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 .
Response to Arguments
Applicant's arguments filed with respect to rejections under 35 USC 101 have been fully considered but they are not persuasive. On pages 11 and 21, Applicant argues the claimed invention provides an improvement in the technology of recommending maintenance work by considering many variables and displaying them in a way that is easily grasped by a user. Examiner notes that recommending maintenance work by considering many variables and displaying them is not a technology improvement. Recommending and displaying maintenance work is abstract as indicated in the rejection below. Examiner notes that judicial exceptions need not be old or long‐prevalent, and that even newly discovered judicial exceptions are still exceptions, despite their novelty. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel, but nonetheless were considered by the Supreme Court to be judicial exceptions. The Federal Circuit has also applied this principle, for example, when holding the concept of using advertising as an exchange or currency abstract in Ultramercial, despite the patentee’s arguments that the concept was “new”. As made clear by the courts, the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). (MPEP 2106.05 I)
In response to Applicants reference to BASCOM, Examiner finds that the present rejected claims are different than those in BASCOM where the claims where directed to the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user; in contrast, the present rejected claims are directed to calculating an evaluation for a maintenance work plan using a plurality of variables and including a difficulty of maintenance of the equipment and wherein the evaluations are displayed in a radar chart. The claims in BASCOM were found to contain more than the abstract idea of filtering content along with the requirement to perform it on the Internet or perform it on a set of genetic computer components; the computer elements in the claims are only broadly applied to the abstract idea and do not offer a meaningful limitation beyond generally linking the abstract idea to a particular technological environment. The claims in BASCOM were found to improve an existing technological process; there is not analogous improvement to a technological process in the present rejected claims
Applicant’s arguments with respect to rejections under 35 USC 102 and 35 USC 103 have been fully considered and are persuasive. The rejection of claims 1-14 under 35 USC 102 and 35 USC 103 has been withdrawn.
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.
Claim(s) 1, 4-8, 11-14 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. Claim(s) 1, 4-8, 11-14 is/are directed to a method and system. Thus, all the claims are within the four potentially eligible categories of invention (a process, a machine and an article of manufacture, respectively), satisfying Step 1 of the Subject Matter Eligibility (SME) test.
As per Prong One of Step 2A of the §101 eligibility analysis set forth in MPEP 2106, the Examiner notes that the claims recite mental processes and certain methods of organizing human activity.
More specifically, independent claim recite:
storing work history information relating to the maintenance work of the equipment and company KPI information including a company KPI which is an item emphasized by an owner of the equipment; [observation of data – mental process]
creating a maintenance work plan showing a plan for the maintenance work of the equipment, using the work history information; [evaluation – mental process] and
calculating an evaluation according to a company KPI corresponding to a plurality of variables indicating maintenance work conditions for the equipment, for the created maintenance work plan using the company KPI information. [evaluation – mental process]
wherein
The claims recite data analysis steps to calculate and display an evaluation. The concept of data analysis is a fundamental business practice long prevalent in our system of commerce. The use of data analysis is also a building block of ingenuity in corporate planning. Thus, data analysis, like hedging, is an "abstract idea" beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356. In addition, the claims recite mental processes as indicated in the reproduced claim above. The nominal recitation of a device, database, creation unit and evaluation unit does not necessarily preclude the claim from reciting an abstract idea as evidenced by the analysis at Prong 2 of Step 2A.
Regarding Prong Two of Step 2A, a claim reciting an abstract idea must be analyzed to determine whether any additional elements in the claim integrate the judicial exception into a practical application. Limitations that are indicative of integration into a practical application include: Improvements to the functioning of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a); Applying or using a judicial exception to effect a particular treatment or prophylaxis for disease or medical condition – see Vanda Memo; Applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b); Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c); and Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP 2106.05(e) and the Vanda Memo issued in June 2018.
In this case, the independent claims do not include limitations that meet the criteria listed above, thus the abstract idea is not integrated into a practical application. Specifically, the claimed computer elements including a device, a database, a creation unit and an evaluation unit amount to using a computer as a tool to perform the abstract idea identified above. There is no integration into a practical application.
The dependent claims further limit the abstract idea and some recite additional elements that do not integrate the abstract idea into a practical application. Claims 2-4 and 9-11 recite additional evaluation/calculation steps of the abstract idea. The claimed computer elements amount to using a computer as a tool to perform the abstract idea. There is no integration into a practical application. Claims 5 and 12 are evaluation steps to select a plan which is a mental process. Any computer implementation amounts to using a computer as a tool to perform the abstract idea. There is no integration into a practical application. Claims 6 and 13 recite data displayed in a radar chart which is an evaluation and can be performed by a human with pen and paper, thus claiming a mental process. Use of a computer amounts to using a computer to perform the abstract idea. There is no integration into a practical application. Claims 7 and 14 recite storing and comparing KPI information which is an evaluation which is a mental process. Use of a database and computer amount to using a computer as a tool to perform the abstract idea. There is no integration into a practical application.
The claims do not include limitations beyond generally linking the use of the abstract idea to a particular technological environment. When considered individually, the system and software claim elements only contribute generic recitations of technical elements to the claims. It is readily apparent, for example, that the claim is not directed to any specific improvements of these elements. The invention is not directed to a technical improvement. When the claims are considered individually and as a whole, the additional elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense.
Lastly and in accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instruction to apply the exception using generic computer component. Mere instruction to apply an exception using generic computer components cannot provide an inventive concept.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHNNA LOFTIS whose telephone number is (571)272-6736. The examiner can normally be reached M-F 7:00am-3:30pm.
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JOHNNA LOFTIS
Primary Examiner
Art Unit 3625
/JOHNNA R LOFTIS/Primary Examiner, Art Unit 3625