DETAILED ACTION
1. 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 .
2. Status of Claims and Application
Claims 1-7, 11-13 and 16 are pending.
Claims 1-7, 11-13 and 16 were amended or newly added in the Applicant’s filing(s) on 6/05/2026.
This office action is being issued in response to the Applicant's filing(s) on 6/05/2026.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 12 recites a method comprising:
acquiring, from a first terminal device in which equipment owned by a user is registered on a purchases list, equipment information indicating the equipment;
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., registered). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Additionally, the claim elements pertain to nonfunctional descriptive (i.e., the purchases list) material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claims 1 and 16, due to similar claim language, results in a similar claim interpretation. Claims 1 and 16 are system claims wherein the claimed invention is defined by the server. While the server may be acquiring information from the first terminal device, the functions performed by the first terminal device and other data stored on the first terminal device are outside the scope of the server.
Claim 13, due to similar claim language, results in a similar claim interpretation. Claim 13 is a computer-readable medium claim causing a computer to perform a series of method steps. While the computer executing the program may be acquiring information from the first terminal device, the functions performed by the first terminal device and other data stored on the first terminal device are outside the scope of the computer executing the program.
Claim 12 recites a method comprising:
determining whether or not there is a demand for the equipment in the secondhand products trading market on a basis of the transaction result;
when determining that there is a demand,
transmitting, to the first terminal device regardless of whether or not the equipment registered on the purchases list matches equipment registered on a favorites list of another user, a listing solicitation notice for prompting listing of the equipment on the secondhand products trading market, the listing solicitation notice including an indication that the demand has been determined to exist.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “when determining that there is demand” in Claim 12 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met. For example, the determination is made that there is no demand. Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternative interpretation is merely the claim limitation(s) based upon the con1dition(s) are not triggered or performed.
Claim 12 recites a method comprising:
when receiving, from the first terminal device, a notice generated by the first terminal device in response to a user operation indicating that listing of the equipment indicated by the equipment information on the secondhand products trading market is being considered by a user of the first terminal device;
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., generated in response to a user operation). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claims 1 and 16, due to similar claim language, results in a similar claim interpretation. Claims 1 and 16 are system claims wherein the claimed invention is defined by the server. While the server may be acquiring information from the first terminal device, the functions performed by the first terminal device and other data stored on the first terminal device are outside the scope of the server.
Claim 13, due to similar claim language, results in a similar claim interpretation. Claim 13 is a computer-readable medium claim causing a computer to perform a series of method steps. While the computer executing the program may be acquiring information from the first terminal device, the functions performed by the first terminal device and other data stored on the first terminal device are outside the scope of the computer executing the program.
4. 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 1-7, 11-13 and 16 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system to perform a method and/or computer-readable medium containing instructions, when executed, causes a computer to perform a method comprising:
acquiring from a first [entity] in which equipment owned by a user is registered on a purchases list, equipment information indicating the equipment;
acquiring a transaction result of the equipment indicated by the equipment information acquired in a secondhand products trading market;
determining whether or not there is a demand for the equipment in the secondhand products trading market on a basis of the transaction result;
when determining that there is a demand,
transmitting, to the first [entity] regardless of whether or not the equipment registered on the purchases list matches equipment registered on a favorites list of another user, a listing solicitation notice for prompting listing of the equipment on the secondhand products trading market, the listing solicitation notice including an indication that the demand has been determined to exist, and
calculating and transmitting a representative value of a transaction price of the equipment in the secondhand products trading market to the first [entity];
when receiving from, the first [entity], a notice generated by the first [entity] in response to a user operation indicating that listing of the equipment indicated by the equipment information on the secondhand products trading market is being considered by a user of the first [entity];
determining a recommended listing price of the equipment, on a basis of the representative value and at least one of a usage condition of the equipment and a warranty status of the equipment, and
transmitting the recommended listing price of the equipment, calculated on the basis of the representative value and the at least one of the usage condition of the equipment and the warranty status of the equipment, to the first [entity];
when receiving, from the first [entity], a notice indicating that the equipment is to be listed on the secondhand products trading market,
searching, on a basis of favorites lists respectively stored in association with a plurality of users, for at least one second [entity] owned by a user who has registered the equipment indicated by the equipment information in a favorites list, and
transmitting a notice indicating that the equipment has been listed on the secondhand products trading market to the second [entity] searched;
when receiving, from the second [entity], a notice indicating an intention of purchasing the equipment indicated by the equipment information,
transmitting a notice indicating that there is a prospective purchaser to the first [entity];
when receiving, from the first [entity], a notice indicating an intention of selling the equipment,
determining that a transaction of the equipment has been established on a basis of the notice indicating the intention of purchasing the equipment and the notice indicating the intention of selling the equipment,
generating transaction information including at least a final transaction price and a transaction date, and
transmitting a notice indicating that a transaction of the equipment has been established, including the at least the final transaction price and the transaction date, to the second [entity].
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to determine demand for an asset, determine a price for an asset and complete a sale for an asset in a marketplace which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes the claimed invention determines a representative value and recommended price for an asset, and OIP Techs., Inc. v. Amazon.com, Inc. (Fed. Cir. 2015) states that methods of “price optimization was to be found a fundamental economic concept.” See MPEP §2106.04(a)(2)(II)(A), citing OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1092.
Additionally, these limitations, as drafted, under their broadest reasonable interpretation, cover a series of steps instructing how to manage a marketplace which qualifies as a commercial or legal interaction, a subcategory of certain methods of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(B).
Additionally, these limitations, as drafted, under their broadest reasonable interpretation, cover a series of steps instructing a person how to manage relationships between a buyer and a seller in a marketplace which qualifies as managing personal behavior or relationships or interactions between people, a subcategory of certain methods of organizing human activity, an enumerated grouping of abstract ideas. MPEP §2106.04(a)(2)(II)(C).
Additionally, these limitations, as drafted, under their broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a processor (Claim(s) 1, 11 and 16), a program (Claim(s) 1, 11 and 16), a memory (Claims(s) 1, 11 and 16), and wherein the entities are terminal device(s) (Claim(s) 1, 11, 12, 13 and 16).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
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.
DEPENDENT CLAIMS
Dependent Claim(s) 2-7 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
No additional computer components other than those found in the respective independent claims are recited, thus it is presumed that the claim is further utilizing the same generically recited computer.
As such, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
5. Claim Rejections - 35 USC § 112(b)
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 1-7, 11-13 and 16 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.
Claim 12 recites a method comprising:
when receiving, from the first terminal device, a notice generated by the first terminal device in response to a user operation indicating that listing of the equipment indicated by the equipment information on the secondhand products trading market is being considered by a user of the first terminal device.
Does Applicant mean that the method comprises receiving a notice indicating that the listing is being considered? Or does the Applicant mean that the method comprises receiving a notice in response to a user operation, wherein the user operation indicates that the listing is being considered? Is the claim limitation defining the notice or the user operations that generated the notice?
Additionally, Claim 12, as written, contains terms that are subjective or determinations of whether the claim limitations are satisfied are subjective. Specifically, said claims contain terminology such as whether something “is being considered [i.e., thought about] by a user.” Claims are indefinite in circumstances where a claim contains a term that is completely dependent on a person’s subjective opinion. See MPEP §2173.05(b)(IV). As such, claims containing the cited claim limitations are rejected under §112, 2nd paragraph.
Claims 1, 11, 13 and 16, due to similar claim language, result in a similar claim rejection.
Claim 11 recites an information processing system comprising:
a first terminal device in which equipment owned by a user is registered on a purchases list;
a processor to execute a program; and
a memory to store the program which, when executed by the processor, performs processes including:
acquiring, from the first terminal device, equipment information indicating the equipment.
Does the claimed information processing system comprise a first terminal device and a second device? Or is the claimed information processing system just the first terminal device?
Claim 11 recites that the information processing system comprises a first terminal device and that the system acquires information from the first terminal device. Assumedly, a device outside the first terminal device is acquiring information from the first terminal device. The first terminal device is not acquiring information from itself.
However, if the information processing system a first terminal device and a second device then the information processing system contains at least two processors and two memories, one set in the first terminal device and one set in the second device.
6. Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4, 6, 7, 11-13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Luchene (US PG Pub. 2006/0206413) in view of Ryan (US PG Pub. 2002/0198761).
Regarding Claim 12, Van Luchene discloses an information processing method comprising:
acquiring, from a first terminal device (seller device) in which equipment (item) owned by a user is registered on a purchases list, equipment information (information describing the item) indicating the equipment (item). (see abstract; para. 59);
acquiring a transaction result (buyer offer information) of the equipment (item) indicated by the equipment information acquired in a secondhand products trading market. (see para. 78-79 and 86);
determining whether or not there is a demand (demand) for the equipment in the secondhand products trading market on a basis of the transaction result (buyer offer information). (see para. 78-79 and 86);
when determining that there is a demand, transmitting, to the first terminal device (seller device), regardless of whether or not the equipment registered on the purchases list matches equipment registered on a favorites list of another user, a listing solicitation notice for prompting listing of the equipment on the secondhand products trading market, the listing solicitation notice including an indication that the demand has been determined to exist (probability that the item will sell). (see para. 222);
calculating and transmitting a representative value of a transaction price (appropriate price) of the equipment in the secondhand market to the first terminal device (seller device). (see 237-238);
when receiving, from the first terminal device (seller device), a notice generated by the first terminal device (seller device) in response to a user operation indicating that listing of the equipment indicated by the equipment information on the secondhand products trading market is being considered by a user of the first terminal device (seller selects one of a plurality of appropriate prices). (see para. 238);
determining a recommended listing price (actual price including a subsidy) based on the representative value (appropriate price) and at least one of a usage condition (quality) of the equipment and a warranty status of the equipment. (see para. 94-99 and 238);
transmitting the recommended listing price (actual price including a subsidy), calculated on the basis of the representative value (appropriate price) and the at least one of the usage condition (quality) and the warranty status of the equipment, to the first terminal device (seller device). (see para. 67 and 229);
when receiving, from the first terminal device (seller device), a notice (offer to sell or OTS) indicating that the equipment (item) is to be listed on the secondhand products trading market (secondary market). (see abstract; para. 54);
searching, on a basis of favorites lists (offer to buy or OTB) respectively stored in association with a plurality of users, for at least one second terminal device (buyer device) owned by a user who has registered the equipment (item) indicated by the equipment information in a favorites list. (see para. 55-56);
transmitting a notice indicating that the equipment has been listed on the secondhand products trading market to the second terminal device searched (notify the buyer of the completed match). (see para. 66 and 120);
when receiving, from the second terminal device (buyer device), a notice indicating an intention of purchasing the equipment indicated by the equipment information, transmitting a notice indicating that there is a prospective purchaser to the first terminal device (notify the seller of the completed match). (see para. 66 and 120);
when receiving, from the first terminal device (seller device) a notice indicating an intention of selling the equipment,
determining that a transaction of the equipment has been established on a basis of the notice indicating the intention of purchasing the equipment and the notice indicating the intention of selling the equipment, generating transaction information including at least a final transaction price and a transaction date. (see para. 193); and
transmitting a notice indicating that a transaction of the equipment has been established, including the at least the final transaction price and the transaction date, to the second terminal device (buyer device) (see para. 120 and 193).
Van Luchene does not explicitly teach a method comprising, receiving, from the first terminal, a notice indicating that the equipment is to be listed on the secondhand products trading market. However, in Van Luchene, all communications with a first terminal (seller device) prior to listing equipment for sale is an indication that the equipment is to be listed on the secondhand products trading market, as those communications are in furtherance of the listing.
Regardless, Ryan discloses an information processing method comprising:
acquiring, from a first terminal device (dealer management system) in which equipment owned by a user is registered on a purchases list, equipment information (inventory information) indicating the equipment (vehicle). (see fig. 2A; para. 21-27);
acquiring a transaction result (sales history) of the equipment (vehicle) indicated by the equipment information acquired in a secondhand products trading market. (see fig. 2A; abstract; para. 27); and
determining whether or not there is a demand (demand) for the equipment in the secondhand products trading market on a basis of the transaction result (sales history). (see fig. 2A; abstract; para. 27);
when determining that there is demand,
transmitting, to the first terminal device, regardless of whether or not the equipment registered on the purchases list matches equipment registered on a favorites list of another user, a listing solicitation notice for prompting listing of the equipment on the secondhand products trading market (invite dealer to participate in a market or notification to each dealer), the listing solicitation notice including an indication that the demand has been determined to exist. (see fig. 2B; para. 27);
calculating a representative value (purchase price, minimum sales price or wholesale price) of a transaction price of the equipment in the secondhand market. (see para. 21, 24 and 45; and Table 1);
when receiving, from the first terminal device,
a notice (agreement) generated by the first terminal device in response to a user operation indicating that listing of the equipment indicated by the equipment information on the secondhand products trading market is being considered by a user of the first terminal device (to participate in the marketing arrangement organized and directed by the market maker system). (see para. 27 and 30);
determining the representative value (purchase price, minimum sales price or wholesale price) and at least one of a usage condition (condition) of the equipment and a warranty status of the equipment. (see para. 21 and Table 1);
when receiving, from the first terminal device,
a notice (agreement) indicating that the equipment is to be listed on the secondhand products trading market (to participate in the marketing arrangement organized and directed by the market maker system). (see para. 27 and 30).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Van Luchene to incorporate communications with the first terminal (seller device), as suggested by Van Luchene and disclosed by Ryan, thereby ensuring that the seller was kept apprised and informed concerning all stages of the sale process.
Regarding Claim 1, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Regarding Claim 2, Van Luchene discloses an equipment management server wherein the processes include:
acquiring a number of transactions (number of interested buyers) as the transaction result, in the secondhand products trading market, of the equipment indicated by the equipment information acquired. (see para. 91).
Van Luchene does not explicitly teach an equipment management server wherein the processes include determining that there is a demand for the equipment in the secondhand products trading market when a number of transactions during the a most recent period is larger than a number during a preceding period and/or the number of transactions during the most recent period is equal to or larger than a threshold.
However, Van Luchene does recognize when a number of transactions during the most recent period is larger than a number during a future period (fewer offers after a holiday). (see para. 83). Van Luchene also differentiates between amounts of demand (demand is large) based on the number of transactions during the most recent period. (see para. 91).
Regardless, Ryan discloses an equipment management server wherein the processes include:
acquiring a number of transactions (number of units) as the transaction result, in the secondhand products trading market, of the equipment indicated by the equipment information (inventory and sales information) acquired. (see para. 27)
determining that there is a demand for the equipment in the secondhand products trading market when a number of transactions during the a most recent period is larger than a number during a preceding period and/or the number of transactions (number of units) during the most recent period is equal to or larger than a threshold (pre-set threshold). (see para. 27).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Van Luchene and Ryan to incorporate a threshold to determine demand, as suggested by Van Luchene and disclosed by Ryan, thereby objectively quantifying the demand.
Regarding Claim 3, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Regarding Claim 4, Van Luchene discloses an equipment management server wherein the processes include calculating the recommended listing price using one or more of the usage condition (quality) of the equipment indicated by the equipment information and the warranty status of the equipment indicated by the equipment information obtained from at least one of an operation log of the equipment, information stored in a storage device (offer to sell database or a quality class database), and information acquired from a manufacturer's server. (see para. 155-161 and 164-169).
Regarding Claim 6, Van Luchene discloses an equipment management server wherein the processes include transmitting one or more of a profile of a user who has listed the equipment indicated by the equipment information on the secondhand products trading market and a transaction result of the user (associated with the appropriate item price to the buyer, subsidy offer or updates) stored in a storage device and acquired by the equipment management server to the second terminal device (buyer device) searched. (see para. 124, 229 and 266).
Regarding Claims 7, 11, 13 and 16, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Luchene and Ryan, as applied to Claim 4 above, and further in view of Price (US PG 2019/0166211).
Regarding Claim 5, Van Luchene discloses an equipment management server wherein the processes include calculating the recommended price using one or more of the usage condition (quality) of the equipment and the warranty status of the equipment indicated by the equipment information. (see para. 94-99 and 238).
Van Luchene does not explicitly teach an equipment management server wherein the equipment indicated by the equipment information is an IoT device (Internet-of-Things device), although Van Luchene does disclose utilizing an IoT device (Internet-enabled device) to communicate with the equipment management server. (see Claim 62).
Van Luchene does not teach an equipment management server wherein the processes include acquiring an operation log of the equipment; or determining the usage condition of the equipment from the at least one of a total operating time and a usage frequency included in the operation log.
Price discloses an equipment management server (interaction monitoring system) wherein, when the equipment indicated by the equipment information is an IoT device (see para. 51), the processes include:
acquiring an operation log of the equipment (log data). (see para. 51); and
determining the usage condition of the equipment from the at least one of a total operating time (total operating time of the device) and a usage frequency included in the operation log (log data). (see para. 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Van Luchene and Ryan to incorporate an operation log data of an IoT devices, as disclosed by Price, thereby obtaining the needed condition and usage data directly from the equipment itself.
7. Response to Arguments
Applicants’ arguments with respect to the pending claims have been considered. Some arguments have been rendered moot based upon new references utilized in the current rejection. However, some arguments remain relevant, as they apply to a reference and/or rejection still utilized in the current rejection. Such arguments have been fully considered but are not persuasive and are addressed below.
§101 Rejection
Step 2B
Applicant argues that the additional elements amount to “significantly more” than the abstract idea and, as such, satisfies Step 2B of the §101 Guidelines. See Arguments, pp. 21-24.
The Examiner respectfully disagrees.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
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.
Additionally, Applicant argues that the claimed invention is analogous to Bascom Global Internet Services v. AT&T Mobility, LLC (Fed. Cir. 2016) and, as such, satisfies Step 2B of the §101 Guidelines. See Arguments, pp. 21-22.
The Examiner respectfully disagrees.
The court in Bascom Global Internet Services v. AT&T Mobility, LLC (Fed. Cir. 2016) stated:
However, we disagree with the district court's analysis of the ordered combination of limitations. In light of Mayo and Alice, it is of course now standard for a § 101 inquiry to consider whether various claim elements simply recite “well-understood, routine, conventional activit[ies].” Alice, 134 S. Ct. at 2359. The district court's analysis in this case, however, looks similar to an obviousness analysis under 35 U.S.C. §103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces. See Bascom Global Internet Services v. AT&T Mobility, LLC, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016).
Alice established that a §101 analysis requires consideration whether the individual claim elements (i.e., the computerized activity) are more than "well-understood, routine, conventional" activities. Bascom stated that the §101 analysis requires more than just analyzing each claim element, by itself, in isolation, but should also consider the claim elements in combination, as the “inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”
The claimed invention in the instant case recites performance of a series of well-understood, routine and conventional computerized activities, such as receiving/transmitting data and performing calculations. While the claimed invention employs these well-understood, routine and conventional computer functions to a particular end, such as receiving/transmitting a specific type of data and performing a specific calculation, the underlying computer functions are still well-understood, routine and conventional computerized activities.
Examiner notes that receiving and transmitting data over a network is a court-established well-understood, routine and conventional computerized activity. See MPEP §2106.05(d)(II). Additionally, mere data gathering is insignificant extra-solution activity. See MPEP §2106.05(g).
Examiner also notes that performing repetitive calculations is a court-established well-understood, routine and conventional computerized activity. See MPEP §2106.05(d)(II).
Viewing the claim elements, as an ordered combination, does not reveal a "non-conventional and non-generic arrangement of known, conventional pieces” but rather a conventional and generic arrangement of well-understood, routine and conventional computerized functions.
8. Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 September 27, 2026
