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 .
Status of Claims
This action is in response to the preliminary amendments filed on December 27, 2023 and January 26, 2024. Claims 18-29 are pending, of which claims 1-17 have been canceled, and claims 18-29 have been added and with claims 25-29 additionally amended.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 27, 2023 is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the IDS has been considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the receiving unit, display unit, and recognizing unit must be shown or the features canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 § CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
The brief description of the drawings originally included reference to Figures 4 and 6. As these drawings included subparts Applicant attempted to amend the brief description as required by MPEP 608.01(f). With regard to Figure 4, Applicant’s amendment reads “Figures 4A-4B are plan views illustrating changes with time in removing separable portions one by one.” However, this amendment omits any description of Figures 4C and 4D. Therefore, in order to fully comply with Section 608.01(f) paragraph 24 should be further amended to read --Figures 4A, 4B, 4C, and 4D are plan views illustrating changes with--. Appropriate correction is required.
Claim Objections
Claims 18, 22, and 25 are objected to because of the following informalities:
Claim 18 reads “A sticky note for learning, comprising: a sticky note.” This language is confusing. How can a sticky note comprise itself? Is the second recitation of “sticky note” different than the first? For clarity this should be amended to read -- A sticky note for learning, comprising: the sticky note-- or --A sticky note for learning, comprising: a sticky note body…--. Claims 22 and 25 have similar recitations as claim 18, and, therefore, are objected to for the same reasons provided for claim 18. Appropriate correction is required.
Claim 25 includes a colon but lacks any transition clause, such as “comprising” therefore the scope of the claim is unclear. In addition, the claim is directed to a non-transitory storage medium storing a computer program but lacks any limitations directed to the computer program. The claim recites the computer program causes the computer to function as: a receiving unit that receives an input of the pieces of timing information indicated by the indicating regions; and a display unit that displays the received pieces of timing information. However, this recites the intended use of the program without specifying what the computer program comprises, such as operations, code, or steps. The examiner suggests language such as --the computer program comprising: a receiving unit that receives an input of the pieces of timing information indicated by the indicating regions; and a display unit that displays the received pieces of timing information-- or other clarifying language. . Appropriate correction and/or clarification is required.
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 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), 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) 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) 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), 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. In this instance claims 25-29 recite a generic place holder “unit” and “device” with recited functions such as receiving, displaying, sending, recognizing, and image pickup without any corresponding structure.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. According to the specification the device is a CCD or a CMOS. The receiving unit, display unit, sending unit, recognizing unit are interpreted as a program (e.g., application) implemented on user device (e.g., a tablet or smartphone).
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recite sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
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.
Claims 25-29 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 25 includes the limitations “a receiving unit that receives an input of the pieces of timing information indicated by the indicating regions; and a display unit that displays the received pieces of timing information” which invokes 35 U.S.C. § 112(f) as explained above. Similarly the limitations “a sending unit that sends the received pieces of timing information to an external device” and “a recognizing unit that recognizes a state of progress of a review based on a plurality of the received pieces of timing information” as recited in claims 27 and 29 also invoke 35 U.S.C. § 112(f). However, the written description provides no corresponding software/algorithm for implementing these functions in any detail other than to recite the function in the description. Therefore, claims 25, 27, and 29 are indefinite and is rejected under 35 U.S.C. § 112(b).
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);
(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.
Claims 26-29 depend from a rejected base claim, and therefore are rejected for at least the reasons provided for the base claim.
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 25-29 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination” to determine whether there are additional elements that “transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’-i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter.
Claims 25-29 are directed to a non-transitory storage medium. As such, the claimed invention falls into the broad categories of invention. However, even claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty, 447 U.S. at 309.
In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, the invention includes “a learner can check at what timing a review needs to be performed. In this manner, with the sticky-note application 41, the learner can grasp timings for a review even when the book 3 is not close at hand.” (par. 78).
Independent claim 1 recites the following (with emphasis):
A non-transitory storage medium storing a computer program that causes a computer to read information indicated by a sticky note for learning; wherein the sticky note for learning includes a sticky note including a sticky-note body and a plurality of separable portions that are coupled to the sticky-note body, the separable portions being separable one by one from the sticky-note body; the separable portions include indicating regions that are visible in a state where the sticky note is affixed to an adherend, the indicating regions each indicating a piece of timing information that shows a lapse time point from a start time point of learning; the indicating region of each separable portion indicates a piece of timing information that shows a timing later than a timing shown by a piece of timing information indicated by the indicating region of the separable portion that is to be separated earlier than the each separable portion; and the computer program causes the computer to function as: a receiving unit that receives an input of the pieces of timing information indicated by the indicating regions; and a display unit that displays the received pieces of timing information.
The underlined portions of claim generally encompass the abstract idea. Claim 29 further defines the abstract idea to include recognizing a state of progress of a review. Under prong 2, the claimed invention encompasses an abstract idea in the form of certain methods of organizing human activity and/or mental processes. The claims recite learning process by providing timing information for students to organize their review of material to be learning using notes, thereby organizing human activity of students because it is drawn to managing the personal behavior while learning. Furthermore, the method can be performed in the mind of a human and/or with the aid of pencil and paper.
The use of notes as a means of teaching, training, and learning knowledge is basic to the learning process. The CRM in the instant application simply seek to automate this well-known activity to make the notes electronically available using generic computers recited at a high level of generality, and, therefore, the claims are directed to the abstract concept sub-grouping of "managing personal behavior or relationships or interactions between people" including teaching/learning.
In addition, the claims also recite a mental process (e.g., observations, evaluations, and judgments). But for the recitation of the recitation of computer readable medium storing a program implemented by a computer, nothing in the claimed method or operations precludes the recitations from practically being performed in the mind. For example, a user may look at and read information from a note indicated when to study/review material and may imagine that information in their mind (e.g., as is common with memorization). In addition, a user may look at and read information from a note and recognize (observe and evaluate) their state of progress. If a claim, under its broadest reasonable interpretation, covers performance of recitations in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas.
Therefore, under prong 2, the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity.
Under prong 2, the instant claims do not integrate the abstract idea into a practical application. In other words, the claims do not (1) improve the functioning of a computer or other technology, (2) effect a particular treatment or prophylaxis for a disease or medical condition (3) are not applied with any particular machine, (4) do not effect a transformation of a particular article to a different state, and (5) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim, as a whole, is more than a drafting effort designed to monopolize the exception, the claims are directed to the judicially recognized exception of an abstract idea. See MPEP §§ 2106.05(a)-(c), (e)-(h).
While certain physical elements (i.e., elements that are not an abstract idea) are present in the claims, such features do not affect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. In recent cases, the CAFC has made it clear that the term “practical application” means providing a technical solution to a technical problem in computers. To be patent-eligible, the claimed invention must improve the computer as a computer. Applicant’s invention does not meet these requirements. Applicant’s invention uses computers to read and process information. This does not improve the computer qua computer. Instead, Applicant’s invention uses generic computers as a tool to implement the abstract idea. As such, the claims are not eligible under Section 101.
Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional elements or combination of elements other than the abstract idea per se amounts to no more than: a system having a computer and memory configured to perform the abstract idea.
The additional claimed elements are a computer, a computer readable medium, a program, and a display. The elements are not particular and are recited at a high level of generality. Moreover, nothing in Applicant’s specification indicates these computer components performs anything other than well understood, routine, and conventional functions, such as receiving, storing, processing, and storing data. See, Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (ed. Cir. 2016) (“Nothing in the claims, understood in light of the [S]pecification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”); see also Alice, 573 US. at 224—26 (receiving, storing, sending information over networks insufficient to add an inventive concept); buySAFE, Inc. v. Google, Inc., 765 F.3d 1340, 1355 (ed. Cir, 2014) (That a computer receives and sends the information over a network-—with no further specification—is not even arguably inventive.”). The additional element of an image recognition device for scanning notes is also recited at a high level of generality and the scanning and digitizing of data from a document (e.g., a note) has been found to be well-understood, routine and conventional computer activity, e.g., See Content Extraction & Transmission LLC v Wells Fargo Bank, Nat'! Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) ("[Content Extraction and Transmission] conceded at oral argument that the use of a scanner or other digitizing device to extract data from a document was well known at the time of filing [in 1991 ], as was the ability of computers to translate the shapes on a physical page into typeface characters"). At best, Applicant’s claimed subject matter simply uses generic processing circuitry to perform the abstract idea of converting input data from one form to another (e.g., image data from notes to digital display data). As noted above, the use of a generic computer system does not alone transform an otherwise abstract idea into patent-eligible subject matter. As our reviewing court has observed, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
These elements amount to generic, well-understood and conventional computer components. The use of computers to process received data to output a result responses represents well-understood, routine, conventional activity previously known to the industry as indicated by the Supreme Court in Alice and/or constitutes extra-solution activity, such as data gathering necessary to perform the abstract concept. As demonstrated by Berkheimer v. HP, such computer functions cannot save an otherwise ineligible claim under §101. In short, each step does no more than require a generic computer to perform generic computer functions that are not particular and are recited at a high level of generality.
Considered as an ordered combination, only generic computer components are present. Viewed as a whole, the claims simply recite the concept of making judgments by a generic computer. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. Under relevant court precedents, that is not enough to transform an abstract idea into a patent-eligible invention.
As a result, claims 25-29 are not patent eligible
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 18-24 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Japanese Publication No. JP 2001180171 by Abe (“Abe”).
In re claim 18, Abe discloses a sticky note for learning [Fig. 3, #11, ¶¶7,8 describe sticky note 11], comprising: a sticky note including a sticky-note body and a plurality of separable portions that is coupled to the sticky-note body, the separable portions being separable one by one from the sticky-note body [Figs. 2, 3, ¶¶12-16, among others, describe regions (e.g., sections S1-S6) which may be separated one at a time]; wherein the separable portions include indicating regions that are visible in a state where the sticky note is affixed to an adherend, the indicating regions each indicating a piece of timing information that shows a lapse time point from a start time point of learning [Figs. 2,3 ¶¶12-16, among others, show sticky notes 11 stuck to papers in a book with the separable sections visible, the sections including unique indicia, such as numbers 1-6, these number can indicate time, such as days. In addition, it is noted that any limitation to the specific indicia of a region is directed to non-functional descriptive material that does not further limit the structure of the claim1]; and the indicating region of each separable portion indicates a piece of timing information that shows a lapse time point later than a lapse time point shown by a piece of timing information indicated by the indicating region of the separable portion that is to be separated earlier than the each separable portion [Figs. 2, 3 ¶¶12-16, among others, show sticky notes 11 with sections including unique indicia, such as numbers 1-6, these number can indicate time, such as days. As these sections are removed, e.g., section with printed #6 is removed leaving #1-#5. The numbers can indicate timing information, such as number of days remaining (e.g., 5). In addition, it is noted that any limitation to specific indicia (such as timing information) is directed to non-functional descriptive material (see note above). The limitation that is to be separated earlier than each separable portion is directed to intended use that does not further limit the structure of the claim2].
In re claim 19, Abe discloses the separable portions are arranged in order in a longitudinal direction of the sticky note for learning, and a length of the sticky note for learning is shortened as the separable portions are separated one by one [Figs 2, 3, ¶¶6-8, 16, describe arrangement of sections in longitudinal direction, which as they are separated, shorten the length of the note].
In re claim 20, Abe discloses the separable portions are each separable with a perforation [Figs 2, 3, ¶¶6-8, 16, describe perforations between sections S1-S6].
In re claim 21, Abe discloses a plurality of the sticky notes for learning, wherein the sticky notes for learning are arranged being visible and each have the indicating regions indicating the pieces of timing information that show timings different from one another [Figs. 2, 3 ¶¶12-16, among others, describe a set (figs. 1 and 3) including a plurality of sticky notes adhered to pages of a book with different sections with indicia visible which appear different from one another. Moreover, this limitation is directed to intended use of the sticky notes that does not further limit the claim (see footnote 2 above). In addition, it is noted that any limitation to specific indicia (timing information) is directed to non-functional descriptive material and/or intended use that does not further limit the structure of the claim (see footnote 1 above)].
In re claim 22, Abe discloses a sticky note for learning [Fig. 3, #11, ¶¶7,8 describe sticky note 11], comprising: a sticky note that includes a plurality of indicating regions that is visible in a state where the sticky note is affixed to an adherend, the indicating regions each indicating a piece of timing information that shows a lapse time point from a start time point of learning [Figs. 2, 3, ¶¶12-16, among others, describe sticky notes 11 stuck to papers in a book with the separable sections visible, regions (e.g., sections S1-S6), including unique indicia, such as numbers 1-6, these number can indicate timing info, such as days. In addition, it is noted that any limitation to specific indicia is directed to non-functional descriptive material and/or intended use that does not further limit the structure of the claim (see footnote 1 above)]; wherein the indicating regions are demarcated by guides for folds, such that by folding the sticky note downward sequentially along the folds, the indicating regions are made invisible one by one accordingly [Figs. 2,3 ¶¶12-16, among others, describe perforations may be provided a boundary of sections so that the sections S1 to S6 can be separated or folded back from each other]; and each indicating region indicates a piece of timing information that shows a lapse time point later than a lapse time point shown by a piece of timing information indicated by the indicating region that is to be made invisible earlier than the each indicating region [Figs. 2, 3 ¶¶12-16, among others, show sticky notes 11 with sections including unique indicia, such as numbers 1-6, these number can indicate time, such as days. As these sections are removed, e.g., section with printed #6 is removed leaving #1-#5. The numbers can indicate timing information, such as number of days remaining (e.g., 5). In addition, it is noted that any limitation to specific indicia (such as timing information) is directed to non-functional descriptive material (see footnote 1 above). The limitation that is to be separated earlier than each separable portion is directed to intended use that does not further limit the structure of the claim (see footnote 2 above)].
In re claim 23, Abe discloses the indicating regions are arranged in order in a longitudinal direction of the sticky note for learning; and a length of the sticky note for learning is shortened as the sticky note is folded downward sequentially along the folds [Figs 2, 3, ¶¶6-8, 16, describe arrangement of sections in longitudinal direction, which as they are folded, shorten the length of the note].
In re claim 24, Abe discloses a set of a plurality of the sticky notes for learning, wherein the sticky notes for learning are arranged being visible and each have the indicating regions indicating the pieces of timing information that show timings different from one another [Figs. 2, 3 ¶¶12-16, among others, describe a set (figs. 1 and 3) including a plurality of sticky notes adhered to pages of a book with different sections with indicia visible which appear different from one another. Moreover, this limitation is directed to intended use of the sticky notes that does not further limit the claim. In addition, it is noted that any limitation to specific indicia (timing information) is directed to non-functional descriptive material and/or intended use that does not further limit the structure of the claim (see note above)].
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 25-27 and 29 are rejected under 35 U.S.C. § 102(a)1 as being anticipated by U.S. Publication No. 2008/0136833 by Taniguchi et al. (“Taniguchi”) or, in the alternative, under 35 U.S.C. § 103 as being unpatentable over Taniguchi in view of Abe.
In re claim 25, Taniguchi discloses a non-transitory storage medium storing a computer program that causes a computer to read information indicated by a sticky note for learning [Fig. 2, ¶¶37,126 describe storage medium with program for scanning sticky notes]; wherein the sticky note for learning includes a sticky note including a sticky-note body and a plurality of separable portions that are coupled to the sticky-note body, the separable portions being separable one by one from the sticky-note body [Fig. 9 and ¶¶9-12 describe a sticky note. Sticky notes are formed from paper and therefore include regions which may be separated (cut or torn)]; the separable portions include indicating regions that are visible in a state where the sticky note is affixed to an adherend, the indicating regions each indicating a piece of timing information that shows a lapse time point from a start time point of learning [Fig. 9 shows a sticky note the sticky note includes a date and time, the time can be when the note was taken, e.g., a start time, and are visible ¶¶9-12, 45, 60, 91-96]; the indicating region of each separable portion indicates a piece of timing information that shows a timing later than a timing shown by a piece of timing information indicated by the indicating region of the separable portion that is to be separated earlier than the each separable portion [Fig. 9 ¶¶9-12, 45, 60, 91-96 describe note with timing information which can be separated]; and the computer program causes the computer to function as: a receiving unit that receives an input of the pieces of timing information indicated by the indicating regions [Fig. 2, ¶¶9-12, 45, 60, 91-96 describe image reading device 112 and image reading unit 102a]; and a display unit that displays the received pieces of timing information [Fig. 2, ¶¶9-12, describe display device 114 and display controlling unit 102b].
Taniguchi describes the sticky note includes timing information (e.g., See, Fig. 9, with date 11/21 and date and time 12/3 10:00) in regions of the note which are scanned by the system and displayed. The sticky note is made of paper and therefore the region displaying the timing information can be separated by tearing or cutting. In addition, the claim is directed to a computer a non-transitory storage medium storing a computer program. The limitations of the sticky note appear in the preamble and are not further recited in the body of the claimed units. In addition, the indicia of time information are directed to non-functional descriptive material and/or intended use of the sticky note that does not further limit the claimed program as these recitations do not appear outside of the preamble. Therefore, Taniguchi anticipates claim 25.
However, to the extent Taniguchi fails to provide these limitations, Abe teaches a sticky note with separable regions with numbers in descending order that can provide timing information, including a range of timing, e.g., Fig. 3, 6 followed by 5 followed by 4, etc.
Taniguchi and Abe are both considered to be analogous to the claimed invention because they are in the same field of sticky notes. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of Taniguchi and include the sticky note with separable regions and indicia, as taught by Abe, in order to improve user convenience, for example, by provide customized notes such as classification according to the needs of the user without having to purchase different notes, see, e.g., 6.
In re claim 26, Taniguchi discloses an image pickup device [Fig. 2, shows image reading device 112]; and the receiving unit receives the input by reading, using the image pickup device, the pieces of timing information indicated by the indicating regions [Fig. 2 shows image reading unit 102].
In re claim 27, Taniguchi discloses a sending unit that sends the received pieces of timing information to an external device [¶¶54, 64, 65, among other describe information may be presented on external display 114, such as a monitor or home television set, or send to external system 200, such as a web server, through network 300].
In re claim 29, Taniguchi discloses wherein the receiving unit repeatedly receives an input of the pieces of timing information [Fig. 21, ¶¶87, 89, 119, describe a history including a plurality of notes, therefore, as a second note is scanned the image reading unit 102(b) receives repeated inputs]; and the computer program further causes the computer to function as a recognizing unit that recognizes a state of progress of a review based on a plurality of the received pieces of timing information [¶¶60, 91-104, among others, describe altering the display of the electronic sticky note according to the progress of timing, for example, that indicates a proximity to time, such as a reminder or grace period, to convey urgency to the user].
Claim 28 is are rejected under 35 U.S.C. § 103 as being unpatentable over Taniguchi in view of U.S. Patent No. 9,558,467 to Simon et al. (“Simon”), or, in the alternative, as being unpatentable over Taniguchi in view of Abe and further in view of Simon.
In re claim 28, Taniguchi lacks, but Simon teaches an image processing system for capturing and storing information associated with sticky notes on a whiteboard [Fig. 3, col. 3, ll. 25-42, col. 8, l.66-col. 9, l. 19] wherein the receiving unit further receives an input of adherend information that is indicated by the adherend, and the display unit displays the received adherend information in an associated manner with the pieces of timing information [col. 4, ll. 1-34, among others describe capturing lines drawing on board connecting the sticky notes (adherend information)].
Taniguchi and Simon are both considered to be analogous to the claimed invention because they are in the same field of capturing information from sticky notes. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of Taniguchi and recognition of adherend information, as taught by Simon, in order to improve user experience, for example, to reduce the manual burden involved in recognizing and transforming a manually-sketched model on a whiteboard platform to a digitized model provide, see, e.g., col. 3, ll. 20-24, 60-67.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is listed on the attached Notice of References Cited.
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/ANDREW BODENDORF/Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
1 Non-functional descriptive material does not further limit the claimed structure because the limitation is directed towards printed indicia conveying a message or meaning to a human reader independent of the supporting structure, which only provides support and display for the indicia printed thereon, See MPEP 2111.05. The fact that the content of the printed matter placed on the substrate (i.e., timing information on a sticky note) it does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter and the substrate which is required for patentability. In addition, it has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 217 USPZ 401, (CAFC 1983).
2 A recitation of 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. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987)
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