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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/03/26 has been entered. Claims 1, 5, and 6 are pending. The examiner will address applicant’s remarks at the end of this office action.
Claim Rejections - 35 USC § 112
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.
Claims 1, 5, 6, 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.
For claim 1, the scope of the claim is not clear with respect to the receiving of a notification from the box or from the rental device, and whether or not the language regarding the rental device is to receive patentable weight in the claims. Claim 1 recites that the server has circuitry that is configured to identify a user on the basis of user authentication information and to allow the identified user to automatically log in to the rental device in a case where the storage box or the rental device notifies that the rental device has been taken out of the storage box with an event indicating that the rental device has been taken out of the storage box as a trigger. The claim language recites that that the server receives a notification from either the storage box or the rental device in response to a triggering event; therefore, so the scope of the claim allows for the notification to be received from the storage box and not from the rental device. However, the claim further recites that the server is configured to receive a notification from the rental device indicating that the rental device has been taken out of the storage box in response to the rental device no longer being able to detect a beacon detectable only within the box as a trigger. This language seems to indicate that the notification is from the rental device and recites that the trigger is the use of the beacon as opposed to a more broadly recited event that is used as the trigger. This appears to contradict the previous claim language as far as the claim recites that the notification is from either the box or the rental device, so to what extent does the language about the rental device and the beacon receive weight? If the broadest reasonable interpretation of the claim scope is that the server can be configured to receive the notification from the box or the rental device, which allows for the notification to be received from the box, what weight is to be given to the last 4 lines of the claim? This is not clear and renders the claim indefinite. Also, the claims recite the situation under which the rental device notifies the server, but the claim language at issue is simply reciting the ability of the server to receive a notification, where the rental device is not being claimed as actually sending the notification. The applicant argues in the most recent reply that the rental device is not part of the scope for the system, which then leads to the question of how much weight this language is to receive. If the rental device is not part of the claim scope, and the claim element is reciting the mere ability of the server to receive a notification, the receiving of the notification is not going to be further defined by reciting the source of the notification that is not part of the claim scope. One wishing to avoid infringement would not know if the rental device is part of the claim scope or not, and under what conditions infringement would occur. One wishing to avoid infringement would also not know to what extent claiming the source of the notification (the rental device that applicant states is not to be interpreted as part of the claim scope) defines anything to the ability of the server to receive a notification. Also, defining what the notification indicates or says does not define anything to the act of receiving the notification by the server, in the opinion of the examiner. But again, the scope of the claim is not clear because of the above lanague. This renders the claim indefinite.
For claim 6, the same issue that was addressed above is found in claim 6. If the rental device is not supposed to be part of the claim scope as argued by the applicant, then the examine questions whether or not the claim simply recite the ability for the server to receive a notification with nothing else receiving weight? Or is the claim reciting that the rental device is actually detecting the beacon that is only detectable in the box? Claim 6 also recites that the server is configured to acquire information from the storage box or the rental device, but the claim then goes on to recite more about how the rental device is the source of the notification to the server. This confusion renders the claim indefinite, just like claim 1.
For purposes of claim interpretation, the examiner has considered the broadest reasonable interpretation of the claim to be that the server can receive the notification from the box, where the language reciting the rental device and sending a notification to the server not being required in the claim scope. This is due to the claim reciting “from the storage box or the rental device”, and because the applicant has argued in the most recent remarks that the rental device is not part of the claim scope. If that is true, then the broadest reasonable interpretation of the claim is that the server can receive the notification from the storage box, where the specifics of the notification from the rental device and the situation under which the notification is received from the rental device are not a required element of the claim scope. The claims are reciting the functions performed by the server and have not been interpreted as including the functions performed by the rental device, which agrees with the argument the applicant has made in the reply. This interpretation is made as the claim is best understood by the examiner due to the indefiniteness of the claims.
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, 5, 6, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a system and pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of managing the rental of a rental device.
For claim 1, the abstract idea is defined by the elements of:
automatically manage rental and return of a rental device stored in the storage box of the rental storage structure
transmit information associated with the rental device and user authentication information obtained through user authentication
acquire a unique device code unique to the rental device from the information associated with the rental device;
instruct the box to unlock; and
identify a user on the basis of the user authentication information and allow the identified user to automatically log in to the rental device in a case where the storage box or the rental device notifies that the rental device has been taken out of the storage box with an event indicating that the rental device has been taken out of the storage box as a trigger,
wherein the server is configured to receive a notification from the rental device indicating that the rental device has been taken out of the storage box in response to the rental device no longer being able to detect a beacon detectable only within the box as a trigger [NOTE: this element is claiming that the server can receive a notification, what the notification states or conveys to a reader is non-functional descriptive material that is akin to printed matter, and that does not define anything more to the ability of the server to receive a notification]
For claim 6, the abstract idea is defined by the elements of:
automatically manage rental and return of a rental device stored in
acquire information associated with the rental device and a unique device code unique to the rental device from the storage box or the rental device with an event indicating that the rental device has been returned to the storage box as a trigger;
instruct the storage box to lock in a case where it is notified that the storage box has been closed; and
automatically log out a rental device corresponding to the acquired unique device code,
wherein a box unique code unique to a storage box that stores the rental device is used as information associated with the rental device, and
in response to the rental device detecting a beacon detectable only within the storage box and acquiring the box unique code from the storage box, the server is configured to receive, from the rental device, the acquired box unique code and the acquired unique device code [NOTE: this element is claiming that the server can receive the claimed information, which is the ability to receive a notification, what the notification states or conveys to a reader is non-functional descriptive material that is akin to printed matter, and that does not define anything more to the ability of the server to receive a notification that includes the claimed data]
The above limitations are reciting a process where a rental device is rented out and/or returned and notification of such is received. The renting of items is a fundamental economic practice that represents a certain method of organizing human activities. The claimed use of the claimed information to instruct the box be unlocked, and that allows the user to obtain the rental device codes, are all elements that are part of a rental process which are part of the abstract idea. The renting out and the return of the rented device as is reflected by the above noted limitations from claims 1 and 6, constitutes a certain method of organizing human activities.
For claim 1, the additional elements are considered to be the recitation to the rental storage structure that includes at least one lockable storage box, a terminal to be operated by a user, and the server with processing circuitry that is performing the abstract idea steps of acquiring the claimed data, instructing the box to unlock, identifying a user on the basis of…., and that is able to receive notifications from either the box or the rental device.
For claim 6, the additional elements are the server with processing circuitry configured to perform the steps that defines the abstract idea and the rental storage structure that includes at least one lockable storage box.
This judicial exception is not integrated into a practical application (2ⁿᵈ prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device(s) that are being used as a tool to execute the abstract idea, see MPEP 2106.05(f), and a field of use limitation that is reciting the rental storage structure that includes a lockable box. The claimed terminal and the server with the claimed structure is/are reciting a general purpose type of computer or an electronic device. All computers have the ability to acquire information, and all computer have the ability to transmit information and perform actions based on programming. For this reason the claimed processing circuitry and functionality of the server does not recite more than a general purpose type of computer device. The server is simply reciting computer implementation for the steps that are defining the abstract idea that is an instruction for one to use a computer to execute the abstract idea. The rental storage structure that includes at least one lockable box is recited broadly and it taken as a field of use limitation that is reciting the intended use of the claimed system. The storage structure with the lockable box is not claimed as doing anything in the claims. The function of the server being able to receive a notification from the box is claimed, but the box itself is not even recited as being used to send the notification. Other than claiming the rental storage structure with a lockable box as structure in the system, the claimed element is not functionally doing anything in the claims and for that reason does not amount to more than a field of use limitation that links the abstract idea to a lockable box for containing a rented item. Overall, for the claimed additional elements in combination with the claim as a whole, the claim is simply instructing one to practice the abstract idea by using a generically recited computing device(s) (terminal, server) to perform steps that define the abstract idea in combination with a field of use limitation that claims the rental storage structure that includes a lockable box. This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination with the claim as a whole because they do not amount to more than simply instructing one to practice the abstract idea by using a computing device(s) as a tool to execute the abstract idea, see MPEP 2106.05(f) with a claim to a field of use limitation that is reciting the storage structure with a lockable box that is not functionally doing anything in the claim, only the functions of the sever are being recited. This does not render the claims as being eligible for the same reasons set forth above for the 2nd prong.. When the issue at hand in a claim is the implementation of an abstract idea by a computer, the rationale set forth for the 2ⁿᵈ prong of the eligibility test above is also applicable to step 2B in this regard because of the overlapping considerations between the 2ⁿᵈ prong and step 2B. The same is noted for a field of use limitation. The claimed additional elements in combination with the claim as a whole, are simply instructing one to practice the abstract idea by using a generically recited computing device(s) (terminal, server) to perform steps that define the abstract idea in combination with a field of use limitation that claims the rental storage structure that includes a lockable box. This does not amount to claiming significantly more than the abstract idea.
Therefore, claims 1 and 6 do not recite any additional elements that provide for integration at the 2ⁿᵈ prong or that provide significantly more at step 2B. Therefore claims 1 and 6 are not considered to be eligible.
For claim 5, the box unique code that is unique to the box and storing the code for the box and for the rental item are further elements that are part of the abstract idea. The claim is reciting the storage of information that can be done using pen and paper. The claimed referral to the storage is also part of the abstract idea as a person can look at written down data to read it. The additional elements of the terminal and the server have been treated in the same manner that was set forth for claims 1, 6, to which the applicant is referred. The claims do not recite any additional elements that provide for integration at the 2ⁿᵈ prong or that provide significantly more at step 2B. Therefore claims 5 and 12 are not considered to be eligible.
Therefore, for the above reasons, Claims 1, 5, 6, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5, 6, is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Maruyama (20220076324). The applicant is reminded that the claim interpretation set forth in the 112b rejection has been used for the following rejection, that is based on what is believed to be the broadest reasonable interpretation of the claim language.
For claims 1, 5, 6, Maruyama discloses a computer rental system that rents computers such as laptops to users, see paragraph 003, 076. The laptops are stored in a locker type storage system that includes a storage box for each rental laptop. See figures 1-2. The system of Maruyama is an automated rental system as is the system disclosed by the applicant.
Maruyama discloses the claimed terminal that can be operated by a user. The terminal is the display device 12 that allows a user to interact with the system to affect a rental. The claimed server is satisfied by server 50. The server can communicate with the terminal, the laptops, and with the box itself. See paragraphs 104-105.
The claimed rental device is the computers that are housed/stored in the box of the locker storage system as is shown in the figurers. Maruyama calls the rental computers “Terminals” in the disclosure, which is the same as the claimed rental device.
The server of Maruyama acquires information from the terminal as claimed. Disclosed is that a user holds an IC card over a card reader of the terminal so that user authentication to occur. This satisfies the claimed identification of the user on the basis of authentication information. See paragraph 115. This also satisfies the part of the claim that is reciting the user as being allowed to log in to the rented device (the computer can be used once it is rented and removed).
For the locking or unlocking of the box, paragraph 111 discloses a locking mechanism that locks and unlocks the rental devices from the box. Also see paragraphs 006, 070, 076, where the locking and unlocking of the box to allow for the return or removal of the rental device is disclosed.
The claimed event that acts as a trigger is also disclosed by Maruyama in paragraphs 016, 070, 091, 110, 111, 120. Disclosed is that a user has to disconnect a cable from the computer to be able to remove it for use and to start the rental. Upon return, the user has to reconnect the cable for the rental to be over and for the laptop to be locked into the box again. The connection and disconnection of the cable in the box is detected and is used to indicate start of a rental or the return of a rental. The satisfies the claimed event that is used as a trigger, where the box is notifying the server of removal and//or return of the rental item.
The claimed unique code for the rental device is satisfied by the use of a QR code for the rental item, see paragraph 047. Disclosed is that QR codes are attached to the rental device and are used to identify the device. Upon the return of a laptop to the box, the user is logged off because Maruyama teaches that the computer is returned to its initiate state before rental, see paragraph 013. If a user remained logged on, returning the computer to its initial before rental state would log the user off. Therefore, for the above reasons, Maruyama anticipates what is claimed.
Response to arguments
With respect to the 112b rejection, the rejection for the language of “locker-type” has been rendered moot by the amendment to the claims. The applicant has also argued that the claims have been clarified to make it clear that the rental device is not a part of the claimed system. In reply the examiner notes that this is not clear from the claim language as written (see 112b rejection) and if that is true, then the scope of the claim is only directed to the acts of the server where the server has the ability to receive a notification. The source of the notification and claiming that the rental device or the box is actually transmitting or sending the notification is not claimed, just the act of receiving the notification. For this reason the scope of the claim is still not clear as to whether or not the rental device is part of the claimed system. The claims recite the situation under which the rental device indicates that the rental device has been removed/returned by detecting or not detecting a beacon that is only detectable in the box. If the rental device is not being claimed as part of the system, then does this mean that the claim is just reciting the ability of the server to receive a notification from the box such as when using a trigger event that is the disconnection of a cable? The scope of the claim is not clear and is still considered to be indefinite.
For the 35 USC 101 rejection, the argument is not persuasive. The applicant argues that the claimed features are significantly more than a broad process where a rental device is rented out and returned, because the claims are for an improvement to a specific type of structure to allow for automated rentals and returns. This is not persuasive. The storage structure that includes one or more lockable boxes is taken as a field of use limitation where the lockable boxes and/or the storage structure as a whole is not being improved in any manner by the claimed invention. The storage structure with lockable boxes is not functionally recited in the claims as doing anything, it is just the intended use of the rental method that could equally be used with store and a lockable door for the store that contains rentable items. The positive recitation to the storage structure with one or more lockable boxes is taken as a field of use limitation that does not render the claims eligible. The applicant is referred to the 35 USC 101 rejection in this regard. Claiming the storage structure with one or more lockable boxes does not amount to claiming significantly more. The argument is not persuasive. The claims are directed to the abstract idea of managing the rental of a rental device that is being removed or returned. The argument is not persuasive. The rejection under 35 USC 101 is being maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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/DENNIS W RUHL/ Primary Examiner, Art Unit 3626