DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Response to Arguments
3. Applicant's arguments received 08/04/2026 with respect to the rejection under 35 USC 101 have been considered but are moot in view of the new ground(s) of rejection. Detailed response is given in sections 4-5 as set forth below in this Office action.
Applicant argues (REMARKS, p.11):
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Examiner respectfully disagrees. Applicant is advised that, according to MPEP 2106 and the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), the USPTO determines claim eligibility under 35 U.S.C. § 101 using the Alice framework. The analysis under Step 2A - Prong 1 evaluates whether the claim recites a judicial exception. Step 2A - Prong 2 asks does the claim recite additional elements that integrate the judicial exception into a practical application, and, if necessary, Step 2B further analyzes whether or not the claim provides an Inventive Concept. That is, the claim needs to be analyzed limitation by limitation, and/or element by element, following the MPEP/2019 PEG guidelines. Applicant is particularly advised that, under the 2019 PEG, when assessing subject matter eligibility for a patent, examples of “determining or calculating parameters" that might be considered a judicial exception include claims that simply involve basic data manipulation and/or mathematical calculations that can be performed in mind or the aid of a general-purpose computer, without any inventive application of that calculation to a specific technological problem.
In the instant case, focusing on what the inventors have invented exactly and giving the broadest reasonable interpretation (BRI) to the claims, Examiner asserts that the pending claims 1, 3-7, 9-11, 13-14, 17 and 20 are directed to an abstract idea of generating beat sound generation timing in the environment of automatic generation of music, but without reciting any additional elements that amount to “significantly more” to integrate the judicial exception into a practical application or reflect an inventive concept (see detailed analysis as set forth in sections 4-5 below in this Office action).
While arguing about the practical application of solving a specific technical problem and/or generating a substantial physical effect, Applicant fails to show that the “additional limitations”, such as a computer processor configured to convert a digital data of the beat sound into an analog signal and output the analog signal from a speaker and output the beat sound matching the generation timing of the beat sound, go beyond just being used as tools to output the results from the claimed abstract idea via basic function of a general-purpose computer. Further, it is deemed that outputting results of the abstract idea encompasses merely an insignificant post-solution activity under the 2019 PEG.
The rest of the Applicant’s arguments regarding the claim eligibility are reliant upon the issue discussed above or have been fully addressed by the analyses as set forth below in this Office Action.
Claim Rejections - 35 USC § 101
4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 101 that form the basis for the rejections under this section made in this Office action:
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.
5. Claims 1, 3-7, 9-11, 13-14, 17 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Under the 2019 PEG (now been incorporated into MPEP 2106), the revised procedure for determining whether a claim is "directed to" a judicial exception requires a two-prong inquiry into whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.0S(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Claims 1, 3-7, 9-11, 13-14, 17 and 20 are directed to an abstract idea of generating beat sound generation timing.
Specifically, representative claim 1 recites:
A beat sound generation timing generating device, comprising:
a processor configured to:
(S1) generate, from inputted data of a musical piece, a plurality of intensity data in a predetermined time interval, each of the plurality of intensity data indicating a timing governing a beat of the musical piece and a power at the timing;
(S2) calculate a cycle and a phase of the beat of the musical piece by using the plurality of intensity data for each of the time intervals;
(S3) detect a generation timing of a beat sound based on the cycle and the phase of the beat of the musical piece;
(S4) set one of a first range and a second range as a BPM (beats per minute) numerical range to be used for calculation of the cycle and the phase of the beat for each of the time intervals, wherein the second range is narrower than the first range, a range within the first range, or a range overlap with the first range,
wherein the second range is:
a first predetermined range within the first range;
a second predetermined range centered on a BPM value when the BPM numerical range is changed from the first range to the second range; or
a third predetermined range centered on a BPM value to be used for calculation of the cycle and the phase of the beat when the BPM numerical range is changed from the first range to the second range; and
(S5) convert a digital data of the beat sound into an analog signal and output the analog signal from a speaker, and output the beat sound matching the generation timing of the beat sound;
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
The highlighted portion of the claim constitutes an abstract idea under the 2019 Revised Patent Subject Matter Eligibility Guidance and the additional elements are NOT sufficient to amount to significantly more than the judicial exceptions, as analyzed below:
Step
Analysis
1. Statutory Category ?
Yes.
System/Apparatus
2A - Prong 1: Judicial Exception Recited?
Yes.
See the bolded portion as listed above.
Under its broadest reasonable interpretation (BRI), each of the limitations S1, S3 and S4 recited in the bolded portion encompasses a mental process, i.e. data manipulation, evaluation and judgment, that can be performed in the human mind or by a human using a pen and paper. Note, the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). See also to MPEP 2106.04(a)(2).III
Under its BRI, the limitations S2 recited in the bolded portion encompasses mathematical concepts, namely a series of calculations leading to one or more numerical results or answers, that can be performed in the human mind or by a human using a pen and paper. Although it does not spell out any particular equation or formula being used, the lack of specific equations for individual steps merely indicates that the claim would monopolize all possible calculations in performing the limitations.
Nothing in the claim precludes these limitations in the bolded portion from practically being performed in the mind and/or using a pen and paper. Even if the limitation of “a processor configured to” is included, according to the MPEP 2106.04(a)(2), if a claim limitation, under its BRI, covers mental processes except for the mention of generic computer components performing computing activities via basic function of the computer, then the claim is likely considered to be directed to an ineligible abstract idea, as it essentially describes a mental process that could be performed by a human without the computer components adding any significant practical application beyond the abstract concept itself.
Therefore, the bolded limitations fall within a combination of the mental process and the math concept groupings of abstract ideas under the 2019 PEG because they cover concepts performed in the human mind, including data observation, manipulation, evaluation, math calculations, judgment, and opinion.
2A - Prong 2: Integrated into a Practical Application?
No.
Under its BRI, the limitation (S5) reads on an insignificant post-solution activity. The processor and speaker are all recited at a high level of generality. Under the BRI, they are merely used as tools to output the results of the claimed abstract idea. The recited post solution activity itself does not improve the function of the processor or the speaker. Such an insignificant post solution activity encompasses merely instructions to apply the judicial exception on a generic computer and/or link the use of the judicial exception to the relevant technological environment, which cannot integrate a judicial exception into a practical application.
Claim 1 does not include any additional element that can be considered to be qualified for being “significantly more” to impose meaningful limits on practicing the abstract idea. The “processor” is merely used as a tool to perform the otherwise mental process. According to MPEP 2106.04(a)(2), if a claim limitation, under its BRI, covers mental processes except for the mention of generic computer components performing computing activities via basic function of the computer, then the claim is likely considered to be directed to an ineligible abstract idea, as it essentially describes a mental process that could be performed by a human without the computer components adding any significant practical application beyond the abstract concept itself.
The claim as a whole does not meet any of the following criteria to integrate the abstract idea into a practical application:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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.
Various considerations are used to determine whether the additional elements are sufficient to integrate the abstract idea into a practical application. However, in all of these respects, the claim fails to recite additional elements which might possibly integrate the claim into a particular practical application. At most, it only generally links the judicial exception to a particular technological environment or field of use. See MPEP 2106.04(d)(2).
2B: Claim provides an Inventive Concept?
No.
Focusing on what the inventors have invented exactly, it is deemed that the “heart” of the representative claim 1 is directed to an abstract algorithm of generating beat sound generation timing. Under the 2019 PEG, the claimed algorithm falls within a combination of the “Mental Process” and the “Math Concepts” groupings of abstract ideas. As discussed with respect to Step 2A Prong Two above, the claim does not include any additional element to impose meaningful limits on practicing the abstract idea to integrate the identified abstract idea into a practical application. Furthermore, using a general-purpose computer to perform data manipulation, calculation with basic computing functionality and a device, e.g. D/A converter, to convert a digital data into an analog signal
Are all well-known/conventional. The claim does not recite any additional limitation/element that reflects an “inventive concept”. See MPEP 2106.05.
The claim is therefore ineligible under 35 USC 101.
The dependent claims 3-6 and 17 inherit attributes of the independent claim 1, but does not add anything which would render the claimed invention a patent eligible application of the abstract idea. The claim merely extends (or narrows) the abstract idea which does not amount for "significant more" because it merely adds details to the algorithm which forms the abstract idea as discussed above.
Claims 7, 9-11, 13-14 and 20 are rejected under 35 U.S.C. § 101 for the same reason as for claims 1, 3-6 and 17.
Examiner’s Note
6. Claims 1, 3-7, 9-11, 13-14, 17 and 20 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 101 as set forth above in this Office action.
Contact Information
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANCHUN QIN whose telephone number is (571)272-5981. The examiner can normally be reached 9AM-5:30PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dedei Hammond can be reached at (571)270-7938. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANCHUN QIN/Primary Examiner, Art Unit 2837
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