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 .
DETAILED ACTION
Response to Amendment
Applicant's amendment filed on 10/26/2025 have been entered and fully considered. Claims 1 and 5 are amended, and claims 1-5 are currently pending.
Response to Arguments
Applicant's arguments with respect to claims 1-5 have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teachings of matter specifically challenged in the argument.
Applicant’s arguments, with respect to claims 1-5, regarding claim rejection under 35 U.S.C. 101 have been fully considered but are not persuasive. Applicant argues, regarding claim 1 (and similarly regarding claim 5 and the dependent claims 2-4), that a human mind is not physically capable of acquiring shared information set for the electronic content from the another application program, absent the use of technology. Further, Applicant respectfully submits that claim 1 at least integrate the asserted judicial exception into a practical application. The features of claim 1 improves the functionality of the computer itself.
Examiner respectfully disagrees and would like bring to Applicant attention that during patent examination the claims must be given their broadcast reasonable interpretation. See MPEP 2111. The limitation that recites acquiring shared information set for the electronic content from the another application program, which can be interpreted as reading a note from a page in a notebook that contains the shared information set of the content. Adding application program or reciting a generic computer does not add additional element to the claim to be significant extra solution. MPEP specifically 2106.05 (f) Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recite significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court that in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do “more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. V. CLS Bank, 573 U.S. 208, 221,110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”). Further while evaluating step 2A if claim recite any additional elements beyond the judicial exception and reviewing MPEP 2106.95 (f) i.e., mere instruction to apply an exception. It is clearly recited that the recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electronic Power, 830 F.3d at 1356, 119 USPQ2d at 1743. Having that current limitation recites acquiring shared information set for the electronic content from the another application program, accepting user modification of the shared information automatically entered in the input field, which does not recite how the solution to the problem is accomplished. If the additional elements taken alone or in combination fail to integrate the judicial exception into a practical application, the claim is directed to judicial exception and analysis proceeds to step 2B. However, claim only recites that information is obtained form another application program and accept user modification of the shared information which does not add additional element identified in Step 2A prong two taken alone or in combination, amount to significantly more than the judicial exception. Therefore, the claims are ineligible and should be rejected under 35 U.S.C. 101.
Examiner Note
Examiner would like to point out that claim 4 recites the term “URL”. Since URL is a very well known term to one of ordinary skill in the art to understand the term as Uniform Resource Locator, no claim objection has been given. However, Examiner suggest full spelling of the phrase “URL” as “Uniform Resource Locator (URL)”.
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1 and 5 are directed to abstract idea such as an idea standing alone such as an instantiated concept, pan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper (including an observation, evaluation, judgment, opinion)”, for example acquiring shared information set for the electronic content; automatically entering the shared information in an input field; accepting user modification; acquiring location information on a spot; and storing spot information. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps of the claimed invention can be done mentally and no additional features in the claims would preclude them from being performed as such.
The exemplary claim 1 recites limitations, “A method performed by a terminal apparatus in accordance with an application program configured to be initiated upon being designated as a destination for sharing electronic content while a user is viewing the electronic content using another application program, the method comprising: acquiring shared information set for the electronic content from the another application program; automatically entering the shared information in an input field in which a user can enter information; accepting user modification of the shared information automatically entered in the input field; acquiring location information on a spot; and storing spot information so that the spot information can be viewed by the user, the spot information including information entered in the input field and the acquired location information”. Since the claim is directed to a method, which is one of the statutory categories of the invention (Step 1: YES).
The claim is then analyzed to determine whether it is directed to any judicial exception. The claim recites acquiring shared information set; automatically entering the shared information; accepting user modification; acquiring location information; storing spot information, etc. This is interpreted as mental processes that comprises concepts performed in the human mind (including observation, evaluation, judgement, opinion) (Step 2A: Prong One Abstract Idea = YES).
The claim is then analyzed if it requires an additional elements or a combination of additional elements in the claim to apply, reply on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception – i.e., limitation that are indicative of integration into a practical application; improving the functioning of a computer or to any other technology or technical field. In the current claims, there is no additional elements that would integrate the abstract idea into a practical application (Step 2A: Prong Two Abstract Idea = YES).
Next the claim as a whole is analyzed to determine if there are additional limitation recited in the claim such that the claim amount to significantly more than an abstract idea. In the current scenario there are no additional elements that would amount to significantly more than the abstract idea. Therefore, the claim does not amount to significantly more than the abstract idea itself (Step 2B: NO). Accordingly, the claim is not patent eligible.
Independent claim 5 analyzed similarly and are rejected for similar reason as independent claim 1, and dependent claims 2-4 do not add any positive limitation or step that recite within the scope of the claim and does not carry patentable weight they are also rejected for the same reasons as independent claims.
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.
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.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Masano et al. (US 20150012582 A1, and Masano hereinafter), in view of Jenkins et al. (US 20210027389 A1 and Jenkins hereinafter).
Regarding claim 1, Masano teaches a method performed by a terminal apparatus in accordance with an application program configured to be initiated upon being designated as a destination for sharing electronic content (Figure 16 and Paragraph 0116), the method comprising:
acquiring shared information set for the electronic content (Figure 9 and Paragraph 0122; the user selects the my-spot information among the my-spot information displayed in any of the list display area 153 of FIG. 7 and the list display area 176 of FIG. 9, the my-spot information registration processing part 62 displays a my-spot information detail display screen showing detailed information of the selected my-spot information, on the touch panel 31. Figure 10 and Paragraph 0129; in the detailed spot information display area 186, detailed information related to the spot is displayed; and in the example shown in FIG. 10, the phone number and address of the spot, a source of the information and the URL are displayed. The source of the information to be displayed here in the detailed spot information display area 186 is based on the existing place information involved in acquisition of the spot information on that spot. For example, in cases where the existing place information was that acquired from check-in information of the SNS, a name of the user who has posted the check-in information would be displayed as the source of the information);
automatically entering the shared information in an input field in which a user can enter information (Paragraphs 0035 and 0041; integrate the spot information having the different contents obtained from the information provider devices 15A to 15C, with respect to the same spot, and provide the integrated information to the user terminal 13. Therefore, for example, the comments to be included in the spot information provided to the user terminal 13 by the information processing system 11 may include a comment of a user who uses a service provided by the company that manages the spot information accumulation server 14, and also comments of users who use services provided by other companies that manage the information provider devices 15A to 15C. Paragraph 021; an input/output interface may include a keyboard, a mouse, etc.);
acquiring location information on a spot (Figure 10 and Paragraph 0129; in the detailed spot information display area 186, detailed information related to the spot is displayed; and in the example shown in FIG. 10, the phone number and address of the spot, a source of the information and the URL are displayed. The source of the information to be displayed here in the detailed spot information display area 186 is based on the existing place information involved in acquisition of the spot information on that spot. Figure 16 and Paragraph 0176; the reminder display processing part 63 looks at the my-spot information that has been registered by the my-spot information registration processing part 62, to determine whether or not any spot of the my-spot information to which the status indicating "want to go" has been set exists within a predetermined range centered at the current location of the user terminal 13); and
storing spot information so that the spot information can be viewed by the user, the spot information including information entered in the input field and the acquired location information (Paragraphs 0035 and 0041; the comments to be included in the spot information provided to the user terminal 13 by the information processing system 11 may include a comment of a user who uses a service provided by the company that manages the spot information accumulation server 14, and also comments of users who use services provided by other companies that manage the information provider devices 15A to 15C).
Masano does not explicitly teach an application program being designated as a destination while a user is viewing the electronic content using another application program; acquiring shared information set from the another application program; and accepting user modification of the shared information automatically entered in the input field. In an analogous art, Jenkins teaches an application program being designated as a destination while a user is viewing the electronic content using another application program (Paragraph 0044; APIs 142 may enable the workbench application 110 to communicate with the linked applications 112 by receiving data, messages and/or commands from the linked applications 112, and/or by passing data, messages and/or commands to the linked applications 112); acquiring shared information set from the another application program (Paragraph 0044; APIs 142 may enable the workbench application 110 to communicate with the linked applications 112 by receiving data, messages and/or commands from the linked applications 112. Paragraph 0048; auto-population unit 148 may automatically enter information into fields associated with one or more of the linked applications 112. Information may be name, address, policy information, claim information, family members, etc.); and accepting user modification of the shared information automatically entered in the input field (Paragraphs 0049 and 0050; while the auto-population unit 148 automatically entering information into fields, the claim associate may first be prompted to confirm that an entry is correct for a particular field, and/or may prompted to choose the appropriate entry from among two or more candidate entries. Editor tool 118 may allow the claim associates to enter information into the fields). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to combine the teachings of Masano and Jenkins so that it is not necessary for the claim associate to make duplicate entries of the same information in other of the linked applications 112 (Jenkins, Paragraph 0048).
Regarding claim 2, the combination of Masano and Jenkins teaches all of the limitations of claim 1, as described above. Further, Masano teaches further comprising displaying a map on a screen, wherein the terminal apparatus is configured to acquire the location information on the spot that is designated by the user on the map (Figure 9 and Paragraph 0121; map display area 177 is configured to display a map of a neighborhood of a spot of interest as an object of map display, in response to operation on the map button in the list display area 176. In addition, in the map display area 177, an icon 179 indicating the location of the spot of interest would be displayed. Figure 14 and Paragraph 0150; the list of the pieces of my-spot information being registered in the registration folder specified as an object of display has been displayed. On the other hand, in the list display area 216 of FIG. 14, only the pieces of my-spot information of the my-spots existing within the predetermined range centered at the current location of the user terminal 13 would be displayed. Then, in the map display area 217, an icon 218 indicating the location of the spot existing nearby would be displayed).
Regarding claim 3, the combination of Masano and Jenkins teaches all of the limitations of claim 1, as described above. Further, Masano teaches wherein the terminal apparatus is configured to acquire the location information on the spot based on the shared information (Paragraph 0035; spot information corresponding to the existing place information would be provided to the user terminal 13 from the spot information accumulation server 14. The existing place information here can be information related to the place which is recorded in the user terminal 13 based on the user's use of the user terminal 13. For example, the existing place information includes a phone number of a phone call that a user has made with the use of the user terminal 13; a name of the spot and a phone number described in a web page that the user has allowed the user terminal 13 to display; location information posted together with a comment or a photograph to the SNS. Paragraph 0039; information providing processing part 23 acquires the existing place information transmitted by the user terminal 13, via the network 12. The information providing processing part 23 then searches the spot information accumulated in the spot information accumulation part 22, on the basis of textual information or location information included in the existing place information. Then the spot information that has been transmitted from the user terminal 13, as a result of the search, which spot information corresponds to the existing place information, would be transmitted by the information providing processing part 23 to the user terminal 13 via the network 12. Figure 16 and Paragraphs 0175 and 0176; the reminder display processing part 63 acquires the current location information output from the location information detection part 32, if it is determined that there are no spots of the my-spot information to which the status indicating "want to go" has been set, within the predetermined range centered at the current location of the user terminal 13).
Regarding claim 4, the combination of Masano and Jenkins teaches all of the limitations of claim 3, as described above. Further, Masano teaches wherein the terminal apparatus is configured to acquire the location information on the spot that is identified from a URL, text data, image data, or audio data included in the shared information, or from a combination of the URL, the text data, the image data, and the audio data (Figure 4 and Paragraphs 0083 and 0084; select button 126 may be operated to decide the selection of a website to use in the search for a spot, user use check box to select the website to use in the search for a spot, and if the existing place information acquisition processing part 61 recognizes that at least one of the name of the spot and the phone number is contained in the web page selected by the user, the existing place information acquisition processing part 61 may acquire at least one of the recognized name of the spot and the phone number, as the existing place information. Paragraph 0186; the reminder display processing part 63 may refine the my-spot information displayed in the my-spot information list display screen 211 by predetermined conditions (e.g., prefecture, distance from the current location, genre, presence or absence of a photograph, registered date, updated date, and the source of the information (URL, phone number, SNS, keyword or map))).
Regarding claim 5, claim 5 recites similar features as claim 1, therefore is rejected for at least the same reason as discussed above regarding claim 1. Further, Masano teaches a non-transitory computer readable medium storing an application program configured to be initiated upon being designated as a destination for sharing electronic content, the application program configured to cause a terminal apparatus to execute operations (Figure 17 and Paragraph 0209 and 0211; the CPU 301 loads the program stored in the storage part 308 into the RAM 303 through the input/output interface 305 and the bus 304 in order to execute the program, thereby executing the series of processes described).
Pertinent Prior Arts
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bezancon et al. (US 20100205194 A1) discloses receiving and associating plurality information related to one or more locations/places, receiving query relevant to at least one of the places, and responding to the query by providing the information that is associated with the location.
Gray et al. (US 9165406 B1) discloses user take a picture of the address, click on “map it” and the address is shared to a mapping application for directions to the address.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jing Gao whose telephone number is (571)270-7226. The examiner can normally be reached on 9am - 6pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Alison Slater can be reached on (571) 270-0375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jing Gao/
Examiner
Art Unit 2647