DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims Status
Claims 1-3 and 7-9 have been amended.
Claims 4-6 have been canceled.
Claims 10-12 have been newly added.
Claims 1-3 and 7-12 are currently pending and rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/12/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Arguments
35 USC 101 rejection
Applicant's arguments with respect to the rejection of claims 1-9 under 35 USC 101, as being directed to a judicial exception, have been fully considered but are not persuasive, in view of the accompanying amendments and in view of MPEP 2106. The rejection under 35 USC 101 is explained in further detail below.
Examiner appreciates Applicant’s inclusion of additional limitations, however, the Examiner asserts that even with the inclusion of additional features, the claims remain abstract and directed to a judicial exception. As written, the claims merely set forth a process for providing product information, which is considered to be an abstract idea as it relates to ‘certain methods of organizing human activity,’ namely marketing or sales activities or behaviors.
Examiner reiterates that although claims 8 and 9 may use technology (i.e. a computer, etc.) to perform steps related to solving a problem, the claim does not amount to a ‘technical improvement’ as the technology (i.e. a computer or other machinery) is merely used in its ordinary capacity for economic or other tasks (e.g., to store, receive and transmit data).
The additional elements are merely recited at a high level of generality and amount to little more than the mere instructions to implement an abstract idea on a computer or similar hardware. Further, these elements represent little more than a general link to a technological environment (i.e. a mere attempt to restrict use of the idea to a technical environment such as the Internet or computer networks – see Ultramercial, Inc. v. Hulu, LLC) as currently written. In each case, the courts have found such limitations insufficient to qualify as “significantly more” when recited in a claim with a judicial exception (see MPEP 2106.05(A)).
As written, the claims fail to be significantly more than the abstract idea because the claims use a computer or other machinery in its ordinary capacity for economic or other tasks or simply add a general purpose computer or computer components (i.e. search interface) after the fact to an abstract idea. Therefore, the claims continue to be viewed as examples of an abstract idea without significantly more and thus lack subject matter eligibility.
Additionally, where certain dependent claims rely upon similar additional elements as recited in claims 1, 8 and 9 these do not result in significantly more than the abstract idea itself. The additional elements of the dependent claims are treated at least similarly as those discussed above with respect to claims 1, 8 and 9.
Even when viewed as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2A/2B of the Mayo framework at least similar rationale as discussed above regarding claims 1, 8 and 9.
In view of the above, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The analysis above applies to all statutory categories of invention. For at least these reasons above, the rejections under 35 USC 101 have been maintained and are explained in further detail below.
35 USC 112(b) rejection
Applicant’s amendments with respect to the previous rejection of claims 1-9 under 35 USC 112(b) have been rendered moot. The claim rejections have been withdrawn
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 1-3 and 7-12 are rejected under 35 USC § 101.
Claims 1-3, 7 and 10-12 are rejected as being drawn to software per se. The claim is drawn to an apparatus comprising various units, which may be reasonably interpreted as a computer program per se. Whether or not the units are “executing on an information apparatus” is not germane because the processor does not necessarily form part of the system.
A broad and reasonable interpretation of this system is one that solely comprises software. Even assuming the system comprises some hardware, a claim that covers both statutory and non-statutory embodiments (under the broadest reasonable interpretation of the claim when read in light of the specification and in view of one skilled in the art) embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter.
In view of all of the above, the Examiner holds that claim 1 (and its dependents) fails to satisfy the first step for eligibility under 35 USC 101 – namely, it is not directed to a machine, process, manufacture, or a composition of matter. Non-limiting examples of claims that are not directed to one of the statutory categories:
transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se), In re Nuijten, 500 F.3d 1346, 1357, 84 USPQ2d 1495 ____ (Fed. Cir. 2007);
a naturally occurring organism, Chakrabarty, 447 U.S. at 308;
a human per se, The Leahy-Smith America Invents Act (AIA ), Public Law 112-29, sec. 33, 125 Stat. 284 (September 16, 2011);
a legal contractual agreement between two parties, see In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, ____ (Fed. Cir. 2009) (cert. denied);
a game defined as a set of rules;
a computer program per se, Gottschalk v. Benson, 409 U.S. at 72;
a company, Ferguson, 558 F.3d at 1366; and
a mere arrangement of printed matter, In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, ____ (CCPA 1969)
In view of the above, claims 1-3, 7 and 10-12 are directed to solely software per se (i.e. a computer program per se), and is thus directed to non-statutory subject matter.
Claims 8-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1:
Claim 8 is directed to a method, which is a process. Claim 9 is directed to a medium, which is an apparatus. Therefore, claims 8-9 are directed to one of the four statutory categories of invention.
Step 2A (Prong 1):
Taking claim 8 as representative, claim 8 sets forth the following limitations which recite the abstract idea of providing product information:
acquiring, for each of a plurality of users including a first user, body shape information indicating a height and a weight, and attribute information indicating an attribute of each user;
determining standard body shape information from the body shape information of one or more users having attribute information similar to attribute information of the first user, and calculate a difference between the standard body shape information and the body shape information of the first user;
acquiring, from an information provider, attribute information defining, among the plurality of users, a target user to whom information is to be provided, and difference information defining a threshold for the difference; and
providing the first user with information registered by the information provider, when the attribute information on the first user corresponds to the attribute information on the target user and when the difference is equal to or greater than the threshold indicated by the difference information.
The recited limitations above set forth a process for providing product information. These limitations amount to certain methods of organizing human activity, including commercial or legal interactions (e.g. advertising, marketing or sales activities or behaviors) and managing personal behavior or relationships or interactions between people (e.g. social activities, teaching, and following rules or instructions).
Such concepts have been identified by the courts as abstract ideas (see: MPEP 2106).
Step 2A (Prong 2):
Examiner acknowledges that representative claim 8 recites additional elements such as a computer, etc.
Taken individually and as a whole, claim 8 does not integrate the recited judicial exception into a practical application of the exception. The claim merely includes instruction to implement an abstract idea on a computer, or to merely use a computer as a tool to perform an abstract idea, while the additional elements do no more than generally link the use of a judicial exception to a particular field of technological environment or field of use.
Furthermore, this is also 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 a judicial exception with a particular machine, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (Prong 2), claim 8 does not integrate the recited exception into a practical application (see again: MPEP 2106).
Step 2B:
When taken individually or as a whole, the additional elements of claim 8 do not provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer device to perform the acquiring, calculating, and providing steps amounts 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. Certain additional elements also recite well-understood, routine, and conventional activity (See MPEP 2106.05(d)).
Even when considered as an ordered combination, the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, claim 8 does not provide an inventive concept under step 2B, and is ineligible for patenting.
The analysis above applies to all statutory categories of invention. Regarding independent claim 9 (non-transitory tangible machine-readable medium), the claim recites substantially similar limitations as set forth in claim 8. As such, claim 9 is rejected for at least similar rationale as discussed above.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 7-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yoshimura et al. (U.S. Pre-Grant Publication No. 2022/0051308 A1) (“Yoshimura”).
Regarding claims 1, 8 and 9, Yoshimura teaches an information processing apparatus (and related method and medium) comprising:
a first acquisition unit configured to acquire, for each of a plurality of users including a first user, body shape information indicating a height and a weight, and attribute information indicating an attribute of each user (para [0020], measures a body of a user (more specifically, a part corresponding to a clothing item to be recommended) and provides a measured value. The specific configuration of the measurement system 30 is not limited and may be designed according to any policy; para [0022], acquisition unit 11 acquires at least the measured value of the body of the user and the additional information of the user other than the measured value);
a calculation unit configured to determine standard body shape information from the body shape information of one or more users having attribute information similar to attribute information of the first user, and calculate a difference between the standard body shape information and the body shape information of the first user (para [0022], determination unit 12 is a functional element that determines the body type characteristic of the user from the measured value);
a second acquisition unit configured to acquire, from an information provider, attribute information defining, among the plurality of users, a target user to whom information is to be provided, and difference information defining a threshold for the difference (para [0021], body type characteristic information defining a correspondence relationship between a measured value of the body of the person and a body type characteristic; para [0022], retrieval unit 13 is a functional element that retrieves from the database 40 the clothing information corresponding to the clothing size of the user, the determined body type characteristic, and the acquired additional information); and
a providing unit configured to provide the first user with information registered by the information provider, when the attribute information on the first user corresponds to the attribute information on the target user and when the difference is equal to or greater than the threshold indicated by the difference information (para [0022], transmission unit 14 is a functional element that transmits recommendation information indicating the retrieved clothing item to the terminal 20. This transmission is an example of output.).
Regarding claim 2, Yoshimura teaches the above apparatus of claim 1. Yoshimura also teaches wherein
the calculation unit is configured to calculate the difference based on statistical data of body shape information that is provided by a server that manages a predetermined electronic mall (para [0021], database 40 may further store body type characteristic information defining a correspondence relationship between a measured value of the body of the person and a body type characteristic), and
the providing unit is configured to provide the first user with the information registered by the information provider such that the information is distributed on a web service that provides the predetermined electronic mall (para [0019], terminal 20 may be owned or used by a store that sells clothing items; para [0064], lothing recommendation system 10 is connected to the terminal 20 via a communication network).
Regarding claim 3, Yoshimura teaches the above apparatus of claim 2. Yoshimura also teaches wherein the providing unit is further configured to provide the first user with the information registered by the information provider while giving priority to information of an information provider that has made a bid for a distribution space for preferential distribution on the web service as an information provider that has a predetermined relationship with the server that manages the predetermined electronic mall (para [0049], retrieval unit 13 may generate the recommendation information using data other than the clothing information).
Regarding claim 7, Yoshimura teaches the above apparatus of claim 1. Yoshimura also teaches wherein the providing unit is further configured to provide the first user with information on a privilege that is given with acquisition of the body shape information of the first user, that is available in a predetermined electronic mall, and that relates to a privilege that is increased as the body shape information of the first user approaches the standard body shape information (para [0049], retrieval unit 13 may generate the recommendation information using data other than the clothing information).
Regarding claim 10, Yoshimura teaches the above apparatus of claim 1. Yoshimura also teaches wherein when a size of an item newly purchased by the first user is different from a size of a same type of an item last purchased by the first user, the calculation unit is configured to recalculate the difference (para [0048], retrieve the clothing item corresponding to the acquired or determined clothing size, the determined body type characteristic, and the acquired additional information).
Regarding claim 11, Yoshimura teaches the above apparatus of claim 1. Yoshimura also teaches wherein when a difference between last acquired body shape information on the first user and the standard body shape information is smaller than a difference between newly acquired body shape information on the first user and the standard body shape information, the providing unit is configured to provide the first user with information on a privilege (para [0048], retrieve the clothing item corresponding to the acquired or determined clothing size, the determined body type characteristic, and the acquired additional information).
Regarding claim 12, Yoshimura teaches the above apparatus of claim 11. Yoshimura also teaches wherein the providing unit is configured to provide the first user with information on a privilege that increases as a difference between body shape information on the first user and the standard body shape information decreases between last acquisition and new acquisition of the body shape information on the first user (para [0048], retrieve the clothing item corresponding to the acquired or determined clothing size, the determined body type characteristic, and the acquired additional information).
Conclusion
THIS ACTION IS MADE FINAL. 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 ANAND LOHARIKAR whose telephone number is 571-272-8756. The examiner can normally be reached Monday-Friday, 9am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANAND LOHARIKAR/Primary Examiner, Art Unit 3689