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 .
Applicant’s Reply
Applicant's response of 09/09/25 has been entered. The examiner will address applicant's remarks at the end of this office action.
Response to Amendment
The amendment filed 09/09/25 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The specification has been amended throughout the 88 pages specification with no apparent support in the originally filed specification for a number of the changes. The applicant has generally alleged that no new matter has been entered, but this statement is somewhat contradicted by the apparent new matter that appears to be added via the most recent amendment.
On page 3 of the specification the term “capital ties” has been changed to read “shareholding information”. The term capital ties does not provide support for shareholding information. This appears to be new matter. The same is noted for the discussion for figure 5 on page 6 that changes capital ties to shareholding information. This change is being made throughout the marked up specification and all of the changes appear to be new matter. Where does support come from for this change?
On page 3, the changes to the specification in paragraphs 006, 007 are deleting broad and somewhat confusing language and replacing it with what appears to be new matter. The changes in paragraphs 006, 007 are not supported by the specification. This is deemed to be new matter added to the specification.
The changes to paragraph 014 are considered to be adding new matter to the specification. The applicant is taking broadly worded lanague and replacing it with more specific language that is not correcting a mistake or an obvious error. This is substantially changing the meaning of paragraph 014 and is adding new matter in that regard.
The change to paragraph 016 appears to be new matter. A strictly UBO candidate is now changed to being a “technical a UBO candidate until finally resolved”. This change is not correcting a mistake or an obvious error. This is considered to be new matter.
The changes made to paragraph 026-30 contain substantial amendments that are introducing language into the specification that is not supported by the specification, and where the changes are taking broadly worded language and replacing it with more narrow and specific language. Upon a fair review of the old paragraph and the new paragraph, the applicant is found to be adding new matter to the specification.
Paragraph 035 adds reference to integrity and quality checks, whereas the originally filed specification only refers to various checks. Taking broad language and amending it to recite something that previously disclosed is adding new matter to the specification.
Paragraph 049 contains the following added language that is considered to be new matter: Note that a request from customer C can also optionally contain explicit specification of required jurisdictions(s) for UBO calculation, apart from implicit specification via country of the subject company.
The applicant is encouraged by the examiner to provide an explanation of how and why the amendments noted above are supported by the originally filed specification, claims, and drawings. A lot of changes were made and that did not appear to be minor in nature where an obvious mistake was being corrected or where a change was being made to ensure consistent use of terminology throughout the specification.
Applicant is required to cancel the new matter in the reply to this Office Action.
Specification
The disclosure is objected to under 37 CFR 1.71 because the specification as originally filed does not provide support for the changes that were made as has been set forth in the above objection to the amendment. Applicant is referred to the above objection to the amendment in this regard. When an amendment introduces new matter into the specification, it is appropriate to also object to the specification under rule 1.71 in addition to objecting to the amendment.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder (the term unit) that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
In claim 1:
a first acquisition unit for…; a second acquisition unit for…; a benefit rate specification unit for…, and an extraction unit for…
In claim 3:
output unit for…; third acquisition unit for….
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
While the applicant has amended the claim to recite a memory with a program and a processor, that when executing the program, is configured to implement the claimed units that are invoking 112f; the claimed units are separately claimed from the processor and are still considered to be invoking 112f. There is no modifying structure in the claim that would not allow the claim language to be invoking 112f. The recitation to the processor and memory is not modifying structure to the claimed units because the processor is implementing the claimed units as if they are separate elements. The claimed units that invoke 112f are claimed separately from the processor and memory because as claimed, they are separate devices that the processor is implementing. The applicant has not claimed that the executed computer readable program itself is what comprises the claimed units but has claimed the units as distinct from the processor. This is still considered to be invoking 112f.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Note: The claimed benefit rate specification unit for specifying a benefit rate has been interpreted to cover the structure disclosed in the specification as far as the algorithms that are disclosed to accomplish the calculation of the benefit rate (a ratio or multiplication of two numbers). The claimed benefit calculation unit is disclosed in paragraph 076 as far as using the European standard or the Japanese standard. The claimed 112f limitations are not treated under broadest reasonable interpretation, they are interpreted based on the disclosure and guidance of the specification regarding the algorithm and structure that is used to accomplish the claimed function.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite an information processing apparatus, and are found to pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of providing an information providing service to customers, that is obtaining and providing corporation information related to ultimate beneficial ownership. This will be explained further below.
For claim 1, the abstract idea is defined by the claimed elements of:
acquiring corporate enterprise designation information which designates a first corporate enterprise that is a corporate enterprise to provide shareholding information, which is information of a ultimate beneficial owner (UBO);
acquiring corporate enterprise identification information that uniquely identifies a target corporate enterprise based on the corporate enterprise designation information acquired, corporate enterprise information having beneficial ownership-related information which at least includes beneficial owner information expressing a beneficial owner of the target corporate enterprise, and ownership ratio information expressing an ownership ratio of shares of the target corporate enterprise owned by the beneficial owner;
specifying a beneficial ownership rate according to a definition of the ultimate beneficial owner (UBO) in a designated jurisdiction from among a plurality of definitions of the ultimate beneficial owner (UBO) in a plurality of jurisdictions, by referencing the corporate enterprise information acquired; and
specifying the beneficial
extracting at least part of the beneficial ownership related information corresponding to the beneficial owner specified as the beneficial owner information
The above limitations are reciting a process where corporate information regarding ultimate beneficiary owners (UBO) can be provided upon request. In paragraph 002 it is disclosed that the declaration of UBO information may be required by law, and reference is made to this fact in Japan. Disclosed is that information servicing companies have been established that provide the UBO information that is required by customers. Paragraph 014 also discloses that the declaration of UBO information is mandatory by law in one example for a first embodiment of the invention. The claimed abstract idea is considered to be a commercial practice of providing a service company that can provide corporate UBO information to a requesting entity and can also be viewed as a process of satisfying a legal obligation as far as having a service entity obtain and provide the UBO information to a governmental agency/entity that requires that the UBO information be declared. The claimed steps that define the abstract idea can be performed manually by people processing information and providing the information. Nothing that is claimed is not capable of being performed by a human being. These concepts both fall into the category of being a certain method of organizing human activities.
For claim 1, the additional elements of the claim are the recitation to the apparatus that comprises:
memory storing a computer readable program
a processor (that can execute the computer readable program)
a first acquisition unit for
a second acquisition unit for
a benefit rate specification unit for
an extraction unit for
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a processor and memory, where the processor can implement a computing device (the claimed units for that are invoking 112f), and where the claimed elements are being used as a tool to execute the abstract idea, see MPEP 2106.05(f). The specification teaches that the system includes a server that is connected to a network, where the server is executing the claimed steps that define the abstract idea. The claim is simply instructing one to practice the abstract idea by using a generically recited processor and memory that can implement a number of units (invoking 112f) that perform the steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected via a network such as the Internet (the web). This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not amount to more than simply instructing one to practice the abstract idea by using a generically recited processor and memory, and a computing device(s) to perform steps that define the abstract idea. This does not render the claims as being eligible. See MPEP 2106.05(f). The specification teaches that the system includes a server that is connected to a network, where the server is executing the claimed steps that define the abstract idea. The claim is simply instructing one to practice the abstract idea by using a generically recited processor and memory that can implement a number of units (invoking 112f) that perform the steps that define the abstract idea. The rationale set forth for the 2nd prong of the eligibility test above is also applicable to step 2B in this regard so no further comments are necessary. This is consistent with the PEG found in the MPEP 2106. Claim 1 is therefore not found to be eligible.
For claim 2, the abstract idea is being further defined by the element(s) of:
references the corporate enterprise information corresponding to the beneficial owner in a case of the beneficial owner being a corporation, and satisfying a first condition set from the definition of the ultimate beneficial owner (UB) in the designated jurisdiction, and specifies a beneficial ownership rate according to a definition of the designated jurisdiction, by confirming at least whether a beneficial owner satisfying a second condition set from the definition of the designated jurisdiction exists in the corporation which is the beneficial owner
The above is part of the same abstract idea that was found for claim 1. This is just further defining more about the information of the abstract idea and having conditions that are looked to so that one can determine the benefit rate. The benefit rate specification unit has been treated in the same manner as was set forth for claim 1 and does not provide for integration or significantly more, see MP P2106.05(f). The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore claim 2 is not considered to be eligible.
For claim 3, the abstract idea is further defined by:
outputting the beneficial owner information extracted;
acquiring jurisdiction-classified corporate enterprise information that at least includes, in addition to the corporate enterprise identification information of the target corporate enterprise, corporate enterprise name information and beneficial owner name information in which a corporate enterprise name which is a name of the target corporate enterprise, and a beneficial owner name which is a name of the beneficial owner of the target corporate enterprise are respectively expressed by a language which is an official language of an assumed jurisdiction assumed to be one among countries having a possibility of being set as the designated jurisdiction,
wherein, in a case of the corporate enterprise information being expressed in a language different from the language which is the official language of the designated jurisdiction, and the designated jurisdiction matching any of the assumed countries, outputs together with the beneficial ownership information at least part of the jurisdiction-classified corporate enterprise information corresponding to the first corporate enterprise having the beneficial owner specified as the ultimate beneficial owner (UBO)
The above is reciting more about the data that is obtained and output, which is part of the abstract idea. The additional elements are the recitation to the output unit for, and the third acquisition unit for. As was stated for claim 1, this is taken as an instruction for one to use a computer to perform steps that define the abstract idea, see MPEP 2106.05(f). The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore claim 3 is not considered to be eligible.
For claim 4, the abstract idea is further defined by:
wherein, in a case of a plurality of sets of corporate enterprise information having different providers being acquirable, switching the corporate enterprise information selected from among a plurality of sets of the corporate enterprise information, and perform specification of the beneficial owner that is the ultimate beneficial owner (UBO)
This is defining more about the same abstract idea of claim 1. The reference to the second acquisition unit and the extraction unit have been treated in the same manner that was set forth for claim 1, and do not render the claims as eligible for the same reasons, see MP P2106.05(f). The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore claim 4 is not considered to be eligible.
For claim 5, the abstract idea is further defined by:
generates warning information indicating that the corporate enterprise information is lacking, in a case of establishing that the corporate enterprise information required in specification of the beneficial owner that is the ultimate beneficial owner (UBO) not existing among the corporate enterprise information acquired
This just a further defining of the same abstract idea of claim 1. The reference to the second acquisition unit has been treated in the same manner that was set forth for claim 1, and do not render the claims as eligible for the same reasons, see MP P2106.05(f). The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore claim 5 is not considered to be eligible.
For claim 6, the abstract idea is further defined by:
when specifying a corporation as the beneficial owner, generates specification result information expressing a result specifying the corporation as the beneficial owner
This is just reciting more about the abstract idea. The reference to the second acquisition unit has been treated in the same manner that was set forth for claim 1, and do not render the claims as eligible for the same reasons, see MP P2106.05(f). The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore claim 6 is not considered to be eligible.
Therefore, for the above reasons, claims 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Response to arguments
The comments regarding 35 USC 112f are noted; however, the claims are still considered to be reciting language that invokes 112f. While the applicant has amended the claim to recite a memory with a program and a processor, that when executing the program, is configured to implement the claimed units that are invoking 112f; the claimed units are separately claimed from the processor and are still considered to be invoking 112f. The recitation to the processor and memory is not modifying structure to the claimed units because the processor is implementing the claimed units as if they are separate elements. The claimed units that invoke 112f are claimed separately from the processor and memory just as if they are separate devices that the processor is implementing. The applicant has not claimed that the executed computer readable program itself is what comprises the claimed units but has claimed the units as distinct from the processor. This is still invoking 112f in the opinion of the examiner.
The 112b rejection has been overcome by the amendments to the claims.
The traversal of the 35 USC 101 rejection is not persuasive. The applicant argues that having a beneficial ownership rate according to a definition of a UBO in a given jurisdiction from among a plurality of definitions, provides for a technical improvement to the field of UBO servicing. The field of UBO servicing is the act of providing UBO information to interested parties. This is not something that is technical in nature. The claims do not serve to improve technology in any manner. The result of the claim is information being extracted from storage in the form of the UBO related information (specifics of which are recited in the claims). What has been argued by the applicant is the abstract idea of the claim itself and the use of a definition of a UBO in a given jurisdiction. This is not arguing an additional element because this is arguing something that is part of the abstract idea. Even if the abstract idea is improved over previous methos of providing UBO information, then improvement lies in the abstract idea itself and not in any practical application of the abstract idea or in any application that would serve to improve technology. The providing of corporate information related to beneficia ownership has not been integrated into a practical application. The argument relies upon claim language that serves to define the abstract idea which is not persuasive to show that there are any additional elements claimed that provide for integration or significantly more. The 35 USC 101 rejection is being maintained.
Additionally, in terms of having an improvement to the field of UBO servicing, the examiner notes that this does not equate to a claim being eligible. Even new and novel or non-obvious abstract ideas are still abstract ideas. The field of UBO servicing is not technology and the claimed functions do not result in technology being improved. In buySAFE, Inc. v. Google, Inc. (Fed. Cir. 2014), the court stated that:
"abstract ideas, no matter how groundbreaking, innovative, or even brilliant, are outside what the statute means by "new and useful process, machine, manufacture, or composition of matter", and reference is made to Myriad by the court for this position. Also stated in buySAFE is "In defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow. Mayo, 132 S. Ct. at 1303. The Court in Mayo rejected the contention that the very narrow scope of the natural law at issue was a reason to find patent eligibility, explaining the point with reference to both natural laws and one kind of abstract idea, namely, mathematical concepts.”
From SAP AMERICA, INC., Plaintiff-Appellee v. INVESTPIC, LLC:
“We affirm. We may assume that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness) (Symantec). The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations (in the plot of a probability distribution function). No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm. An advance of that nature is ineligible for patenting.
Therefore, even if one takes the abstract idea as being an improved abstract idea in the field of UBO servicing, this does not render the claims eligible. Any alleged improvement is found in the abstract idea itself and is not resulting in technology being improved. The processor and memory of the claim are not being improved, and the same is noted for the claimed units that are being implemented by the processor. The argument is not persuasive to show that the claims are eligible at the 2nd prong or at step 2B.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/Primary Examiner, Art Unit 3626