DETAILED ACTION
This action is in response to the submission filed on 08/27/2022. Claims 1-19 are presented for examination.
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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 9/22/2021. It is noted, however, that applicant has not filed a certified copy of the 2021-154102 application as required by 37 CFR 1.55.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. To determine if a claim is directed to patent ineligible subject matter, the Court has guided the Office to apply the Alice/Mayo test, which requires:
1. Determining if the claim falls within a statutory category;
2A. Determining if the claim is directed to a patent ineligible judicial exception consisting of a law of
nature, a natural phenomenon, or abstract idea; and
2B. If the claim is directed to a judicial exception, determining if the claim recites limitations or elements
that amount to significantly more than the judicial exception.(See MPEP 2106).
Step 1: With respect to claims 1-19, applying step 1, the preamble of independent claims 1, 18 and 19 claim an apparatus, method and computer-readable medium. As such these claims fall within the statutory categories of machine, process and article of manufacture.
Step 2A, prong one: In order to apply step 2A, a recitation of claim 1 is copied below. The limitations of the claim that describe an abstract idea are bolded.
An information processing apparatus comprising:
a processing unit,
wherein the processing unit
acquires design data which pertains to a target design of an article which has a plurality of components,
executes an extraction process of extracting at least one reference design from a plurality of reference designs of the article on the basis of the design data (mental process – observation, evaluation, judgement, opinion),
makes a display unit display information pertaining to at least the one reference design which is extracted by the extraction process, and
in the extraction process, derives a component similarity value which indicates a degree of similarity between each of some or all reference designs in the plurality of reference designs and the target design in regards to each of the plurality of components (mental process – observation, evaluation, judgement, opinion),
derives a first index value on the basis of a plurality of component similarity values which consist of the component similarity values which are derived in regards to each of the plurality of components (mental process – observation, evaluation, judgement, opinion), and
extracts the at least one reference design from the plurality of reference designs on the basis of the derived first index value (mental process – observation, evaluation, judgement, opinion).
The limitations as analyzed include concepts directed to the "mental process" groupings
of abstract ideas performed in the human mind (including an observation, evaluation,
judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The claim involves extracting, deriving, deriving and extracting. The steps are simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas.
Step 2A, prong two: Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present generic computing components or insignificant extra-solution activity. In particular, the claim recites the additional limitations: “An information processing apparatus” (generic computing components merely carrying out the abstract idea - see MPEP § 2106.05(f) and (b)), “a processing unit, wherein the processing unit” (generic computing components merely carrying out the abstract idea - see MPEP § 2106.05(f) and (b)), “acquires design data which pertains to a target design of an article which has a plurality of components” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “makes a display unit display information pertaining to at least the one reference design which is extracted by the extraction process” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Step 2B: Moving on to step 2B of the analysis, the Examiner must consider whether each claim limitation individually or as an ordered combination amounts to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as "apply it" or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards field of use, generic computer components carrying out the abstract idea and data gathering and output. See MPEP 2106.04(d) referencing MPEP 2106.05(h). Furthermore, as Berkheimer evidence that the claim elements “acquires design data which pertains to a target design of an article which has a plurality of components” and “makes a display unit display information pertaining to at least the one reference design which is extracted by the extraction process”
are Well-Understood, Routine, and Conventional, MPEP § 2106.05(d) (II) provides support that mere data collecting and data outputting is well understood, routine, and conventional: "The courts have recognized the following computer functions as well- understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra- solution activity:
• Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788
F.3d at 1363, 115 USPQ2d at 1092-93
• Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115
USPQ2d at 1092-93
For the foregoing reasons, claim 1 is directed to an abstract idea without significantly more, and is rejected as not patent eligible under 35 U.S.C. 101. Independent claims 18 and 19 are directed to substantially the same subject matter as independent claim 1 and are rejected under similar rationale and further failure to add significantly more. The same conclusion is reached for the dependent claims 2-17.
Claims 2-17 are further directed towards concepts directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The claims involve deriving, extracting, target designs, reference designs and defining. The steps are simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas.
This judicial exception is not integrated into a practical application because there are no additional claim limitations outside the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no additional elements.
Allowable Subject Matter
Claims 1-19 contain allowable subject matter.
The claims will be allowable if the rejections under 35 USC 101 are overcome. The closest prior art of record, Kosugi teaches a method for finding degrees of similarity in designs and finding similar designs in a database of designs. However, this reference and the remaining prior art of record, alone or in combination, fails to disclose or suggest
(claims 1, 18 and 19)
“in the extraction process,
derives a component similarity value which indicates a degree of similarity between each of some or all reference designs in the plurality of reference designs and the target design in regards to each of the plurality of components,
derives a first index value on the basis of a plurality of component similarity values which consist of the component similarity values which are derived in regards to each of the plurality of components, and
extracts the at least one reference design from the plurality of reference designs on the basis of the derived first index value”,
in combination with the remaining elements and features of the claimed invention. It is for these reasons that the applicant’s invention defines over the prior art of record.
Additional References Cited
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and are cited in the attached PTOL-892.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NITHYA J. MOLL whose telephone number is (571)270-1003. The examiner can normally be reached Monday-Friday 10am-6pm EST.
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/NITHYA J. MOLL/Primary Examiner, Art Unit 2189