DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed on Jan 14, 2026 has been entered. The following has occurred: Claims 1 and 12 have been amended; Claims 2-4 and 10-11 were previously canceled; Claims 5 and 6 have been canceled.
Claims 1, 7-9, and 12 are currently pending.
Response to Amendment
35 U.S.C. 101 rejection has been maintained in light of the amendment.
Priority
The present application claims a National Stage Entry of PCT/JP2020/030989, filed on August 17, 2020.
The present application claims priority to Japanese Application JP2020-057180, filed on March 27, 2020.
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, 7-9, and 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Is the claim to a process, machine, manufacture or composition of matter? (MPEP 2106.03)
In the present application, claims 1 and 7-9 are directed to a device (i.e., a machine) and claim 12 is directed to a method (i.e., a process). Thus, the eligibility analysis proceeds to Step 2A. prong one.
Step 2A. prong one: Does the claim recite an abstract idea, law of nature, or natural phenomenon? (MPEP 2106.04)
While claims 1 and 12, are directed to different categories, the language and scope are substantially the same and have been addressed together below.
The limitations of independent claim 1, which is representative of claim 12, have been denoted with letters by the Examiner for easy reference. The bold language of claim 1 recites a judicial exception (i.e., abstract idea) as explained further below:
stores ideas, the evaluations of the ideas, and the parent-child relationship between the ideas, further stores display counts of the ideas;
selects, as drafts, the ideas to be displayed based on the evaluation thereof; and
displays the drafts, and receives, as inputs, participants' evaluations of the drafts and proposals, the proposals being new ideas derived from the drafts regarded as parents, wherein:
receives pictures as inputs for the drafts and proposals, displaying the received pictures for enabling voting for respective ideas associated with the received pictures, modifying received hand-drawn pictures and appending characters to the received hand-drawn pictures for improving understanding of other participants,
uses the participants' evaluations of the drafts and the display counts to select the ideas to be displayed,
uses an evaluation rate to select the ideas to be displayed, the evaluation rate being a ratio between the participants' evaluations of the drafts and the display counts, and
based on the parent-child relationship between the ideas, calculates, for each of families of the ideas having the same ancestor, a sum of evaluations and a sum of display counts of all ideas included in the families of the ideas,
uses a family evaluation rate that is a ratio between the sum of evaluations of the ideas and the sum of display counts of the ideas, in order to determine the families to be selected, and
selects the drafts from each of the selected families by using the evaluation rate,
further displays the drafts and proposals as graph structure nodes to express a relationship between the received pictures by arrows, and
wherein participants are able to make new proposals by modifying the graph structure nodes,
selects, as the drafts, two or more of the ideas from the families,
arranges the two or more drafts in the same row or column so as to indicate that the drafts are ideas belonging to the same family, or displays the drafts in such a manner that the drafts are connected by lines or arrows, and
abolishes the family having a low family evaluation rate, and creates a new family.
The claimed invention is directed to an abstract idea of conducting brainstorm ideas (as described in app. specification [0001] and [0003]).
The bolded portions of limitations above recite concepts performable in the human mind including observation, evaluation, and judgement, which falls under “Mental Processes,” one of the abstract idea categories. Under the broadest reasonable interpretation, other than the additional elements of computer components (which is further discussed under Steps 2A prong two and 2B), the claims 1 and 12 recite processes that are all acts that could be performed by a human, e.g., mentally or manually, using a pen and paper, without the need of a computer or any other machine. For example, person, using pen and paper or via oral communication, could store ideas, the evaluation of ideas, and parent-child relationship between the ideas in a paper storage; select, as a drafts, the ideas to be presented/displayed based on the evaluation of the ideas; display on paper, the drafts, and receive/input/take participants’ evaluations of the drafts and proposals of being new ideas derived from the drafts. That is, the limitations above suggest a process similar to collecting information and analyzing the information to be display/presented. Because the limitations above closely follow the steps of collecting information and analyzing the collected information, and the steps involved human judgements, observations, and evaluations that can be practically or reasonably performed in the human mind. This is suggested in the applicant’s specification in para. [0001], “The present invention relates to an idea generation support device and an idea generation support method that allow a large number of persons to brainstorm ideas in an on-line manner.” Para. [0003], “Osborn’s checklist and brain writing, are proposed as the idea generation support method.” Para. [0004], “brain writing is a method of forcing brainstorming participants to evoke many ideas and acquiring the evoked ideas by repeating a procedure of allowing each participant to write three own ideas on paper and hand the paper over to the next participant, and then allowing the next participant to develop and generate three own ideas by reference to the three ideas written by the preceding participant and write the three generated ideas on the paper.” Human has been brainstorming (e.g., observation, evaluation, and judgement) ideas in groups before computers were available to support these tasks. These are mental steps that do not require the need of a computer system to perform. The abstract idea is merely applied to the additional elements in a computer environment (which will be further discussed in step 2A prong two and step 2B, below). Thus, the claims recite an abstract idea consistent with the “mental processes” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(III).
Additionally, under the broadest reasonable interpretation, the limitations determining evaluation rate being a ratio (limitation [F] and [H]) and calculate a sum of evaluation and sum of display counts of all ideas (limitation [G]) amount to forms of performing mathematical calculations, which falls under “mathematical concepts” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(I).
“For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A, Prong One to make the analysis clear on the record.” MPEP 2106.04, subsection II.B. Under such circumstances, however, the Supreme Court has treated such claims in the same manner as claims reciting a single judicial exception. Id. (discussing Bilski v. Kappos, 561 U.S. 593 (2010)). Here, the claimed invention falls within the mental process grouping of abstract idea, and the step falls within the mathematical concepts grouping of abstract ideas. The limitations are considered together as a single abstract idea and the analysis proceeds to Step 2A. prong two.
Step 2A. prong two: Does the claim recite additional elements that integrate the judicial exception into a practical application? (MPEP 2106.04)
This judicial exception is not integrated into a practical application because the additional elements merely add instructions to apply the abstract idea to a computer.
The additional elements considered are: “idea generation support device comprising: an idea database,” “database”, “a computation section,” “an interface” and “character strings”.
In particular, the claim only recites the additional elements - the use of “idea generation support device comprising: an idea database,” “database”, “a computation section,” “an interface” and “character strings”, to store, select, receive, modify, append, use, calculate, determine, and display information. The computer in the steps is recited at a high-level of generality (i.e., as generic computer components performing a generic computer function; See Applicant’s Specification at least at Fig. 1 and paragraphs [0005] and [0023]-[0025] describing database is a storage, computer algorithm performed by the device and interface as touch panel; para. [0162]-[0164] describing general computer function of modifying pictures and appending character strings without technological detail of how it is performed) such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
That is, the function of limitations [A]-[N] are steps of 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 as discussed in MPEP 2106.05(f).
The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f)(1), “The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015).” MPEP 2106.05(f)(2), “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 fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).”
Accordingly, even in combination, these additional element(s) do not integrate the abstract idea into a practical application because they do not improve a computer or other technology, do not transform a particular article, do not recite more than a general link to a computer, and do not invoke the computer in any meaningful way; the general computer is effectively part of the preamble instruction to “apply” the exception by the computer. Therefore, the claims are directed to an abstract idea and the analysis proceeds to Step 2B.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? (MPEP 2106.05)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the bold portions of the limitations recited above, were all considered to be an abstract idea in Step2A-Prong Two. The additional elements and analysis of Step2A-Prong two is carried over. For the same reason, these elements are not sufficient to provide an inventive concept. Applicant has merely recited elements that instruct the user to apply the abstract idea to a computer or other machinery. When considered individually and in combination the conclusion, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the above-mentioned limitations in [A]-[N] amount to no more than mere instructions to apply the function of the limitations to the exception using generic computer component, as discussed in MPEP 2106.05(f). The claim as a whole merely describes how to generally “apply” the concept for conducting brainstorm ideas. Thus, viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. For these reasons there is no inventive concept in the claims and thus are ineligible.
As for dependent claims 7-9, these claims recite limitations that further define the abstract idea noted in claim 1. These claims recite the use of same additional elements recited in the independent claim 1, at a high level of generality (i.e., as a generic computer system performing generic computer functions of selecting, creating, evaluating, determining, inputting, displaying, and modifying information) such that it amounts no more than mere instructions to apply the exception using a generic computer component, as discussed in MPEP 2106.05(f). Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
In summary, the dependent claims considered both individually and as ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1, 7-9, and 12 are rejected under 35 U.S.C. 101.
Allowable Subject Matter over Prior Art
Examiner has withdrawn previous art rejection for claims 1, 7-9, and 12.
The closest prior art found are:
Greenberg (US 20140172787 A1) is directed to system, method, and tools for facilitating group collaboration for ideas in a modified tree data structure (“idea tree”). Greenberg teaches an idea database that stores ideas, the evaluations of the ideas, and the parent-child relationship between the ideas (para. [0060]-[0061]);
wherein the idea database further stores display counts of the ideas (para. [0057], [0073])
a computation section that selects, as drafts, the ideas to be displayed based on the evaluation thereof (para. [0058], [0082], [0090], [0100], [0101], and [0108] disclosing the selecting and presenting of the idea tree and specific nodes and its child nodes for accessing and editing);
an interface that displays the drafts (para. [0053] disclosing graphical user interface for displaying), and receives, as inputs, participants’ evaluations of the drafts and proposals, the proposals being new ideas derived from the drafts regarded as parents (para. [0060] disclosing to response to proposed ideas. para. [0069], [0072], and [0080]-[0082] disclosing collaboration toolkit allow participant to make additions and modifications to the idea tree proposed by participants which the idea tree includes the new ideas (i.e. child nodes) derived from the parent nodes or “seed” for the discussion/brainstorm).
the computation section uses the participants’ evaluations of the drafts and the display counts to select the ideas to be displayed (para. [0073] disclosing the display of number of votes of confidence received from an idea may be tallied to see how well the idea is accepted by other participants. Para. [0077] and [0095] disclosing the viewing of aggregated of inputs from participants. Para. [0105] disclosing the number of sub-ideas that may be added to an idea tree as sub-nodes)
the computation section uses an evaluation rate to select the ideas to be displayed, the evaluation rate being the ratio between the participants’ evaluations of the drafts and the display counts (para. [0073], [0077] and [0095] disclosing the aggregating (i.e., display count) of participants input for evaluation. Further, para. [0093]-[0100] disclosing the display of ranking of ideas by comparing against each other).
However, Greenberg does not teach the calculating of a sum of evaluations for each of families of ideas having the same ancestor and a sum of display counts of all ideas included in the families of the ideas and calculate a family evaluation rate that is a ratio between the sum of evaluations of the ideas and the sum of display counts of the ideas.
Morgia et al. (US 20140162241 A1) is directed to a system and method for crowd participation for indicating relative values of ideas. Morgia teaches the computation section uses an evaluation rate to select the ideas to be displayed, the evaluation rate being the ratio between the participants’ evaluations of the drafts and the display counts (para. [0289]-[0290]). However, Morgia does not expressly teach the grouping of families of ideas from same ancestor and calculating of a sum of evaluations for each of families of ideas having the same ancestor and a sum of display counts of all ideas included in the families of the ideas.
Izuma et al. (JP 2007323574 A, presented in the IDS) is directed to a similar idea making support system and method for brainstorming. Izuma teaches a configuration of an idea generation assistance system comprising an idea information recording means (corresponding to the idea database), an extraction means (corresponding to the computation section), and an evaluation means, and an idea information display page (corresponding to the interface that displays). Izuma teaches a link for new creation page for posting a new idea, voting on the idea, and calculating a total score based on number of times the idea is browsed, number of comments on the idea, and number of ideas associated with the idea.
Ortiz et al. (JP 2005209187 A, presented in the IDS) is directed to a similar system for brainstorming and displaying of a subject card indicating a generated idea dropped between header cards and parent-child relationship between the subject card and the header card.
Sekhar (US 20140379439 A1) is directed to a collaboration toolkit, as developed and envisioned by the inventors, provides a set of tools to assist participants and moderators in the process of brainstorming, discussing, and compiling the participants' contributions into a structured and meaningful output. Sekhar teaches calculating a percentage vote for each selected category of each idea and displaying the ranking of the percentage vote for each idea’s winning category.
Huang et al. “Heteroglossia: In-Situ Story Ideation with the Crowd”, College of Information Sciences and Technology Pennsylvania State University, Jan 2020, https://arxiv.org/abs/2001.04519v2; teaching the process of sharing working drafts and asking the crowd to brainstorm follow-up story idea.
Specifically, the combination of the above references does not explicitly teach based on the parent-child relationship between the ideas, the computation section: calculates, for each of families of the ideas having the same ancestor, the sum of evaluations and the sum of display counts of all ideas included in the families of the ideas, uses a family evaluation rate that is a ratio between the sum of evaluations of the ideas and the sum of display counts of the ideas, in order to determine the families to be selected (i.e. in the particular manner it is claimed in the context of the whole claim is not disclosed, taught or suggested in the prior art(s)).
Examiner notes that the underlined limitations above, in combination with the other limitations found within the claim is found to be allowable over the prior art of record.
The prior art of record neither anticipates nor fairly and reasonably teach the claims 1 and 12.
Examiner notes that while Applicant has overcome the art of record, the application is not in condition for allowance, given the outstanding rejection under 35 U.S.C. 101.
Response to Remarks
35 U.S.C. 101 Rejections:
The Applicant’s remarks are fully considered, however, they are found to be unpersuasive.
Per Applicant’s remarks on pages 10-13, Applicant has conflated the abstract idea, considered at Step 2A Prong One, with the additional elements, considered at Step 2A Prong Two and Step 2B. Here, Examiner identified the bolded limitations of claim (recited in the 101 rejection above under step 2A prong one) as part of the abstract idea for storing brainstorm ideas and selecting and presenting the idea with drawing and images as part of the brainstorming ideas among a group of users/participants to further select, draft, arrange, add, create, or delete the family of ideas. The computing system with database and graphical user interface and use of character strings are considered additional elements, which are merely facilitating the tasks of said abstract idea. MPEP 2106.05(f) is clear that this generic recitation does not integrate the abstract idea into practical application and/or add significantly more. This interpretation holds whether the additional elements are viewed alone or in combination, where the combination of elements is nothing more than a network-enabled computing system. (Examiner notes that the phrase "well-understood, routine, and conventional" was not used in the eligibility analysis. Instead, examiner relied on MPEP 2106.05(f), as explained above.)
On pages 14-17, the Applicant asserts technological improvement and further asserts independent claims 1 and 12 are not directed to an abstract idea because the abstract idea is integrated into a practical application.
The Examiner respectfully disagrees. The examiner asserts that the claimed invention does not lie with the improvement of a technology, identifying and resolving an issue that arose from the technology, or that the claimed invention is “deeply rooted in the technology”, but merely demonstrating that the claimed invention is directed towards the abstract idea and merely applying or utilizing generic computing devices performing their generic functions in the technical field of collaboration of brainstorming ideas due to the benefits that computing devices provided (e.g., “improve the effectiveness”, more efficient, faster, and etc.).
As reflected in Enfish, there is a fundamental difference between computer functionality improvements (improvement of the technology or technical field), on the one hand, and uses of existing computers as tools to perform a particular task (collecting, analyzing, and displaying information), on the other. The alleged advantages that the Applicant touts do not concern an improvement to computer capabilities or any machinery but instead relate to an alleged improvement in transmitting, analyzing, and determining information for a desirable result, which a computer is used as a mere tool in its ordinary capacity, as discussed in MPEP 2106.05(f). To further clarify, the Applicant reflected a benefit or reason of using computer device for collecting and analyzing information for brainstorming ideas with participants. The computer device, itself is merely used “applied” for the expected result of convenience and time/cost saving. The claims do not reflect an improvement to the technology of the computer functionalities, other than, by using the additional elements of the computer device, desired result can be produced without a doubt or concern to technological details for how it is done. That is, the computer system itself or specific technology is not improved in anyway other than being applied as a tool/instrument for the judicial exception (abstract idea).
The Applicant’s further display and arrangement of drafts and proposal in graphic structure nodes to express a relationship between the received pictures by arrows are no different than merely arranging transactional information on graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019).
Regarding to remarks for “the claims include significantly more than the alleged abstract idea (step 2B), on pages 17-20, the applicant cited BASCOM and emphasizes the additional elements of claim 1 are significant, because the claim includes a specific technique for improving the technology of online collaboration.
The Examiner respectfully disagrees. The claimed invention is not analogous to BASCOM and the applicant does not compare the claim limitations of the BASCOM with the claim limitations of the present claims. Further, the applicant does not actually provide description or explanation of the specific technique, other than the recitation of the claim limitations of the additional elements “idea generation support device”, “database”, “computation section”, “an interface” and “character strings” to perform generic computer function of storing, selecting, receiving, modifying, appending, using, calculating, determining, and displaying information, at a high-level of generality, which does not add significantly more than the abstract idea, see MPEP 2106.05(f).
For these reasons above, the 101 rejection is maintained.
Conclusion
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/WENREN CHEN/Examiner, Art Unit 3626
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