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. Election/Restrictions
Applicant’s election without traverse of Claims 1-7, 11-13 and 16 in the reply filed on 2/10/2026 is acknowledged.
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 1 recites a system to perform a process to transmit, to the first terminal device, a listing solicitation notice prompting listing of the equipment on the secondhand products trading market when the process determines that there is a demand.
Claim elements pertain to nonfunctional descriptive 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 11-13 and 16 have a similar interpretation.
Claim 6 recites a system wherein the process transmits 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 to the second terminal device searched.
Claim elements pertain to nonfunctional descriptive 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).
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, …, equipment information indicating the equipment;
acquiring a transaction result of the equipment indicated by the equipment information acquired in a secondhand products trading market, and determine whether or not there is a demand for the equipment in the secondhand products trading market on a basis of the transaction result; and
transmitting, …, a listing solicitation notice prompting listing of the equipment on the secondhand products trading market when the process determines that there is a demand.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to determine demand 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).
Additionally, these limitations, as drafted, under its 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 processing circuitry (Claim(s) 1 and 16), a terminal device (Claim(s) 1, 11-13 and 16), an equipment information acquirer (Claim(s) 11), a demand determiner (Claim(s) 11), and a solicitation notice transmitter (Claim(s) 11).
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.
Dependent Claim(s) recite additional elements (i.e., computer elements) of a second terminal device (Claim(s) 3).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
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 utilizing the same rationale as previously asserted against the independent claims.
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 2-7 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 2 recites a system wherein the process:
determines that there is a demand for the equipment in the secondhand products trading market when the number of transactions tends to increase or the number of transactions is equal to or larger than a threshold.
Does this mean that the system is obtaining the number of transactions at two different time intervals and determining whether the number of transactions has increased from time-one to time-two?
If so, does this mean that the increase is being compared against a threshold (e.g., an increase of at least one sale every week) or does the threshold only pertain to the number of transactions?
What does the “tends to increase” mean? There is either an increase in the number of transactions or there is no increase in the number of transactions.
Claim 3 recites a system performing a process comprising:
to search for a second terminal device owned by a user who is likely to purchase the equipment indicated by the equipment information when receiving a notice indicating that the equipment is listed on the secondhand products trading market from the first terminal device.
Claims 3, as written, contain terms that are subjective or determinations of whether the claim limitations are satisfied are subjective. Specifically, said claims contain terminology such as whether a user “is likely to purchase the equipment indicated by the equipment information when receiving a notice indicating that the equipment is listed on the secondhand products trading market from the first terminal device.” 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.
Claim 3 recites a system performing a process comprising:
receiving, from the first terminal device, a notice indicating that listing of the equipment indicated by the equipment information on the secondhand products trading market is considered.
What does “is considered” mean?
Does this mean that the process comprises receiving notice to list the equipment on the secondhand product trading market and the equipment is listed on the secondhand trading marketplace? Or does this mean that notice to list the equipment on the secondhand products trading market is being considered (e.g., “I am thinking about it. It’s under consideration”), but no actual approval to list equipment has been received and no equipment has been listed on the secondhand products trading market?
Claims 4-7 are rejected based upon their dependency to Claim 3.
Appropriate correction is requested.
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) 1-2, 11-13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ryan (US PG Pub. 2002/0198761).
Regarding Claim 1, Ryan discloses an equipment management server comprising:
processing circuitry to perform a process to:
acquire (collect), from a first system (dealer management system) in which equipment (vehicles) owned by a user (dealer) is registered, equipment information (inventory information) indicating the equipment (vehicle). (see para. 21-27);
acquire a transaction result (demand) of the equipment (vehicles) indicated by the equipment information (inventory) acquired in a secondhand products (used or previously leased cars) trading market (market maker), and determine whether or not there is a demand for the equipment in the secondhand products trading market on a basis of the transaction result (demand exceeds threshold). (see abstract; para. 27); and
transmit, to the first system, a listing solicitation notice prompting listing of the equipment on the secondhand products trading market when the process determines that there is a demand.
Ryan does not explicitly teach a method wherein the process acquires information from a first terminal or transmits a notice to a first terminal, although Ryan discloses performing those functions with a system (dealer management system) wherein the system is composed of or connected to individual terminal devices (each lease company’s computer system). (see para. 21).
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 Ryan to incorporate a first terminal, as suggested by Ryan, thereby enabling the equipment management server to directly communicate with the first user.
Regarding Claim 2, Ryan discloses an equipment management server wherein the process:
acquires 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) and;
determines that there is a demand for the equipment in the secondhand products trading market when the number of transactions tends to increase or the number of transactions (number of units) is equal to or larger than a threshold (pre-set threshold). (see para. 27).
Regarding Claims 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) 3, 4, 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ryan, as applied to Claim 1 above, and further in view of Endras (US PG Pub. 2015/0348142).
Regarding Claim 3, Ryan discloses an equipment management server wherein:
the process transmits a representative value of a transaction price (minimum sales price or wholesale price) of the equipment in the secondhand products trading market to the first terminal device. (see para. 24 and 45);
receiving, from the first terminal device, a notice indicating that listing of the equipment indicated by the equipment information on the secondhand products trading market is considered. (see para. 27), wherein:
the process further comprising:
to search (identify) for a second terminal device owned by a user who is likely to purchase the equipment (dealers who have demand) indicated by the equipment information (sales and inventory information) when receiving a notice (invitation) indicating that the equipment is listed on the secondhand products trading market from the first terminal device. (see para. 27 and 50);
to transmit a notice indicating that the equipment has been listed on the secondhand products trading market to the second terminal device searched. (see para. 53), the process further comprising:
to search for the first terminal device that registers equipment not listed on the secondhand products trading market when receiving a purchase offer (demand) for the equipment not listed on the secondhand products trading market from a terminal device (dealer having demand) different from the first terminal device (dealer having supply). (see para. 27); and
to transmit a notice indicating that the purchase offer (demand) for the equipment is presented to the first terminal device searched, and when receiving, from the first terminal device (dealer having supply), a notice indicating an intention of selling the equipment not listed on the secondhand products trading market, transmit a notice indicating that a transaction of the equipment not listed on the secondhand products trading market has been established or a transaction condition of the equipment to the terminal device that has transmitted the purchase offer. (see para. 27).
Ryan does not teach a server wherein the process comprising to calculate a recommended listing price which is a listing price recommended for the equipment in the secondhand products trading market on a basis of a representative value of a transaction price of the equipment in the secondhand products trading market; transmits a representative value of a transaction price of the equipment in the secondhand products trading market to the first terminal device, the process further comprising:
Endras discloses an equipment management server wherein:
to calculate a recommended listing price (maximum potential wholesale value) which is a listing price recommended for the equipment in the secondhand products trading market on a basis of a representative value of a transaction price of the equipment in the secondhand products trading market. (see para. 14);
the process transmits a representative value (assessed value) of a transaction price of the equipment in the secondhand products trading market to the first terminal device. (see abstract).
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 Ryan to incorporate calculation of a recommended price, as disclosed by Endras, thereby a purchaser to have their ideal price generated on their behalf, eliminating the need for its personal calculation.
Regarding Claim 4, Ryan does not teach an equipment management server wherein when calculating the recommended listing price on a basis of the representative value of the transaction price of the equipment, the process calculates the recommended listing price using one or more of a usage condition of the equipment indicated by the equipment information and a warranty status of the equipment indicated by the equipment information.
Endras discloses an equipment management server wherein when calculating the recommended listing price on a basis of the representative value of the transaction price of the equipment, the process calculates the recommended listing price using one or more of a usage condition of the equipment indicated by the equipment information and a warranty status of the equipment indicated by the equipment information. (see fig. 1; para. 9, 14 and 46-63).
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 Ryan and Endras to incorporate assessment of usage condition of equipment into calculation of a recommended price for said equipment, as disclosed by Endras, as condition of an item is a standard and conventional metric by which to determine the value of an item.
Regarding Claim 6, Ryan discloses an equipment management server wherein the process transmits 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 (to list vehicle) to the second terminal device searched. (see para. 50).
Regarding Claim 7, Ryan discloses an equipment management server the process comprising:
to transmit a notice indicating that there is a prospective purchaser (demand) to the first terminal device when receiving a notice indicating an intention of purchasing (demand) the equipment indicated by the equipment information from the second terminal device, and to transmit a notice indicating that a transaction of the equipment has been established to the second terminal device when receiving a notice indicating an intention of selling the equipment from the first terminal device.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ryan and Endra, as applied to Claim 4 above, and further in view of Martin (US PG Pub. 2019/0095963).
Regarding Claim 5, Ryan does not teach a server wherein when the equipment indicated by the equipment information is an IoT device, the process acquires an operation log of the equipment, checks the usage condition of the equipment from the operation log, and calculates the recommended listing price using one or more of the usage condition of the equipment and the warranty status of the equipment indicated by the equipment information.
Endras discloses a server wherein when the equipment indicated by the equipment information is a device (vehicle), the process acquires an operation log of the equipment, checks the usage condition of the equipment from the operation log, and calculates the recommended listing price using one or more of the usage condition of the equipment and the warranty status of the equipment indicated by the equipment information. (see fig. 1; para. 9, 14 and 46-63).
Martin discloses a server wherein when the equipment indicated by the equipment information is an IoT device (tamper-proof networked sensors), the process acquires an operation log (deficiency reports) of the equipment, checks the usage condition of the equipment from the operation log, and calculates the recommended listing price (fair market value) using one or more of the usage condition of the equipment and the warranty status of the equipment indicated by the equipment information. (see para. 33).
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 Ryan and Endras to incorporate an IoT device, as suggested by Martin, as an IoT device is a standard and conventional means by which to record and transmit condition advice.
7. Conclusion
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.
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, RYAN D. DONLON can be reached at (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 March 10, 2026