CTNF 18/460,574 CTNF 84417 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. Claims 1-10 have been examined and are pending. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1-10 are directed to one of the eligible categories of subject matter. With respect to independent claims 1, 9 and 10, the define, perform, execute, arrange, exert control cover performance of the limitations manually and/or in the mind (mental processes abstract idea). The request limitations are recited at a high level of generality and do not add meaningful limitations to the abstract idea; these limitations are directed to insignificant extra solution activities. The claims as a whole merely describe how to generally “apply” the exception in a computer environment using generic computer functions or components (e.g. display unit ). Even when viewed in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims are not patent eligible. With respect to dependent claim 3, 4, 8 the prohibit, ask, delete cover performance of the limitations manually and/or in the mind (mental processes abstract idea). The provide, present, receive are recited at a high level of generality and do not add meaningful limitations to the abstract idea; these limitations are directed to insignificant extra solution activities. The claims as a whole merely describe how to generally “apply” the exception in a computer environment using generic computer functions or components. Even when viewed in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims are not patent eligible. With respect to dependent claims 2 the prohibit cover performance of the limitations manually and/or in the mind (mental processes abstract idea). No additional elements are recited and so the claims do not provide a practical application and are not considered to be significantly more. The claims are not eligible. With respect to dependent claims 5, 6, 7 provide, present are recited at a high level of generality and do not add meaningful limitations to the abstract idea. The claims as a whole merely describe how to generally “apply” the exception in a computer environment using generic computer functions or components. Even when viewed in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims are not patent eligible. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-10 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. Claim 1 in cludes “arrange a first request unit and a second request unit on a display unit in this sequence” but there is no sequence being claimed; “…a first … and a second” does not convey a particular sequential order of anything. Accordingly, it is not clear how the claimed units are arranged on the claimed display unit. Claims 2-10 are either dependent claims or include analogous subject matter and are therefore likewise rejected. Claim 1 include s “after the first process is requested by using the first request unit, until the second process is requested by using the second request unit, exert control related to a user operation on a basis of the second process.” It is not clear what it means to “exert control related to a user operation on a basis of the second process” because (1) the second process is not requested during this “exert control” step and so there cannot be any control exerted on “a basis” of a thing that was not requested and (2) it indicates that no control would be “exerted” after the second process is requested which does not make sense. Claims 2-10 are either dependent claims or include analogous subject matter and are therefore likewise rejected. Claim 2 includes “as control related to the user operation, prohibit the user operation which causes execution of the second process to fail.” It is not clear what this means. It appears to require that the control being exerted is a prohibition operation which results in the second process being forced to fail. However, claim 1 makes it clear that such control is exerted until the second process is requested (i.e. before the second process is requested) which means that there is no second process before or during exertion of said control (there is no second process to fail.) Dependent claims 3-4 are likewise rejected. Claim 4 includes “not cause execution of the second process to fail” which contradicts “causes execution of the second process to fail” as recited in claim 2. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-7 and 9-10 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Berg et al., Patent No.: US 5999911 A, hereinafter Berg . As per claim 1, Berg discloses An information processing system comprising: one or more processors configured to: when a series of processes on a file are defined in advance, the series of processes including a first process and a second process, the second process being performed after execution of the first process (abstract includes “A workflow includes a number of steps having … dependency relationships… The dependency relationships represent the conditions that must be satisfied.” See also, col. 7, lines 4-16, col. 11, lines 20-30, 48-49, 58-64, col. 12, lines 7-8, 37-39 , col. 17, line 23), arrange a first request unit and a second request unit on a display unit in this sequence, the first request unit being used to request the first process, the second request unit being used to request the second process (col. 9, lines 1-15, 50-65, col. 16, lines 35-40, col. 24, lines 6-7. Claim interpretation note : both instances of “being used to request” merely state an intended use of request units (buttons, links, etc.) and do not further limit the structure, function, steps or operation of the claimed invention); and after the first process is requested by using the first request unit, until the second process is requested by using the second request unit, exert control related to a user operation on a basis of the second process (see above cited portions and note col. 18, lines 16-21 which include “If the user selects a branch, the flow management engine disables the other branches and evaluates the dependency expressions for all the steps in the selected branch. The steps in the disabled branches become gray in appearance, graphically indicating that they cannot be executed”). Analogous claims 9-10 are likewise rejected. As per claim 2, Berg discloses The information processing system according to claim 1, wherein the one or more processors are configured to: as control related to the user operation, prohibit the user operation which causes execution of the second process to fail (col. 18, lines 10-14 disclose directly prohibiting user operations that would cause downstream step execution to fail). As per claim 3, Berg discloses The information processing system according to claim 2, wherein the one or more processors are configured to: as control related to the user operation, prohibit the user operation and provide, on the display unit, a notification that the user operation will cause execution of the second process to fail (col. 18, lines 10-21 disclose directly prohibiting user operations that would cause downstream step execution to fail and providing visual notification thereof). As per claim 4, Berg discloses The information processing system according to claim 2, wherein the one or more processors are configured to: as control related to the user operation, prohibit the user operation and present, on the display unit, a different user operation which does not cause execution of the second process to fail (col. 18, lines 39-40 when a decision step is reset, branches that are disabled are re-enabled and the system presents the user with alternative selectable branches). As per claim 5, Berg discloses The information processing system according to claim 1, wherein the one or more processors are configured to: as control related to the user operation, provide, on the display unit, a notification of a user operation which will cause execution of the second process to fail (col. 18, lines 19-21). As per claim 6, Berg discloses The information processing system according to claim 5, wherein the one or more processors are configured to: as control related to the user operation, provide a notification of a different user operation which will cause execution of the second process to succeed if the different user operation is performed in addition to execution of the user operation which will cause execution of the second process to fail (col. 18, lines 14-22 disclose that the system “evaluates the dependency expressions for all the steps in the selected branch” and displays step states reflecting which operations would lead to success thereby notifying users of alternative operations that would cause the second process to succeed). As per claim 7, Berg discloses The information processing system according to claim 1, wherein the one or more processors are configured to: present, on the display unit, a user operation which is necessary for execution of the second process (see rejection of claim 1 and col. 16, lines 35-45) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Berg in view of Yagi et al., US20100138835A1, hereinafter Yagi . As per claim 8, Berg discloses The information processing system according to claim 1, wherein the one or more processors are configured to. Berg does not expressly disclose however Yagi discloses as control related to the user operation, ask, on the display unit, whether the second process is to be deleted from the series of processes; and when the second process is to be deleted from the series of processes, receive the user operation, and, when the second process is not to be deleted, prohibit the user operation ( Yagi , par. 18-20, 76, 136-143). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of the cited references because Yagi’s disclosed mechanism of asking a user whether a designated process should be included before conditionally permitting or prohibiting that process would have allowed Berg ’s workflow management system to present users with an explicit deletion choice when a downstream step cannot execute. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED HASAN whose telephone number is (571)270-5008. The examiner can normally be reached M-F 8am - 5 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boris Gorney can be reached at (571)270-5626. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SYED H HASAN/Primary Examiner, Art Unit 2154 Application/Control Number: 18/460,574 Page 2 Art Unit: 2154 Application/Control Number: 18/460,574 Page 3 Art Unit: 2154 Application/Control Number: 18/460,574 Page 4 Art Unit: 2154 Application/Control Number: 18/460,574 Page 5 Art Unit: 2154 Application/Control Number: 18/460,574 Page 6 Art Unit: 2154 Application/Control Number: 18/460,574 Page 7 Art Unit: 2154 Application/Control Number: 18/460,574 Page 8 Art Unit: 2154 Application/Control Number: 18/460,574 Page 9 Art Unit: 2154 Application/Control Number: 18/460,574 Page 10 Art Unit: 2154 Application/Control Number: 18/460,574 Page 11 Art Unit: 2154 Application/Control Number: 18/460,574 Page 12 Art Unit: 2154
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