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 Status
Claims 1-9 are currently pending and are presented for examination on the merits.
Priority
Applicant's claim for the benefit of Japanese patent application JP2021-191094, filed 11/25/2021, under 35 U.S.C. 119(a-d) is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2/1/2024, and 9/3/2024 were filed after the filing of a first office action on the merits. As such, the submission will be reviewed only if accompanied by the appropriate fee, in compliance with the provisions of 37 CFR 1.97. An electronic fee payment was made on 10/28/2024 accordingly. As such, the information disclosure statement is being considered by the examiner.
Claim objections
Please do not use line numbering in the claim set. It makes reproduction of the claim language in the office action more difficult.
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 1-9 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. More particularly, the claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., apparatus, system, etc.), article of manufacture (e.g., a medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards registering products after purchase (i.e., a commercial transaction). This is a long-standing commercial practice previously performed by humans (e.g., merchants, consumers, etc.) manually and via generic computing. For example, it has long been an experience to purchase an item (e.g., a computer) from a merchant and to be asked to register the product after a total has been generated. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—apparatus, medium, various units for performing the steps) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim 7 is further rejected under § 101 for being drawn towards all computer readable medium. That is to say, these claims are not limited to “non-transitory computer readable medium,” and therefore, include transitory signals. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-9 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2012/0215662 to Ito, alone.
With respect to Claims 1, 6 and 7, Ito teaches a product registration medium ([0093]), method (FIG. 15-19), apparatus (Abstract, sales management apparatus, license management server 10) comprising: a reception unit (product registration unit) configured to receive product registration (FIG. 3) after output of a subtotal ([0003], billing amount; see “purchase” throughout); an addition unit (sales management unit) configured to add sales data of a product for which registration is received by the reception unit to sales data of a product for which the subtotal is output ([0003];[0121], grouping); a cancellation unit configured to cancel the sales data of the product added by the addition unit ([0162];[0252];FIG. 16, delete, abort); and a determination unit configured to wait for an instruction of whether or not to permit the product registration received after the output of the subtotal, determine the addition of the sales data performed by the addition unit in a case where the determination unit receives an instruction to permit the product registration, and determine the cancellation of the sales data performed by the cancellation unit in a case where the determination unit receives an instruction not to permit the product registration ([0130];[0224], license check section permits;[0268]).
Ito teaches an equivalent system operable to perform the method recited in the instant invention, but does not use the same verbiage, such as the various “units,” etc., however, the applied reference(s) need not use the same terminology, or disclose the limitations verbatim. To that end, it is not clear whether the term “product registration” is used as such term of art is understood (wherein the product information and ownership are registered with the merchant, etc.) or if Applicant simply means that a product is added to a cart already having a subtotal (such as in a web browser (FIG. 5)). Either way, Ito is configured to perform the present invention. Ito teaches a different set of units collectively operable to perform a a product registration after a sales data subtotal, to complete such task. The disparate sets of units are a simple substitute for each other. See, KSR international Co. v. Teleflex Inc. As such, it would have been obvious to one of ordinary skill in the art to modify Yu to include the specified verbiage and specific set of models.
With respect to Claim 2, Ito teaches wherein the determination unit is configured to wait for an instruction as to whether or not to permit the product registration after the sales data is added by the addition unit ([0003];[0130]).
With respect to Claim 3, Ito teaches wherein the determination unit is configured to wait for an instruction as to whether or not to permit the product registration after the sales data is canceled by the cancellation unit ([0162];[0182];[0252]).
With respect to Claim 4, Ito teaches wherein the determination unit is configured to control a display device to display a screen on which a first operating element for instructing to permit the product registration and a second operating element for instructing not to permit the product registration are arranged, and wait for an instruction as to whether or not to permit the product registration ([0089], see screen throughout; [0099]).
With respect to Claim 5, Ito teaches a notification unit configured to notify cancellation of the sales data when the cancellation of the sales data is determined by the determination unit ([0162];[0182]).
With respect to Claim 8, Ito teaches wherein the determination unit is configured to wait for an instruction as to whether or not to permit the product registration in a case where information on the product added by the addition unit is displayed on a display device after the sales data is added by the addition unit ([0162];[0182];[0252]).
With respect to Claim 9, Ito teaches wherein the notification unit is configured to notify, in a case where cancellation of the sales data is determined by the determination unit, the cancellation of the sales data by indication indicating the cancellation relative to information of the product added by the addition unit which is displayed on a display device ([0162];[0182];[0252]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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/WILLIAM J JACOB/ Examiner, Art Unit 3696