DETAILED ACTION
Status of the Claims
The following is a non-final Office Action in response to claims filed September 01, 2022.
Claims 1-3, 6-9 are amended.
Claims 4-5 are canceled.
Claims 1-3 and 6-9 have been examined.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112- 1st Paragraph
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.
Claim 1-3 and 6-9 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. The newly amended claim 1 recites the new limitation “a document information storage unit”, “a risk determination unit”, “a risk output unit”, and “a certificate issuing unit”, “a written information input unit”, a right processing execution unit” however the originally filled specification does not disclose the element “a document information storage unit” or the term “unit”.
Claims 1, 8-9 disclose the newly amended limitation “a risk determination unit implemented by at least one processor, configured to determine a risk that the transfer of the intellectual property right has not been performed, based on whether or not the document information evidencing the transfer is stored in the document information storage”. However the originally filled specification does not appear to disclose that the system is able to determine a risk that the transfer of intellectual property right has not been performed, based on whether or not the document information evidencing the transfer is stored in the document information storage as claimed. Regarding the determination of a risk, the originally filled specification discloses:
[0054] The risk determination part 32 determines a risk regarding the license or the right transfer. In the present embodiment, the risk determination part 32 can determine a risk that the right processing for a design right is not appropriately performed and a risk that a product is not protected by the design right.
0055] Regarding the risk that the right processing is not appropriately performed, for example, the risk determination part 32 can determine the risk regarding the right processing based on whether or not the transfer of the right from the creator P1 to the right holder of the product (the development company C3 in FIG. 1) continues.
[0056] The risk determination part 32 can determine whether the transfer of right is continuous based on design information, intellectual property information, and written information described later. That is, the risk determination part 32 reads the product information corresponding to the product ID indicating the product from the product information storage part 331, reads the design information corresponding to the design ID included in the read product information from the design information storage part 332, and reads the intellectual property information corresponding to the intellectual property ID included in the read design information from the intellectual property information storage part 333. The risk determination part 32 retrieves the written information corresponding to the written ID included in the read intellectual property information from the written information storage part 334, and if the written information is not registered in the written information storage part 334, it can be determined that right processing has not been performed.
[0058] In a case where the written information corresponding to the intellectual property ID of the intellectual property information and including the creator of the design information as the transferor is found, the risk determination part 32 can determine that the written information proving a series of transfers from the creator to the current holder of the intellectual property is registered.
[0059] The risk determination part 32 can determine based on the design information, the intellectual property information, and the written information, that there is a risk when the transfer of right is continuous, and that there is no risk when the transfer is not continuous.
[0069] The risk output part 33 can confirm that the right processing for the intellectual property related to a product has been appropriately performed, and can evaluate the risk related to the right processing. For example, the risk output part 33 can evaluate, as a risk, the number of transfers of the right to acquire the intellectual property right (right to obtain a design registration, and the like) that cannot be proven (or made a prima facie showing) by written information from the primitive right holder (creator) of the intellectual property right to the seller of the product (development company C3). Furthermore, the risk output part 33 may determine a risk, for example, according to the reliability (for example, whether or not a name, a seal, or a signature has been made, and the like) of the document regarding the written information. Furthermore, in a case where there is a difference between the drawing relating to the design of a product and the drawing of the design right, the risk output part 33 can also evaluate the difference as a risk that the design of the product is not protected by the design right. Furthermore, the risk output part 33 can output the evaluated risk. The risk output part 33 may output the risk to an output device 106 such as a display or a printer, or may transmit screen data (for example, can be described by HTML or the like) for displaying the risk to the user terminal 10.
As demonstrated, the originally filled specification does not disclose the limitation as claimed.
For these reasons the claims are rejected for containing new matter previously disclosed on the originally filled specification.
Claim Rejections - 35 USC § 112- 2nd Paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-3, and 6-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 discloses the limitations “a document information storage unit”, “a risk determination unit”, “a risk output unit”, and “a certificate issuing unit”, “a written information input unit”, a right processing execution unit”, however the originally filled specification does not element “a document information storage unit” or the term “unit”. It is unclear the meets and bounds of the claims, however for examination purposes the claims are interpreted as best understood. The term “a document information storage unit” is interpreted as a database, wherein the terms “unit” are interpreted as software/instructions.
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 and 4-9 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 claims 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 1-9 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” groups 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 a sales activities or behaviors; business relations) and concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Claims 1 and 8 and 9 recites the abstract idea of managing that right processing for an intellectual property is correctly performed (see paragraphs 005, 008). This idea is described by the following claim steps:
storing document information evidencing a transfer of the intellectual property right, the document information including an electronic copy of a transfer contract, an assignment deed, or other document certifying the transfer;
determining a risk that the transfer of the intellectual property right has not been performed, based on whether or not the document information evidencing the transfer is stored;
outputting information regarding the determined risk; and
generating electronic data of a certificate indicating that the transfer of the intellectual property right has been performed.
This idea falls within the certain methods of organizing human activity grouping of abstract ideas because it is directed towards commercial interactions (including business relations) such that as required when managing that the right of processing for an intellectual property is correctly performed. The noted abstract idea is also directed to mental processes including an evaluation and opinion such as that required during the determination of a risk regarding right processing for the intellectual property right as claimed.
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. Claim 12 and 19 recites similar limitations as claim 1 and is therefore determined to recite the same abstract idea.
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:
server;
a document information storage unit implemented by at least a memory;
a risk determination unit implemented by at least one processor;
a risk output unit implemented by at least one processor;
a certificate issuing unit implemented by at least one processor;
a non-transitory computer-readable medium storing instructions that, when executed by at least one processor, cause the at least one processor to perform instructions
an electronic copy;
electronic data.
However, using a computer environment such as a server and other recited computer elements amounts to no more than generally linking the use of the abstract idea to a particular technological environment. Managing that the right processing for an intellectual property is correctly performed can reasonably be performed by pencil and paper until limited to a computerized environment by requiring a server, electronic data and other computer means.
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, 8 and 9 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 2-7 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, 3, and 7 further limits and narrows the abstract idea by introducing limitations directed to transmitting data. Further embellishing that the invention is capable of processing and transmitting 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.
Dependent claims 6 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular technological environment by introducing the limitation “wherein the certificate issuing part registers the certificate in a distributed ledger of a blockchain network”. The examiner views these additional elements as results-oriented steps given that there is no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result are currently present such that this is viewed as equivalent to “apply it” for merely implementing the abstract idea using generic computing components (See Id.). 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.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHIMIZU (Japanese Application 2017/134595) in view of Guse (US Patent Publication 2003/0097282).
Regarding claims 1, 8 and 9 SHIMIZU discloses a management server for an intellectual property right, a program for causing a management server for an intellectual property right to function and a management method ([001, 008]) comprising:
a document information storage unit implemented by at least a memory, configured to store document information evidencing a transfer of the intellectual property right, the document information including an electronic copy of a transfer contract, an assignment deed, or other document certifying the transfer ([0032] At the time of executing the specific mediator extraction process, the CPU extracts, from the patent information DB 31, information related to a history of patent rights transfer excluding "transfer to a company (corporation) that is a work destination of the inventors)" from the inventors. The transfer (transfer) of the patent rights other than the transfer of the inventors is also referred to as an "inter-company transfer" for convenience. However, the inter-company transfer includes a case where a corporation other than the natural person and the company is a transferer, and a case where a corporation other than the natural person and the company is the assignee [0066] Step 405: The CPU reads information on the history of the transfer between the companies of the patent rights from the patent information DB 31. Step 410: The CPU extracts the intermediary transferor from the information on the transfer history of the patent rights. The Examiner interprets the “transfer history” as the other document certifying the transfer.);
a risk determination unit implemented by at least one processor, configured to determine a risk that the transfer of the intellectual property right has not been performed, based on whether or not the document information evidencing the transfer is stored in the document information storage ([0010] The index value calculation unit executes an index value calculation process for calculating a transfer medium index value, which is one of the transfer parties in the transfer history, to calculate a transfer medium index value that becomes larger as the frequency becomes higher as the frequency to be a transfer party other than the "initial transfer person in which the patent right has been transferred first in the transfer history related to a patent right" and the "medium transfer person who has received the patent right last", as the specific rights, respectively. [012] The transfer mediation index value becomes a larger value as the specific rights are mediated by the transfer of the patent rights from the first transfer person to the final transferee (that is, the more the patent rights are more likely to reach the final transferer from the initial transfer person via the particular rights).); and
a risk output unit implemented by at least one processor, configured to output information regarding the risk determined by the risk determination unit ([0024] The CPU 21 sequentially executes a predetermined program to… output a calculation result [0027] The operation interface 25 can communicate with the input device 26 and the output device 27 connected to the patent rights evaluation device 11. The input device 26 includes a keyboard and a mouse, and the output device 27 includes a display device. The operator of the patent rights evaluation device 11 operates the patent rights evaluation device 11 using the input device 26, and acquires the operation result via the output device 27. ).
SHIMIZU does not explicitly disclose:
a certificate issuing unit implemented by at least one processor, configured to generate electronic data of a certificate indicating that the transfer of the intellectual property right has been performed.
However Guse which is similarly directed to a system for intellectual property transfers further teaches:
generate electronic data of a certificate indicating that the transfer of the intellectual property right has been performed ([0022] [0022] Other methods and systems are contemplated as part of the present invention, and include a method of underwriting an intellectual property asset title insurance policy, wherein the underwriting includes verifying the title of the intellectual property asset through title insurance for the intellectual property asset and securing a second insurance policy based on the value of the intellectual property asset. Additionally, a method of confirming an intellectual property transfer transaction comprising: submitting an intellectual property title insurance application; and receiving confirmation of the title for the intellectual property via a title insurance certificate. A method of confirming an intellectual property transfer transaction is disclosed and comprises: providing an intellectual property asset; and obtaining intellectual property title insurance for the intellectual property asset. See also Fig. 3 and [020] After the issuance of the Title Commitment, and the criterion indicated therein is met, the intellectual property asset title insurance policy issues 86. Further see Fig. 4 and [021].).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filled to generate electronic data of a certificate indicating that the transfer of the intellectual property right has been performed since such modification in the system of SHIMIZU is a combination of prior art elements previously known in the art that yield to the known benefit of confirming an intellectual property transfer transaction as disclosed by Guse at [0022].
Regarding claim 2, SHIMIZU discloses:
the management server further comprising a written information input unit implemented by at least one processor, configured to receive an input of the document information proving transfer of the intellectual property right ([0009] The information acquisition unit acquires information relating to the transfer history of the patent right. [0015] Therefore, according to the present invention, it is possible to extract a right person who is likely to be NPE among the patent rights on the basis of the "information relating to the patent" acquired by the information acquisition unit. [016] The "total transfer number", which is the number of patents transferred from the "first patent right person", which is one of the transfer parties in the transfer history, to the "second patent right person", which is one of the transfer parties " [0018] As another aspect of the present invention, The information acquisition unit, It is preferable to acquire information on the "transfer history of the patent right to which the transfer from the inventor has been excluded". ).
Regarding claim 3, SHIMIZU discloses:
a right processing execution unit implemented by at least one processor, configured to, in a case where the document information proving the transfer of the intellectual property right does not exist, create the document information proving transfer of the intellectual property right ([0015] Therefore, according to the present invention, it is possible to extract a right person who is likely to be NPE among the patent rights on the basis of the "information relating to the patent" acquired by the information acquisition unit. [016] The "total transfer number", which is the number of patents transferred from the "first patent right person", which is one of the transfer parties in the transfer history, to the "second patent right person", which is one of the transfer parties " [0018] As another aspect of the present invention, The information acquisition unit, It is preferable to acquire
information on the "transfer history of the patent right to which the transfer from the inventor has been excluded". [Solution] A transfer history of patent rights is acquired).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHIMIZU (Japanese Application 2017/134595) in view of Guse (US Patent Publication 2003/0097282) and SPANGENBERG (US Patent Publication 2020/0250778).
Regarding claim 6, SHIMIZU discloses storing data in a database, however does not disclose wherein the database or storage is a distributed ledger of a blockchain network.
SHIMIZU does not explicitly disclose:
wherein the certificate issuing unit registers an electronic data of the certificate in a distributed ledger of a blockchain network.
SPANGENBER is introduced to teach the use of blockchain technology in systems and methods for managing patent risk.
SPANGENBER teaches:
register an electronic data of the certificate in a distributed ledger of a blockchain network ([0044] In some embodiments, a smart contract may be accompanied by a digital certificate, or a digital signature which contains information regarding the source of the transaction. The computer, network, or blockchain will validate this information and determine the authenticity of the source of the transaction prior to deploying the smart contract.).
Therefore, it would have been obvious to one of ordinary skill in the art the time the invention was filled to register an electronic data of the certificate in a distributed ledger of a blockchain network since modifying the system in SHIMIZU with an improvement such as the use of blockchain technology is directed to applying a known technology to a known system ready for improvement to yield predictable results such as facilitating secure and transparent transactions, enhanced traceability among other known benefits of blockchain technology.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over SHIMIZU(Japanese Application 2017/134595) in view of Guse (US Patent Publication 2003/0097282) and FANG (CN 110765261).
Regarding claim 7, SHIMIZU discloses:
wherein the risk determination unit determines the risk that the transfer of the intellectual right has not been performed ([0010] The index value calculation unit executes an index value calculation process for calculating a transfer medium index value, which is one of the transfer parties in the transfer history, to calculate a transfer medium index value that becomes larger as the frequency becomes higher as the frequency to be a transfer party other than the "initial transfer person in which the patent right has been transferred first in the transfer history related to a patent right" and the "medium transfer person who has received the patent right last", as the specific rights, respectively. [012] The transfer mediation index value becomes a larger value as the specific rights are mediated by the transfer of the patent rights from the first transfer person to the final transferee (that is, the more the patent rights are more likely to reach the final transferer from the initial transfer person via the particular rights).) and Intellectual property rights in general but does not explicitly disclose:
wherein the intellectual property right is a design right, wherein the design right protects a product by the design right according to a similarity between a design for the product and a design for the design right.
However FANG which similarly is directed to potential intellectual property risks further teaches:
wherein the intellectual property right is a design right, wherein the risk determination unit determines the risk that the transfer of the design right has not been performed, and wherein the design right protects a product by the design right according to a similarity between a design for the product and a design for the design right (Page 3 “In an embodiment can be selected, according to the type of the target patent judging step patent or product of the target patent is matched to the target enterprise comprises: when the target patent is a design patent, extracting the image characteristic information of the target patent, the image characteristic information comprises picture in local area of pixel point brightness value and a chrominance value; calculating the image characteristic information of the appearance characteristics with the target enterprise product information of the similarity, in the case the image characteristic information and the appearance characteristic information of the target enterprise product of similarity is greater than or equal to the third threshold value judging the product matching of the target patent to the target enterprise. Page 6 “In the embodiment of the invention, a monitoring method of potential patent dispute can be applied to dispute in the monitoring server 100. dispute monitoring server 100 firstly detects the newly added patent from the database server 200, and selecting the target patent associated with the target enterprise, then obtaining patent and product information of the target enterprise from the cloud server 300. then according to type of the target patent (invention patent, utility model patent or patent) judging appearance design patent or product of the target patent and target enterprise is matched, if matched judging that target enterprise potential patent dispute exists and generating the alarming information. Finally, the alarm information pushed to the display terminal 400, in order to see to realize the precaution related people of the target enterprise.” Further see page 10. ).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filled to include wherein the intellectual property right is a design right, and the risk determination part determines a state of protection of a product by the design right according to a similarity between a design for the product and a design for the design right, since modification in the system and method of SHIMIZU is a combination of prior art elements previously known in the art that yield to predictable results such as allowing the system to identify similarity between intellectual property in order to consider risks.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered.
Based on Applicant’s amendments the previously 35 USC 112 2nd have been withdrawn.
Based on Applicant’s amendments the 35 USC 112 6th claim interpretation have been removed due to the claimed limitations new language including the claimed limitations being modified by structure.
In regards to the previously presented 35 USC 101, Applicant argues:
“These limitations describe a concrete technological process that improves IP rights management by automating legal document intake, verification, similarity-based protection assessment, certificate generation, and secure blockchain registration. This integration into a particular technological environment and the recited technological improvements satisfy Step 2A Prong Two and Step 2B of the USPTO's subject matter eligibility analysis.” Examiner respectfully disagrees. The limitations are directed to improving business solutions by automating manual processes. However, automating manual process as recited is not indicative of integration into a practical application because the technology recited is directed to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f). Applicant have failed to indicate any improvement to the functioning of a computer, or to any other technology or technical field or applying or using the judicial exception in some other 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. For these reasons. the argument is found non-persuasive and the rejection maintained.
In regards to the 35 USC 102 rejection Applicant argues:
“Indeed, Shimizu is fundamentally different from the present claims, as amended, based on the following features:”
“Document Information Storage Unit: Shimizu uses patent transfer history data from public databases; it does not store legal proof documents (e.g., contracts, assignment deeds) evidencing a transfer in a dedicated storage unit.” In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., it does not store legal proof documents (e.g., contracts, assignment deeds) evidencing a transfer in a dedicated storage unit) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The Examiner notes that the requirement of the claim is a document information storage unit configured to store “document information evidencing the transfer of the intellectual property right…including…other document certifying the transfer” Shimizu clearly discloses a database storing a “transfer history” related to the transfer of intellectual property. The Applicant is reminded that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims and that claims are interpreted based on a broadest reasonable interpretation.
“Risk Determination: Shimizu determines risk via statistical transfer mediation index values to infer possible NPE status. The present claims determine risk directly from the presence or absence of specific legal transfer documents.” Examiner respectfully disagrees. The claim recruitment is determining a risk based on whether or not the document information evidencing the transfer is stored in the document information storage. Shimizu clearly discloses a risk determination based on whether or not document information (i.e. data) evidencing the transfer is stored. Shimizu discloses this by determining the risk taking into consideration the transfer parties in the transfer history.
“Written Information Input Unit (claim 2): Shimizu does not include a unit for receiving input of legal transfer document information from a user or system.” In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., it does not store legal proof documents (e.g., receiving input of legal transfer document information) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Examiner notes that as disclosed in the rejection above, Shimizu discloses the system receiving input related to the transfer history (i.e. document information proving the transfer of intellectual property).
“Shimizu does not create transfer documents when they are absent.” Examiner respectfully disagrees. As disclosed in the rejection above, Shimizu discloses the system acquiring a transfer history (i.e. document information proving the transfer of intellectual property).
Additional arguments with respect to claim(s) 1-3, and 6-9 have been considered but are moot because the new grounds of rejection necessitated by Amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Millien, US 20060100948, Methods For Creating And Valuating Intellectual Property Rights-based Financial Instruments. [0003] Forward and futures contracts (the latter of which are standardized and may be exchange-traded) are transferable agreements to buy or sell a commodity (e.g., a particular crop, livestock, oil, gas, interest rate, etc.). These contracts typically involve two parties agreeing upon the manner, place and time of delivery of a certain size, quantity, etc. of a certain asset.
Kossovsky , US 20020002524, Online Patent And License Exchange [0007] Several factors contribute to the inefficiency of current patent licensing practices including, but not limited to, the difficulty of matching inventors and other potential patent licensors with interested and qualified potential patent licensees, the intricacies of determining an accurate market value for the patented technology and the lack of an efficient infrastructure for the secure transfer of intellectual property rights.
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.
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/MARIA C SANTOS-DIAZ/Primary Examiner, Art Unit 3629