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 .
Status of Claims
Claims 1, 3-7, and 13-15 are pending in this application.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-7, and 13-15 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 7 include the following elements – “one second memory” and “one second processor”. These elements appear to have no support in the original abstract, specification or drawings. Specification only discloses one memory (represented by 2A in drawings) and one processor (represented by 1A in drawings). Introduction of new matter is not allowed in amendments to the Claims (MPEP 2163.06).
Claims 3-6 and 13-15 are rejected by virtue of dependency on a rejected based claim.
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, 3-7, and 13-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 3-7, and 13-15 are directed to a system or method, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method claim 7 as the claim that represents the claimed invention for analysis and is similar to independent system claim 1. Claim 7 recites the limitations of receiving and displaying companies financial information side by side for performance comparison.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Receiving an input of “material information” on a target company (note, the term “material information” is not specifically defined, and can be any information related to the target company. The term, “target company” is also not specifically defined, and can be any company); displaying a “size input” indicating display size for each selected information; outputting the material information… on side by side based on the “size input”; creating reference target companies based on fiscal years… grouping of targets through a data transmission path; acquiring results; calculating a degree of similarity between each pair of reference targets; controlling each model to group target based on degree of similarity; controlling a majority vote of results; group target based on majority vote; determining a group for target companies corresponding to a target fiscal year; extracting target belonging to the determined group other than reference target on the target fiscal year; display the extracted data with the reference target; and first reference target includes (1) first financial indicator; (2) first technical indicator which relates to temporal change over multiple years; and (3) generated first expert indicator by processing first financial indicator according to a predetermined rule; and first expert indicator is different form first financial indicator and first technical indicator – specifically, the claim recites “receive an input that selects at least one from among a plurality of pieces of material information being a material for evaluating a target company; receive, when a plurality of pieces of the material information are selected, a display size input indicating a display size for each of a plurality of selected pieces of material information; output, when the plurality of pieces of the material information are selected… displays the plurality of selected pieces of the material information side by side based on the display size input; create a plurality of reference targets, based on data on a plurality of fiscal years of a plurality of companies, each of the plurality of reference targets including data on one fiscal year of one company… execute a process related to grouping the plurality of reference targets thorough a data transmission path; acquire a result of the process from the apparatus thorough the data transmission path; calculate a degree of similarity between each pair of the plurality of reference targets; control each of a plurality of models to perform grouping of the plurality of reference targets based on the degree of similarity to obtain a plurality of results; control a majority vote on the plurality of results; group the plurality of reference targets based on the majority vote; determine a group to which a reference target corresponding to a target fiscal year of the target company belongs; extract, as similar data, reference targets belonging to the determined group other than the reference target on the target fiscal year of the target company; and display a list of the extracted similar data together the reference target corresponding to the target fiscal year of the target company, wherein a first reference target on a first fiscal year of a first company includes: a first financial indicator indicating a financial state for the first fiscal year of the first company, a first technical indicator relating to temporal change of the first financial indicator over multiple fiscal years up to the first fiscal year, and a first expert indicator generated by processing the first financial indicator according to a predetermined rule, the first expert indicator being different from the first financial indicator and the first technical indicator”, recites a fundamental economic practice, directed to mitigating risk.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice or commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activity and Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Claim 7 is also abstract for similar reasons.
The “an information provision apparatus”, “a peripheral circuit”, “one first memory”, “one second memory”, “first instructions”, “second instructions”, “one first processor”, “one second processor”, “a screen”, “a data transmission path”, and “a plurality of models”, in claim 1; and the additional technical element of “a computer” in claim 7, are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claim 7 is also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of: a computer such as an information provision apparatus, a peripheral circuit, one first processor, one second processor, and a computer; a communication device such as a screen and a data transmission path; a storage unit such as one first memory and one second memory; and software module and algorithm such as first instructions, second instructions and a plurality of models. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claims 1 and 7 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1 and 7 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their respective independent claims 1 and 7 and thus correspond to Certain Methods of Organizing Human Activity, and hence are abstract for the reasons presented above.
Dependent claim 3 discloses the limitation of wherein the plurality of pieces of the material information include information indicating growth and deterioration predictions after the target period of the target company being computed based on the financial indicator, the technical indicator, and the expert indicator, which further narrows the abstract idea.
Dependent claim 4 discloses the limitation of wherein the plurality of pieces of the material information include information indicating a basis of growth and deterioration predictions after the target period of the target company by using the financial indicator, the technical indicator, and as the expert indicator, which further narrows the abstract idea.
Dependent claim 5 discloses the limitation of wherein the plurality of pieces of the material information include information indicating at least one another company whose state is determined based on the financial indicator, the technical indicator, which further narrows the abstract idea.
Dependent claim 6 discloses the limitation of wherein the plurality of pieces of the material information include information comparing, with data about the target company, data about another company whose state is determined based on at least one of a the financial indicator, the technical indicator, and the expert indicator, which further narrows the abstract idea.
Dependent claim 13 discloses the limitation of wherein the at least one first processor is further configured to execute the one or more first instructions to: adjust the display size for each of the plurality of selected pieces of the material information so that the plurality of selected pieces of the material information do not overlap each other, which further narrows the abstract idea. Note that the technical element “one processor” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 14 discloses the limitation of wherein the at least one first memory is provided between the at least one first processor and the peripheral circuit, which further narrows the abstract idea. Note that the technical elements “the memory”, “at least one processor”, and “the peripheral circuit”, are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 15 discloses the limitation of wherein the peripheral circuit comprises a plurality of modules, which further narrows the abstract idea. Note that the technical elements “the peripheral circuit” and “a plurality of modules”, are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Thus, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, the claims 1, 3-7, and 13-15 are not patent-eligible.
Response to Arguments
Applicant's arguments filed 8/29/25 have been fully considered but they are not persuasive.
In response to applicant's argument that:
“35 U.S.C. § 101… Independent claim 1, as amended… (reciting the amended claim),”
the examiner respectfully disagrees. In comparison to the prior version, the added elements (see underlined) and deleted elements (if any, struck out with a line) are essentially:
(1) “at least one first memory configured to store one or more first instructions; at least one second memory configured to store one or more second instructions; at least one first processor; and at least one second processor”; and
(2) “control the at least one second processor to execute the one or more second instructions to perform a process related to grouping the plurality of reference targets”;
These changes are not sufficient to overcome the 35 U.S.C. § 101 rejections because: for 101 analysis purpose, this is just stating (corresponding to the numberings above):
that there are 2 memories and 2 processors. While these can be helpful to overcome the 35 U.S.C. § 101 rejections, there are several issues.
First, these newly added elements – “one second memory” and “one second processor” – are subjected to new matters 112(a) rejection. See Claim Rejections - 35 USC § 112(a) above.
Second, it is not clear if these newly added elements are part of a single functioning system (and not just elements belonging to various entities/parties/systems claimed and not claimed). This lack of clarity lends weight to the idea that they belong to a second entity/party/system. The examiner came to this conclusion in view of the specification and drawings. Among many things, the specification discloses 2 apparatuses – the “information provision apparatus” and “similar company extraction apparatus” (see para 63-65). The “similar company extraction apparatus” is the apparatus that does the grouping (the same function being carried out by the “one second processor”, according to the newly amended claim). Note, in the prior claim version, instead of the “one second processor”, it was “an apparatus different from the information provision apparatus” (now deleted). But the specification does not state how the “similar company extraction apparatus” fit into the system being claimed. Similarly, the drawing’s system component schematic is devoid of both the “similar company extraction apparatus” and the “one second processor”, suggesting that they don’t belong the system being claimed. See FIG. 1. Having 2 parties (each with their own memory and processor) communicating and processing data is not a technological improvement, it’s similar to a supermarket checkout process that involves a POS device detecting the items being purchased, a bank or credit card issuer system for credit check and approval, and a user’s device such as cell phone/credit card.
Note that the examiner had made it explicitly clear to the applicant that “the various technical elements (existing and added) should be part of a single functioning system being claimed – i.e., together, they should (1) be a singular/stand-alone technical system that is carrying out the abstract idea, (2) not be just another way of describing a “generic computer” or part of a “generic computer”, AND (3) not be elements belonging to various entities/parties/systems claimed and not claimed. Lastly, any added technical elements and their functions should be supported by the specification and drawings (emphasis added)” See the 8/26/25 Examiner Interview. and
based on the above discussion in (i), this could be just stating that the claimed system sends signal to a second entity/party/system to do something (grouping the reference targets), just like a supermarket a POS device asking a bank or credit card issuer system to conduct a credit check. This is just a procedure and an abstract ideas. There is nothing technical about it.
Note also that the technical elements, “one second memory” and “one second processor”, are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
In response to applicant's argument that:
“independent claim 1 is amended to recite features related to multiple processors that operate together to provide an improved information provision apparatus,”
the examiner respectfully disagrees. Again, these newly added elements – “one second memory” and “one second processor” – are subjected to new matters 112(a) rejection. See Claim Rejections - 35 USC § 112(a) above. Second, it is not clear if these newly added elements are part of a single functioning system (and not just elements belonging to various entities/parties/systems claimed and not claimed).
In response to applicant's argument that:
“amended claim 1 recites at least one first processor and at least one second processor, and indicates the at least one first processor is configured to control "the at least one second processor to execute the one or more second instructions to perform a process related to grouping,”
the examiner respectfully disagrees. Because it is not clear if these newly added elements are part of a single functioning system, having 2 parties (each with their own memory and processor) communicating and processing data is not a technological improvement. See above for more detail discussion.
In response to applicant's argument that:
“these features are not directed to "commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)." Therefore, the features are not related to certain methods of organizing human activity,”
the examiner respectfully disagrees. As stated in the prior office action:
“The claims recites a fundamental economic practice of comparing companies on a side by side display, this is could mitigate risk by facilitating comprehension of companies financials for company’s insiders and investors (or potential investors/traders).”
In response to applicant's argument that:
“practical application. For example, the claimed features relate to a distributed processing architecture in which multiple processors operate together to provide the technical advantage of improving overall system performance by offloading the computationally intensive grouping process to another processor,”
the examiner respectfully disagrees. It is not clear if this is a distributed processing architecture because it is not clear if these newly added elements are part of a single functioning system or just having 2 parties (each with their own memory and processor) communicating and processing data. See above for more detail discussion.
In response to applicant's argument that:
“claim 13 requires adjusting "the display size… This is a specific algorithm for optimally utilizing limited screen space, not just displaying information… provide a technical improvement to solve a problem in computer UIs itself,”
the examiner respectfully disagrees. There is no “specific algorithm” disclosed. Everything is mentioned at such a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK H GAW whose telephone number is (571)270-0268. The examiner can normally be reached Mon-Fri: 9am -5pm.
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, Mike Anderson can be reached on 571 270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK H GAW/Examiner, Art Unit 3693