margin existing around the enlarged image (HAN [0133] “objects are rearranged may be determined in various ways according to the size of a screen of the display and the number of objects on the display”, [0137]-[0139], [0142], [0151]).
However, if HAN does not explicitly teach, however Mikawa discloses display position of the corresponding image based on a size of a margin existing around the enlarged image ([0166], [0175], [0180]-[0181], [0183], F13A-D). It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teachings of HAN to include a size of a margin existing around the enlarged image as disclosed by Mikawa. Doing so would reduce a possibility of the displayed region extending outside of the image (Mikawa [0012]).
Regarding claim 9, as modified HAN as modified teaches the information processing system according to Claim 1, wherein the processor is configured to cause the display to display a plurality of the corresponding images when the enlarged image is to be displayed on the display in a case where a plurality of pieces of the file information are acquired, the plurality of corresponding images respectively corresponding to the plurality of pieces of file information (HAN [0124], [0178], [0230]-[0237], F13-17).
Regarding claim 10, as modified HAN as modified teaches the information processing system according to Claim 9, wherein the processor is configured to cause the display to display all of the plurality of corresponding images (HAN [0124], [0230]-[0237], F13-17).
Regarding claim 11, HAN as modified teaches the information processing system according to Claim 9, wherein the processor is configured to switch the corresponding image to be displayed on the display in the case where the plurality of corresponding images exist (HAN [0103], F13-17).
However, if HAN does not explicitly teach, however Mikawa discloses switch the corresponding image to be displayed on the display in the case where the plurality of corresponding images exist ([0050], [0074], [0159], [0209]-[0210]).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teachings of HAN to switch the corresponding image to be displayed on the display in the case where the plurality of corresponding images exist as disclosed by Mikawa. Doing so would allow for a probability of the display range extending out from the image to be reduced (Mikawa [0159]).
Regarding claim 12, HAN as modified teaches the information processing system according to Claim 11, wherein the processor is configured to not include the enlarged image as a switching target of the display and maintain the enlarged image in a displayed state (HAN [0106], [0221], Mikawa [0132], [0140], [0210]).
Regarding claim 13, HAN as modified teaches the information processing system according to Claim 1, wherein the processor is configured to set the enlarged image to a non-displayed state and cause the display to display a plurality of the corresponding images if the user specifies a plurality of files and acquires a plurality of pieces of the file information (HAN [0133], [0246]-[0247]) and if a predetermined condition is satisfied (HAN [0122], [0137]).
Regarding claim 17, HAN as modified teaches the information processing system according to Claim 1, wherein the processor is configured to cause the display on which the enlarged image is displayed to display information indicating that the file information has been acquired (HAN [0124], [0178], [0230]-[0237], F13-17).
Regarding claim 18, HAN as modified teaches the information processing system according to Claim 1, wherein the processor is configured to acquire, as the file information, information about a file selected by the user from a file extracted as a result of a searching process (HAN [0122], [0178], [0230]-[0237], F13-17).
Claims 19 and 20 recite substantially the same limitations as claim 1, and is rejected for substantially the same reasons.
Claim 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAN as modified in view of Kitamaru et al. (US 20060026523) or YAMADA (US 20200241710).
Regarding claim 14, if HAN does not explicitly teach, however Kitamaru or YAMADA discloses the information processing system according to Claim 1, wherein the processor is configured to set a number of a plurality of the corresponding images to be displayed at one time on the display to a predetermined threshold value or smaller (Kitamaru [0121], [0146], [0169], YAMADA [0154], [0158]).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teachings of HAN to set a number of a plurality of the corresponding images to be displayed at one time on the display as disclosed by Kitamaru. Doing so would allow for a probability of the display range extending out from the image to be reduced (Kitamaru [0159]) and make an appearance more beautiful (YAMADA [0155]).
Claims 12 and 18 is/are additionally and alternatively rejected under 35 U.S.C. 103 as being unpatentable over HAN as modified and in further of LEE et al. (US 20190286318).
Regarding claim 12, if HAN does not explicitly teach, however LEE discloses the information processing system according to Claim 11, wherein the processor is configured to not include the enlarged image as a switching target of the display and maintain the enlarged image in a displayed state ([0170], [0194]).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teachings of HAN to maintain the enlarged image as disclosed by LEE. Doing so would provide a more effective viewing environment (LEE [0007]).
Regarding claim 18, if HAN does not explicitly teach, however LEE discloses the information processing system according to Claim 1, wherein the processor is configured to acquire, as the file information, information about a file selected by the user from a file extracted as a result of a searching process ([0126], [0129], [0136]).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teachings of HAN to maintain the enlarged image as disclosed by LEE. Doing so would provide a more effective viewing environment (LEE [0007]).
Claim 13 is/are additionally and alternatively rejected under 35 U.S.C. 103 as being unpatentable over HAN as modified and in further view of Aoyama et al. (US 20160247303) or Hasegawa et al. (US 20150193648).
Regarding claim 13, if HAN does not explicitly teach, however Aoyama and Hasegawa discloses the information processing system according to Claim 1, wherein the processor is configured to set the enlarged image to a non-displayed state and cause the display to display a plurality of the corresponding images if the user specifies a plurality of files and acquires a plurality of pieces of the file information and if a predetermined condition is satisfied (Aoyama [0039], [0053]. [0041], [0137], Hasegawa [0086], [0099]-[0101], [0134]).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teachings of HAN to set the enlarged image to a non-displayed state as disclosed by Aoyama and Hasegawa. Doing so would generate an enlarged image with a slit-like background transparent portions for a better viewing (Aoyama [0039]) and allow the user to avoid the risk of overlooking a target at observation (Hasegawa [0025]).
◊ Claim(s) 1, 19-20 is/are additionally and alternatively rejected under 35 U.S.C. 103 as being unpatentable over Kitamaru et al. (US 20060026523) in view of Canelis et al. (US 20190121879).
Regarding claims 1, 19-20, Kitamaru teaches an information processing system comprising: a processor, a non-transitory computer readable medium and an information processing method configured to:
cause a display to display a candidate screen that receives an operation performed by a user for specifying a first file from a file candidate (F3 see candidate screen on the left with a Folder Tree that when selected by the user displays subfolders (files) such as Travel [0071]-[0072], [0080]-[0081], F7:1306);
acquire file information serving as information about the first file specified by the user in response to the operation performed by the user for specifying the first file being received on the candidate screen ([0084], [0075]-[0076] “information includes a folder name, folder size, and the total number of images in the folder”);
cause the display, in response to user selection of a file image displayed on the display on which the candidate screen is not being displayed, to display an enlarged image corresponding to the file image (F3:908, F22:5112, 5113),
the file image being an image corresponding to a second file different from the first file (F3:908 is different from folder (file) 901, analogously see F16, where image files 5112 and 5113 are different from first file specified by the user SYDNEY:5101) and
the enlarged image having a display size larger than a display size of the file image (F3:908 is larger than the selected file shown behind it, analogous examples are shown in F16:5113 is larger than 5112); and
cause the display to display a corresponding image corresponding to the file information about the first file simultaneously with display of the enlarged image (F3 where enlarged image 908 and first file 901 displayed simultaneously with 901, analogous examples are shown in F15:506, F16:5113)
Kitamaru does not explicitly teach however, Canelis discloses cause the display to display a corresponding image corresponding to the file information about the first file simultaneously with display of the enlarged image without an additional operation by the user ([0025], [0029]).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teachings of Kitamaru to include display of the enlarged image without an additional operation by the user as disclosed by Canelis. Doing so would allow the user to quickly and efficiently find those images meeting specified search criteria (Canelis [0002]).
Response to Arguments
Applicant's arguments filed 9/17/2025 have been fully considered but they are not persuasive.
With respect to the rejection under 35 USC 101, the arguments are not persuasive. The applicant argues –
“The claims represent an improvement to the functioning of a computer, or to any other technology, because they recite displaying an enlarged image with a corresponding image … this represents an improvement over conventional computer display functionality which did not allow for file comparisons”; “transformation of the image into a different state is also a practical application.”
The arguments are not deemed persuasive. The representations and display of different files on the computer screen to facilitate comparison are basic functions are merely generic computer components, well-known, routine and conventional of any modern computers. The identified additional non-abstract element recited in the only independent claim is: a processor (Claim 1), display and a medium (claim 19). These additional elements do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machines (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied on any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2 106.05(a) (c), (e) (b). In other words, the aforementioned additional element (or combination of elements) recited in the claims do not integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54- 55 ("Prong 2"). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e) (h)), the claims do not integrate the judicial exception into a practical application.
The rejection is maintained.
Applicant's remaining arguments, in regard to the presently amended claims, are addressed in the updated rejections to the claims above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is indicated on PTO-892. Specifically see –
YAMADA US 20200133484, which shows major embodiments of the present invention in Fig.8;
Matsuno US 8427672, which shows in C15L35-44 display information items based on zoom factor (i.e. without user input).
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/POLINA G PEACH/Primary Examiner, Art Unit 2165 January 10, 2026