DETAILED ACTION
Introduction
This Office action is responsive to the communications filed February 28,2024 Claims 1-10 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1 and 10 objected to because of the following informalities: the claims recite “which has n (n is an integer of 3 or more)” instead of “wherein n is an integer of three or more…”
Also, the claims recite and before the sorting and pullback, which appears to be a typographical error. Consider deleting the “and” before the “a sorting step.”
Appropriate correction 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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 10:
storage unit configured to store; and
processing unit configured to generate…
The claim recites the generic placeholder “unit” for performing the functions identified above. Upon review, the Examiner notes that the claimed phrase meets Prongs (A) and (B) as set forth in MPEP § 2181, subsection I. Additionally, the Examiner notes that “unit” is not being modified by sufficiently definite structure, material, or acts for achieving the specified function; therefore, the claimed phrase meets Invocation Prong (C).
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.
It is unclear from the specification which structure and algorithm are performing the corresponding function.
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
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.
Claim 10 is 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 pre-AIA the applicant regards as the invention.
Claim limitations the “storage unit configured to store..”; and “processing unit configured to generate…” in claim 10 invoke 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.
It is unclear from the specification which structure and algorithm are performing the corresponding function.
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.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-9 are directed to a method. Claim 10 is directed to a device. Therefore, these claims fall within the four statutory categories of invention.
For example, claim 1 recites an abstract idea of organizing and manipulating information through mathematical correlations. The claim under its broadest reasonable interpretation recites limitations grouped within the “mathematical concepts” grouping of abstract ideas. Mathematical concepts abstract idea grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations. See MPEP § 2106.04(a)(2), subsection I. The claim limitations reciting the abstract idea are grouped within the “mathematical concepts” grouping of abstract ideas as they relate to organizing and manipulating information through mathematical correlations. More specifically, the following the bolded claim elements recite additional elements while the other claim elements recite the abstract idea. according to MPEP 2106.04(a).
1. An information processing method in which an information processing device executes
a crossover step of generating a new individual by changing a value of an explanatory variable of a part of an individual selected with a first probability from current-generation data, which has n (n is an integer of 3 or more) individuals each being an explanatory variable group having a plurality of explanatory variables, to a target value based on a value of a corresponding explanatory variable of another individual,
a mutation step of generating a new individual by changing a value of an explanatory variable of a part of an individual selected with a second probability from the current-generation data to another value, and
a sorting step of sorting n individuals of next-generation data from stored individuals and generated individuals on the basis of a fitness degree calculated from an explanatory variable group for each individual,
wherein the information processing device executes:
a pullback constraint determination step of determining presence or absence of an explanatory condition deviating from the pullback constraint, which is a constraint condition based on four arithmetic operations across a plurality of explanatory variables for each individual that has been generated; and
a pullback step of resetting a reset value based on a plurality of explanatory variables with respect to the plurality of explanatory variables deviating from the pullback constraint.
Independent claim 10 recites similar language.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional element(s) of the claim(s) such as the information processing device is merely used as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of organizing and manipulating information. Viewed as a whole, the use of information processing device as tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer or computer networks performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of the information processing device to perform the steps amounts to no more than using generic hardware or software to automate and/or implement the abstract idea of organizing and manipulating information through mathematical correlations. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of organizing and manipulating information through mathematical correlations. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
The dependent claims further describe the abstract idea such as wherein the pullback step includes determining the reset value by multiplying each of values of a plurality of explanatory variables by a coefficient based on the plurality of explanatory variables and a lower limit value when a sum of values of a plurality of explanatory variables deviating from the pullback constraint deviates from the lower limit value of the predetermined first value range.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/585,100 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite:
An information processing method in which an information processing device executes (An information processing method in which an information processing device executes)
a crossover step of generating a new individual by changing a value of an explanatory variable of a part of an individual selected with a first probability from current-generation data, which has n (n is an integer of 3 or more) individuals each being an explanatory variable group having a plurality of explanatory variables, to a target value based on a value of a corresponding explanatory variable of another individual,
a mutation step of generating a new individual by changing a value of an explanatory variable of a part of an individual selected with a second probability from the current-generation data to another value, and
a sorting step of sorting n individuals of next-generation data from stored individuals and generated individuals on the basis of a fitness degree calculated from an explanatory variable group for each individual,
wherein the information processing device executes:
a pullback constraint determination step of determining presence or absence of an explanatory condition deviating from the pullback constraint, which is a constraint condition based on four arithmetic operations across a plurality of explanatory variables for each individual that has been generated; and
a pullback step of resetting a reset value based on a plurality of explanatory variables with respect to the plurality of explanatory variables deviating from the pullback constraint.
The reference application differs as it recites additional steps of settting and generating. Since claim 1 of the present application and claim 1 of the reference application perform similar functions, it would have been obvious to a person on ordinary skill in the art to modify the claims by removing the additional features. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karison, 136 USPQ 184 (CCPA 1964). Also, note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/585,121 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite:
An information processing method in which an information processing device executes
a crossover step of generating a new individual by changing a value of an explanatory variable of a part of an individual selected with a first probability from current-generation data, which has n (n is an integer of 3 or more) individuals each being an explanatory variable group having a plurality of explanatory variables, to a target value based on a value of a corresponding explanatory variable of another individual,
a mutation step of generating a new individual by changing a value of an explanatory variable of a part of an individual selected with a second probability from the current-generation data to another value, and
a sorting step of sorting n individuals of next-generation data from stored individuals and generated individuals on the basis of a fitness degree calculated from an explanatory variable group for each individual,
wherein the information processing device executes:
a pullback constraint determination step of determining presence or absence of an explanatory condition deviating from the pullback constraint, which is a constraint condition based on four arithmetic operations across a plurality of explanatory variables for each individual that has been generated; and
a pullback step of resetting a reset value based on a plurality of explanatory variables with respect to the plurality of explanatory variables deviating from the pullback constraint.
The reference application differs as it recites an additional step (i.e. “an individual constraint determination step”) Since claim 1 of the present application and claim 1 of the reference application perform similar functions, it would have been obvious to a person on ordinary skill in the art to modify the claims by removing the additional features. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karison, 136 USPQ 184 (CCPA 1964). Also, note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Publication NO. 2023/0409923 to Maruo et al.
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/Jalatee Worjloh/Primary Examiner, Art Unit 3697
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