DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office action is in response to Applicant’s communication filed on September 16, 2025. Amendments to claims 1, 4, 7 and 8, and cancellation of claims 3, 5, and 6 have been entered. Claims 1, 4, 7 and 8 are pending and have been examined. The statement of reasons for the indication of allowable subject matter (over prior art) was already discussed in the Office action mailed on March 26, 2025 and hence not repeated here. The rejections and response to arguments are stated below.
Claim Rejections - 35 USC § 101
2. 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.
3. Claims 1, 4, 7 and 8 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim(s) recite(s) a method of outputting a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device; and restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices, which is considered a judicial exception because it falls under the categories of “Mathematical concepts” and “Certain Methods of organizing human activity” such as fundamental economic practice as well as commercial or legal interactions including agreements as discussed below. This judicial exception is not integrated into a practical application as discussed below. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Analysis
Step 1: In the instant case, exemplary claim 7 is directed to a method (process).
Step 2A – Prong One: The limitations of “A method for a secure data communication between a first information processing device and a plurality of server devices communicably connected to each other via a communication network, the method comprising:
storing confidential data in a database included in the first information processing device, the confidential data including stock number data including a brand code of stocks, a name of the stocks and a number of the stocks held by a manager of the stocks;
dividing, by a first processor included in the first information processing device, the confidential data stored in the database into a plurality of shares;
transmitting, by the first processor, a divided share of the plurality of shares in an encrypted state to each one of the plurality of server devices via the communication network, wherein at least the name of the stocks and the number of the stocks are encrypted;
acquiring, by a second processor included in each one of the plurality of server devices, the divided share in the encrypted state from the first information processing device via the communication network;
storing, by the second processor, the divided share acquired from the first information processing device in a non-volatile memory included in each one of the plurality of server devices;
acquiring, by the second processor, non-confidential data including stock price data including the brand code of the stocks and a price of the stocks without being encrypted by referring to the brand code included in the share;
executing, by the second processor, a secret calculation to calculate an appraised value of the stocks by multiplying the number of the stocks in the share stored in the non-volatile memory and the price of the stocks included in the non-confidential data for each brand, in an encrypted state;
outputting, by the second processor included in each one of the plurality of server devices, a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device; and
restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices,
wherein, in acquiring the divided share in the encrypted state, the second processor acquires the encrypted stock number data of all brands from the first information processing device, and
in acquiring the non-confidential data, the second processor acquires the stock price data of a brand for which the number of stocks held by the manager is other than zero among the stock price data of all brands by referring to the brand code”
as drafted, when considered collectively as an ordered combination without the italicized portions, is a process that, under the broadest reasonable interpretation, covers the categories of “Mathematical concepts” and “Certain Methods of organizing human activity” such as fundamental economic practice as well as commercial or legal interactions including agreements.
The steps of “dividing, by a first processor included in the first information processing device, the confidential data stored in the database into a plurality of shares;
transmitting, by the first processor, a divided share of the plurality of shares in an encrypted state to each one of the plurality of server devices via the communication network, wherein at least the name of the stocks and the number of the stocks are encrypted;
acquiring, by a second processor included in each one of the plurality of server devices, the divided share in the encrypted state from the first information processing device via the communication network;
storing, by the second processor, the divided share acquired from the first information processing device in a non-volatile memory included in each one of the plurality of server devices;
acquiring, by the second processor, non-confidential data including stock price data including the brand code of the stocks and a price of the stocks without being encrypted by referring to the brand code included in the share;
executing, by the second processor, a secret calculation to calculate an appraised value of the stocks by multiplying the number of the stocks in the share stored in the non-volatile memory and the price of the stocks included in the non-confidential data for each brand, in an encrypted state;
outputting, by the second processor included in each one of the plurality of server devices, a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device; and
restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices,
wherein, in acquiring the divided share in the encrypted state, the second processor acquires the encrypted stock number data of all brands from the first information processing device” considered collectively as an ordered combination are mathematical calculations using acquired data.
The steps of “executing, by the second processor, a secret calculation to calculate an appraised value of the stocks by multiplying the number of the stocks in the share stored in the non-volatile memory and the price of the stocks included in the non-confidential data for each brand, in an encrypted state; outputting, by the second processor included in each one of the plurality of server devices, a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device; and restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices” is a form of Certain Methods of organizing human activity including fulfilling agreements by providing a calculation result to one or a plurality of organizations or to another organization that needs the calculation result (See Specification [004]). Hence, the steps of the claim, considered collectively as an ordered combination without the italicized portions, covers the abstract categories of “Mathematical concepts” and “Certain Methods of organizing human activity”.
That is, other than, a system for a secure data communication, a first information processing device, a plurality of server devices, first information processing device comprising a database and a first processor; a communication network, a plurality of server devices comprising a second processor and a non-volatile memory; encryption of data; and secret calculation, nothing in the claim precludes the steps from being performed as mathematical calculations (Mathematical concepts) and outputting the calculation result to one or a plurality of organizations or to another organization that needs the calculation result (Certain Methods of organizing human activity). If the claim limitations, under the broadest reasonable interpretation, covers mathematical calculations and methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A – Prong Two: The judicial exception is not integrated into a practical application. In particular, the claim only recites the additional elements of a system comprising a first information processing device, a plurality of server devices, first information processing device comprising a database and a first processor; a communication network, a plurality of server devices comprising a second processor and a non-volatile memory; encryption of data; and secret calculation to perform all the steps. A plain reading of Figures 1, 3-4, 6 and 8 and associated descriptions in the Specification reveals that the system comprising
a first information processing device and a plurality of server devices, first information processing device comprising a database and a first processor are generic computer components suitably programmed to perform the associated functions. The communication network may be a generic communication network and the first processor, and the plurality of server devices comprising a second processor are broadly interpreted to include generic processors suitably programmed to perform the associated functions. The non-volatile memory may be generic non-volatile memory suitably programmed to store the corresponding data/information. The encryption of data and secret calculation are broadly interpreted to include suitably programmed generic methods of encryption of data and calculations. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements in all the steps are recited at a high-level of generality (i.e., as generic computer components performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, claim 7 is directed to an abstract idea.
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements (identified above) to perform the claimed steps amounts to no more than mere instructions to apply the exception using a generic computer component. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Hence, independent claim 7 is not patent eligible. Independent claims 1 and 8 are also not patent eligible based on similar reasoning and rationale.
Dependent claim 4, when analyzed as a whole is held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations only refine the abstract idea further.
For instance, in claim 4, the steps “wherein
the confidential data includes book value data of the stocks and transaction data indicating a sales amount of the stocks, and
the second processor is configured to calculate trading balance data on the basis of the book value data and the transaction data, and calculates a standard value of the stocks on the basis of the trading balance data calculated and the appraised value calculated” under the broadest reasonable interpretation, are further refinements of methods of organizing human activity because these steps describe the data used and further steps in the underlying process.
In the dependent claim, the judicial exception is not integrated into a practical application because the limitations are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. Also, the claim does not affect an improvement to another technology or technical field; the claim does not amount to an improvement to the functioning of a computer system itself; the claim does not affect a transformation or reduction of a particular article to a different state or thing; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment. In addition, the dependent claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself. For these reasons, the dependent claim also is not patent eligible.
Response to Arguments
4. In response to Applicants arguments on pages 10-16 of the Applicant’s remarks that the claims are patent-eligible under 35 USC 101 when considered under MPEP 2106, the Examiner respectfully disagrees.
The fact that the claims are Patent-Ineligible when considered under the MPEP 2106 has already been addressed in the rejection and hence not all the details of the rejection are repeated here.
Response to Applicants’ arguments regarding Step 2A – Prong one and Prong two:
The claim(s) recite(s) a method of outputting a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device; and restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices, which is considered a judicial exception because it falls under the categories of “Mathematical concepts” and “Certain Methods of organizing human activity” such as fundamental economic practice as well as commercial or legal interactions including agreements as discussed in the rejection.
The steps of “dividing, by a first processor included in the first information processing device, the confidential data stored in the database into a plurality of shares;
transmitting, by the first processor, a divided share of the plurality of shares in an encrypted state to each one of the plurality of server devices via the communication network, wherein at least the name of the stocks and the number of the stocks are encrypted;
acquiring, by a second processor included in each one of the plurality of server devices, the divided share in the encrypted state from the first information processing device via the communication network;
storing, by the second processor, the divided share acquired from the first information processing device in a non-volatile memory included in each one of the plurality of server devices;
acquiring, by the second processor, non-confidential data including stock price data including the brand code of the stocks and a price of the stocks without being encrypted by referring to the brand code included in the share;
executing, by the second processor, a secret calculation to calculate an appraised value of the stocks by multiplying the number of the stocks in the share stored in the non-volatile memory and the price of the stocks included in the non-confidential data for each brand, in an encrypted state;
outputting, by the second processor included in each one of the plurality of server devices, a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device; and
restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices,
wherein, in acquiring the divided share in the encrypted state, the second processor acquires the encrypted stock number data of all brands from the first information processing device” considered collectively as an ordered combination are mathematical calculations using acquired data.
The steps of “executing, by the second processor, a secret calculation to calculate an appraised value of the stocks by multiplying the number of the stocks in the share stored in the non-volatile memory and the price of the stocks included in the non-confidential data for each brand, in an encrypted state; outputting, by the second processor included in each one of the plurality of server devices, a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device; and restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices” is a form of Certain Methods of organizing human activity including fulfilling agreements by providing a calculation result to one or a plurality of organizations or to another organization that needs the calculation result (See Specification [004]). Hence, the steps of the claim, considered collectively as an ordered combination without the italicized portions, recite an abstract idea.
The steps of the claims (for example claim 7), and those recited on pages 10-13 of the remarks under the broadest reasonable interpretation, considered collectively as an ordered combination without the italicized portions covers the categories of “Mathematical concepts” and “Certain Methods of organizing human activity” such as fundamental economic practice as well as commercial or legal interactions including agreements, as discussed the rejection. These steps, considered collectively as an ordered combination, may at best be considered an improvement in the abstract idea of a method of outputting a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device and restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices. An improvement in abstract idea is still abstract (SAP America v. Investpic *2-3 (“We may assume that the techniques claimed are “groundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“A claim for a new abstract idea is still an abstract idea). The additional elements (identified in the rejection) are generic computer components used to apply the abstract idea. The decision to use encryption and secret distribution processing for some data and not to use encryption or secret distribution processing for other data is a business decision using the additional elements as tools in their normal capacity. It does not involve any improvements to another technology, technical field, or improvements to the functioning of the computer itself. The alleged benefits such as “improving the security of confidential data and reducing the processing load on the secret calculation ….. the secret of the confidential data is maintained” are due to improvements in the abstract idea of a method of outputting a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device and restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices.
The Examiner does not see the parallel between the Applicant’s claims and those in Example 41- Cryptographic Communications" in USPTO provided Subject Matter Eligibility Examples. Hence, the Applicants’ arguments are not persuasive.
As discussed in the analysis under Step 2A – Prong two above, the additional elements (identified in the rejection) do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, the claims are directed to an abstract idea.
Regarding applicant's arguments alleging that the claims do not wholly preempt the abstract idea or monopolize the judicial exception, the Supreme Court in Alice Corp. cautioned that merely limiting the use of an abstract idea “to a particular technological environment” or implementing the abstract idea on a “wholly generic computer” is not sufficient as an additional feature to provide “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice Corp., 134 Supreme Court. at 2358 (citations omitted). Although the Supreme Court has described “the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption,” see Alice Corp.,134 S. Ct. at 2354, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing pre-emption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). “[Preemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility.” Id. Also preemption is not a stand-alone test. Preemption concerns have been addressed by the examiner through the application of the 2019 PEG framework. Applicant’s attempt to show alternative uses of the abstract idea outside the scope of the claims does not change the conclusion that the claims are directed to patent ineligible subject matter. Similarly, Applicant’s attempt to show that the recited abstract idea is a very narrow and specific one is not persuasive. A specific abstract idea is still an abstract idea and is not eligible for patent protection without significantly elements more recited in the claim. In the present case, the claimed technology is nothing more than generic computer technology implementing an abstract idea. In Alice also the computer system was specifically programmed to execute the specifically claimed steps in Alice. It is noted that the issue is whether the claims preempt the abstract idea that is claimed. The abstract idea of the challenged claims is not only “a method of outputting a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device and restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices” in general, but also the specific types of “methods of outputting a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device and restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices”. And that the present claims do not preempt the field of a method of outputting a result of the secret calculation in an encrypted state to a second information processing device which is different from or the same as the first information processing device and restoring, by the second information processing device, a calculation result by using each result of the secret calculation output from each one of the plurality of server devices do not make them any less abstract. (See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (generating tasks in an insurance organization). Also, Ultramercial decision makes it clear that Patent Owner's arguments regarding pre-emption "are not a substitute for the proper two-part test under Alice". Hence, Applicants’ arguments are not persuasive.
Response to Applicants’ arguments regarding Step 2B:
As discussed in the rejection, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements (identified in the rejection) to perform the claimed steps, amount to no more than mere instructions to apply the exception using a generic computer component. The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The Applicant’s claims do not recite sufficient subject matter to take them from being in the realm of what is encompassed as an abstract idea into patentable subject matter and fail to add significantly more to “transform” the nature of the claims. Hence, the claims are not patent eligible. Therefore. The Applicant’s arguments are not persuasive.
For these reasons and those discussed in the rejection, the rejections under 35 USC § 101 are maintained.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
(a) Krishnamurthy; Manjunath Sargur et al. (US Pub. 2019/0005248 A1) discloses a computer-implemented system and method for selective dynamic encryption and decryption of data. The method may comprise the steps of identifying confidential data elements in a data table (e.g., confidential columns in a table) that contain confidential information; storing in a metastore behind a firewall the locations of the confidential data elements; intercepting a query to the database to add unencrypted confidential data elements; encrypting the unencrypted confidential data elements in computer memory; and transmitting to the public cloud the data table including the encrypted specific data elements and other data elements that have not been encrypted. The reverse process can be implemented for retrieving and selectively decrypting data stored in the cloud.
6. 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Narayanswamy Subramanian whose telephone number is (571) 272-6751. The examiner can normally be reached Monday-Friday from 9:00 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Abhishek Vyas can be reached at (571) 270-1836. The fax number for Formal or Official faxes and Draft to the Patent Office is (571) 273-8300.
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/Narayanswamy Subramanian/
Primary Examiner
Art Unit 3691
October 23, 2025