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 .
Priority
The current application is a National Stage Entry of PCT/CA2021/050622, filed 5/4/2021.
Claims Status
Claims 1-14 remain pending and stand rejected.
Requirement for Information under 37 CFR 1.105
Applicant’s response to the Requirement for Information under 37 CFR 1.105 is acknowledged. The response has been reviewed and is considered fully responsive.
Response to Arguments
I. Applicant’s arguments made with respect to the rejections under 35 USC 112 have been fully considered but are directed to the previous version of the claims.
While Applicant’s newly amended claims may address certain deficiencies concerning “inputs”, the amended claims raise new issues under each of 35 USC 112(a) and (b). Applicant’s amendment have necessitated these new grounds of rejection, which are provided in detail below.
II. Applicant’s arguments made with respect to the rejections under 35 USC 101 have been fully considered but are not persuasive.
Applicant initially focuses on Prong Two in relation to the amended limitation of receiving and storing unmodified customer book files, with the unmodified customer book files being created by the publisher and archived in the virtual library as original book files, with the original book files allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files.
Although the Examiner acknowledges this additional element, the Examiner maintains that this limitation is extra-solution activity that contributes only nominally or insignificantly to the execution of the claimed method (see: MPEP 2106.05(g)). Further, under Step 2B, this limitation corresponds to receiving or transmitting data over a network or storing or retrieving information from memory (or both), which the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)).
With respect to cited paragraphs 0025 and 0027, neither the claims nor the specification provide sufficient detail to demonstrate to one of ordinary skill that an improvement in the functioning of the computer or another technology or technical field is achieved. Both the claims and specification lack any restriction on the manner by which the physical specifications may be maintained, other than archiving (storing) data at a high level.
Similar analysis with respect to Step 2B is applicable. If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Although the specification need not explicitly set forth the improvement, it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology (see MPEP 2106.05(a); MPEP 2106.04(d)(1)).
As disclosed, the alleged improvement to known printing-on-demand is nothing more than a bare assertion of an improvement, set forth in a conclusory manner, without the detail necessary to be apparent to a person of ordinary skill in the art.
Furthermore, the advantages argued by Applicant improve upon the abstract idea itself, rather than improving the functioning of a computer or another technology or technical field. For example, avoiding “going back and forth between the publisher and the print-on-demand system, which increases effectiveness and efficiency of printing books” improves the abstract idea of requesting a print service, not the underlying storage of files or the operation of the print-on-demand system. Likewise, the advantage of “respect the work of the publisher and its author in its entirety, with the latter retaining control over all the parameters and files of the book” is again an abstract-idea based solution that, at best, sets forth a technical improvement in only a conclusory manner. As a whole, although the claims arguably manifest an improvement to the quotation process, there is nothing of record that demonstrates that the claimed invention achieves an improvement to the functioning of a computer or another technology or technical field.
Accordingly, the rejection under 35 USC 101 has been maintained below.
III. Applicant’s arguments made with respect to the rejections under 35 USC 103 have been fully considered but are not persuasive.
While the Examiner appreciates Applicant’s arguments made with respect to Kobayashi, the Examiner respectfully disagrees. Initially, Applicant is reminded although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Features such as a virtual library that is “upstream of any print-on-demand system, which means that all actions of creating the book to be printed are under the sole control of the publisher” are not recited in the rejected claims.
The claims are silent with respect to any specific arrangement of an “upstream” virtual library, and the limitation with the original book files allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files merely sets forth the intended use of the original files. As written the claims do not set forth files “under the sole control of the publisher”. Furthermore, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Lastly, whether or not the intent of Kobayashi aligns with that of the claimed invention is moot with respect to whether Kobayashi teaches the claimed features, or whether the claims are rendered obvious over the combination of Kobayashi and Zawadzki.
With respect to the claimed virtual library, the Examiner reiterates that the specification provides no further description of what may comprise the virtual library. Fig. 1 (12) and Fig. 2 (212) depicts virtual library; however, these figures provide only a black box and the specification merely repeats the language from the claim without further description of the virtual library so as to allow one of ordinary skill to readily ascertain the scope of a virtual library. The specification is ultimately devoid of any exemplary structure such as a processor, server, memory, etc., with the virtual library defined only by virtue of how it is used in facilitation of the book estimation/ordering process. Here again, the Examiner emphasizes that the argued features – nearly all of which do not appear in the specification - are not claimed and should not be imported into the claims.
For at least these reasons, the rejection under 35 USC 103 has been maintained.
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.
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:
Claim 1:
a computer module configured to operate as a virtual library…
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.
Claim Rejections - 35 USC § 112(b)
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 1-14 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.
Regarding claim 1, claim limitations “a computer module configured to operate as a virtual library…” and invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. This is because the written description is silent with what may comprise “a computer module configured to operate as a virtual library…”.
Further, where other “modules” are recited (e.g., 036-049, 052-055), the specification fails to provide any detail with respect to what may or may not comprise a “module”. The specification is silent with respect to hardware, software, computer, processor, CPU, programming, software, etc. in reference to the term “module”. At best, the specification makes generalized passing references to “API client/customer server link 30” (e.g., 047), a “customer server API 220” (e.g., 050), and a “user server” (e.g., 053). Notably, link 30 and API 220 are not themselves servers or hardware and the specification is otherwise devoid of description of any hardware in relation to the “modules”.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
For examination purposes, “a computer module configured to operate as a virtual library” be interpreted as any hardware configured to operate as claimed.
Further regarding claim 1, claim 1 recites a “a computer module configured to operate as a virtual library…”. The metes and bounds of a virtual library are unclear. The specification provides no further description of what may comprise the virtual library, failing to disclose any computer, server, hardware, memory, or the like that the virtual library is comprised of. Although the virtual library may be comprised of various “inputs” and “outputs”, these terms themselves remain unclear because the specification fails to describe these as well. Additionally, the mere connection to or communication with other modules does not define the scope of the virtual library itself.
Furthermore, Fig. 1 (12) and Fig. 2 (212) depicts virtual library; however, these figures provide only a black box and the specification merely repeats the language from the claim without further description of the virtual library so as to allow one of ordinary skill to readily ascertain the scope of a virtual library. Although a link or API is disclosed in e.g., 047 and 050, no server is actually disclosed (i.e., only a link or API). Even presuming a customer server is implied, this is depicted as separate from the virtual library in Fig. 2. The specification is ultimately devoid of any exemplary structure such as a processor, server, memory, etc.
Accordingly, the scope of a virtual library is unclear.
Regarding dependent claims 2-8, these claims depend form claim 1 and inherit the deficiencies of claim 1. Claims 2-8 are rejected therewith.
Regarding claim 3, claim limitation the computer module is configured to receive metadata book files expands on the invocation of 35 USC 112(f). The written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Similar to claim 1 (discussed above) this is because the written description is silent with what may comprise the module other than by repeating the claim language in reference to an “input”, which itself is undefined and undescribed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Regarding claim 9, claim 9 recites receiving and storing unmodified customer book files, with the unmodified customer book files being created by the publisher and archived in a computer module as original book files. Though ambiguous to which of the various modules the claim may be referring, as best understood by the Examiner, the a computer module claimed in claim 9 corresponds to “an archives module 20” (see: 037, 054). The term module, however, renders the claim indefinite. This is because the term is undefined in the specification, and because (as discussed above) the specification is otherwise devoid of description of any hardware or software in relation to the “modules”, and provides no further description of what the module may or may not comprise.
Regarding dependent claims 10-14, these claims depend form claim 1 and inherit the deficiencies of claim 9 and are rejected therewith.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, claim 1 has been amended to recite a computer module configured to operate as a virtual library; however, the specification as originally filed does not disclose a computer module configured to operate as a virtual library.
Paragraphs 036-049 disclose that “The virtual library 12 may be connectable to various modules”, such as an archives module, cover inventory management module, etc. (see also: Fig. 1). Similarly, 052 discloses that “there is a connection to a user data module” (see also 053-054), while 055 discloses that “The virtual library 212 is also in communication with a data production parameters module”.
Despite describing various modules that the “virtual library” is connected or in communication with, the specification fails to disclose “a module” that is configured to operate as a virtual library. Although the claim recites a singular module operating as a virtual library, the remaining portion of the claim sets forth specific operations of the respective modules – not a single module operating the virtual library.
Furthermore, Fig. 1 (12) and Fig. 2 (212) depicts virtual library; however, these figures provide only a black box without any depiction of something that can be considered “a module” that operates as a virtual library. The specification merely repeats the language of “virtual library” sans any connection to a computer, server, processor, or “module”.
Accordingly, the limitation “a computer module configured to operate as a virtual library” was not described in the original specification in such a way as to reasonably convey to one skilled in the relevant art that Applicant had possession of the claimed invention.
Further regarding claim 1, claim 1 recites with the unmodified customer book files being created by the publisher and archived in the virtual library as original book files, with the original book files allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files. The subject matter of the claim (recited above) does not conform to the disclosure in such a manner in which one of ordinary skill in the art would recognize that applicant actually had possession of at the time of the invention.
The specification, as originally filed, does not describe an original book file that was created by a publisher. At best, 051 describes a customer book file that contains book identification data, but does not disclose customer book files that are created by the publisher and archived in the virtual library as original book files. That is, even presuming the customer book files received in 051 and original book files claimed are synonymous, there is no indication that the files were created by a publisher.
Additionally, the function of allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files is not sufficiently described in the specification. While the specification may literally support the claimed limitation (e.g., 0025), merely reproducing the claim limitation in the specification or pointing to an original claim does not satisfy the written description requirement where the claim itself does not convey enough information to show that the inventor had possession of the claimed invention. Elements that are essentially a "black box" will not be sufficient.
The specification provides no further description of how original book files allow the publisher to maintain physical specifications of books throughout a commercial life of the books, let alone doing so without modification of print files. The literal support is little more than more than a wish for possession of some undisclosed functionality. Moreover, whether one of ordinary skill in the art could devise a way to accomplish these functions is not relevant to the issue of whether the inventor(s) has shown possession of the claimed invention. This is because the ability to make and use the invention does not satisfy the written description requirement if details of how a function (such as the claimed updating) is performed are not disclosed.
Disclosure of function alone is little more than a wish for possession and it does not satisfy the written description requirement. [See MPEP 2163: II(3)(a)(i), Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406]. Moreover, a specification which does little more than outline goals applicant hopes the claimed invention achieves does not satisfy the written description requirement [see MPEP 2163: II(3)(a)(i), In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984)]. Lastly, the specification lacks adequate description of a “representative number of species” which may satisfy the written description requirement [see MPEP 2163: II(3)(a)(ii)].
It is noted that this is not an enablement rejection. Applicant’s failure to sufficiently describe any algorithm, steps, or procedures taken to perform the claimed function of the original book files allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files raises questions as to whether Applicant truly had possession of this feature at the time of filing.
Further regarding claim 1, claim 1 recites with the computer module being connected to a user data module for a user to log into the book management computing system to initiate the book print-on-demand order. Here, “the” computer module references “a computer module configured to operate as a virtual library”; however, the specification as originally filed does not support “a computer module configured to operate as a virtual library” that is connected to a user data module for a user to log into the book management computing system to initiate the book print-on-demand order. That is, the user data module is understood as connected to the virtual library itself in the specification, not “a computer module configured to operate as a virtual library”.
Regarding dependent claims 2-8, these claims inherit the deficiencies of claim 1 and are rejected therewith.
Regarding claim 9, similar to claim 1 above claim 9 recites with the unmodified customer book files being created by the publisher and archived in a computer module as original book files, with the original book files allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files. The Examiner holds that the specification as originally filed does not provide sufficient disclosure of this feature for at least similar reasons as discussed above with respect to claim 1.
Further regarding claim 9, claim 9 recites with the computer module being connected to a user data module for a user to log into the book management computing system to initiate the book print-on-demand order. That is, “the” computer module refers back to the phrasing “archived in a computer module as original book files”, “the” computer module being a reference to the “archives module 20” (discussed above in the section 35 USC 112(b) rejections). The specification, however, does not describe that the archive4s module 20 is connected to a user data module. To the contrary, the user data module is connected to the virtual library, as is the archives module 20. Accordingly, the computer module (i.e., the archives module) being connected to a user data module is not supported by the original disclosure.
Regarding dependent claims 10-14, these claims depend form claim 1 and inherit the deficiencies of claim 9 and are rejected therewith.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Regarding claims 1-14, under Step 2A claims 1-14 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites a book management computing system utilized for:
receiving a book print-on-demand estimate request, said book print-on-demand estimate request including book data parameters, said book data parameters including: book identification data, book quantity, book format and address of delivery;
transmitting book print-on-demand estimate data based on the book print-on-demand estimate request input and book pricing and production parameters;
receiving a book print-on-demand order, said book print-on-demand order including the book data parameters of said book print- on-demand estimate request.
These limitations recite ‘certain methods of organizing human activity’, such as by performing commercial interactions and/or fundamental economic principals or practices (see: MPEP 2106.04(a)(2)(II)). This is because the limitations above recite a process for requesting an estimate for book printing on-demand and receiving an order for the printing on-demand. This represents the performance of a sales activity, which is a commercial interaction and falls under organizing human activity. This also describes concepts relating to the economy and commerce that represent a fundamental economic practice, which also fall under organizing human activity.
Accordingly, under step 2A (prong 1) claim 1 recites an abstract idea because claim 1 recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. The Examiner acknowledges that representative claim 1 does recite additional elements, including
a book management computing system for feeding a known print-on-demand (POD) system,
a computer module configured to operate as a virtual library by performing the following:
receiving and storing unmodified customer book files, with the unmodified customer book files being created by the publisher and archived in the virtual library as original book files, with the original book files allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files; and,
transmitting said book data parameters and the unmodified customer book files as the print files to the known print-on-demand system, with the computer module being connected to a user data module for a user to log into the book management computing system to initiate the book print-on-demand order.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 1 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements (e.g., for a user to log into the book management computing system to initiate the book print-on-demand order) do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Additionally, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In addition to the above, the following limitations represent little more than extra-solution activity:
receiving and storing unmodified customer book files, with the unmodified customer book files being created by the publisher and archived in the virtual library as original book files, with the original book files allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files, and,
transmitting said book data parameters and the unmodified customer book files as the print files to the known print-on-demand system.
This is because they contribute only nominally or insignificantly to the execution of the claimed method and represent activities such as data gathering or transmission, and pre-solution data storage (see: MPEP 2106.05(g)).
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claim 1, taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Furthermore, the additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the additional elements of claim 1 utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data over a network (e.g., receiving and storing unmodified customer book files…; transmitting said book data parameters and the unmodified customer book files as the print files to the known print-on-demand system),
storing or retrieving information from memory (e.g., receiving and storing unmodified customer book files…).
Even considered as an ordered combination (as a whole), the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 2-8, dependent claims 2-8 recite more complexities descriptive of the abstract idea itself, and at least inherit the abstract idea of claim 2-8. As such, claims 2-8 are understood to recite an abstract idea under step 2A (prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 2-8 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, claims 2-8 rely on at least similar inputs/outputs as recited in claim 1, which are recited only at a high level of generality. Further additional elements such as receive metadata book files, e-book files and audio book files (claim 3), or a user device and API (claim 8) are also recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Lastly, under step 2B, claims 2-8 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims merely apply the exception on generic computing hardware, generally link the exception to a technological environment, and append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims 2-8 do not add anything further than when they are considered individually.
In view of the above, claims 2-8 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Regarding claims 9-14, claims 9-14 recite at least substantially similar concepts and elements as recited in claims 1-8 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 9-14 are rejected under at least similar rationale as discussed above because they recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
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.
Claim(s) s 1-2, 4-6, 9-10, and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (US 7,124,094) in view of Zawadzki (US 7,107,268).
Regarding claim 1, Kobayashi discloses a book management computing system for a publisher for feeding a known print-on-demand (POD) system, the book management computing system comprising:
a computer module configured to operate as a virtual library (see: Fig. 3, Fig. 14, col. 14 lines 12-19) by:
receiving and storing unmodified customer book files, with the unmodified customer book files being created by the publisher and archived in the virtual library as original book files (see: col. 14 lines 5-11, col. 15 lines 5-17, col. 38 lines 15-23),
with the original book files allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files;
Note: the limitation allowing the publisher to maintain physical specifications of books throughout a commercial life of the books, without modification of print files is nothing more than a recitation of the intended use of the original book files that does not result in a structural difference between the claimed invention and the prior art. Accordingly, this limitation does not patentably distinguish the claimed invention from the prior art.
receiving a book print-on-demand estimate request, said book print-on-demand estimate request including book data parameters, said book data parameters including: book identification data (see: Fig. 13 (s13), col. 21 line 63-col. 22 line 9, col. 22 lines 20-26, Fig. 19 (101-102), col. 63 lines 47-51) and book format (see: col. 20 lines 33-45);
transmitting book print-on-demand estimate data based on the received book print-on-demand estimate request and book pricing and production parameters (see: Fig. 13 (s15-s17), col. 22 lines 28-49, Fig. 19 (103), col. 63 lines 63-65);
receiving a book print-on-demand order, said book print-on-demand order including the book data parameters of said book print- on-demand estimate request (see: Fig. 13 (s18), col. 48 lines 11-16), Fig. 19 (s104), col. 63 lines 63-65); and
transmitting said book data parameters and the unmodified customer book files as the print files to the known print-on-demand system (see: Fig. 13 (s19), col. 48 lines 23-39),
with the computer module being connected to a user data module for a user to log into the book management computing system to initiate the book print-on-demand order (see: col. 21 lines 58-62, col. 46 lines 43-47, Fig. 13 (s11)).
Though disclosing the above, Kobayashi does not disclose certain parameters that are claimed - namely, book data parameters including book quantity and address of delivery.
Initially, the Examiner notes that merely claiming different parameters than those in the prior art carries little patentable weight. Moreover, parameters such as these were well-established in the prior art before the effective filing date of the invention and would have been obvious.
For example, Zawadzki discloses a system (e.g., Fig. 1, Fig. 2A, col. 5 lines 46-64) for generating RFQs for printing products including books and book covers including receiving and storing unmodified customer book files (see: col. 36 lines 30-40) as well as receiving a book print-on-demand estimate request, said book print-on-demand estimate request including book data parameters (see: col. 3 lines 24-29, col. 8 lines 1-5 (RFQs for books, book covers)),
More importantly, Zawadzki teaches printing data parameters including quantity (see: Fig. 4B (429), Fig. 7 (730, 732), Fig. 19 (1902-1904), col. 39 lines 41-47, col. 53 lines 32-35), format (see: Fig. 7 (720, Printing method, 724, 726)) and address of delivery (see: Fig. 4A (404), Fig. 26 (shipping instructions), col. 30 lines 37-39).
One of ordinary skill in the art would have recognized that the known technique of Zawadzki would have been applicable to the invention of Kobayashi as both share common functionality and purpose - namely, to generate quotes/estimates for printing on-demand requests, including book printing.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the invention of Kobayashi to have utilized the known types of parameters as taught by Zawadzki since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable – namely, generating quotes based on submitted parameters. Furthermore, one of ordinary skill would have understood that combining the teachings of Zawadzki with those of Kobayashi would have improved the invention of Kobayashi, such as by enabling interaction between buyers and suppliers efficiently and effectively, thereby enabling buyers to obtain the best quotes for their requests (see: Zawadzki: col. 52 lines 36-42).
2. The system of claim 1, wherein the book data parameters comprise one or more of the following: a book cover paper type, cover lamination type, book inner paper type, book bindery, number of pages (see: Kobayashi: col. 20 lines 35-47, col. 35 lines 28-42; Zawadzki: col. 12 lines 41-43, col. 13 lines 61-67, Fig. 9).
Regarding claims 4-6, claim 4-6 recites various types of parameters – e.g., a book spine size (claim 4), a book width and/or height (claim 5), a book print text color (claim 6). Initially the Examiner notes that the combination does teach certain ones of the types of parameters. For example:
5. The system of claim 1, wherein the book data parameters include a book width and/or height (see: Kobayashi: col. 26 lines 12-13, col. 35 lines 50-60; Zawadzki: Fig. 7 (720), col. 10 lines 23-28).
6. (Currently Amended) The system of claim 1, wherein the book data parameters include a book print text color (see: Kobayashi: col. 11 lines 14-16, col. 26 lines 12-13, col. 35 lines 54-55).
Even presuming such features are not taught by Kobayashi in view of Zawadzki, they do not move to distinguish the claimed invention from the prior art because merely naming and claiming a different type of parameter does not impart any functional difference to the system and the function it performs. The differences in the parameters of the prior art and those claimed do not move to effect some new or non-obvious functioning of the system. See MPEP 2111.05.
Regarding claim 9-10, claims 9-10 recites at least substantially similar concepts and elements as recited in claims 1-2 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 9-10 are rejected under at least similar rationale as discussed above with respect to claims 1-2.
12. The method of claim 9, comprising storing the book files in an archive data base (see: Kobayashi: col. 14 lines 5-11, col. 15 lines 5-17, col. 38 lines 15-23; Zawadzki: col. 36 lines 30-40).
13. The method of claim 9, comprising printing a set of books based on said book order associated with said book identification data, said book quantity and said book format (see: Fig. 7 (3)), Fig. 13 (31), col. 23 lines 61-66, col. 24 lines 10-15; Zawadzki: Fig. 4B (429), Fig. 7 (730, 732), Fig. 19 (1902-1904), Fig. 29 (2932, 2934, 2936)).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi in view of Zawadzki as applied to claim 1 above, and further in view of Vigil (US 2007/0094245).
Regrading claim 3, Kobayashi in view of Zawadzki discloses all of the above as noted including wherein the computer module is configured to receive book files and to store the files in the computer module and to access said files by a user.
The combination, however, does not disclose the files including metadata book files, e-book files and audio book files. These types of files were well-known in the art before the effective filing date of the invention, and would have been obvious to one of ordinary skill in the art.
For example, Vigil discloses known types of files including metadata book files, e-book files and audio book files (see: 0024 (digital library; attributes/characteristics of the media content are carried with the content itself as metadata), 0036 (digital book files, audio book files, metadata for book files)).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have utilized the known file types as taught by Vigil in the system of Kobayashi in view of Zawadzki since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable – namely, using known file types for printing.
Examiner Note: Similar to the parameter types discussed above, claim 3 sets forth various types of files. As written, merely claim different types of files does not move to distinguish the claimed invention from the prior art because merely naming and claiming a different type of parameter does not impart any functional difference to the system and the function it performs. The differences in the parameters of the prior art and those claimed do not move to effect some new or non-obvious functioning of the system. See MPEP 2111.05.
Claim(s) 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi in view of Zawadzki as applied to claims 1 and 9 above, and further in view of Knodt (US 2008/0172302).
Regarding claim 4, the Examiner initially reiterates the discussion above regarding the patentable weight of merely claim different types of parameters. The combination of Kobayashi in view of Zawadzki does not expressly discloses wherein the book data parameters include a book spine size; however, books spine size was notoriously well known before the effective filing date of the invention and would have been obvious to one of ordinary skill in the art.
For example, Knodt discloses processing customer orders for book manufacturing (see: abstract) including utilizing a book spine size (see: 0034, 0037, 0053).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have utilized the known parameter types as taught by Knodt in the system of Kobayashi in view of Zawadzki since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable – namely, using known parameter types to generate quotes for printing.
14. The method of claim 13, comprising shipping said books to said at least one address of delivery (see: Fig. 4A (404), Fig. 26 (shipping instructions), col. 30 lines 37-39; Knodt: 0076, 0078).
Claim(s) 7-8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi in view of Zawadzki as applied to claims 1 and 9 above, and further in view of Baer (US 2009/0157711).
Regarding claim 7, Kobayashi in view of Zawadzki discloses all of the above as noted but does not disclose wherein the book identification data comprises an ISBN number. ISBN Numbers were notoriously well known in the art before the effective filing date of the invention and would have been obvious to one of ordinary skill in the art.
For example, Baer discloses a system for printing a customer compilation fo works including books (see: abstract, Fig. 12-13, Fig. 15A-17) and utilized book identification information including an ISBN number (see: 0096, Table 2 (ISBN), 0123 (product’s ISBN).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have utilized the known type of book identifier, including an ISBN, as taught by Baer in the system of Kobayashi in view of Zawadzki since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable – namely, receiving a book identifier in the form of an ISBN.
8. The system of claim 1, further comprising a user device running an application programming interface (API) configured for connection to the book file input, the book order input, the book estimate request input, the book estimate output and book order output of the virtual library (see: Baer: Fig. 1 (30), Fig. 3 (42), 0051 ( interface to the digital library through an object-oriented API), 0081 (API layer 30 provides the mapping mechanism), 0155, 0164-0165, 0169, 0592, 0613).
11. The method of claim 9, comprising running an application programming interface (API) configured for connection to the computer module (see: Baer: Fig. 1 (30), Fig. 3 (42), 0051 ( interface to the digital library through an object-oriented API), 0081 (API layer 30 provides the mapping mechanism), 0155, 0164-0165, 0169, 0592, 0613). .
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
PTO form 892-U discusses Amazon’s “Kindle Direct Publishing”, which enables self-publishing of e-books and paperbacks. KDP functionality includes a virtual “Bookshelf” that enables creation of paperback prints, uploading book files, physical specification for cover images, and manuscript formatting options (see: captured screenshots).
Kim (US 20150138385) discloses a publisher license business model allow digital annotation of database content and authorization of publishing paper-printed materials (see: 0068, 0070, 0077, 0079).
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 WILLIAM J ALLEN whose telephone number is (571)272-1443. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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WILLIAM J. ALLEN
Primary Examiner
Art Unit 3625
/WILLIAM J ALLEN/Primary Examiner, Art Unit 3619