DETAILED ACTION
Status of Claims
• The following is an office action in response to the communication filed 09/07/2023.
• Claims 1-8 and 10 have been amended.
• Claims 1-10 are currently pending and have been examined.
Information Disclosure Statement
Information Disclosure Statement received 09/07/2023 have been reviewed and considered.
Priority
The examiner acknowledges that the instant application is a national stage entry of PCT/JP2021/010312, filed 03/15/2021.
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 .
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1-8 are directed to a machine, claim 9 is directed to a process, and claim 10 is directed to a manufacture. Therefore, claims 1-10 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
a related user extracting process of extracting, for a target user among a plurality of users of a data distribution service, at least one related user relating to the target user from among the plurality of users on a basis of target user associated information which is associated with the target user, the data distribution service allowing data registered by a certain one of the plurality of users to be obtained by another one of the plurality of users; and
a recommendation information generating process of generating, on a basis of related user associated information which is associated with the at least one related user, recommendation information indicating data which is included in data obtainable through the data distribution service and obtaining of which is recommended to the target user.
The above limitations recite the concept of providing recommendations based on related users. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors and business relations. Specifically, the providing of recommendations pertains to business relations and business sales. This is illustrated in the Specification [0047], discussing that the invention relates to a businesses such as retail businesses and [0049] discussing analysis of product sales. These limitations, under their broadest reasonable interpretation, further fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, including observations, evaluations, judgments, and opinions. The examiner notes that the data analysis and recommendation recite the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis. Claims 9-10 recite similar concepts as claim 1 and accordingly fall within the same grouping of abstract ideas. Accordingly, under Prong One of Step 2A of the MPEP, claims 1 and 9-10 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claims 1 and 9-10 recite additional elements, such as an information processing apparatus comprising at least one processor, the at least one processor executing; at least one processor; and non-transitory computer-readable storage medium in which a program is stored, the program causing a computer to execute. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 1 and 9-10 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 1 and 9-10 merely recite a commonplace business method (i.e., providing recommendations based on related users) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims 1 and 9-10 generally link the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claims 1 and 9-10 specifying that the abstract idea of providing recommendations based on related users is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 1 and 9-10 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1 and 9-10 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1 and 9-10 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 1 and 19-20, these claims recite additional elements, such as an information processing apparatus comprising at least one processor, the at least one processor executing; at least one processor; and non-transitory computer-readable storage medium in which a program is stored, the program causing a computer to execute. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 1 and 9-10 are manual processes, e.g., receiving information, sending information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 1 and 9-10 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims 1 and 9-10 specifying that the abstract idea of providing recommendations based on related users is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 1 and 9-10 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 1 and 9-10 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 2-8, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. Dependent claims 2-8 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Additionally, the claims fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. Dependent claims 2-8 fail to identify additional elements and as such, are not indicative of integration into a practical application. As such, under Step 2A, dependent claims 2-8 are “directed to” an abstract idea. Similar to the discussion above with respect to claims 1 and 9-10, dependent claims 2-8, analyzed individually and as an ordered combination, merely further define the commonplace business method (i.e., providing recommendations based on related users) being applied on a general purpose computer and, therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Further, these limitations generally link the use of the abstract idea to a particular technological environment or field of use. Accordingly, under the Alice/Mayo test, claims 1-10 are ineligible.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of 35 U.S.C. 102 that forms the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless —
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Grant et al. (US 20140278815 A1), hereinafter Grant.
In regards to claim 1, Grant discloses an information processing apparatus comprising at least one processor, the at least one processor executing (Grant: [0059]):
a related user extracting process of extracting, for a target user among a plurality of users of a data distribution service, at least one related user relating to the target user from among the plurality of users on a basis of target user associated information which is associated with the target user, the data distribution service allowing data registered by a certain one of the plurality of users to be obtained by another one of the plurality of users (Grant: [0054] – “the analysis system 100…may consider data regarding any company…that is similar to a target company…for which the method is being implemented in a given instance”; [0026] – “an analysis system described herein may mine data related to a number of industry participants to inform the company's decisions related to operations, marketing, product design, capital investments and other investments, advertising, inventory management, and/or other business decisions”; [0022-0024] – “participant community platform 104 may enable a number of participants with shared interests or business areas (such as specialty physicians) to interact with each other… may enable participants (such as physicians or other participants utilizing participant systems 170) to engage in activities such as providing product or service feedback, …providing or tracking information regarding their practice or business, connecting with and sharing content within a selective group of like-minded participants, and/or other features”; [0028] – “the inventory tracking system may receive information from various doctors' offices or other businesses (depending on the industry) regarding the movement or use of specific products”; [0021] – “the analysis system 100 receives data from the participant community platform 104, the credit and financing system 106, the business management system 112, the inventory tracking system 114, the customer community platform 116, and third party data sources 174…The provided information may be used, in some embodiments, to make business decisions regarding operations, marketing, product design, capital investment, and/or inventory management of a company; determine x-factors or aspects of a participant, practice, company, product or service that are likely to increase market share for a participant, practice, company, product and/or service based on analysis of historical data; provide a recommended business decision for a target company or participant based on comparison of identified x-factors with corresponding data of the target”); and
a recommendation information generating process of generating, on a basis of related user associated information which is associated with the at least one related user, recommendation information indicating data which is included in data obtainable through the data distribution service and obtaining of which is recommended to the target user (Grant: [0021] – “the analysis system 100 receives data from the participant community platform 104, the credit and financing system 106, the business management system 112, the inventory tracking system 114, the customer community platform 116, and third party data sources 174…The provided information may be used, in some embodiments, to make business decisions regarding operations, marketing, product design, capital investment, and/or inventory management of a company; determine x-factors or aspects of a participant, practice, company, product or service that are likely to increase market share for a participant, practice, company, product and/or service based on analysis of historical data; provide a recommended business decision for a target company or participant based on comparison of identified x-factors with corresponding data of the target”; [0013] – “the analysis system, as disclosed herein, may provide predictive outcome information based on inventory data, product feedback, sales data, marketing information, and/or various other data”; [0026] – “an analysis system described herein may mine data related to a number of industry participants to inform the company's decisions related to operations, marketing, product design, capital investments and other investments, advertising, inventory management, and/or other business decisions”; [0022-0024] – “participant community platform 104 may enable a number of participants with shared interests or business areas (such as specialty physicians) to interact with each other… may enable participants (such as physicians or other participants utilizing participant systems 170) to engage in activities such as providing product or service feedback, …providing or tracking information regarding their practice or business, connecting with and sharing content within a selective group of like-minded participants, and/or other features”; [0028] – “the inventory tracking system may receive information from various doctors' offices or other businesses (depending on the industry) regarding the movement or use of specific products”; see also [0054]).
In regards to claim 2, Grant discloses the system of claim 1. Grant further discloses wherein: the target user associated information includes information indicating a category of data that the target user has registered in the data distribution service (Grant: [0053] – “the criteria or metrics to be optimized may be selected by a user, such as a corporate decision maker interacting with business management system 112, based on a given company's desired focus or priorities”); and
in the related user extracting process, the at least one processor extracts, as the at least one related user, a user who has registered, in the data distribution service, data of a category identical to or corresponding to the category of the data that the target user has registered in the data distribution service (Grant: [0053] – “the top companies, products and/or services with respect to the desired criteria may be determined by comparing the relevant received data for a number of different companies to identify positive outliers or standout companies with respect to the given criteria”).
In regards to claim 3, Grant discloses the system of claim 1. Grant further discloses wherein: the target user associated information includes information indicating an industry category of the target user (Grant: [0017] – “analyze data for targets related to any industry”); and
in the related user extracting process, the at least one processor extracts, as the at least one related user, a user of an industry category identical to or corresponding to the industry category of the target user (Grant: [0025] – “subsequent analysis of such data by the analysis system 100 may be used to compare a given company, participant, product and/or service across many platforms and data types to determine what makes a given company, participant, product or service different than others…within a given industry”).
In regards to claim 4, Grant discloses the system of claim 1. Grant further discloses wherein: the related user associated information includes interest information indicating interest target data, which is data in which the at least one related user has interest (Grant: [0053] – “the criteria or metrics to be optimized may be selected by a user, such as a corporate decision maker interacting with business management system 112, based on a given company's desired focus or priorities”); and
in the recommendation information generating process, the at least one processor generates the recommendation information recommending obtaining of the interest target data (Grant: [0053] – “the top companies, products and/or services with respect to the desired criteria may be determined by comparing the relevant received data for a number of different companies to identify positive outliers or standout companies with respect to the given criteria”).
In regards to claim 5, Grant discloses the system of claim 1. Grant further discloses wherein: the related user associated information includes information indicating obtained data, which has been obtained by the at least one related user through the data distribution service (Grant: [0028] – “the inventory tracking system may receive information from various doctors' offices or other businesses (depending on the industry) regarding the movement or use of specific products”;); and
in the recommendation information generating means process, the at least one processor generates the recommendation information recommending obtaining of the obtained data (Grant: [0039] – “The analysis system may then use the information regarding the closing rate (such as the ratio of the number of products sold or used to the number of campaign referrals) within a given time period, demographic, region, industry, company or other area in order to determine optimal marketing strategies going forward in any of these areas, and/or to generate a corresponding recommendation to one or more companies, participants or service providers”; [0056] – “a recommended business decision may include…deciding what inventory to purchase, deciding when to purchase certain products”).
In regards to claim 6, Grant discloses the system of claim 5. Grant further discloses wherein: the related user associated information includes feedback information indicating a content of a feedback having been given, by the at least one related user, to the obtained data that the at least one related user has obtained through the data distribution service (Grant: [0017] – “feedback may be received from industry professionals, providers or other participants from within a given target's industry”; [0024] – “enable participants (such as physicians or other participants utilizing participant systems 170) to engage in activities such as providing product or service feedback”); and
in the recommendation information generating process, the at least one processor generates the recommendation information recommending obtaining of the obtained data to which a feedback having a certain content has been given (Grant: [0013] – “the analysis system, as disclosed herein, may provide predictive outcome information based on inventory data, product feedback, sales data”; [0052] and Fig. 3 – “the analysis system 100 receives and/or accesses various data associated with a number of companies, products and/or services, where the data may relate to sales, inventory, marketing, operations, product design, customer or participant feedback”; [0056] – “the analysis system 100 may present a recommended business decision for the target company, product or service and/or generate an action based at least in part on the x-factor analysis”).
In regards to claim 7, Grant discloses the system of claim 1. Grant further discloses wherein: in the recommendation information generating process, the at least one processor generates the recommendation information on a basis of the related user associated information of, among the at least one related user extracted in the related user extracting process, a related user of a certain industry category (Grant: [0025] – “subsequent analysis of such data by the analysis system 100 may be used to compare a given company, participant, product and/or service across many platforms and data types to determine what makes a given company, participant, product or service different than others…within a given industry”);
In regards to claim 8, Grant discloses the system of claim 1. Grant further discloses wherein: the related user associated information includes (i) interest information indicating interest target data, which is data in which the at least one related user has interest, and (ii) feedback information indicating a content of a feedback given, by the at least one related user, to the obtained data that the at least one related user has obtained through the data distribution service (Grant: [0017] – “feedback may be received from industry professionals, providers or other participants from within a given target's industry”; [0024] – “enable participants (such as physicians or other participants utilizing participant systems 170) to engage in activities such as providing product or service feedback”; [0053] – “the criteria or metrics to be optimized may be selected by a user, such as a corporate decision maker interacting with business management system 112, based on a given company's desired focus or priorities”); and
in the recommendation information generating process, the at least one processor generates the recommendation information on a basis of one or both of the interest information and the feedback information corresponding to orientation information indicating the target user's orientation (Grant: [0013] – “the analysis system, as disclosed herein, may provide predictive outcome information based on inventory data, product feedback, sales data”; [0052] and Fig. 3 – “the analysis system 100 receives and/or accesses various data associated with a number of companies, products and/or services, where the data may relate to sales, inventory, marketing, operations, product design, customer or participant feedback”; [0056] – “the analysis system 100 may present a recommended business decision for the target company, product or service and/or generate an action based at least in part on the x-factor analysis”; [0053] – “the top companies, products and/or services with respect to the desired criteria may be determined by comparing the relevant received data for a number of different companies to identify positive outliers or standout companies with respect to the given criteria”).
In regards to claim 9, claim 9 is directed to a method. Claim 9 recites limitations that are substantially parallel in nature to those addressed above for claim 1 which is directed towards a machine. The apparatus of Grant discloses the limitations of claim 1 as noted above. Grant further discloses a recommendation information generation method comprising: at least one processor (Grant: [0059]). Claim 9 is therefore rejected for the reasons set forth above in claim 1 and in this paragraph.
In regards to claim 10, claim 10 is directed to a method. Claim 10 recites limitations that are substantially parallel in nature to those addressed above for claim 1 which is directed towards a machine. The apparatus of Grant discloses the limitations of claim 1 as noted above. Grant further discloses a non-transitory computer-readable storage medium in which a program is stored, the program causing a computer to execute (Grant: [0059]). Claim 10 is therefore rejected for the reasons set forth above in claim 1 and in this paragraph.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
NPL reference U teaches data driven business decisions. Businesses can make decisions off of data, by looking for patterns. This may drive business sales.
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/ANNA MAE MITROS/Examiner, Art Unit 3689