Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections – 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2, 4, 6-7, 9-14, 19-22 and 25-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Independent claims 1, 13, 19 and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the “2019 Revised Patent Subject Matter Eligibility Guidance” (published on 1/7/2019 in Fed, Register, Vol. 84, No. 4 at pgs. 50-57, hereinafter referred to as the “2019 PEG”).
Step 1. In accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted the device of claims 1 and 19 [i.e., apparatus] and the methods of claims 13 and 21[i.e., processes] are directed towards one of the eligible categories of subject matter, and therefore satisfies Step 1.
Step 2A. In accordance with Step 2A Prong One of 2019 PEG, it is noted that the independent claims recite an abstract idea falling within the mathematical concepts enumerated grouping of abstract ideas set forth in the 2019 PEG. Examiner is of the position that independent claims 1, 13, 15, 19, 21 and 23 are directed towards the Mathematical Concepts Grouping of Abstract Ideas including: mathematical relationships; mathematical formulas or equations; and mathematical calculations, more specifically, the independent claims recite the following limitations directed towards Mathematical Concepts:
“search for images matching a searching condition input according to a first command from a user, as search images, from an image group”, as drafted recites a mathematical relationship.
With respect to Step 2A Prong Two of the 2019 PEG, Examiner is of the position that the additional elements identified in the independent claims do not integrate the judicial exception identified above, into a practical application. The independent claim’s additional elements, as interpreted by the Examiner, are identified below:
“display the search images on a display”, as drafted recites insignificant extra solution activity that is well understood, routine and conventional; and
“designate, as a designation search image, one search image selected from the search images displayed on the display according to a second command from the user, wherein the searching condition is a condition for searching for an image from the image group according to a condition other than an imaging timing, the processor is configured to display, as time-series images, the designation search image and at least a part of images which are included in the image group and captured earlier and later than an imaging timing of the designation search image in a sequence of time on the display according to a third command from the user after automatically switching from displaying the search images on the display to displaying only the designation search image on an entire surface of the display in a case where the designation search image is designated, and the processor is configured to sequentially display only one search image captured earlier or later than the imaging timing of the designation search image from the search images on the entire surface of the display in order of the search images captured in a sequence of time from the imaging timing of the designation search image whenever a fourth command from the user is input after only the designation search image is displayed on the entire surface of the display”, as drafted recites insignificant extra solution activity that is well understood, routine and conventional.
Therefore, the additional elements of the independent claims identified by Examiner above, fail to integrate the judicial exception into a practical application.
Step 2B. Similar to the analysis under 2A Prong Two, because the additional elements of the independent claims amount to insignificant extra solution activity that is well understood, routine and conventional, the additional elements do not add significantly more to the judicial exception such that the independent claim as a whole would be patent eligible.
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrates the abstract idea into a practical application. Their collective functions merely provide conventional computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that the ordered combination amounts to significantly more than the abstract idea itself.
Therefore, independent claims 1, 13, 19 and 21 are rejected under 35 U.S.C. 101.
Dependent claims 2, 4, 6-7, 9-12, 14, 20, 22, and 25-28 further details how data designated and displayed and does not change the results of the 35 U.S.C. 101 analysis and additional element analysis under steps 2A and 2B provided above, therefore, dependent claims 2, 4, 6-7, 9-12, 14, 20, 22, and 25-28 are similarly rejected under 35 U.S.C. 101.
Response to Applicant’s Arguments
Regarding Applicant’s argument on page 10 of the remarks, Applicant argues that “Applicant contends that the claimed features (especially Features 1 and 2) have patentability and are not an abstract idea (mathematical concept) and also are not known conventional art. Therefore, Applicant contends that at least Features 1 and 2 integrate the alleged judicial exception (abstract idea) into a practical application and are additional elements that are sufficient to provide a substantial added value”. Applicant’s argument is respectfully considered, but is not persuasive. The applicant simply states that the claim features, as listed above, are integrated the abstract idea into a practical application without any explanation. Thus, the rejection is respectfully maintained.
The Applicant also argues that “Applicant contends that, since the features of claim 1 describe additional elements that integrate the alleged judicial exception (abstract idea) into a practical application and also have its concrete effect, the claimed features are significantly more than an abstract idea and sufficiently satisfy the requirements of patent eligibility under 35 U.S.C. § 101”. Applicant’s argument is respectfully considered, but is not persuasive. The applicant’s argument is based on the logic that if the claimed features integrate the alleged judicial exception (abstract idea) into a practical application, then the claimed features are significantly more than an abstract idea and sufficiently satisfy the requirements of patent eligibility under 35 U.S.C. § 101. However, the Applicant does not prove how the claimed features integrate the alleged judicial exception (abstract idea) into a practical application. Thus, the 35 U.S.C. § 101 rejection is respectfully maintained.
In addition, Applicant also agues that “Applicant contends that amending the claims in this manner integrates the alleged judicial exception (abstract idea) into a personal computer or a smartphone, which is a practical application”. Applicant’s argument is respectfully considered, but is not persuasive. Simply adding a hardware component into the claim does not integrate it into a practical application.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Loc Tran whose telephone number is (571)272-8485. The examiner can normally be reached on Mon - Fri (8:00 am - 5:00 pm).
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/LOC TRAN/
Primary Examiner, Art Unit 2164
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