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 .
This communication is in response to Amendment and Supplemental Amendment filed on January 23, 2026 and March 9, 2026 respectively.
Claims 1-4, 10, 11, 15, 16, 19 and 20 are pending. Claims 1-4, 10, 11, 15 and 19 are amended. Claims 5-9, 12-14, 17, 18, 21 and 22 have been cancelled.
Response to Arguments/Amendments
Referring to the 35 USC 112(b) rejections of claims 1-4, 10, 11, 15, 16, 19 and 20, Applicant’s amendments to the claims are acknowledged. As such, the 35 USC 112(b) rejections of the aforenoted claims are withdrawn.
Referring to the 35 USC 101 rejection of claims 1-4, 10, 11, 15, 16, 19 and 20, Applicant argues that the claims as amended transform the invention as a whole into a practical application that is tied to a particular usage environment by reciting details of the interaction between the browsing device and the browsing ticket and recites separate physical devices working together to provide requested data to a user operated device. However, Examiner respectfully disagrees. The recitation of separate physical devices i.e. the information browsing device, the file exchange device and apparatus operated by the browsing persons does not integrate the judicial exception into a practical application. Rather it is merely linking the judicial exception (i.e. the accepted presented browsing ticket) to a technological environment wherein the abstract idea is implemented using separate devices within the computer system. As such, Examiner maintains that the claims, even as amended, are not patent eligible.
All other of Applicant’s arguments with respect to the pending claims have been considered but are moot in view of the new grounds of rejection.
Referring to the 35 USC 103 rejections of claims 1-4, 10, 11, 15, 16, 19 and 20, Applicant’s arguments have been considered but are not persuasive.
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., the browsing person can only browse data-reduced information, not the product 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).
As such, the rejections of the pending claims is maintained and further in view of the new grounds of rejection of the claims, as amended.
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 1-4, 10, 11, 15, 16, 19 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 10, 15 and 19 recite:
accepting via a file exchange device a presentation of a browsing ticket from the apparatus operated by the browsing person; and
in a case that the browsing ticket has been accepted, allowing the browsing person to browse data-reduced information corresponding to product information specified by the browsing ticket, wherein
the data-reduced information is obtained by reducing data volume of the product information,
a data size of the data-reduced information is equal or greater than 200 MB and equal to or lower than 10 GB,
the data-reduced information is browsed in a state in which communication is established between the information browsing device, the file exchange device, and the apparatus operated by the browsing person,
the product information is at least one of Computer-Aided Design data, Computer-Aided Engineering data, or Computer Graphics data,
information browsed by the browsing person through the apparatus after the browsing ticket has been accepted is the data-reduced information,
the information browsing device is configured to allow the data-reduced information to be browsed by the browsing person without using application software that was used when the product information was created,
the presentation of the browsing ticket is allowed upon logging in from the apparatus operated by the browsing person to the file exchange device, and
the data-reduced information supplied from the information browsing device is transmitted from the file exchange device to the apparatus operated by the browsing person, whereby the data-reduced information is browsed by the browsing person.
Step 1: The claims as a whole fall within one or more statutory categories.
Step 2A prong 1: At least claims 1, 10, 15 and 19 recite limitations that are abstract ideas.
The limitations “allowing the browsing person to browse the data-reduced information corresponding to the product information specified by the browsing ticket, the data-reduced information is browsed in a state in which communication is established between the information browsing device, the file exchange device, and the apparatus operated by the browsing person” and “allowing the data-reduced information to be browsed by the browsing person without using application software that was used when the product information was created” are mental steps. A person can visually browse through data-reduced data displayed through a computer browser. Thus, the claimed limitations can be performed by the human mind.
Step 2A prong 2:
Claims 1, 10, 15 and 19 recite the limitations “accepting a presentation of a browsing ticket from the apparatus operated by the browsing person” and “the data-reduced information being obtained by reducing data volume of the product information, a data size of the data-reduced information is equal or greater than 200 MB and equal to or lower than 10 GB, and the product information is at least one of Computer-Aided Design data, Computer-Aided Engineering data, or Computer Graphics data” and “the data-reduced information supplied from the information browsing device is transmitted from the file exchange device to the apparatus operated by the browsing person, whereby the data-reduced information is browsed by the browsing person”.
These limitations are additional elements and are insignificant extra-solution activity as retrieval/receiving of data (i.e. mere data gathering) such as 'obtaining information' as identified in MPEP 2106.05(g) and does not provide integration into a practical application.
The limitation “the presentation of the browsing ticket is allowed upon logging in from the apparatus operated by the browsing person to the file exchange device” is also recited at a high level of generality (i.e. as a general means of establishing a secure communication connection before viewing the ticket) and is considered generally linking the judicial exception (i.e. the accepted presented browsing ticket) to a technological environment wherein a user is required to log in to the device to view the ticket.
Furthermore, Claims 1, 10, 15 and 19 recite the following additional elements “information browsing device”, “file exchange device”, “apparatus”, “one or more processors”, “another one or more processors”, and “memory”, note that these recited additional elements are a high-level recitation of generic computer components to perform the mental process and applied on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Step 2B: the conclusions for the additional elements representing mere implementation using a computer are carried over and do not provide significantly more.
With respect to the “presentation of the browsing ticket being allowed upon logging in from the apparatus operated by the browsing person to the file exchange device step” does not add significantly more to the abstract idea of accepting a presentation of a browsing ticket by requiring that a user log into the file exchange device since merely logging into a service as an authorized user is a generic known computer function and is merely generally linking the judicial exception to a technological environment, similar to Parker v. Flook ("Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable", see Bilski v. Kappos, 561 U.S. 593, 612, 95 USPQ2d 1001, 1010 (2010)).
With respect to the " accepting”, “obtaining” and transmitting“” limitations identified as insignificant extra-solution activity above when re-evaluated these elements are well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);" and thus remains insignificant extra-solution activity that does not provide significantly more.
Therefore, the claims as a whole do not change this conclusion and the claims are ineligible.
Claims 2, 3, 11, 16 and 20 depend from claims 1, 10, 15 and 19 and thus include all the limitations of claims 1, 10, 15 and 19, therefore claims 2, 3, 11, 16 and 20 recite the same abstract idea of “mental concepts”.
Claims 2, 3, 11, 16 and 20 furthermore recite:
(claims 2, 3, 11, 16 and 20) issue the browsing ticket; store issuing information, which is information regarding issuance of the browsing ticket; and accept the browsing ticket based on the issuing information; and
(claim 3) generating the data-reduced information by reducing the data volume of the product information and store the generated data-reduced information.
Step 1: Claims 2, 3, 11, 16 and 20 as a whole fall within one or more statutory categories.
Step 2A prong 1: Claims 2, 3, 11, 16 and 20 recite limitations that are abstract ideas.
The limitations “issue the browsing ticket” and “accept the browsing ticket based on the issuing information” limitations are mental steps. One can mentally decide to request data and permit the data request to a requesting user. Thus, the claimed limitations can be performed by the human mind.
The limitation “generating the data-reduced information by reducing the data volume of the product information” is a mental step. One can mentally perform this step. Thus, the claimed limitation can be performed by the human mind.
Step 2A prong 2:
The limitations “store issuing information, which is information regarding issuance of the browsing ticket” and “store the generated data-reduced information” are additional elements and are using of a computer or other machinery in its ordinary capacity for tasks such as storing data after the fact to an abstract idea (mental process) does not integrate a judicial exception into a practical application or provide significantly more.
The claims recite the following additional elements “another one or more processors”, note that these recited additional elements are a high-level recitation of generic computer components to perform the mental process and applied on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Step 2B: the conclusions for the additional elements representing mere implementation using a computer are carried over and do not provide significantly more.
Furthermore, the “storing” limitations identified as insignificant extra-solution activity above when re-evaluated these elements are well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), “iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93” and thus remains insignificant extra-solution activity that does not provide significantly more.
Therefore, claims 2, 3, 11, 16 and 20 as a whole do not change this conclusion and the claims are ineligible.
Claim 4 depends from claim 1, and thus includes all of the limitations of claim 1, therefore claim 4 recites the same abstract idea of “mental concepts”.
Claim 4 furthermore recites transmitting the browsing ticket to the browsing person designated by a user.
Step 1: Claim 4 as a whole falls within one or more statutory categories.
Step 2A prong 1: Claim 4 recites limitations that are abstract ideas because it depends from claim 1 that recites mental concepts.
Step 2A prong 2:
The limitation “transmitting the browsing ticket to the browsing person designated by a user”. This limitation is an additional element and is insignificant extra-solution activity as retrieval/receiving of data (i.e. mere data gathering) such as 'obtaining information' as identified in MPEP 2106.05(g) and does not provide integration into a practical application.
The claim recites the following additional elements “another one or more processors”, note that these recited additional elements are a high-level recitation of generic computer components to perform the mental process and applied on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Step 2B: the conclusions for the additional elements representing mere implementation using a computer are carried over and do not provide significantly more.
With respect to the " transmitting“” limitation identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);" and thus remains insignificant extra-solution activity that does not provide significantly more.
Therefore, claim 4 as a whole does not change this conclusion and the claim is ineligible.
To expedite a complete examination of the instant application, the claims rejected under 35 U.S.C. 101 (nonstatutory) above are further rejected as set forth below in anticipation of applicant amending these claims to place them within the four statutory categories of the invention.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 10, 11, 15, 16, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPub 2001/0028363 by Nomoto et al (hereafter Nomoto), in view of US 2019/0286326 by Pabon, and further of US Patent 6,085,234 issued to Pitts et al (hereafter Pitts).
Referring to claim 1, Nomoto discloses an information browsing system [Abstract], comprising an information browsing device [file managing device 1, Fig 1, para 42], a file exchange device [large scale storage resources composed of external devices, para 44] and an apparatus operated by a browsing person [member computers 3, Fig 1, para 42], wherein
the information browsing device comprises:
another one or more processors that are separate and distinct from the one or more processors of the file exchange device and that execute computer-executable instructions stored in a memory of the information browsing device, [personal computers, para 42, 47, 48], wherein the another one or more processors of the information browsing device execute the computer-executable instructions to cause the information browsing system to:
accept via the file exchange device a presentation of a browsing ticket from the apparatus operated by the browsing person [operation page (that includes RFSS and LFSS diagrams (5,7) of authorized member is sent to member computer 3 and displayed on its web browser when the member wants to use the storage resource through accessing a utilization page from the web server, para 46, 48, Fig 2]; and
in a case that the browsing ticket has been accepted, allow the browsing person to browse data-reduced information corresponding to product information specified by the browsing ticket [once member has been authorized, the operation page is displayed to member including the preview image 9, para 48, see Fig 2], wherein
the data-reduced information is obtained by reducing data volume of the product information [preview image of data of a file uploaded from a member is created having a file size smaller than the original file- downloaded and stored in the storage resource, para 68-69, Fig 3A-B- Examiner submits that the smaller file size of the preview image reads on the reduction of data volume since the file occupies a smaller storage space due to its smaller size- this is consistent with the instant specification that describes that reducing data volume implies an action of making the data volume (data size) smaller, see para 52 of instant specification],
the data-reduced information is browsed in a state in which communication is established between the information browsing device, the file exchange device, and the apparatus operated by the browsing person [the file is received by the file managing device 1 that is uploaded from a member computer 3, a preview image created and then downloaded i.e. communication is established between the file managing device, member computer and storage resource, see para 68, 64],
the product information is at least one of Computer-Aided Design data, Computer-Aided Engineering data, or Computer Graphics data [preview image may be in formats such as GIF or JPEG, para 69],
information browsed by the browsing person through the apparatus after the browsing ticket has been accepted is the data-reduced information [preview image format, para 69],
the information browsing device is configured to allow the data-reduced information to be browsed by the browsing person without using application software that was used when the product information was created [preview function obviates the need to start an application software to view a downloaded file each time the user wishes to take a look at the content of a received file, para 67]; and
the presentation of the browsing ticket is allowed upon logging in from the apparatus operated by the browsing person [wherein the file managing device requires an access password in order to download the file or preview image data when the password string entered is verified as the correct password, para 15], and
the data-reduced information supplied from the information browsing device is transmitted from the file exchange device to the apparatus operated by the browsing person, whereby the data-reduced information is browsed by the browsing person [operation page (that includes RFSS and LFSS diagrams (5,7) of authorized member is sent to member computer 3 and displayed on its web browser when the member wants to use the storage resource through accessing a utilization page from the web server, para 46, 48, Fig 2; once member has been authorized, the operation page is displayed to member including the preview image 9, para 48, see Fig 2].
While Nomoto discloses all of the above claimed subject matter and also discloses displaying the contents of the preview image data [para 13], it remains silent as to: a data size of the data-reduced information is equal to or greater than 200 MB and equal to or lower than 10 GB; and that the file exchange device is separate and distinct from the information browsing device and comprises one or more processors that execute computer-executable instructions stored in a memory, wherein the one or more processors of the file exchange device execute the computer-executable instructions to allow the file exchange device to be logged in from the apparatus operated by the browsing person.
Pabon discloses that data volume/storage capacity of data is decreased from an initial storage capacity of 10 GB [para 41, 45-48] by a percentage step size e.g. 5% or 10% of initial storage capacity [para 49], which reads on the claimed a data size of the data-reduced information is equal to or greater than 200 MB and equal to or lower than 10 GB.
Nomoto and Pabon are analogous art because they are directed to the same field of endeavor- management of data storage through efficient data storage techniques. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the reduced size data of Nomoto to include the reduced storage volume capacity and step sizes of Pabon because it would achieve predictable results.
The ordinary skilled artisan would have been motivated to make this modification since both Nomoto and Pabon are directed to reducing data size/volume. The specific data volume/storage capacity and step size parameters of Pabon further refine the size of Nomoto’s reduced sized image.
Still referring to claim 1, while Nomoto/Pabon discloses all of the above claimed subject matter and also discloses that the file managing device 1 (reading on: information browsing device), Fig 1, para 42] comprises large scale storage resources (reading on: file exchange device) composed of external devices such as hard disks and DVD-RAMs that store the files [Nomoto, para 44], however Nomoto/Pabon remains silent as to the file managing device and external storage resources being separate and distinct computer devices with processors, memory and computer executable instructions to allow the file exchange device (i.e. the external storage resources) to be logged in from the apparatus operated by the browsing person.
Pitts discloses a network-infrastructure cache that provides proxy file services to a network of computers including client workstations 28,34 and remote servers 22a-f that permits any of the clients to exchange file data with any of the file servers 22a-f and vice versa [Abstract; col. 1, lines 26-57, Fig 1; Fig 4 and corresponding portions of specification]. Pitts also discloses that the remote servers are computers within the network of digital computers [col. 1, lines 26-29; Fig 1] and that the remote file servers 22a-f authenticate client SMB network file services protocol requests for granting permission to the client workstation 34 to access file data [col. 10, line 62- col. 11, line 13].
Nomoto, Pabon and Pitts are analogous art because they are directed to the same field of endeavor- management of stored data. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the file managing device that includes external storage resources on memory devices in Nomoto to have the storage resources stored on a separate computing device from the file managing device, as disclosed through the remote proxy servers exchanging file data with client devices in Pitts because it would achieve predictable results.
The ordinary skilled artisan would have been motivated to make this modification because having the file data stored on remote servers as in Pitts facilitates the enhancement of the remote external storage capabilities of Pabon through Pitt’s proxy services.
Referring to claim 10, the limitations of the claim are similar to those of claim 1, in the form of a device [Nomoto, Abstract]. As such, claim 10 is rejected for the same reasons as claim 1.
Referring to claim 15, the limitations of the claim are similar to those of claim 1, in the form of a method [Nomoto, Abstract]. As such, claim 15 is rejected for the same reasons as claim 1.
Referring to claim 19, the limitations of the claim are similar to those of claim 1, in the form of a program [Nomoto, para 47]. As such, claim 19 is rejected for the same reasons as claim 1.
Referring to claims 2, 11, 16 and 20, Nomoto/Pabon/Pitts discloses that the another one or more processors of the information browsing device further cause the information browsing device to: issue the browsing ticket; store issuing information, which is information regarding issuance of the browsing ticket; and accept the browsing ticket based on the issuing information [Nomoto, operation page includes user name/ member id which is used to authenticate the user as a member, para 46, 48-49, Fig 2].
Referring to claim 3, Nomoto/Pabon/Pitts discloses generating the data-reduced information by reducing the data volume of the product information and store the generated data-reduced information [Nomoto, preview image of data of a file uploaded from a member is created having a file size smaller than the original file- downloaded and stored in the storage resource, para 68-69, Fig 3A-B].
Referring to claim 4, Nomoto/Pabon/Pitts discloses transmitting the browsing ticket to the browsing person designated by a user [Nomoto, operation page is sent to requesting member, para 46 and 48].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Alloul et al (US 6,032,130) directed to: an adaptive configurable electronic catalog that displays portions of catalog product data to user based on time [col. 11, lines 3-37]; and
Schwab (US 2004/0250083) directed to storing, retrieving, displaying and communicating text and data compressed image files to authorized users [Abstract; para 2-4].
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 CHERYL M SHECHTMAN whose telephone number is (571)272-4018. The examiner can normally be reached on Mon-Fri: 8am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Ng can be reached on 571-270-1698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CHERYL M SHECHTMANPatent Examiner
Art Unit 2164
/C.M.S//AMY NG/Supervisory Patent Examiner, Art Unit 2164
Prosecution Insights