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 .
Status of Claims
This Office action is in response to correspondence received February 12, 2024.
Claims 1-12 are pending and have been examined.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 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:
an acquisition section that acquires one or more of patent publications…
a count section that counts appended genera of a lower level patent classification appended…
an estimation section that uses a correlation of appended genera of the lower level patent classification,…
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.
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.
Support for the following (structure in the specification) is found in the following:
Acquisition section; count section; estimation section;
See pars 046-047:
The programs PBIA, PB1B,PB1C are stored on the ROM 62, or the storage 64, or the external storage device 69. The personal computer terminal 60 or the server 70 reads the programs PBIA, PB1B,PB1C from the ROM 62, or the storage 64, or the external storage device 69, and executes each of the processing thereof. A database 71 configured by the ROM 62, or the storage 64, or the external storage device 69 is provided on the server 70. Note that whether to perform each of the above processing S11 to S34 on which out of the personal computer terminal 60 or the server 70 may be freely determined according to system configuration. For example, the programs PBIA, PB1B,PB1C may be installed on the personal computer terminal 60, and the programs PBIA, PB1B,PB1C may be executed on a standalone personal computer terminal 60. Moreover, for example, the processing of the programs PB1A, PB1B,PB1C may be executed by both the personal computer terminal 60 and the server 70 by access to the server 70 from the personal computer terminal 60 over the network 80.
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 11 and 12 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.
Per claims 11 and 12, which recite, “A computer-readable storage medium of claim 10, storing a program for causing business activity size estimation to be executed by a computer wherein the business activity size estimation comprising:” but do not recite further comprising (nor The computer-readable storage medium…), it is unclear if the limitations of claim 10 are included. However, the preamble as written refers to claim 10. As it is unclear whether claims 11 and 12 are dependent on claim 10, or merely include the limitations of claim 10 as independent claims, the scope is unclear and the claims are indefinite.
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 11 and 12 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. Claims 11 and 12 do not specify a further limitation of the subject matter claimed in claim 10, further though claims 11 and 10 recite “A computer-readable storage medium of claim 10,” it is not clear if this a reference to a claim previously set forth” (See MPEP 608.01(n)). 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.
Therefore, claims 11 and 12 are rejected under 35 USC 112.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
Claim 1:
acquires one or more of patent publications having an estimation-subject company as applicant or patent publications appended with a higher level patent classification corresponding to an estimation-subject business activity; counts appended genera of a lower level patent classification appended to the patent publications acquired by the acquisition section; a uses a correlation of appended genera of the lower level patent classification, as counted by the count section, correlated with one or more of a business activity size of the estimation-subject company or a size of the estimation-subject business activity, to estimate one or more of the business activity size of the estimation-subject company or the size of the estimation-subject business activity.
Claim 10:
causing business activity size estimation the business activity size estimation comprising: acquisition processing to acquire one or more of patent publications having an estimation-subject company as applicant or patent publications appended with a higher level patent classification corresponding to an estimation-subject business activity; count processing to count appended genera of a lower level patent classification appended to the patent publications acquired by the acquisition processing; and estimation processing that uses a correlation of the appended genera of the lower level patent classification, as counted by the count processing, correlated with one or more of a business activity size of the estimation-subject company or a size of the estimation-subject business activity to estimate one or more of the business activity size of the estimation-subject company or the size of the estimation-subject business activity.
Claims 1 and 10 recite an abstract idea that is understanding the business activity of a company or “business activity” through a company’s or “business activity’s” patent holdings. This a mental process that is collecting information, analyzing information, and presenting the results of the information, Electric Power Group, because one could in each step observe (collect) information or judge (analyze) information mentally or with pen and paper. Alternatively this is a certain method of organizing human activity – commercial interaction, because it is steps of collecting information to determine a value of a business or “business activity,” similar to determining a credit application (valuing a customer’s ability to pay) Credit Acceptance, or putting real property into a real estate portfolio Fort Properties. Therefore, claims 1 and 10 recite an abstract idea that is either a mental process or a commercial interaction (certain method of organizing human activity).
This judicial exception is not integrated into a practical application. The additional elements amount to no more than instructions to apply the abstract idea to a computer. The elements of claim 1, which are 112(f) elements for which the structure is found in the specification, amount to instructions to use a computer, both alone and in combination. Claim 1 recites: A business activity size estimation device; an acquisition section that; a count section that; and an estimation section that, which amounts to a computer with programming that performs the claimed functions (the abstract idea identified above). Claim 10 similarly recites: A computer-readable storage medium storing a program to be executed by a computer. The processing limitations under a broadest reasonable interpretation are calculating or determining limitations which are a part of the abstract idea. This is no more than performing commonplace business methods on a computer, see MPEP 2106.05(f)(2).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the analysis is carried over from Prong 2. For the same reason that the combination of elements is not a practical application, it is not significantly more than the abstract idea of claims 1, 10-12.
Per the dependent claims,
Claims 2-9 further describe the abstract idea of claim 1 and therefore do not overcome the rejection of claim 1.
Claims 11 and 12 are similar to claims 7 and 8 except they also recite “A computer-readable storage medium storing a program to be executed by a computer.” Which is an apply it limitation analyzed the same as the limitation in claim 10.
Therefore, claims 1-12 are rejected under 35 USC 101.
Claim Rejections - 35 USC § 102
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, 3-6, 8-10, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Germeraad et al., US PGPUB 20020035499 A1 (“Germeraad”).
Per claims 1 and 10, which are similar in scope, Germeraad teaches A business activity size estimation device comprising: an acquisition section that acquires one or more of patent publications having an estimation-subject company as applicant or patent publications appended with a higher level patent classification corresponding to an estimation-subject business activity in par 107: “Embodiments of the IPAM server can process, display, and otherwise operate with patent equivalent text files (EQV) (or other types of files or data) to aid in the merger and acquisition process in different stages, although the invention is not limited to this embodiment. Patent equivalent text files are described in U.S. Pat. No. 5,623,681, which is herein incorporated by reference in its entirety. A patent equivalent text file includes equivalency information that establishes an equivalency relationship between the text in the patent equivalent text file and the image in the patent image file.” Patent equivalent text file teaches acquiring patent publications.
Germeraad further teaches in par 108: “These tools or methods include (when they are incorporated with IPAM server), but are not limited to, a topographic map 202, a technology classification 204, a SIC classification 206.” Higher level classification is taught by SIC classification.
Then, Germeraad teaches a count section that counts appended genera of a lower level patent classification appended to the patent publications acquired by the acquisition section in par 108: “an international patent class 228, an assignee patent count report by primary class/subclass 230.” Under a broadest reasonable interpretation in light of the specification, the count report by primary class/subclass teaches a count of the lower level patent classification.
Then, Germeraad teaches and an estimation section that uses a correlation of appended genera of the lower level patent classification, as counted by the count section, correlated with one or more of a business activity size of the estimation-subject company or a size of the estimation-subject business activity, to estimate one or more of the business activity size of the estimation-subject company or the size of the estimation-subject business activity in par 133 “The purpose of Tool 17 in the identify potential targets stage 102 and the evaluate/analyze stage 104 is to give Company B a visual indication of Company A's core technologies by patent class, indicating which are well covered and which are sparse. Comparing this chart to the strategic intent of Company B, it identifies technologies to have the research and development department build upon to make more robust, and which technologies to license out to create more value for the proposed merger. How the IPAM server works in conjunction with the technology classification 204 to aid in the identify potential targets stage 102 and the evaluate/analyze stage 104 is described next with reference to FIG. 8. Typically, Tool 17 is initiated by the user selecting an assignee and a technology classification function on the computer screen.”
See also par 143-144 " Instep 1006, each U.S. and IPC classification determined by step 1004 is mapped (e.g., via a look-up table) to its related SIC classification. Control then passes to step 1008.
In step 1008, the IPAM server is used in conjunction with a SIC classification 206 to create a graphical representation of similar industrial markets. Typically, this is done by the user selecting a related market function on the computer screen. The SIC classification 206 produced by Tool 18 (FIG. 9) shows the diverse markets (via SIC Classifications) that apply to Company A's patents. The graphical representation in FIG. 9 is a pie chart. The present invention is not limited to using a pie chart. The flowchart 1000 at this point ends."
See also Fig 9.
See also in particular Par 223 and Fig 42: “FIG. 42 illustrates the assignee patent count report by primary class/subclass 230, used in the evaluate/analyze stage 104 and the negotiation stage 108, as Tool 20, entitled "Patent Count Report for Primary Class." The purpose of Tool 20 is to identify the top assignees in a primary class area by number of issued patents. This information represents where two or more companies rank in their overall competitive landscape in the particular patent class. In addition, Tool 20 highlights if a proposed merger will significantly broaden or deepen the patent portfolio, or not. This information may aid in a valuation point during negotiation of a merger or acquisition. How the IPAM server works in conjunction with the assignee patent count report by primary class/subclass 230 to aid in the evaluate/analyze stage 104 and the negotiation stage 108 is described next with reference to FIG. 43. Typically, Tool 20 is initiated by the user selecting an assignee patent count report by primary class/subclass function on the computer screen.” This teaches under a broadest reasonable interpretation business activity size estimation by count of lower level appended genera as class/subclass are counted.
Per claim 3, Germeraad teaches the limitations of claim 1, above. Germeraad further teaches wherein the lower level patent classification is an International Patent Classification subgroup, or main-group, or subclass in par 108: “an international patent class 228, an assignee patent count report by primary class/subclass 230.”
Per claim 4, Germeraad teaches the limitations of claim 1, above. Germeraad further teaches wherein the estimation section estimates at least one of capability, business activity revenue, or business activity budget allocation in Fig. 9: “The impact of this analysis is to identify the scope and magnitude of potential competitors and licensees of patents of the proposed merger.”
Per claim 5, Germeraad teaches the limitations of claim 1, above. Germeraad further teaches wherein the estimation section estimates at least one of a change in capability, a change in business activity revenue, a change in business activity budget allocation, or a business activity trend, by computing a timewise change rate of appended genera of the lower level patent classification and by estimating one or more of a change of business activity size of the estimation-subject company or a change of size of the estimation-subject business activity, according to the computed timewise change rate of appended genera of the lower level patent classification in Fig. 15, and pars 158-159 " FIG. 15 illustrates the patent citation tree 210, used in the negotiation stage 108, as Tool 8b, entitled ""Patent Citation Tree."" In general, the purpose of Tool 8b is to show which companies were free-to-practice and which were not free-to-practice the art in question. When the nodes of the patent citation tree 210 are color coded for freedom-to-practice (red-yellow-green), it shows which companies must take a license to the patent(s).
This is a powerful visualization tool for the negotiation team. It shows the other side the depth of the analysis and the value of the patent under discussion. The patent citation tree 210 also identifies for the negotiation team how fast the technical area is moving and how many companies are involved. In addition, it visually shows the uniqueness of the patent under discussion, and from the richness of the tree, how valuable it is. How the IPAM server works in conjunction with Tool 8b is similar to Tool 8a, as described above with reference to FIG. 14. Here, the patent citation tree 210 is created by running the forward citation analysis for key patents which will transfer as part of the merger."
Per claim 6, Germeraad teaches the limitations of claim 1, above. Germeraad further teaches wherein the estimation section estimates at least one of a change in capability, a change in business activity revenue, a change in business activity budget allocation, or a business activity trend by computing appended genera of the lower level patent classification for each category of the higher level patent classification and by estimating a change of business activity size for each category of the higher level patent classification according to a timewise change rate of the computed appended genera of the lower level patent classification in Fig 29 and par 0199: “FIG. 29 illustrates the patent count/year 220, used in the evaluate/analyze stage 104, the due diligence stage 106 and the negotiation stage 108, as Tool 12a, entitled "U.S. Patent Count/Year." The purpose of Tool 12a is to identify the level and rate of change in Company A's and Company B's U.S. patent portfolios. Tool 12a also identifies the intensity of the U.S. development efforts and issued patents in the company being reviewed for acquisition. Higher activity brings higher valuation. How the IPAM server works in conjunction with the patent count/year 220 to aid in the evaluate/analyze stage 104, the due diligence stage 106 and the negotiation stage 108 is described with reference to FIG. 30. Typically, Tool 12a is initiated by the user selecting a patent count/year graph function on the computer screen.” Patent count/year teaches timewise change.
See also Fig. 15
See also pars 158-159: "FIG. 15 illustrates the patent citation tree 210, used in the negotiation stage 108, as Tool 8b, entitled ""Patent Citation Tree."" In general, the purpose of Tool 8b is to show which companies were free-to-practice and which were not free-to-practice the art in question. When the nodes of the patent citation tree 210 are color coded for freedom-to-practice (red-yellow-green), it shows which companies must take a license to the patent(s).
This is a powerful visualization tool for the negotiation team. It shows the other side the depth of the analysis and the value of the patent under discussion. The patent citation tree 210 also identifies for the negotiation team how fast the technical area is moving and how many companies are involved. In addition, it visually shows the uniqueness of the patent under discussion, and from the richness of the tree, how valuable it is. How the IPAM server works in conjunction with Tool 8b is similar to Tool 8a, as described above with reference to FIG. 14. Here, the patent citation tree 210 is created by running the forward citation analysis for key patents which will transfer as part of the merger."
Per claims 8 and 12, Germeraad teaches the limitations of claims 1 and 10, above. Germeraad further teaches wherein the acquisition section includes: an acquisition section that acquires patent publications having an estimation-subject company as applicant in par 107: “Embodiments of the IPAM server can process, display, and otherwise operate with patent equivalent text files (EQV) (or other types of files or data) to aid in the merger and acquisition process in different stages, although the invention is not limited to this embodiment. Patent equivalent text files are described in U.S. Pat. No. 5,623,681, which is herein incorporated by reference in its entirety. A patent equivalent text file includes equivalency information that establishes an equivalency relationship between the text in the patent equivalent text file and the image in the patent image file.” Patent equivalent text file teaches acquiring patent publications.
Germeraad further teaches in par 108: “These tools or methods include (when they are incorporated with IPAM server), but are not limited to, a topographic map 202, a technology classification 204, a SIC classification 206.” Higher level classification is taught by SIC classification.
Germeraad then teaches a result value acquisition section that acquires a business activity size result value indicating a result value of a size of business activity corresponding to a higher level patent classification appended to the patent publications acquired by the acquisition section in par 0135: “In step 804, the IPAM server takes the group of patents produced in step 802 and further divides it into subgroups, with each subgroup having the same technology classification. When the search in step 802 is on the group of U.S. patents, the classification used is the U.S. Patent Classification designated by the U.S. Patent and Trademark Office. In a similar manner, if the search in step 802 is on the group of International patents, then the classification used would be the IPC classification. The IPAM server may store the U.S. Patent Classification (or IPC classification) in a meta-data field that will also need to be searched to determine the technology classification, but is not limited to this. Exemplary screen shots of the user interface of the IPAM server to assist the user company in searches relating to U.S. Patent Classifications are shown in FIGS. 86-98. The present invention is not limited to these exemplary user interfaces. Control then passes to step 806.”
Germeraad then teaches the count section includes: a count section that counts appended genera of a lower level patent classification in each category of the higher level patent classification appended to the patent publications acquired by the acquisition section in par 0136: “In step 806, the IPAM server is used in conjunction with a technology classification 204 to create a graphical representation of similar technologies. The technology classification 204 produced by Tool 17 (FIG. 7) shows the diverse technologies (via U.S. Patent Classifications) that Company A's patents cover. The graphical representation in FIG. 7 is a pie chart, which was created using Excel, but is not limited to Excel. In fact, the present invention is not limited to using a pie chart, but could also use radar or spider charts, two or three dimensional graphs, etc.”
Germeraad then teaches and the estimation section includes: a prediction model generation section that generates a business activity size prediction model that is a prediction model to predict one or more of appended genera of the lower level patent classification or a size of business activity, based on an appended genera count value as counted by the count section for the lower level patent classification in each category of the higher level patent classification and based on the business activity size result value as acquired by the result value acquisition section, and that is a prediction model taking the appended genera of the lower level patent classification as an explanatory variable and the business activity size as an objective variable in par 0137: “Referring to FIG. 7, the U.S. Patent Classification 395 represents the most common type of technology that is covered by Company A's patents. Therefore, the technology included in U.S. Patent Classification 395 is well-covered by Company A's patents. In contrast, the technology included in U.S. Patent Classification 369 is sparsely-covered by Company A's patents.” See also par 0147: “FIG. 11 illustrates the radar diagram 208 facilitating the identify potential targets stage 102 and the evaluate/analyze stage 104 as Tool 26, entitled "Radar Diagram." The purpose of Tool 26 is to provide Company B with a visual indication of the technology overlap and for synergy in a possible merge. The numbers on the y-axis show the number of patents in each patent class. The numbers around the periphery at the nodes of the diagram are the patent classes. How the IPAM server works in conjunction with the radar diagram 208 to aid in the identify potential targets stage 102 and the evaluate/analyze stage 104 is described next with reference to FIG. 12.”
Per claim 9, Germeraad teaches the limitations of claim 8, above. Germeraad further teaches wherein the business activity size prediction model is a model taking appended genera of lower level patent classification for each of a plurality of categories of higher level patent classification as a plurality of explanatory variables, and taking a business activity size corresponding to the plurality of categories of the higher level patent classification as the objective variable in Fig 12 and Pars 0148-0150: “In FIG. 12, a flowchart 1200 begins at step 1202. In step 1202, in an embodiment of the present invention a user performs a search on the group of all Company A's and Company B's patents. The search performed is typically a boolean and/or natural language search on the primary class designation to produce a group of patents. Control passes to step 1204.
In step 1204, the group of patents that resulted from step 1202 are sorted by assignee (to separate Company A's and Company B's patents). Control passes to step 1206.
In step 106, the IPAM server is used in conjunction with radar diagram 208 to create a graphical representation of technology synergy of merger. Flowchart 1200 ends at this point.”
Therefore, claims 1, 3-6, 8-10, and 12 are rejected under 35 USC 102.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Germeraad et al., US PGPUB 20020035499 A1 (“Germeraad”) in view of Kang et al., US PGPUB 20130282599 A1 ("Kang").
Per claim 2, Germeraad teaches the limitations of claim 1, above. Germeraad does not teach wherein the count section removes duplication from, and counts the appended genera of, the lower level patent classification appended to the patent publications acquired by the acquisition section.
Kang teaches generating a patent evaluation model. See abstract.
Kang teaches wherein the count section removes duplication from, and counts the appended genera of, the lower level patent classification appended to the patent publications acquired by the acquisition section in par 152: “A citation direction may be one of a forward citation, a backward citation, and an obtained citation occurrence patent set. On the other hand, it is preferable to allow a duplication of a forward citation patent set or a backward citation patent set. However, in a specific case, it is preferable for a user not to select the duplication thereof. That is, where the n patents I1, I2, . . . , In belonging to the obtained patent set cite an identical patent Pi, it is preferable that a weight is applied to the Pi at n times. Typically, when a set operation (union operation) is performed, duplication frequency is removed from duplicated elements Pi and the duplicated elements are treated one time. This is not preferable considering the purpose of the citation analysis. Therefore, each Pi is treated while frequency of the Pi is maintained.”
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the business estimation by patent teaching of Germeraad with the removal of duplication teaching of Kane because Kane teaches in par 007 that: “a development of a new patent evaluation model and a system using the patent evaluation model has been acutely required in order to increase the reliability of an evaluation result.” One would be motivated to combine Kane to Germeraad to improve a patent evaluation model so that an evaluation result is improved. For these reasons one would be motivated to modify Germeraad with Kane.
Claim(s) 7 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Germeraad et al., US PGPUB 20020035499 A1 (“Germeraad”) in view of Kim et al., US PGPUB 20150199695 A1 (“Kim”).
Per claims 7 and 11, which are similar in scope, Germeraad teaches the limitations of claims 1 and 10, above. Germeraad further teaches wherein the acquisition section includes: a first acquisition section that acquires patent publications appended with a higher level patent classification corresponding to an estimation-subject business activity in par 161: “FIG. 16 illustrates the patent citation tree 210, used in the evaluate/analyze stage 104, the due diligence stage 106 and the negotiation stage 108, as Tool 8c, entitled "Patent Citation Tree." The purpose of Tool 8c is to allow the merger and acquisition team to see, at a glance, if other companies are focused in a specific effort to work in just one branch of the technology, or are working in many areas.”
Germeraad then teaches a second acquisition section that acquires patent publications having an estimation-subject company as applicant from among the patent publications acquired by the first acquisition section in par 161: “ Companies working in many areas will be good candidates for a post-merger assertion and license out analysis. This can generate a cash flow stream to help justify the merger deal. Where cited patents are from either merger company, the nodes of the tree may be color coded or marked with an icon or box shape, etc., so that the merger and acquisition team can see at a glance the strength of the combined "picket fence" the merger will create.”
Germeraad then teaches the count section includes: a first count section that counts first appended genera of a lower level patent classification appended to the patent publications acquired by the first acquisition section in par 162: “In addition, the patent citation tree 210 produced by Tool 8c shows how unique, mature, expansive, and inner-related the technology is that stems from the patent being evaluated. When dates are put in the nodes, it also shows the merger and acquisition team how fast moving the various branches of the tree are growing. How the IPAM server works in conjunction with Tool 8c is similar to Tool 8a, as described above with reference to FIG. 14. Here, the patent citation tree 210 is created by running the forward citation analysis for key patents which will transfer as part of the merger.”
Germeraad then teaches a second count section that counts second appended genera of a lower level patent classification appended to the patent publications acquired by the second acquisition section in par 144: “In step 1008, the IPAM server is used in conjunction with a SIC classification 206 to create a graphical representation of similar industrial markets. Typically, this is done by the user selecting a related market function on the computer screen. The SIC classification 206 produced by Tool 18 (FIG. 9) shows the diverse markets (via SIC Classifications) that apply to Company A's patents. The graphical representation in FIG. 9 is a pie chart. The present invention is not limited to using a pie chart. The flowchart 1000 at this point ends.”
Germeraad then teaches and an estimation section that uses the appended genera share as computed by the computation section to estimate a business activity size share made up by the business activity size of the estimation-subject company in a size of the estimation-subject business activity in par 0237: “FIG. 44 illustrates the assignee patent count report by primary class/subclass 230, used in the evaluate/analyze stage 104 and the negotiation stage 108 as Tool 23, entitled "Assignee Patent Count Report for Class/Subclass." The purpose of Tool 23 is to identify the top assignees in a particular class/subclass area by number of patents issued. In addition, Tool 23 highlights if the proposed merger will significantly broaden or deepen the patent portfolio. This can be a valuation point during the negotiation stage 108. This information represents where two or more companies rank in their overall competitive landscape in the particular patent class/subclass area. How the IPAM server works in conjunction with Tool 23 is similar to Tool 20, as described above with reference to FIG. 43.”
Germeraad does not teach the estimation section includes: a computation section that computes an appended genera share of the second appended genera of the lower level patent classification divided by the first appended genera of the lower level patent classification.
Kim teaches reporting on the size of a technology sector using patent assets. See abstract.
Kim teaches the estimation section includes: a computation section that computes an appended genera share of the second appended genera of the lower level patent classification divided by the first appended genera of the lower level patent classification in par 057: “Referring to FIG. 5A, illustrated is a technique for estimating revenue per patent using patent office classifications, according to an embodiment. This example assumes that the financial metric of interest is revenue and all of the patents in the patent database 162 are classified into one of three patent office classes 502: X, Y or Z. For each classification, Known Companies 504 that have patents in the classification for a target time frame are determined. For each Known Company, a number of patents 506 owned by the Known Company in the class for a target time frame and the total number of patents 508 owned by the Known Company for the target time frame are determined from the patent database 162. The revenue 510 of the Known Company for the target time frame is determined from the financial database 164. The class revenue 512 of the Known Company is determined by multiplying the total revenue of the company by a ratio of patents in the class to total patents. The class revenue per patent 514 of the Known Company is determined by dividing the class revenue by the number of patents in the class. The final class revenue per patent 516 is then estimated by averaging the class revenue per patent across different Known Companies.” Class revenue teaches appended genera share and it is divided by the number of patents in the class which teaches first appended genera.
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the estimation of business by patent document teaching of Germeraad with the patent information divided teaching of Kim because Kim teaches in par 005: “Even for companies that are required to publish financial information, the published information is typically not detailed enough for accurately estimating the market size of the technology sector. Thus, it is difficult for software tools to produce a report that accurately reflects the market size of a technology sector.” One would therefore use Kim’s teachings, which use particular information outside of published financial information, to better understand a technology sector. One would be motivated to combine Kim with Germeraad for this reason to have better detail about a sector or company to have a better estimate.
Therefore, claims 2, 7, and 11 are rejected under 35 USC 103.
Conclusion
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/RICHARD W. CRANDALL/ Primary Examiner, Art Unit 3619