Remarks
Claims 1-7 are pending.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1, with respect to step 1, this part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 2106.03. The claim recites an estimation device comprising: processing circuitry configured to: estimate normal data having maximum similarity between abnormal data determined to be abnormal and each of a plurality of pieces of normal data determined to be normal; and compare the abnormal data with normal data estimated to have the maximum similarity and extract a portion of the abnormal data having no portion corresponding to the normal data as a portion causing abnormality. Therefore, this claim appears to be a system, which is a statutory category of invention. Please see MPEP 2106.3.I:
A process defines "actions", i.e., an invention that is claimed as an act or step, or a series of acts or steps. As explained by the Supreme Court, a "process" is "a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972) (italics added) (quoting Cochrane v. Deener, 94 U.S. 780, 788, 24 L. Ed. 139, 141 (1876)). See also Nuijten, 500 F.3d at 1355, 84 USPQ2d at 1501 ("The Supreme Court and this court have consistently interpreted the statutory term ‘process’ to require action"); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1316, 75 USPQ2d 1763, 1791 (Fed. Cir. 2005) ("[A] process is a series of acts.") (quoting Minton v. Natl. Ass’n. of Securities Dealers, 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1681 (Fed. Cir. 2003)). As defined in 35 U.S.C. 100(b), the term "process" is synonymous with "method."
The other three categories (machines, manufactures and compositions of matter) define the types of physical or tangible "things" or "products" that Congress deemed appropriate to patent. Digitech Image Techs. v. Electronics for Imaging, 758 F.3d 1344, 1348, 111 USPQ2d 1717, 1719 (Fed. Cir. 2014) ("For all categories except process claims, the eligible subject matter must exist in some physical or tangible form."). Thus, when determining whether a claimed invention falls within one of these three categories, examiners should verify that the invention is to at least one of the following categories and is claimed in a physical or tangible form.
• A machine is a "concrete thing, consisting of parts, or of certain devices and combination of devices." Digitech, 758 F.3d at 1348-49, 111 USPQ2d at 1719 (quoting Burr v. Duryee, 68 U.S. 531, 570, 17 L. Ed. 650, 657 (1863)). This category "includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result." Nuijten, 500 F.3d at 1355, 84 USPQ2d at 1501 (quoting Corning v. Burden, 56 U.S. 252, 267, 14 L. Ed. 683, 690 (1854)).
• A manufacture is "a tangible article that is given a new form, quality, property, or combination through man-made or artificial means." Digitech, 758 F.3d at 1349, 111 USPQ2d at 1719-20 (citing Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 197 (1980)). As the courts have explained, manufactures are articles that result from the process of manufacturing, i.e., they were produced "from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery." Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429, 120 USPQ2d 1749, 1752-3 (2016) (quoting Diamond v. Chakrabarty, 447 U. S. 303, 308, 206 USPQ 193, 196-97 (1980)); Nuijten, 500 F.3d at 1356-57, 84 USPQ2d at 1502. Manufactures also include "the parts of a machine considered separately from the machine itself." Samsung Electronics, 137 S. Ct. at 435, 120 USPQ2d at 1753 (quoting 1 W. Robinson, The Law of Patents for Useful Inventions §183, p. 270 (1890)).
• A composition of matter is a "combination of two or more substances and includes all composite articles." Digitech, 758 F.3d at 1348-49, 111 USPQ2d at 1719 (citation omitted). This category includes all compositions of two or more substances and all composite articles, "'whether they be the results of chemical union or of mechanical mixture, or whether they be gases, fluids, powders or solids.'" Chakrabarty, 447 U.S. at 308, 206 USPQ at 197 (quoting Shell Dev. Co. v. Watson, 149 F. Supp. 279, 280 (D.D.C. 1957); id. at 310 holding genetically modified microorganism to be a manufacture or composition of matter).
With respect to step 2A, prong one, this part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim ‘recites’ a judicial exception when the judicial exception is ‘set forth’ or ‘described’ in the claim. There are no nature-based product limitations in the claim, and thus the markedly different characteristics analysis is not performed. However, the claim still must be reviewed to determine if it recites any other type of judicial exception.
Claim 1, recites the following limitations that are directed to abstract ideas:
estimate normal data having maximum similarity between abnormal data determined to be abnormal and each of a plurality of pieces of normal data determined to be normal (mental process and/or certain methods of organizing human activity; such as looking at data to determine if something is amiss. For example, in balancing a checkbook, one looks at multiple pieces of normal data written in the register, and then determines if any of the data is abnormal, or in a find the difference puzzle where one determines what is different in a given image from the original, as examples. There are myriad additional examples, such as finding a menu similar to that of a restaurant one likes (closest menu to the normal restaurant wins), seeing who in a classroom of children got the most correct results in a crossword, determining who is second place to a perfect winner in a word search puzzle, or the like, as examples); and
Compare the abnormal data with normal data estimated to have the maximum similarity and extract a portion of the abnormal data having no portion corresponding to the normal data as a portion causing abnormality (finding what is different, such as the incorrect check in the checkbook, the changed portion of the image in the find the difference puzzle, what menu options are different between one’s normal restaurant and a new one, determining the incorrect (or blank) results in any given crossword, determining missed words in a word search puzzle, etc.).
As noted, these can be performed by a human either completely mentally or by using certain methods of organizing human activity, such as a human writing and reading via documentation or filing systems.
As explained in the MPEP and the October 2019 Update, situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single abstract idea for purposes of further eligibility. See MPEP 2106.04 and 2106.05(ii). Thus, for purposes of further discussion, this rejection may consider all limitations as a single abstract idea.
With respect to step 2A, prong two, this part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55. The independent claims also recite the following additional elements: processing circuitry.
However, this/these additional element(s) is/are recited so generically (no details are provided other than that the processing circuitry is any type of processing circuitry including generic circuitry) that it represents no more than mere instructions to apply the judicial exception on a computer system. This limitation can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the nature of these components being physical or tangible does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S. 208, 224-26 (2014).
Even when viewed in combination, any additional elements in this claim do no more than automate the abstract ideas that the human can perform, using computer components as a tool. There is no improvement to any computers or other technology achieved by the claim by automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017)(using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality). Accordingly, the claim as a whole does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception.
With respect to step 2B, this part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP 2106.05. As explained with respect to Step 2A Prong Two, the additional element(s) described above is/are at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept. Any other additional elements identified above are extra-solution activity, which for purposes of Step 2A Prong Two was considered insignificant. Under the 2019 PEG, however, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. 2019 PEG Section III(B), 84 Fed. Reg. at 56. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well-known. See MPEP 2106.05(g). Here, any insignificant extra solution activity is within the examples provided in USPTO guidance, such as MPEP 2106.05(g), for example. Thus, any subject matter that may be considered extra-solution activity therefore remain insignificant extra-solution activity even upon reconsideration, and do not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept.
With respect to claim 2, the same analysis as above applies. It is noted that any method of calculating similarity can be seen as a dynamic programming method if it takes into account any changing information, such as by noting each check that is correct (limiting the pool of potential incorrect checks), or by viewing different portions of an image and kicking them out as not having the change, eventually finding the changed portion by the process of elimination, etc.
With respect to claim 3, the same analysis as above applies. Indeed, in the checkbook example, one assumes that the check numbers will be sequential (thus looping 1-9, then 1-9 again for the next set of 10, then looping the 1-9 again for the next set of 10, etc.), as one example.
With respect to claim 4, the same analysis as above applies. As an example, in the checkbook example, the predetermined range of possible values are those for which checks were written, for example, or the check numbers within the checkbook, or dates on which the checks were written, as examples. A percentage can easily be calculated for number of missed or blank words as well, as another example.
With respect to claim 5, the same analysis as above applies. A human is also capable of taking into account an anomaly score, such as determining if a crossword is written with multiple distinct forms of handwriting, or if a check to a certain entity is more likely to be abnormal than others, etc., as examples.
With respect to claims 6 and 7, the same analysis as above applies. Possible additional elements include a non-transitory computer-readable recording medium storing therein an estimation program that causes a computer to execute a process, which is as generic as the processing circuitry above, and is pretty much how computers are programmed, with some form of medium (e.g., RAM) storing a program that causes the computer to execute processing steps. This is all just as generic as the processing circuitry above and the same analysis applies.
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Fukai (FUKAI ET AL., “Estimating the causative function of performance failure by analyzing the execution path”, IPSJ SIG Technical Report, system software and operating system (OS), Volume 2015-OS-135 No. 12, Vol-2015-EMB-39 No. 12, November 24, 2015, p. 1-7 (23 pages including English Translation)).
Regarding Claim 1,
Fukai discloses an estimation device comprising:
Processing circuitry configured to (Exemplary Citations: for example, Abstract, sections 4-4.3.2, and below sections; any processing circuitry, such as the specific circuitry discussed in section 4, or any CPU, or any other circuitry that processes in any fashion to perform the below, for example):
Estimate normal data having maximum similarity between abnormal data determined to be abnormal and each of a plurality of pieces of normal data determined to be normal (Exemplary Citations: for example, Sections 3-4.3.2; determining similarity between normal and abnormal data, including the most similar data, for example); and
Compare the abnormal data with normal data estimated to have the maximum similarity and extract a portion of the abnormal data having no portion corresponding to the normal data as a portion causing abnormality (Exemplary Citations: for example, Sections 3-4.3.2; comparing to find longest pattern and then determining that the rest to be the abnormal data, for example).
Regarding Claim 6,
Claim 6 is a method claim that corresponds to device claim 1 and is rejected for the same reasons.
Regarding Claim 7,
Claim 7 is a medium claim that corresponds to device claim 1 and is rejected for the same reasons.
Regarding Claim 2,
Fukai discloses that the processing circuitry is further configured to calculate similarity by applying a dynamic programming method (Exemplary Citations: for example, Sections 3-4.3.2; looking at different lengths and similarities and comparing them to determine most similar and longest match, is dynamic, for example. Fukai also explicitly mentions dynamic programming in the cited portions (e.g., section 3.3, 3.3.1)).
Regarding Claim 4,
Fukai discloses that the processing circuitry is further configured to calculate the similarity by using similarity between characters of the abnormal data and characters of the normal data as a value of a predetermined range (Exemplary Citations: for example, Sections 3-4.3.2; similarity percentage between 0 and 100, for example).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fukai in view of Kapoor (U.S. Patent Application Publication 2007/0192863).
Regarding Claim 3,
Fukai discloses that the processing circuitry is further configured to calculate similarity assuming that characters appearing in the abnormal data and the normal data follow a pattern (Exemplary Citations: for example, Sections 3-4.3.2; pattern, for example);
But does not appear to explicitly disclose that the pattern is a continuous loop.
Kapoor, however, discloses that the processing circuitry is further configured to calculate similarity assuming that characters appearing in the abnormal data and the normal data continuously loop (Exemplary Citations: Paragraphs 195, 214, 355-371, and associated figures; taking into account repeating patterns, for example, abcabcabc, for example). It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention, which is before any effective filing date of the claimed invention, to incorporate the pattern delineation techniques of Kapoor into the cause estimation system of Fukai in order to allow the system to better specify patterns and repeating patterns, to allow for more efficient detection of patterns and repeating patterns, to allow for wildcards within patterns, allowing for a better pattern detection, and/or to increase security in the system.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Fukai in view of Lakhotia (U.S. Patent Application Publication 2020/0293656).
Regarding Claim 5,
Fukai does not appear to explicitly disclose that the processing circuitry is further configured to calculate the similarity by performing correction using an anomaly score.
Lakhotia, however, discloses that the processing circuitry is further configured to calculate the similarity by performing correction using an anomaly score (Exemplary Citations: for example, Abstract; Paragraphs 31-37 and associated figures; correcting decisions on being similar based on scores, such as known benign, possibly benign, and the like, to remove benign data from the set for which signatures may be generated, for example). It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention, which is before any effective filing date of the claimed invention, to incorporate the malware determination and signature generation techniques of Lakhotia into the cause estimation system of Fukai in order to allow the system to better remove data that is likely benign, to reduce the number of false positives given by malware determinations, and/or to increase security in the system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey D Popham whose telephone number is (571)272-7215. The examiner can normally be reached Monday through Friday 9:00-5:30.
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/Jeffrey D. Popham/Primary Examiner, Art Unit 2432
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