DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
This is a Final Action in response to the claims and remarks submitted on 06/22/2026.
Claims 1-12, 15 are amended.
Claims 17-20 are new.
Claims 1-20 are examined herein.
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 therefore, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea without significantly more.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the method (claims 1 and 19), and system (claim 12) are directed to at least one potentially eligible category of subject matter (i.e., process and machine, respectively). Thus, Step 1 of the Subject Matter Eligibility test for claims 1-20 is satisfied.
With respect to Step 2A Prong One, it is next noted that the claims recite an abstract idea that falls under the “Certain Methods Of Organizing Human Activity” and “Mental Processes” group within the enumerated groupings of abstract ideas set forth in the MPEP 2106 since the claims set forth steps that recite commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) and concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Claims 1 and 10 recites the abstract idea of assisting intermediation between a developer of a solution product and a user (see paragraphs 001, 003). This idea is described by the following claim steps:
wherein prior to development of the solution product, a market place that performs a transaction involved in use of the solution product is actively offered to the developer and the user;
storing a development initiation condition field and a use commitment field;
retrieve data from the development initiation condition field and the use commitment field to execute arithmetic operations on the retrieved data to calculate a development influence degree as a ratio of a committed use amount to a minimum use amount necessary for initiation of development, and to store the calculated development influence degree in a development influence degree field;
decide a contract conditions including both rewards conditions and penalty conditions between the developer and the user based on the development influence degree calculated.
This idea falls within the certain methods of organizing human activity grouping of abstract ideas because it is directed towards commercial interactions (including sales activities or behaviors; business relations) such that as required when assisting intermediation between a developer of a solution product and a user [001]. The noted abstract idea is also directed to observation, evaluation of the data to develop an opinion when identifying a minimum use amount and comparing the data to calculate influence degrees and determine utilization differences in order to determine rewards or penalties of a contract.
With respect to independent claim 10, the limitations reciting the abstract idea are indicated in bold below:
offers a market place involved in a transaction of a solution product to a developer who develops the solution product and a user who uses the solution product prior to development of the solution product and that assists intermediation between the developer and the user;
store, a development initiation condition field and a use commitment field;
actively perform a use invitation using the solution product on the market place based on invitation information registered beforehand by the developer;
actively accept an application by the user to the use invitation and sets a utilization project of the solution product by the user, and store both invitation information and application information;
retrieve data from the development initiation condition field and the use commitment field to execute arithmetic operations on the retrieved data to calculate a development influence degree as a ratio of a committed use amount to a minimum use amount necessary for initiation of development, and to store the calculated development influence degree in a development influence degree field;
decide a contract condition between the developer and the user based on the development influence degree, wherein reward and penalty conditions are tied to whether the user achieves the committed use amount of the solution product.
This idea falls within the certain methods of organizing human activity grouping of abstract ideas because it is directed towards commercial interactions (including sales activities or behaviors; business relations) such that as required when assisting intermediation between a developer of a solution product and a user [001]. The noted abstract idea is also directed to observation, evaluation of the data to develop an opinion when identifying a minimum use amount and comparing the data to calculate influence degrees and determine utilization differences.
Because the above-noted limitations recite steps falling within the Certain Methods Of Organizing Human Activity and Mental Processes abstract idea groupings of the MPEP 2106, they have been determined to recite at least one abstract idea when evaluated under Step 2A Prong One of the eligibility inquiry.
Therefore, because the limitations above set forth activities falling within the Certain Methods Of Organizing Human Activity and Mental Processes abstract idea groupings described in the MPEP 2106, the additional elements recited in the claims are further evaluated, individually and in combination, under Step 2A Prong Two and Step 2B below.
With respect to Step 2A Prong Two, the judicial exception is not integrated into a practical application. The additional elements that fail to integrate the abstract idea into a practical application are:
a processor;
a storage unit configured using a recording medium including a hard disk (HDD) and a solid-State disk (SSD);
a development influence calculation circuitry;
a contract condition decision circuitry; and
a computer.
However, using a computer environment such as a processor and software (i.e. units) amounts to no more than generally linking the use of the abstract idea to a particular technological environment. Assisting intermediation between a developer of a solution product and a user can reasonably be performed by pencil and paper until limited to a computerized environment by requiring the use of a computer, software and a processor.
These additional elements have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or computer-executable instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), and alternatively serve to link the use of the judicial exception to a particular technological environment. See MPEP 2106.05(f) and 2106.05(h).
In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As noted above, the claims as a whole merely describes a method, computer system, and computer program product that generally “apply” the concepts discussed in prong 1 above. (See MPEP 2106.05 f (II)) In particular applicant has recited the computing components at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. As the court stated in TLI Communications v. LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) merely invoking generic computing components or machinery that perform their functions in their ordinary capacity to facilitate the abstract idea are mere instructions to implement the abstract idea within a computing environment and does not add significantly more to the abstract idea. Accordingly, these additional computer components do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea and as a result the claim is not patent eligible.
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrates the abstract idea into a practical application. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
For the reasons identified with respect to Step 2A, prong 2, claims 1 and 10 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a commercial or legal interaction or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)). In addition, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application (see MPEP 2106.05(h)).
Dependent claims 2-9 and 11-16 recite the same abstract idea as recited in the independent claims, and when evaluated under Step 2A Prong One are found to merely recite details that serve to narrow the same abstract idea recited in the independent claims accompanied by the same generic computing elements or software as those addressed above in the discussion of the independent claims, which is not sufficient to amount to a practical application or add significantly more, or other additional elements that fail to amount to a practical application or add significantly more, as noted above.
Dependent claims 2-9 and 11-20 further limits the abstract idea by narrowing the abstract idea and linking the judicial exception to a particular technological environment by introducing limitations requiring different “circuitry” that appear to be related to software/hardware components. However, further embellishing that the invention is capable of processing information in a generic computing environment does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore, the claims are also non-statutory subject matter.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the collective functions merely provide high level of generality computer implementation. Therefore, whether taken individually or as an order combination, the claims are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
For more information see MPEP 2106.
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered.
In regard to the previously presented 35 USC 112, due to Applicant’s amendments the rejection is withdrawn.
In regard to the previously presented 35 USC 102 and 103, Applicant arguments are persuasive, the prior rejection have been withdrawn.
In regard to the previously presented 35 USC 101 Applicant argues:
“As an initial matter, claims 1, 2, 10, and 12 have been amended to recite specific structural and technical elements that integrate any alleged abstract idea into a practical application. Applicant respectfully submits that the claims as amended are patent-eligible under 35 U.S.C. § 101.” The Examiner respectfully disagrees that the recitation of additional structural and technical elements is sufficient to integrate the abstract idea into a practical application. The eligibility analysis does not turn on whether a claim includes components that may be characterized as “technical”, but rather on whether the additional elements, individually and in combination, apply the judicial exception in a manner that meaningfully limits the claim and reflects an improvement to computer functionality or another technological field. In the instant case, the recited “circuitry” merely provide the technological environment and computational tools through which the underlying data analysis and decisions are performed.
“These amendments recite a specific technical implementation involving defined data structures (development initiation condition field, use commitment field, development influence degree field) stored in a particular storage configuration, and circuitry that performs specific operations on data retrieved from those fields.” The Examiner acknowledges Applicant’s arguments that the claim recite a specific technical implementation. However, reciting a specific technical implementation is not, by itself, equivalent to reciting an improvement in the functioning of a computer or another technology or technical field. In the instant case, the claim recites a storage comprising hard disk drive and solid-state disk and circuitry configured to perform the claimed process. While these limitations provide structural detail regarding the hardware used to implement the claimed process, the claim does not recite an improvement to the operation of the HDD, SSD, circuitry or computer. Rather, these components perform their ordinary technological functions. Specifying the particular hardware on which the abstract is implemented does not establish that the hardware recited has been improved. Furthermore, the recited circuitry is defined by the functions it performs in executing the abstract idea rather than a particular circuit arrangement or operation that improves computer functionality. The analysis under Step 2A Prong Two, is not simply whether technical components are specifically identified, but whether the claim as whole reflects an improvement to the functioning of the computer or another technology. Here, the claimed hardware is used as a tool to implement the abstract idea.
“The MPEP provides that claims that recite a technological solution to a technological problem are more than "apply it" or "mere instructions." MPEP § 2106.05(f). In contrast to claims that merely recite an idea of a solution or outcome without restriction on how the result is accomplished, the claims as amended recite specific steps of how the development influence degree is calculated-by retrieving data from specific fields, calculating a ratio, and automatically storing the result. This is analogous to the claims found eligible in DDR Holdings, where the claims specified how interactions were manipulated to yield a desired result, and in BASCOM, where the claims recited a "technology based solution" that overcame disadvantages of prior art systems. MPEP § 2106.05(f).” Examiner respectfully disagrees that the claimed invention is analogous to the technological solutions recognized in DDR Holdings or BASCOM. The fact that the claimed circuitry retrieves data, performs arithmetic operations and determines whether contractual conditions are satisfied does not by itself, establish an improvement to computer functionality. In DDR Holdings, the claims addressed a problem specifically arising in computer technology. The claimed solution altered conventional Internet operation, thereby the significance of the computer implementation was not merely that a computer automatically processed information, but the claimed mechanism changed how the Internet-based system operated in response to a particular Internet centric problem. Similarly, BASCOM did not hold that performing an abstract process using computer components was sufficient for eligibility. Rather, the court identified an inventive concept in the particular architecture of the filtering system. The ordered combination provided a particular technical arrangement that differed from the conventional placement and operation of internet content filters. In the instant case, the claim does not recite a comparable technological solution. The circuitry is used to execute arithmetic operations and to determine contract conditions. These functions concern the processing and evaluation of information underlying the abstract process rather than an improvement in the operation of the circuitry, the HDD or SSD. Although the use of circuitry to automatically perform calculations allows for a more efficient process, automation of the abstract idea using hardware does not itself constitute an improvement to computer technology. The same applies for the recited retrieval and storage of data. Retrieving information needed for a calculation and storing data are ordinary computer functions that facilitate execution of the underlying process. Accordingly, the recited circuitry and storage components amount to technological tools to implement the abstract idea.
“The claims as amended do not merely recite the idea of calculating an influence degree. Rather, the claims recite specific technical steps: (1) storing specific data fields in a storage unit configured with HDD and SSD; (2) retrieving data from those specific fields; (3) executing arithmetic operations on the retrieved data to calculate a ratio; and (4) automatically storing the calculated result in a specific field. This specific technical implementation provides meaningful limitations that go beyond generally linking the use of any alleged abstract idea to a particular technological environment. The specification describes that the market place system of the present embodiment assists intermediation between the developer and the user prior to the development of the solution product by implementing a specific technical architecture with defined data structures and processing units. As-Filed Specification, paragraphs [0012], [0016]-[0017]. The claimed invention provides a specific technical solution for managing marketplace transactions by implementing defined database fields, specific data retrieval operations, and automated storage of calculated results.” The Examiner respectfully disagrees. Although the use of circuitry to automatically perform calculations allows for a more efficient process, automation of the abstract idea using the recited hardware elements does not itself constitute an improvement to computer technology. The same applies for the recited retrieval and storage of data. Retrieving information needed for a calculation and storing data are ordinary computer functions that facilitate execution of the underlying process. Furthermore, there is no articulated reasoning as to how the combination of elements provide a technical solution, or what is the technical solution solved by the invention.
“The ordered combination of elements in the amended claims provides meaningful limitations that transform the claims into patent-eligible subject matter. The claims do not merely recite generic computing elements performing abstract operations, but rather specify particular data structures (development initiation condition field, use commitment field, development influence degree field), specific arithmetic operations (calculating ratios from retrieved data), and defined interactions between storage and processing components (automatic storage of calculated results).” Examiner disagrees and finds the argument not persuasive. There is no articulated reasoning as to how the combination of elements amounts to significantly more than the abstract idea. Merely stating generically that the combination of elements recite significantly more than the abstract idea is not persuasive.
In conclusion, the claims do not integrate the identified abstract into a practical application. The recited storage unit comprising HDD and SDD, and the circuitry merely provide generic computer components and functions used to carry out the underlying abstract process. The claims do not recite a specific technological improvement to the operation of the computer, memory system, circuitry or other technical field nor do they impose a meaningful limitation on the abstract odea beyond implementing it with conventional computing technology. Rather, the additional elements merely apply the abstract idea using generic computer components as tools to perform such idea. Therefore, the claims amount to no more than instructions to apply the abstract idea on a computer and do not integrate the abstract idea into a practical application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
SA US Patent Publication 2022/0334837 METHOD, APPARATUS, AND SYSTEM FOR OUTPUTTING A DEVELOPMENT UNIT PERFORMANCE INSIGHT INTERFACE COMPONENT COMPRISING A VISUAL EMPHASIS ELEMENT IN RESPONSE TO AN INSIGHT INTERFACE COMPONENT REQUEST. [0002] In general, embodiments of the present disclosure provided herein include improved methods, apparatuses, systems, and computer program products configured for outputting efficient and contextually relevant development unit performance insight interface component(s), in real-time or near real-time, in a project management and collaboration system.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA C SANTOS-DIAZ whose telephone number is (571)272-6532. The examiner can normally be reached Monday-Friday 8:00AM-5:00PM.
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/MARIA C SANTOS-DIAZ/Primary Examiner, Art Unit 3629
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