The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Rejections - 35 USC § 101
The following is a quotation of 35 U.S.C. 101:
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 1-12, 13-15, and 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Each of Claims 1-12, 13-15, and 16-20 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1
Each of Claims 1-12, 13-15, and 16-20 recites at least one step or instruction for automating a questionnaire using a computerized device, which is grouped as a mental process under the 2019 PEG or a certain method of organizing human activity under the 2019 PEG. Claims 1-12 involve organizing human activity of providing a questionnaire, collecting results, and providing a recommendation based on the results. Claims 1-12 and 16-20 involve organizing human activity under the 2019 PEG of providing a questionnaire, collecting results, and providing a recommendation based on the questionnaire results. Claims 13-15 involve organizing human activity under the 2019 PEG of determining based on the date a usage period of a toothbrush and transmitting a notification to the user when the current date exceeds the determined date.
Accordingly, each of Claims 1-12, 13-15, and 16-20 recites an abstract idea.
Specifically, Claim 1 recites:
[Claim 1] A toothbrush type recommendation apparatus (computerized terminal) comprising: a user input unit (key pad, touch pad, jog switch, mouse), an output unit (display), and an operation control unit (processor) connected to the user input unit (key pad, touch pad, jog switch, mouse) and the output unit (display) and configured to (apparatus is merely a computer with a typical input device and a display):
output questionnaires having a question for determining a number of lines of bristles, a question for determining a strength of the bristles, and a question for determining a bristle shape to the output unit (display) (merely using a computer as a tool to manage interactions between people, namely, humans following rules, which is grouped as a certain method of method of organizing human activity under 2019 PEG and/or a judgement or evaluation, which is grouped as a mental process under 2019 PEG);
receive answers to the questionnaires from the user input unit (key pad, touch pad, jog switch, mouse) to calculate a score for determining the number of lines of bristles and a score for determining a strength of the bristles (merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
determine the number of lines of bristle and the bristle strength, which respectively corresponds to the calculated scores (merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
with respect to the determined bristle strength, determine a final shape of bristles based on the answer to the questions for determining the shape of bristles in the questionnaires (merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
select the determined final shape as a toothbrush type (merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG); and
output the selected toothbrush type to the output unit (display)(merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 13 recites:
[Claim 13] A toothbrush type recommendation server (computerized terminal) comprising: a communication unit (internet module for wireless or wired Internet access); and a server management unit (processor) connected to the communication unit (internet module for wireless or wired Internet access)(apparatus is merely a computer with a typical input device, a display, and Internet connection) and configured to
calculate a usage period of a toothbrush based on a selected toothbrush type and teeth-and-oral-related information (merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG),
calculate a toothbrush replacement date based on the calculated usage period (merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG), and
when a current date reaches at a toothbrush replacement notification date calculated using the toothbrush replacement date, transmit a toothbrush replacement timing notification message to a user terminal (computerized terminal) of a customer through the communication unit (internet module for wireless or wired Internet access) (merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Specifically, Claim 16 recites:
[Claim 16] A control method for a toothbrush type recommendation apparatus (computerized terminal)(method is merely using a computer with a typical input device and a display), the method comprising:
outputting, by an operation control unit (processor) of a user terminal, questionnaires having a question for determining the number of lines of bristles, a question for determining a strength of the bristles, and a question for determining a bristle shape to an output unit (display)(merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
receiving, by the operation control unit (processor), answers to the questionnaires from a user input unit (key pad, touch pad, jog switch, mouse) to calculate a score for determining the number of lines of bristles and a score for determining a strength of the bristles;
determining, by the operation control unit (processor), the number of lines of bristle and the bristle strength, which respectively corresponds to the calculated scores (merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG);
determining, by the operation control unit (processor), a final shape of bristles based on the answer to the question for determining the shape of bristles in the questionnaires with respect to the determined bristle strength and select the determined final shape as a toothbrush type (merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG); and
outputting, by the operation control unit (processor), the selected toothbrush type to the output unit (display)(merely using a computer as a tool to perform the abstract idea- see MPEP 2106.05(f) -observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG).
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Further, dependent Claims 2-12, 14-15, and 17-20 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claims 1, 13, and 16 (and their respective dependent Claims 2-12, 14-15, and 17-20) is not integrated into a practical application under 2019 PEG because the additional elements (identified above in independent Claims 1, 13, and 16), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of: a toothbrush type recommendation apparatus (computerized terminal), a user input unit (key pad, touch pad, jog switch, mouse), an output unit (display), and an operation control unit (processor), a toothbrush type recommendation server (computerized terminal), a communication unit (internet module for wireless or wired Internet access); and a server management unit (processor) are generically recited computer elements in independent Claims 1, 13, and 16 (and their respective dependent claims) which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above in independent Claims 1, 13, and 16 (and their respective dependent claims) is not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer (e.g., a toothbrush type recommendation apparatus (computerized terminal), a user input unit (key pad, touch pad, jog switch, mouse), an output unit (display), and an operation control unit (processor), a toothbrush type recommendation server (computerized terminal), a communication unit (internet module for wireless or wired Internet access); and a server management unit (processor) as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1, 13, and 16 (and their respective dependent claims) is not integrated into a practical application under the 2019 PEG.
Accordingly, independent Claims 1, 13, and 16 (and their respective dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of Claims 1-12, 13-15, and 16-20 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of: a toothbrush type recommendation apparatus (computerized terminal), a user input unit (key pad, touch pad, jog switch, mouse), an output unit (display), and an operation control unit (processor), a toothbrush type recommendation server (computerized terminal), a communication unit (internet module for wireless or wired Internet access); and a server management unit (processor).
The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Per Applicant’s specification, the claimed structure is a toothbrush type recommendation apparatus (computerized terminal), a user input unit (key pad, touch pad, jog switch, mouse), an output unit (display), and an operation control unit (processor), a toothbrush type recommendation server (computerized terminal), a communication unit (internet module for wireless or wired Internet access); and a server management unit (processor) which are all generically described such the disclosed computer components, such as a stationary terminal, smart phone, tablet personal computer, and vehicle mounted terminal are well understood, routine and conventional.
Accordingly, in light of Applicant’s specification, the claimed term “user terminal”, “toothbrush type recommendation apparatus” and “toothbrush type recommendation server” are reasonably construed as a generic computing devices. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
Furthermore, Applicant’s specification does not describe any special programming or algorithms required other than simple software routines for performing the claimed operations. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a) (see Berkheimer memo from April 19, 2018, (III)(A)(1) on page 3). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications).
The recitation of the above-identified additional limitations in Claims 1-12, 13-15, and 16-20 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the apparatus, server, and control method of Claims 1-12, 13-15, and 16-20 are directed to applying an abstract idea (e.g., mental process or certain method of organizing human activity) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1-12, 13-15, and 16-20 provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 13, and 16 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. As such, the above-identified additional elements, when viewed as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1-12, 13-15, and 16-20 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 1-12, 13-15, and 16-20 amounts to significantly more than the abstract idea itself.
Accordingly, Claims 1-12, 13-15, and 16-20 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in form PTO-892 Notice of References Cited. Specifically, the prior art references include pertinent disclosures of toothbrush devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC CARLSON whose telephone number is (571)272-9963. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm.
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/MARC CARLSON/Primary Examiner, Art Unit 3723