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 Interpretation
Claims 1, 5, and 6 recite limitation “positive affirmation(s),” which is directed to non-functional descriptive material and given no patentable weight because the limitation is directed to content of message and does not provide any functional relationship to its substrate, i.e., surface(s). See MPEP 2111.05
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 5-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 2 and 7, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 2 and 7, the phrase "but not limited to" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "but not limited to"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 5 recites the limitation "stated positive affirmation(s)" in line 3. It is ambiguous which renders the claim indefinite because it is unclear whether the limitation refers to "stated positive affirmation(s)" in line 1 or another new "stated positive affirmation(s)." For the reason, dependent claims 6-9 are rejected as well.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3-4 and 8-9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3, for example, recites the limitation “said surface(s) is of any size and/or dimension and/or resolution.” The limitation fails to further limit the subject matter of said surface(s) because, by definition, all tangible subject matter read on the scope of the limitation. For the reason, claims 4, 8, and 9 are rejected as well. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 5-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception(s) without significantly more.
[STEP 1] The claim recites at least one step or structure. Thus, the claim is to a process or product, which is one of the statutory categories of invention (Step 1: YES).
[STEP2A PRONG I] The claim(s) 5 recite(s) a method of freehand writing or typing stated positive affirmation(s) one or more number of times comprising the step of: writing freehand or typing stated positive affirmation(s) in designated area(s) on one or more surface(s).
The non-highlighted aforementioned, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. Claim 5 does not recite any additional element because the courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. MPEP 2106.04(a)(2)(III). That is, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the recited language, the step in the context of this claim encompasses writing stated positive affirmation(s) in a paper using a pen.
The non-highlighted aforementioned limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation between people but for the recitation of generic computer components. That is, other than reciting “one or more surface,” nothing in the claim element precludes the step from practically being performed between people. For example, but for the recited language, the step in the context of this claim encompasses a student practicing handwriting.
If a claim limitation, under its broadest reasonable interpretation, covers managing interactions between people, then it falls within the “Organization of Human Activity” grouping of abstract ideas.
Accordingly, the claim recites a judicial exception, and the analysis must therefore proceed to Step 2A Prong Two.
[STEP2A PRONG II] This judicial exception is not integrated into a practical application. In particular, the claim does not recite any additional element. See MPEP 2106.04(a)(2)(III). Alternatively, the claim only recites the additional element(s) – “one or more surface.”
The claim recites the following additional elements: “one or more surface.” The additional element step is recited at a high level of generality, and amounts to mere data gathering, which is a form of insignificant extra-solution activity. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component.
Accordingly, the additional element(s) do(es) not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea and the claim is therefore directed to the judicial exception. (Step 2A: YES).
[STEP2B] 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 element of displaying information to perform the aforementioned step(s) amounts to no more than adding insignificant extra-solution activity to the judicial exception, which cannot provide an inventive concept.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be reevaluated in Step 2B. Here, the aforementioned step(s) was/were considered to be extra-solution activity in Step 2A, and thus it is reevaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The background of the specification does not provide any indication that the additional element(s) is/are anything other than a generic, off-the-shelf computer component, and the Electric Power Group, LLC v. Alstom S.A., and Ameranth, court decisions cited in MPEP 2106.05(g) indicate that displaying data is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Accordingly, a conclusion that the aforementioned step(s) is/are well-understood, routine, conventional activity is supported under Berkheimer Option 2.
The claim is not patent eligible. (Step 2B: NO).
Claim(s) 6-9 is/are dependent on supra claim(s) and includes all the limitations of the claim(s). Therefore, the dependent claim(s) recite(s) the same abstract idea. The claim does not recite any additional limitation. See supra 112(b) and 112(d) rejections to claims 7-9. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Galindo (U.S. Patent Application Publication 2013/0288209).
Regarding claim 5, Galindo discloses a method of freehand writing or typing stated positive affirmation(s) one or more number of times (Abstract) comprising the step of: writing freehand or typing stated positive affirmation(s) in designated area(s) on one or more surface(s) (FIG. 1A illustrates a story leading page 500 having grid box 400 for writing; see also ¶¶33-34; ¶34 further discloses writing freehand message in the grid box: “The grid box may be used for practicing standardized handwriting for letters and words of English, Spanish, and other alphabetic languages.”; It is noted that the limitation “positive affirmation(s)” is directed to non-functional descriptive material and given no patentable weight. See MPEP 2111.05; Alternatively, under the broadest reasonable interpretation, Galindo further discloses the positive affirmation, i.e., the leading texts 460, e.g., “How to start your story?” in FIG. 1A).
Regarding claims 1 and 6, Galindo discloses a system/method comprising one or more surface(s) comprised of: (a) one or more stated positive affirmation(s) (leading texts 460 in FIG. 1A) and (b) one or more designated area(s) for user to freehand write or type said stated positive affirmation(s) one or more number of times to enhance mental well-being (grid box 400 in FIG. 1A).
Regarding claims 2 and 7, Galindo discloses that said surface(s) is able to be written or typed on such as but not limited to a page in a book, a screen of a digital book, or a screen of a web or mobile application (FIG. 2B illustrates a booklet assembly 1 having the first booklet 10, to display the leading page 500; see also ¶49).
Regarding claims 3 and 8, Galindo discloses that said surface(s) is of any size and/or dimension and/or resolution (FIG. 2A illustrates the size of the story leading page 500 is of any size).
Regarding claims 4 and 9, Galindo discloses that said designated area(s) is of any size and/or dimension and/or resolution (FIG. 2A illustrates the size of the grid box 400 is of any size).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J HONG whose telephone number is (571)272-0993. The examiner can normally be reached 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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THOMAS J. HONG
Primary Examiner
Art Unit 3715
/THOMAS J HONG/ Primary Examiner, Art Unit 3715