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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/155/2023 was in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of Claims
This action is a second nonfinal rejection and is also in reply to the amended claims filed on 8/15/2023, wherein:
Claims 1, 4-8, 10, and 11 have been amended;
Claims 2 and 3 have been cancelled;
Claims 9 remains as previously presented; and
Claims 1, 4-8, 10, and 11 are currently 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 limitations are:
“a storage section” in claim 1;
“a data registration section…configured to” in claim 1;
“a display control section…configured to” in claims 1, and 5-7;
“a comment receiving section…configured to” in claim 1;
“an evaluation receiving section…configured to” in claim 8; and
“a summary generating section…configured to” in claim 9;
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the corresponding structure described in the specification as performing the claimed functions, and equivalents thereof is as follows:
“a storage section” in claim 1 is shown in figs. 2 and 3; and described in para. 0006 as “An information management system to manage information on projects in a team is provided, the system including: a storage section; a display screen; a data registration section; and a display control section”, the specification further states in para. 0014 that “Fig. 2 is a block diagram illustrating the hardware configuration of the information processing unit 10. The information processing unit 10 is provided with a control section 11, a storage section 12, and a communication section 13.” and para. 0014 of the specification also states “storage section 12 is partially configured with, for example, a RAM (random access memory), a DRAM (dynamic random-access memory), …and a ROM (read only memory)”,
“a data registration section…configured to” in claim 1, is shown in fig. 4; and described in para. 0006 as “An information management system to manage information on projects in a team is provided, the system including: a storage section; a display screen; a data registration section; and a display control section”, and the specification further states in para. 0023 that “As illustrated in Fig. 3, the control section 11 of the information processing unit 10 is provided with a data registration section 11a, a display control section 11b, an evaluation receiving section 11d, and a summary generating section 11e”;
“a display control section…configured to” in claims 1, and 5-7, is shown in fig. 4 and described in para. 0006 as “An information management system to manage information on projects in a team is provided, the system including: a storage section; a display screen; a data registration section; and a display control section”, and the specification further states in para. 0023 that “As illustrated in Fig. 3, the control section 11 of the information processing unit 10 is provided with a data registration section 11a, a display control section 11b, an evaluation receiving section 11d, and a summary generating section 11e;
“a comment receiving section…configured to” in claim 1, is shown in fig. 4 as part of the control section 11, and described in para. 0015 of the specification as “The control section 11 is, for example, a CPU (central processing unit), a microprocessor, a DSP (digital signal processor), and the like and is configured to control the behavior of the entire information processing unit 10”;
“an evaluation receiving section…configured to” in claim 8; is shown in fig. 4 as part of the control section 11, and described in para. 0015 of the specification as “The control section 11 is, for example, a CPU (central processing unit), a microprocessor, a DSP (digital signal processor), and the like and is configured to control the behavior of the entire information processing unit 10”;
“a summary generating section…configured to” in claim 9 is shown in fig. 4 as part of the control section 11, and described in para. 0015 of the specification as “The control section 11 is, for example, a CPU (central processing unit), a microprocessor, a DSP (digital signal processor), and the like and is configured to control the behavior of the entire information processing unit 10”.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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.
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.
Analysis
Step 1 – 2019 PEG pg. 53
Claim 10 is interpreted as being directed to non-statutory subject matter that doesn’t fall within one of the four categories of patent eligible subject matter because independent claim 10 recites “a program causing a computer…” and according to paragraph 0028 of the specification, “program may be stored in the storage section 12 built in the information processing unit 10, may be stored in a computer-readable non-transitory storage medium…, the program may be achieved by reading a program stored in an external storage device, so-called cloud computing”. The broadest reasonable interpretation of a “a program causing a computer…” in accordance with the specification, and based on common usage, covers signals/carrier waves which are not interpreted as one of the four enumerated statutory categories. Therefore, the “a program causing a computer…” in claim 10 is interpreted as a transitory form of signal transmission, commonly referred to as “signals per se”, which is not directed to a statutory category of patent eligible subject matter. Amending claim 10 to include “non-transitory” will overcome the rejection of claim 10 as being directed to non-statutory subject matter.
Claims 1, and 4-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a system, program, and method for recording project information which is considered a judicial exception because it falls under Certain Methods of Organizing Human Activity such as managing personal behaviors or relationships or interactions between people. This judicial exception is not integrated into a practical application as discussed below and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
This rejection follows the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed Reg 4, January 7, 2019, pp. 50-57 (“2019 PEG”)(MPEP 2106).
Analysis
Step 1 (Statutory Categories) – 2019 PEG pg. 53 (See MPEP 2106.03)
Claims 1-11 are directed to the statutory category of a process.
Step 2A, Prong 1 (Do the claims recite an abstract idea?) – 2019 PEG pg. 54 (See MPEP 2106.04(a)-(c))
For independent claims 1, 10, and 11, the claims recite an abstract idea of: recording project information. The steps of independent claim 1 recite the abstract idea (in bold below) of: An information management system to manage information on research activities in a laboratory, the system comprising: a storage section; a display screen; a data registration section; a display control section, and a comment receiving section, wherein the data registration section is configured to register data on a plurality of phases chronologically proceeding in each research activity conducted by a respective member in the laboratory in association with recorded data recorded by the member for the respective phases in the storage section, the display control section is configured to display the recorded data on the display screen in a tree structure associated with the phases, the comment receiving section is configured to receive a comment containing textual information on the recorded data from a member conducting the research activity and a comment containing textual information on the recorded data from a supervisor supervising the research activity, the recorded data is shared among the laboratory, and the respective member in the laboratory is able to browse the recorded data via the display screen. Independent claims 10 and 11 recite similar steps that recite the abstract idea. Independent claims 1, 10, and 11, as drafted, are a process that, under the broadest reasonable interpretation, covers Certain Methods of Organizing Human Activity, such as managing personal behaviors or relationships or interactions between people. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of additional elements including generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Other than reciting the abstract idea, the independent claims recite additional elements including generic computer components such as “a system comprising a storage section, a display screen, a data registration section and a display control section; a program, and a computer”, and nothing in the claims precludes the steps from being performed as a method of organizing human activity. Accordingly, the independent claims recite an abstract idea.
Dependent claims 4-9 recite similar limitations as independent claims 1, 10, and 11; and when analyzed as a whole are held to be patent ineligible under 35 U.S.C 101 because the additional recited limitations only refine the abstract idea further. Other than reciting the abstract idea, the dependent claims recite similar additional elements including generic computer components as the independent claims, such as “the system, the display control section, an evaluation receiving section, and a summary generating section”. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Step 2A, Prong 2 (Does the claim recite additional elements that integrate the judicial exception into a practical application?) – 2019 PEG pg. 54 (See MPEP 2106.04(d)-(c))
This judicial exception is not integrated into a practical application. In particular, independent claims 1, 10, and 11 only recite the additional elements of “a system comprising a storage section a display screen, a data registration section and a display control section; a program, and a computer”. A plain reading of the Figures and associated descriptions in the specification reveals that generic processors may be used to execute the claimed steps. The additional elements are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)) and limits the judicial exception to a particular environment (See MPEP 2106.05(h)). Mere instructions to apply an exception using a generic computer component and limiting the judicial exception to a particular environment doesn’t integrate the abstract idea into a practical application in Step 2A. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Hence, independent claims 1, 10, and 11 are directed to an abstract idea.
Dependent claims 2-9, recite similar additional elements as the independent claims including generic computer components, such as “the system, the display control section, an evaluation receiving section, and a summary generating section”. The judicial exception is not integrated into a practical application because the additional elements in the dependent claims are also recited at a high-level of generality such that it amounts to more no more than mere instructions to apply the exception using generic computer components. Therefore, the additional elements do not integrate the abstract idea into a practical application because they also do not impose any meaningful limits on practicing the abstract idea. Also, the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement of the functioning of a computer system itself; the claims do not effect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) – 2019 PEG pg. 56 (See MPEP 2106.05)
Independent claims 1, 10, and 11 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the recited additional elements amount to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)) and limits the judicial exception to the particular environment of computers (See MPEP 2106.05(h)). The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the function of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept in Step 2B.
In addition, the dependent claims 2-9 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of the dependent claims to perform the claimed limitations, amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)). Similar to the independent claims, mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Also, for the same reasoning as the independent claims, the additional elements of the limitations of the dependent claims, when considered individually and as an ordered combination, together do not offer significantly more than the sum of the functions of the elements when each is taken alone and the dependent claims as a whole, do not amount to significantly more than the abstract idea itself. For these reasons, the dependent claims also are not patent eligible.
Subject Matter Overcoming 35 USC §102/§103
Claims 1, 4-8, 10, and 11 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 101 set forth in this Office Action.
The following is an examiner’s statement of reasons for subject matter of independent clams 1, 10, and 11 overcoming the prior art rejections under 35 USC §102/§103.
The closest prior art of record is JP 2009288875 to Haga et al. (hereinafter referred to as Haga machine translation), JP 2016031698 to Kuhara et al. (hereinafter referred to as Kuhara machine translation), JP2006134103 to Kai et al. (hereinafter referred to as Kai machine translation) and JP2004185556 to Murayama et al. (hereinafter referred to as Murayama machine translation). Allowable subject matter is indicated because none of the prior art of record, alone or in combination, appears to teach or fairly suggest or render obvious the combination set forth in independent claims 1, 10, and 11. For independent claim 1, the prior art of Haga machine translation, Kuhara machine translation, Kai machine translation, and Murayama machine translation specifically do not disclose: “wherein the data registration section is configured to register data on a plurality of phases chronologically proceeding in each research activity conducted by a respective member in the laboratory in association with recorded data recorded by the member for the respective phases in the storage section, the display control section is configured to display the recorded data on the display screen in a tree structure associated with the phases, the comment receiving section is configured to receive a comment containing textual information on the recorded data from a member conducting the research activity and a comment containing textual information on the recorded data from a supervisor supervising the research activity, the recorded data is shared among the laboratory, and the respective member in the laboratory is able to browse the recorded date via the display screen”. Similar reasoning and rationale apply to the other independent claims 10, and 11. Dependent claims 4-9 are allowable over the prior art by virtue of their dependency on an allowed claim.
Response to Arguments
Applicant’s arguments with respect to claims 1, and 4-11 have been fully considered by the Examiner. Examiner finds Applicant’s arguments persuasive with respect to the rejections of the amended independent claims under 35 USC 102 and 103, and the previous prior art rejections are withdrawn as further indicated above. Applicant’s arguments with respect to the rejection of claims 1, and 4-11 under 35 USC 101 have been fully considered by the Examiner. However, the Examiner does not find the Applicant’s arguments persuasive, and therefore the rejections of claims 1, and 4-11 under 35 USC 101 are maintained.
The Applicant argues that under Prong 1 of Step 2A of the 2019 PEG, that the claims do not recite any of the groupings of abstract ideas because the claims are directed toward an information management system used in research activities and organizing data in certain ways to be reviewed later. Applicant also argues that similar to Example 42 the claims do not recite the judicial exception of a mental process a method for analyzing coin-mixing service and do not belong to Certain Methods of Organizing Human activity such as fundamental economic principles and practices. that integrates any alleged abstract idea into a practical application. The Applicant further states on pages 11-13 of their remarks, that the limitations of the independent claims under Prong 2 of Step 2A are indicative of integration into a practical application because they provide an improvement to computer technology and specifically an improvement to the efficiency with which security can be provided and with which devices can be screened. Applicant further argues that the proposed invention allows recorded data to be displayed in a tree structure associated with the phase so each member can readily understand the recorded data necessary for each. Applicant further argues on pages 13 and 15 of their Remarks that the claims limitations are indicative of significantly more under Step 2B of the 2019 PEG because the claimed limitations provide an improvement in technology. Applicant states that the amended claims improve technology for easily sharing, modifying, and displaying data research activities and notes among members.
Examiner respectfully disagrees with Applicant’s argument that the claimed limitations do not recite any of the groupings of abstract ideas. Under Prong 1 of the 2019 PEG, the claims do fall under the abstract idea of Certain Method of Organizing Human Activity. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behaviors or relationships or interactions between people, but for the recitation of additional elements including generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Under the broadest reasonable interpretation, the claims recite managing personal behaviors or relationships or interactions between people. Recording research activity information conducted in a laboratory for members and supervisors is managing personal behaviors or relationships or interactions between people. Examiner respectfully disagrees with Applicant’s further argument that their claimed limitations don’t recite grouping of abstract ideas similar to Example 42 of the January 2019 Examples. Example 42 described an improvement in which a user can view or update information about a patient’s medical condition via a GUI by inputting the update in any format and the update is then converted into a standardized format. The Examiner respectfully disagrees with Applicant’s argument because the claims in hypothetical Example 42 were found to be eligible because the claims addressed problems relating to alerting medical providers when a patients records were updated, and addressed the challenges of converting the medical records to a standardized format. The Applicant’s claimed limitations regarding the data registration section in the amended independent claims are not addressing a problem technical in nature related to the conversion of information to a standardized format and do not recite a specific improvement over prior art systems.
Examiner respectfully disagrees with Applicant’s argument that the claimed limitations are indicative of integration into a practical application under Prong 2 of Step 2A of the PEG. Using a computer to: record and display research activity data; is nothing more than executing instructions to apply the exception to a computer. This is interpreted by the Examiner as using a computer as a tool to perform an abstract idea (See MPEP 2106.05(f)). The additional elements of “a system comprising a storage section, a display screen, a data registration section and a display control section; a program, and a computer” are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)). There is no improvement to the claimed computer elements, or to any other technology or technical field. The only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task. Therefore, the claimed limitations do not meet the criteria or considerations as indicative of integration into a practical application.
Examiner respectfully disagrees with Applicant’s further argument under Step 2B of the PEG, that the amended claim limitations recite additional elements that amount to an inventive concept that renders the claims patent eligible because the claims provide for improvements to the technical field. As stated previously, using a computer to: record and display research activity data; is nothing more than executing instructions to apply the exception to a computer. The additional elements of “a system comprising a storage section, a display screen, a data registration section and a display control section; a program, and a computer” amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, the rejections of the claims pursuant to 35 USC 101 are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Luter et al. (US 2014/0142961) teaches managing research data for clinical drug trials;
Kwon et al. (US 2021/0406461) teaches an electronic data platform for testing environment;
Frohlich (US 20070208800) teaches an electronic laboratory notebook system in a distributed communications network;
Bradley et al. (US 20030167280) teaches a database system for laboratory management and knowledge exchange;
Robin (US 20050114829) teaches facilitating the process of designing and developing a project;
Herzenberg et al. (US 20050044110) teaches a system and method for internet-accessible tools and knowledge base for protocol design, metadata capture and laboratory experiment management;
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul Schwarzenberg whose telephone number is (313) 446-6611. The examiner can normally be reached on Monday-Thursday (7:30-6:30).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke, can be reached on (571) 272-8103. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/PAUL S SCHWARZENBERG/Primary Examiner, Art Unit 3695 9/29/2025