DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/12/2026 has been entered.
Status of Claims
• The following is an office action in response to the communication filed 08/12/2026.
• Claims 1-6, 9-12, and 15-18 have been amended.
• Claims 1-18 are currently pending and have been examined.
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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of Application No. JP 2022045061, filed on 03/22/2022 has been received.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is 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.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1-8 and 11-14 are directed to a machine, claims 9 and 15-16 are directed to a process, and claims 10 and 17-18 are directed to a manufacture. Therefore, claims 1-18 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
manage a user associated with customer identification information for identifying a customer, a user associated with the customer identification information, and items of introduction object identification information for identifying introduction objects introduced and associated with the customer identification information;
acquire use history information including a number of times functions were used, the use history information being acquired by receiving log information that stores when the functions are executed;
acquire action history information including a number of products purchased by the user;
calculate difference information for one introduction object of the introduction objects, the one introduction object being identified by one item of the items of introduction object information, the difference information indicating a difference between pre-introduction history information for a predetermined period before introduction of the one introduction object and post-introduction history information for a predetermined period after the introduction of the one introduction object, based on the use history information and the action history information;
generate difference information notification information including difference information and analysis result storage destination information indicating a storage destination of an analysis result obtained by an analysis on the difference information; and
the difference information notification information to cause to display the difference information notification information,
wherein the difference information includes: first difference information indicating a difference in the number of times the functions were used before and after the introduction of the one introduction object, and
second difference information indicating a difference in the number of products purchased before and after the introduction of the one introduction object, the products being difference from the one introduction object.
The above limitations recite the concept of determining difference information in user activity after an object is introduced. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Specifically, the invention relates to marketing or sales activities. This is illustrated in page 1, lines 17-21 of the Specification, describing the invention as product sales. Furthermore, the limitations, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgements, and opinions. Specifically, the limitations of managing, acquiring information, and calculating are all observations and evaluations that could be performed in the human mind or by a human using pen and paper. Independent claims 9-10 recite similar limitations as claim 1 and, as such, fall within the same identified groupings of abstract ideas. Accordingly, under Prong One of Step 2A of the MPEP, claims 1 and 9-10 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claim 1 and 9-10 recite additional elements, such as a recommendation management apparatus; circuitry; a user device; the functions are executed in the user device; difference information notification screen information; transmitting data; a communication terminal; a display; and a non-transitory computer-executable medium storing a program storing instructions which, when executed by a recommendation management apparatus, causes the recommendation management apparatus to execute processing. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 1 and 9-10 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 1 and 9-10 merely recite a commonplace business method (i.e., determining difference information in user activity after an object is introduced) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims 1 and 9-10 generally link the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claims 1 and 9-10 specifying that the abstract idea of determining difference information in user activity after an object is introduced is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 1 and 9-10 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1 and 9-10 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1 and 9-10 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 1 and 9-10 these claims recite additional elements, such as a recommendation management apparatus; circuitry; a user device; the functions are executed in the user device; difference information notification screen information; transmitting data; a communication terminal; a display; and a non-transitory computer-executable medium storing a program storing instructions which, when executed by a recommendation management apparatus, causes the recommendation management apparatus to execute processing. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 1 and 9-10 are manual processes, (e.g., receiving information, analyzing information, etc.). The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 1 and 9-10 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims 1 and 9-10 specifying that the abstract idea of determining difference information in user activity after an object is introduced is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 1 and 9-10 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 1 and 9-10 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 2-8 and 11-18, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. Dependent claims 2-8 and 11-18 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors and managing personal behavior or relationships or interactions between people. Additionally, the claims further fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgements, and opinions. Dependent claims 2-3, 7, 11-13, and 15-18 fail to identify additional elements and as such, are not indicative of integration into a practical application. Dependent claims 4-6, 8, and 14 further identify additional elements such as screen information, transmitting data, a multifunction peripheral, a scanner, a facsimile apparatus, an electronic whiteboard, a projector, a personal computer, a smartphone, and an interactive voice operation apparatus. Similar to discussion above the with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). As such, under Step 2A, dependent claims 2-8 and 11-18 are “directed to” an abstract idea. Similar to the discussion above with respect to claims 1 and 9-10, dependent claims 2-8 and 11-18 analyzed individually and as an ordered combination, invoke such additional elements as a tool to perform the abstract idea and merely indicate a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, and therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Accordingly, under the Alice/Mayo test, claims 1-18 are ineligible.
Subject Matter Allowable Over the Prior Art
Claims 1-18 are rejected under 35 U.S.C. 101, but would otherwise be allowable if these rejections can be overcome.
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant’s invention as the noted features amount to more than a predictable use of elements in the prior art.
The most relevant prior art made of record includes previously cited Hattori (US 20170135495 A1), hereinafter Hattori, newly cited Izumo et al. (US 20170337586 A1), hereinafter Izumo, previously cited Ono et al. (US 20170287047 A1), hereinafter Ono, newly cited Yoshinaga (US 20230289845 A1), hereinafter Yoshinaga, previously cited Kirkham et al. (US 20170169343 A1), hereinafter Kirkham, and previously cited NPL Reference U, initially cited in the Office action dated 10/02/2025.
Although individually the references teach concepts such as acquiring use history information, calculating a difference between pre-introduction and post-introduction history information, providing notifications of difference information, and differences in a number of times functions were used and a number of times products were purchased, none of the references teach nor render obvious the specific method of obtaining use history for a predetermined time period pre-introduction and post-introduction in order to determine a difference and provide a notification of difference information, where the differences include number of times functions were used and a number of times products were purchased, the products being different from the introduction object.
Previously cited Hattori discloses a recommendation method (Hattori: [0085-0086]). Hattori further discloses user authentication into a system (Hattori: [0192-0194]). Hattori additionally discloses using user health information to provide a recommendation (Hattori: [0085]). Hattori further discloses the health information in a predetermined period from the current time to a previous time is firstly analyzed as the health information of the user after the purchase, and the health information in a predetermined period from the time of the purchase to a previous time is analyzed as the health information of the user before the purchase. For instance, an average fatigue level in the latest one week and an average fatigue level in one week immediately before the purchase may be analyzed. A comparison may be performed between the result of the analysis (the average fatigue level in one week immediately before the purchase) of the health information before the purchase, and the result of the analysis (the average fatigue level in the latest one week) of the health information after the purchase, whereby whether or not the health state of the user has improved is determined (Hattori: [0251]). However, Hattori does not disclose all of the limitations regarding the notification screen comprising difference information, the first difference information, and the second difference information.
Previously cited Izumo teaches a recommendation method (Izumo: [abstract]). Izumo further teaches the improvement degree of the number of purchases may be an index which is related to the amount of increase in the number of purchases attributable to recommendation of the target product, where it is assumed that the difference between the number of purchases performed by the recommended consumers within a fixed period before the recommendation period and the number of purchases performed by the recommended consumers within the fixed period during the recommendation period is the improvement degree of the recommended consumers (Izumo: [0054]). Yet Izumo does not explicitly teach the limitations regarding the use history, the difference notification, and the introduction object.
Previously cited Ono teaches a recommendation method (Ono: [abstract]). Ono further teaches usage information regarding a machine that includes the number of sheets copied, the number of sheets copied in two colors, the number of sheets printed, the number of sheets printed in two colors, the number of times receiving FAX data, the number of times transmitting FAX data, and the number of times of inputting data by scanning (Ono: [0046]). Ono additionally discloses tracking usage information before and after installation of an apparatus (Ono: [0095-0096]). However, Ono does not explicitly teach the limitations regarding the different products, the difference notification, and the introduction object.
Newly cited Yoshinaga teaches an estimation system (Yoshinaga: [abstract]). Yoshinaga further teaches a display screen of an estimation result. The screen indicates that “purchasing rice” is the purchasing behavior with the highest probability that the target customer will be an excellent customer. The behavior of rice is presented as the recommended purchasing behavior. In FIG. 11, it is visualized that the possibility of becoming an excellent customer is increased by purchasing rice after continuously purchasing confectionery as the purchasing behavior (Shi: [0065-0066] and Figs. 9-11). Yet Yoshinaga does not teach the limitations regarding the introduction object and the difference in use of a function.
Previously cited Kirkham teaches a method of mobile app recommendations (Kirkham: [abstract]). User activity with respect to a personal computer may be tracked to determine app recommendations (Kirkham: [0005]). However, Kirkham does not explicitly teach the limitations regarding the different products, the difference notification, and the introduction object.
Previously cited NPL Reference U, initially cited in the Office action dated 10/02/2025, teaches determining user activity on a device. A determination is made as to whether there is a difference between expected user usage and actual usage. Usability issues on mobile apps may be determined. Yet U does not teach all of the limitations regarding the different products, the difference notification, and the introduction object.
While these references arguably teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Accordingly, claims 1 and 9-10, taken as a whole, are indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims allowable over the prior art/additional art. Claims 2-8 and 11-18 depend from claims 1 and 9-10, and therefore the dependent claims are also indicated as containing allowable subject matter.
The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of the Applicant's claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, filed 08/12/2026, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims are patent eligible because the claims recite “neither a mental observation nor a commercial or legal interaction.” (Remarks pages 13-14). The examiner disagrees. The MPEP enumerates groupings of abstract ideas, thereby synthesizing the holdings of various court decisions to facilitate examination. See MPEP 2106.04. Among the enumerated groupings is the Certain Methods of Organizing Human Activity grouping, which includes activity that falls within the enumerated sub-grouping of commercial or legal interactions, including advertising, marketing or sales activities or behaviors, and Mental Processes. With respect to the claims, the examiner notes a recommendation management apparatus; circuitry; a user device; the functions are executed in the user device; difference information notification screen information; transmitting data; a communication terminal; a display; and a non-transitory computer-executable medium storing a program storing instructions which, when executed by a recommendation management apparatus, causes the recommendation management apparatus to execute processing have been analyzed as additional elements and accordingly are not analyzed under Step 2A, Prong 1. The claims further recite limitations such as receiving log information, determining a difference, and displaying difference information. These amendments represent certain methods of organizing human activity. Page 1, lines 17-21 of the Specification illustrates this, describing the invention as pertaining to product sales. With respect to Applicant’s arguments regarding the specification, the examiner notes that claims are to be read in light of the Specification and further that the claims themselves pertain to sales and marketing activities regarding products purchased. Furthermore, the limitations, under their broadest reasonable interpretation, fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgements, and opinions. Specifically, the limitations of managing, acquiring information, and calculating are all observations and evaluations that could be performed in the human mind or by a human using pen and paper. Accordingly, these claims recite Certain Methods of Organizing Human Activity and Mental Processes.
Applicant argues the claims are integrated into a practical application because “the particularity of the machine and its integral use in performing the recited steps weigh in favor of integration” (Remarks pages 15-16). The examiner disagrees. The MPEP sets forth, in Step 2A Prong Two, that a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole “integrates the recited judicial exception into a practical application of that exception.” The evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole ‘integrates [the] judicial exception into a practical application [that] will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.’ While the application of a judicial exception by or with a particular machine is an important clue, it is not a stand-alone test for eligibility (see MPEP 2106.05(b)). A general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine (MPEP 2106l.05(b)). In the instant case, the claims include additional elements such as a recommendation management apparatus; circuitry; a user device; the functions are executed in the user device; difference information notification screen information; transmitting data; a communication terminal; a display; and a non-transitory computer-executable medium storing a program storing instructions which, when executed by a recommendation management apparatus, causes the recommendation management apparatus to execute processing. While these elements are recited, they are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of determining difference information in user activity after an object is introduced in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they merely amount to using the software architecture as a tool to perform the abstract idea. Thus, the claims are not integrated into a practical application.
Applicant argues the claims are patent eligible because the claims recite “[m]eaningful limitations beyond a technological environment” (Remarks page 16-17). The examiner disagrees. The MPEP sets forth, in Step 2A Prong Two, that a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole “integrates the recited judicial exception into a practical application of that exception.” The evaluation of Prong Two requires the use of the considerations identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole ‘integrates [the] judicial exception into a practical application [that] will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.’ In the instant case, the claims include additional elements such as a recommendation management apparatus; circuitry; a user device; the functions are executed in the user device; difference information notification screen information; transmitting data; a communication terminal; a display; and a non-transitory computer-executable medium storing a program storing instructions which, when executed by a recommendation management apparatus, causes the recommendation management apparatus to execute processing. While these elements are recited, they are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they merely amount to using the software architecture as a tool to perform the abstract idea.
Applicant argues the claims are patent eligible because “[t]he Office's reliance on FairWarning IP, LLC V. Iatric Systems, Inc. is respectfully misplaced…Ultramercial and Bilski are distinguishable for the same reason” (Remarks page 17). The examiner disagrees. The examiner notes that specifying a source of data, that relationship that data bears to an introduction objecy, and displaying of an analysis result are all activity that is encompassed by the abstract idea. The additional elements are merely recited in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks. Thus, the claims are similar to Ultramercial and Bilski. The claims are additionally similar to FairWarning in that they specify that the abstract idea of determining difference information in user activity after an object is introduced is executed in a computer environment, therefore merely indicating a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer. Thus, the claims are not integrated into a practical application.
Applicant argues that the examiner has not provided Berkheimer evidence to support the position that the claims are well-understood, routine, and conventional. (Remarks pages 17-18). The examiner disagrees. The examiner has not commented on whether the claims are well-understood, routine, and conventional, and as such, Berkheimer evidence is not required.
Applicant argues the claims provide significantly more because “[a] combination that requires three or four reference to assemble is not, on this record, well-understood, routine, and conventional” (Remarks page 18). The examiner disagrees. The question of whether a particular claimed invention is novel or obvious is "fully apart" from the question of whether it is eligible. Diamond v. Diehr, 450 U.S. 175, 190, 209 USPQ 1, 9 (1981). As made clear by the courts, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. See MPEP 2106.05(I). Accordingly, non-obviousness under 35 U.S.C, 103 has no bearing on the eligibility of the claims over 35 U.S.C. 101.
Applicant argues the dependent claims are eligible for the same reasons as the independent claims (Remarks page 19). The examiner disagrees. The independent claims are ineligible for the reasons discussed in the 101 rejection and response to remarks paragraphs above and the dependent claims are ineligible for the same reasons.
Conclusion
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/ANNA MAE MITROS/Examiner, Art Unit 3689
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