DETAILED ACTION
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a method and system for providing advice information to a user. Under MPEP 2106.04(a)(2)(lIl), concepts relating to mental processes are drawn to abstract ideas. This judicial exception is not integrated into a practical application because the provision of generic computer components does not add a meaningful limitation to the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception under the factors set forth in MPEP 2106. Such factors include:
• Improvements to another technology or technical field;
• Improvements to the functioning of the computer itself;
• Applying the judicial exception with, or by use of, a particular machine;
• Transformation or reduction of a particular article to a different state of being;
• Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or
• Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Further guidance is provided by Alice Corp. v. CLS Bank Int'l, 110 USPQ2d 1976 (U.S. 2014). Alice held that a method of mitigating settlement risk was drawn to an abstract idea. Alice further held that the performance of the method performed on a computer did not amount to “significantly more” than the abstract idea, and thus the claimed invention was drawn to a patent-ineligible abstract idea:
These cases demonstrate that the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Mayo, supra, at_(slip op., at 3). Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Bilski, supra, at 610-611. Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to “implement]” an abstract idea “on ... a computer,” Mayo, supra, at_(slip op., at 16), that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our §101 jurisprudence. Given the ubiquity of computers, see 717 F.3d, at 1286 (Lourie, J., concurring), wholly generic computer implementation is not generally the sort of “additional feature]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Mayo, 566 U.S., at_(slip op., at 8-9).
Id at pp 1983-1984. Alice further held that apparatus claims drawn to a computer system were subject to the same analysis as the method claims, and were also not patentable subject matter:
Petitioner's claims to a computer system and a computer-readable medium fail for substantially the same reasons. Petitioner conceded below that its media claims rise or fall with its method claims. En Banc Response Brief for Defendant-Appellant in No. 11 -1301 (CA Fed.) p. 50, n. 3. As to its system claims, petitioner emphasizes that those claims recite “specific hardware” configured to perform “specific computerized functions.” Brief for Petitioner 53. But what petitioner characterizes as specific hardware— a “data processing system” with a “communications controller” and “data storage unit,” for example, see App. 954, 958, 1257—is purely functional and generic. Nearly every computer will include a “communications controller” and “data storage unit” capable of performing the basic calculation, storage, and transmission functions required by the method bclaims. See 717 F.3d, at 1290 (Lourie, J., concurring). As a result, none of the hardware recited by the system claims “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers.” Id., at 1291 (quoting Bilski, 561 U.S., at 610-611).
Id. at pp 1984-1985. Turning to the claimed invention, a method and system for receiving and analyzing information, and displaying the results of the analysis, is directed to an abstract idea. See MPEP 2106.04(a)(2)(ll)(D) and Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1351 -52, 119 USPQ2d 1739, 1740 (Fed. Cir. 2016). Each of the recited steps – registering a user, acquiring various information, storing the information, and displaying advice information based on an analysis of the received information - is a mental process pertaining to receiving and analyzing information. See also Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 117 USPQ2d 1693 (Fed. Cir. 2016), as cited in MPEP 2106.04(a)(2)(lIl)(C), which held that a system comprising an interface which received information from a user, a database storing various information, and a grading module configured to provide advice information to the user based on an analysis of the information, was directed to an abstract mental process that could be performed by humans without the use of a computer. The claimed system is considered to be analogous to that at issue in Mortgage Grader, and similarly involves a method performed by a generic computing device which under Alice is not sufficient to impart patentability to the system or method.
Consideration of the factors listed above pertaining to what is significantly more than the judicial exception, as viewed in light of the holding in Alice, weighs against patentability. While the method includes the use of a computer, the method does not involve an improvement in the function of a computer or other technology. Rather, generic computer components are used in their usual and customary way to perform the method. Mere automation of mental processes to improve efficiency is not sufficient to show an improvement in computer functionality. See Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017), as cited in MPEP 2106.05(a)(I), and Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015), as cited in MPEP 2106.05(f).
The claimed method does not require the use of a particular machine, as a generic computer system is not a “particular machine” under Alice, nor does it result in the transformation of a physical article. Rather, the result of the claimed method is a determination and display of certain advice information, which itself is an abstract concept.
Dependent claims 2-14 and 16-19 also fail to recite limitations which would overcome the rejection. These claims are generally directed to the types of information being received and analyzed as part of the method. Again, generic computer components are being used in their routine and conventional way. Because the claimed invention does not involve significantly more than the abstract concept of analyzing information, the claims are rejected under 35 USC 101.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-11 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kano in view of Mohanty. Kano discloses in the Figures and specification an information processing device including a controller (see paragraph [0066]) that registers a user (paragraph [0074], “data are stored in association with a patient (represented by patient identification information such as a name and a patient number, for example) and managed for each patient”), acquires from a terminal of the registered user intake information regarding food that the user has taken (receipt of various objective data disclosed at paragraph [0052], food intake data disclosed at paragraph [0124]), acquires subjective data including feelings of a user (paragraphs [0082-84] & [0123]) and sensation score derived from the information (paragraphs [0052-53]), and a storage that stores the various information (see storage unit 43 as described at paragraphs [0064-65]). Kano does not disclose a determination and output of a correlation between the food intake information and sensation score information. This feature is known in the art, as disclosed for example at paragraphs [0104] and [0123] of Mohanty, and would have been obvious to one of ordinary skill in the art as an obvious substitution of one known element for another to achieve predictable results and for the purpose of providing the user with information regarding the effects of food intake on general well-being.
With respect to claims 2, 3, 6-8, 10, 11, 16, 18 and 19, these claims are directed to the contents of information being received and analyzed. Applicant is advised that the content of information or other nonfunctional descriptive material will not overcome the prior art where there is no new and nonobvious functional relationship between the printed matter and the underlying computer system, and where the system merely serves as support for the information. See MPEP 2111.05(III). In this case the claim limitations are directed to conveying a message or meaning to a human observer. With respect to claims 4 and 5, Kano discloses at paragraph [0063] that time series data regarding its subjective score calculations is received, thus suggesting the claim limitations. With respect to claims 9 and 17, Kano discloses at paragraph [0123] that the information is configured to be shared with another user. With respect to claim 15, the combined teachings of the references suggest an information method corresponding to the system of claim 1 as discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KURT FERNSTROM/Primary Examiner, Art Unit 3715
December 19, 2025