Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to the communications filed 11/25/2025. As per the claims filed 11/25/2025:
Claim 1 was amended.
Claim 2 was added.
Claims 1-2 are pending.
Claim(s) 1 is/are independent claim(s).
Note Regarding Prior Art
Examiner cites particular columns, paragraphs, figures and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Note Regarding AIA Status
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claim 1 objected to because of the following informalities:
Claim 1 includes language in parenthesis and quotations in multiple instances. In the case of lines 11, 13 it reads: a "first importance level" (= determination grounds information importance) set for each of said determination grounds information and (ii) a "second importance level" (= determination material configuration code importance). The use of parenthesis and quotations introduce some level of ambiguity into the claim. The “(=” combination is objected because it is unclear whether it refers to an equivalency. The Examiner suggests amending the claim language to eliminate the quotes and parenthesis (i.e. a first importance level consisting of a determination grounds information importance set for each of said determination grounds information).
Appropriate correction is required.
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 1-2 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites a method, thus an apparatus, one of the four statutory categories of patentable subject matter. However Claim 1 further recites A method for information processing that enables computerization of a work requiring "determination result" in which all requests related to a plurality of determination materials are reflected comprising:(a) a step of generating, based on requests related to the determination, all combinations of information serving as grounds for determination (hereinafter, referred to as "determination grounds information"), which are set for each minimum configuration unit of determination material (hereinafter, referred to as "determination material configuration code") (b) a step of [causing a computer] to calculate an overall importance level for each of generated said all combinations of determination grounds information by combining and calculating:(i) a "first importance level" (= determination grounds information importance) set for each of said determination grounds information and (ii) a "second importance level" (= determination material configuration code importance) set for each of said determination material configuration code (c) a step of [causing the computer] to rearrange generated said all combinations of determination grounds information in order of the overall importance level based on calculated said overall importance level; and(d) a step of [causing the computer] to search a table that associates combinations of determination grounds information with determination result information based on said rearranged combinations of determination grounds information, and to output the determination result information in importance order, which is an evaluation or judgement that can be performed in the human mind or with the help of pen and paper thus falling within the mental process grouping of abstract ideas. The claim is analogous to a human performing such determinations after analyzing data in front of him/her. Claim 1 thus recites an abstract idea.
The claims does not include any additional elements which integrate the abstract idea into a practical application, since the additional elements consist of:
Causing a computer to calculate… causing the computer to rearrange… causing the computer to search. And the performance of an abstract idea on a computer is not more than instructions to “apply it” on a computer, by MPEP 2106.05(f).
Thus the claim is directed towards an abstract idea.
Further, the additional elements, alone or in combination do not provide significantly more than the abstract idea itself, because implementation on a computer (MPEP 2106.05(f)) cannot provide significantly more, and the combination of additional elements does not provide an inventive concept. Thus the claim is ineligible.
Claim 2 recited only additional mental steps of combining and calculating includes processing that adds a plurality of product values calculated by multiplication of said first importance level and said second importance level but does not recite any new additional elements which could integrate the abstract idea into a practical application nor provide significantly more than the abstract idea itself.
Allowable Subject Matter
Claims 1-2 are allowed over the prior art but remain rejected under 35 USC 101 and they also remain objected.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art of record, alone or in any reasonable combination discloses claimed invention. The references listed in the attached 892 are considered pertinent to individual claim limitations.
Response to Arguments
Applicant arguments regarding the claim rejections under 35 USC 101 have been fully considered and are not found to be persuasive.
The Applicant provides support for each limitation of claims 1-2 in pages 5-6 of the remarks, however there is no attempt to explain how these limitations and their support attempt to overcome a 35 USC 101 rejection.
Additionally, the Applicant submits the claims include an “inventive concept” and further submits:
“Amended claim 1 is not merely the automation of mental activities or mathematical calculations. Instead, amended claim 1 recites a specific and "not well-understood, routine, and conventional" technical mechanism (i.e., an inventive concept) that overcomes the limitations of conventional computer processing (e.g., simple conditional branch) …The above importance levels as recited in step (b) constitute two layers of importance (weighting) data. This mechanism for combining and calculating two layers of importance data is entirely different from the ambiguous "comprehensive determination" that humans perform intuitively in their minds. This is a specific improvement to the information processing method of the computer itself, which properly reflects the influence of "requests that did not meet the branch condition"-something impossible for conventional computers executing "IF-THEN-ELSE" branching processes ([0002]). This specific architecture (the data structure of two layers of importance data and the calculation step that combines them) is the "inventive concept" that solves the technical problem of quantitatively comparing a plurality of complex requests ([0002], [0016]) and deriving an objective priority order. Accordingly, Applicant respectfully requests reconsideration and withdrawal of the rejection of claim 1 under 35 U.S.C. § 101.”
Regarding the Applicant argument that the claim recites a specific and "not well-understood, routine, and conventional" technical mechanism (i.e., an inventive concept) that overcomes the limitations of conventional computer processing (e.g., simple conditional branch) … This is a specific improvement to the information processing method of the computer itself, which properly reflects the influence of "requests that did not meet the branch condition"-something impossible for conventional computers executing "IF-THEN-ELSE" branching processes ([0002]). The Examiner respectfully disagrees.
It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. In the current rejection the Examiner identified all limitation of claims 1-2 as being directed towards an abstract idea except for the “causing the computer to” limitations, which where clearly identified as additional elements meant for performance of an abstract idea on a computer.
Regarding the “This specific architecture (the data structure of two layers of importance data and the calculation step that combines them) is the "inventive concept" that solves the technical problem of quantitatively comparing a plurality of complex requests ([0002], [0016]) and deriving an objective priority order” argument, the Examiner respectfully disagrees. The Applicant attempts to tie the implicit benefits of using a computer system to execute the abstract idea (i.e. speed and volume of data to be calculated) as the inventive concept that overcomes the limitations of conventional computer processing, however, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOWARD CORTES whose telephone number is (571)270-1383. The examiner can normally be reached on M-F, 8:00 am - 5:00 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scott T Baderman can be reached on (571)272-3644. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HOWARD CORTES/ Primary Examiner, Art Unit 2118