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
Claims 1, 3-5, 7-8, and 15 are currently amended.
Claims 2 and 16 are canceled.
Claims 1 and 3-15 are pending.
Response to Remarks
Claim Objections
Applicant’s amendments to the claims have overcome the previous objections. Accordingly, the previous objections are withdrawn.
35 U.S.C. § 101
Remark 1: Applicant contends that mere mechanization of analysis and organization that has been visually and manually conducted may deserve to be determined as lacking patent eligibility. In the claimed invention, analysis and organization is conducted through the approach of analysis that has not been visually and manually conducted. The function in general of computer software is to process information, and analysis and organization is included in such information processing. If no new type of information analysis and organization is recognized as an invention, there will be no single piece of information analysis and organization software that is patent eligible in this world. In this case, information analysis and organization software business will not pay in the software industry vulnerable to software piracy.
Response to Remark 1: Examiner respectfully disagrees. First, Applicant's argument is not persuasive because these features are part of the additional elements discussed in Step 2A, Prong Two. Second, the additional elements individually and in combination, are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea (MPEP § 2106.05(f)) and generally linking the use of the abstract idea to a particular technological environment (MPEP § 2106.05(h)). The description of the additional elements evidences that they are generic and conventional elements used as tools to perform the abstract idea (See Pre-Grant Publication 0047-0071). Accordingly, this contention is unpersuasive.
35 U.S.C. § 102
Applicant’s amendments to the claims have overcome the previous rejections. Accordingly, the previous rejections are withdrawn.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 and 3-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 3-7 and 12-14:
Step 1
Claims 1, 3-7 and 12-14 are directed to a computer-implemented information processing apparatus (i.e., machine, and manufacture). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II).
Step 2A Prong One
In Prong One examiners evaluate whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Claim 1 recites (i.e., sets forth or describes) an abstract idea of tracking, analyzing and registering patent application progress by processing communications and actions between applicant and the Patent Office and use of a stored table. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain method of organizing human activity grouping is used to describe fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people. Fundamental economic principles or practices are relating to the economy and commerce, or recite hedging, insurance, and mitigating risks. Commercial or legal interactions recite agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Managing personal behavior or relationships or interactions between people recite social activities, teaching, and following rules or instructions. See MPEP § 2106.04(a)(2), subsection II. Also, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “mental processes” grouping of abstract ideas. The mental processes abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes recite observations, evaluations, judgments, and opinions. Claims recite a mental process when they recite limitations that can practically be performed in the human mind, with or without the use of a physical aid. The use of a physical aid to help perform a mental step does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another. Further, claims can recite a mental process even if they are claimed as being performed on a computer. See MPEP § 2106.04(a)(2), subsection III. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas because the limitations recite fundamental economic principles or practices, as they relate to the economy and commerce, and concepts that can practically be performed in the human mind, with or without the use of a physical aid. More specifically, the following underlined claim elements recite the abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
An information processing apparatus for an application relating to an intellectual property right, comprising:
a first memory that stores an information processing program for an application relating to an intellectual property right;
a processor that executes the information processing program for an application relating to an intellectual property right to process information on the application relating to the intellectual property right acquired from an intellectual property right database,
wherein the processor performs
a process of acquiring a character string including progress information of a procedure communicated between the Patent Office and an applicant for at least one application relating to the intellectual property right, from the intellectual property right database,
a process of recognizing, for each application relating to the intellectual property right, one or a plurality of pieces of the progress information generated in time series for the application relating to the intellectual property right from the character string including the progress information, and
a process of determining, for the recognized progress information, which office action from the Patent Office corresponds to an action for the application relating to the intellectual property right taken by the applicant of the application relating to the intellectual property right; and
a second memory that
stores a table for information processing, the table including a first area including an item in which identification information for specifying the application relating to the intellectual property right is registered, and a second area including a plurality of items in which a plurality of pieces of progress information of procedures that are generatable in time series are registered, respectively, the procedures being communicated between the Patent Office and the applicant,
wherein the processor
performs a registration process of registering the acquired identification information in the item of the first area of the table, and
registering the one or plurality of pieces of the progress information in a corresponding item of the progress information in the second area of the table.
Step 2A Prong Two
In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Here, claim 1 as a whole, looking at the identified additional elements individually and in combination, does not integrate the judicial exception into a practical application. First, the non-underlined additional elements merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally link the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)). Additionally, regarding the specification and claims, there is no improvement in the functioning of a computer or an improvement to other technology or technical field present (MPEP §§ 2106.04(d)(1) and 2106.05(a)), there is no applying or using the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition present (MPEP § 2106.04(d)(2)), there is no implementing the judicial exception with or using the judicial exception in conjunction with a particular machine or manufacture that is integral to the claim present (MPEP § 2106.05(b)), there is no effecting a transformation or reduction of a particular article to a different state or thing present (MPEP § 2106.05(c)), and there is no applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment present, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e)). Thus, the claim as a whole is directed to a judicial exception and thus requires further analysis at Step 2B to determine if the claim as a whole, amounts to significantly more than the exception itself (See MPEP 2106.04, subsection II).
Step 2B
Step 2B determines whether the claim as a whole amount to significantly more than the exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Here, the additional elements, taken individually and in combination, do not result in claim 1, as a whole, amounting to significantly more than the judicial exception. As discussed previously with respect to Step 2A, the additional elements merely serve as a tool to perform an abstract idea and generally link the use of the judicial exception to a particular technological environment. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims
Claims 3-7 and 12-14 have also been analyzed. However, the subject matter of these claims also fails to recite patent eligible subject matter for the following reasons:
Claim 3 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas.
wherein the registration process registers information on presence or absence of the acquired one or plurality of pieces of the progress information in the corresponding item in the second area of the table.
Claim 4 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas. The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally links the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)).
wherein the table is configured of a worksheet of spreadsheet software,
items of the identification information and the plurality of pieces of progress information are assigned to a plurality of cells of the worksheet, respectively, and
the registration process registers information on presence or absence of the acquired identification information and one or plurality of pieces of the progress information in corresponding cells among the plurality of cells of the worksheet.
Claim 5 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas. The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally links the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)).
wherein the processor performs
a reception process of receiving, as extraction information, information indicating presence or absence of a procedure corresponding to any one or plurality of items among the plurality of items of the second area, and
an extraction process of extracting the identification information of the application relating to the intellectual property right, which satisfies a condition of the extraction information, from the table based on the received extraction information.
Claim 6 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas. The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally links the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)).
wherein the spreadsheet software includes a search function or a filter function, and
the spreadsheet software receives a search expression or selection of one or a plurality of filters indicating presence or absence of a procedure corresponding to any one or plurality of items among the plurality of items of the second area, and extracts the identification information of the application relating to the intellectual property right satisfying the search expression or filtered by the selected filter from the worksheet using the received search expression or the selected one or plurality of filters.
Claim 7 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas.
wherein the first area of the table includes an item in which bibliographic matters including identification information and a filing date of the application relating to the intellectual property right are registered.
Claim 12 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas. The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally links the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)).
wherein the processor outputs the extracted identification information.
Claim 13 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas. The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally links the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)).
wherein the processor outputs only the extracted identification information in a list table, collectively outputs the extracted identification information to be distinguishable from non-extracted identification information, or outputs the extracted identification information in an enhanced manner to be distinguishable from the non-extracted identification information.
Claim 14 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas. The non-underlined additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally links the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)).
wherein the processor displays the extracted identification information on a display, prints the identification information out from a printer, or stores the identification information in a memory.
Claim 8-11:
Step 1
Claims 8-11 are directed to a computer-implemented information processing apparatus (i.e., machine, and manufacture). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II).
Step 2A Prong One
In Prong One examiners evaluate whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Claim 8 recites (i.e., sets forth or describes) an abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain method of organizing human activity grouping is used to describe fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people. Fundamental economic principles or practices are relating to the economy and commerce, or recite hedging, insurance, and mitigating risks. Commercial or legal interactions recite agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Managing personal behavior or relationships or interactions between people recite social activities, teaching, and following rules or instructions. See MPEP § 2106.04(a)(2), subsection II. Also, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “mental processes” grouping of abstract ideas. The mental processes abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes recite observations, evaluations, judgments, and opinions. Claims recite a mental process when they recite limitations that can practically be performed in the human mind, with or without the use of a physical aid. The use of a physical aid to help perform a mental step does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another. Further, claims can recite a mental process even if they are claimed as being performed on a computer. See MPEP § 2106.04(a)(2), subsection III. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas because the limitations recite fundamental economic principles or practices, as they relate to the economy and commerce, and concepts that can practically be performed in the human mind, with or without the use of a physical aid. More specifically, the following underlined claim elements recite the abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
An information processing apparatus for an application relating to an intellectual property right, comprising:
a first memory that stores an information processing program for an application relating to an intellectual property right; and
a processor that executes the information processing program for an application relating to an intellectual property right to process information on the application relating to the intellectual property right acquired from an intellectual property right database,
wherein the processor performs
a process of acquiring a character string including progress information of a procedure communicated between the Patent Office and an applicant for at least one application relating to the intellectual property right, from the intellectual property right database,
a process of recognizing, for each application relating to the intellectual property right, one or a plurality of pieces of the progress information generated in time series for the application relating to the intellectual property right from the character string including the progress information, and
a process of determining, for the recognized progress information, which office action from the Patent Office corresponds to an action for the application relating to the intellectual property right taken by the applicant of the application relating to the intellectual property right, and
wherein the processor performs
a reception process of receiving extraction information having one or a plurality of pieces of progress information of any procedure including information in time series, the procedure being communicated between the Patent Office and the applicant regarding an application relating to an intellectual property right,
a process of acquiring identification information for specifying the application relating to the intellectual property right and information to be extracted indicating one or a plurality of pieces of the progress information generated in time series, from the character string for each application relating to the intellectual property right, and
an extraction process of extracting the identification information of the application relating to the intellectual property right having the information to be extracted, which matches the extraction information including a time series order of the extraction information, based on the received extraction information.
Step 2A Prong Two
In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Here, claim 8 as a whole, looking at the identified additional elements individually and in combination, does not integrate the judicial exception into a practical application. First, the non-underlined additional elements merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally link the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)). Additionally, regarding the specification and claims, there is no improvement in the functioning of a computer or an improvement to other technology or technical field present (MPEP §§ 2106.04(d)(1) and 2106.05(a)), there is no applying or using the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition present (MPEP § 2106.04(d)(2)), there is no implementing the judicial exception with or using the judicial exception in conjunction with a particular machine or manufacture that is integral to the claim present (MPEP § 2106.05(b)), there is no effecting a transformation or reduction of a particular article to a different state or thing present (MPEP § 2106.05(c)), and there is no applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment present, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e)). Thus, the claim as a whole is directed to a judicial exception and thus requires further analysis at Step 2B to determine if the claim as a whole, amounts to significantly more than the exception itself (See MPEP 2106.04, subsection II).
Step 2B
Step 2B determines whether the claim as a whole amount to significantly more than the exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Here, the additional elements, taken individually and in combination, do not result in claim 8, as a whole, amounting to significantly more than the judicial exception. As discussed previously with respect to Step 2A, the additional elements merely serve as a tool to perform an abstract idea and generally link the use of the judicial exception to a particular technological environment. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims
Claims 9-11 have also been analyzed. However, the subject matter of these claims also fails to recite patent eligible subject matter for the following reasons:
Claim 9 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas.
wherein in a case where the progress information is set as first progress information, second progress information, and third progress information in time series, the extraction information has at least one of the following:
the first progress information is present or absent before the second progress information;
the second progress information is present or absent after the first progress information;
the second progress information is present or absent between the first progress information and the third progress information; or
the second progress information is present or absent at the same time as the first progress information.
Claim 10 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas.
wherein the extraction information has, as a progress information group consisting of a plurality of pieces of the progress information in time series, at least one of
a first progress information group including a request for trial against decision of rejection and a trial decision of registration, in which a written amendment or a written correction of mistranslation is not submitted between the request for trial against decision of rejection and the trial decision of registration,
a second progress information group including a release of pre-trial examination and the trial decision of registration, in which a written amendment or a written correction of mistranslation is not submitted between the release of pre-trial examination and the trial decision of registration, or
a third progress information group including a notification of reasons for rejection, in which the reasons for rejection in the notification of reasons for rejection are overcome without submitting a written amendment or a written correction of mistranslation after the notification of reasons for rejection is issued.
Claim 11 recites the following underlined claim elements as an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a). The claim further recites the abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. In other words, it recites limitations grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas.
wherein the third information group has at least one of
a fourth progress information group including a plurality of times of notifications of reasons for rejection, in which a written amendment or a written correction of mistranslation is not submitted between two notifications of reasons for rejection in time series,
a fifth progress information group including a notification of reasons for rejection and a decision or registration, in which the decision of registration is made without submitting a written amendment or a written correction of mistranslation after the notification of reasons for reason is issued, or
a sixth progress information group including a notification of reasons for rejection and a trial decision of registration, in which the trial decision of registration is made without submitting a written amendment or a written correction of mistranslation after the notification of reasons for reason is issued.
Claim 15:
Step 1
Claim 15 is directed to a computer-implemented method (i.e., process). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II).
Step 2A Prong One
In Prong One examiners evaluate whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Claim 15 recites (i.e., sets forth or describes) an abstract idea of tracking and analyzing patent application progress by processing communications and actions between applicant and the Patent Office. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain method of organizing human activity grouping is used to describe fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people. Fundamental economic principles or practices are relating to the economy and commerce, or recite hedging, insurance, and mitigating risks. Commercial or legal interactions recite agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Managing personal behavior or relationships or interactions between people recite social activities, teaching, and following rules or instructions. See MPEP § 2106.04(a)(2), subsection II. Also, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “mental processes” grouping of abstract ideas. The mental processes abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes recite observations, evaluations, judgments, and opinions. Claims recite a mental process when they recite limitations that can practically be performed in the human mind, with or without the use of a physical aid. The use of a physical aid to help perform a mental step does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another. Further, claims can recite a mental process even if they are claimed as being performed on a computer. See MPEP § 2106.04(a)(2), subsection III. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” and “mental processes” grouping of abstract ideas because the limitations recite fundamental economic principles or practices, as they relate to the economy and commerce, and concepts that can practically be performed in the human mind, with or without the use of a physical aid. More specifically, the following underlined claim elements recite the abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
An information processing method for an application relating to an intellectual property right, which is executed by an information processing apparatus including a first memory that stores an information processing program for an application relating to an intellectual property right, and a processor that executes the information processing program for an application relating to an intellectual property right to process information on the application relating to the intellectual property right acquired from an intellectual property right database, the method comprising:
a step of acquiring a character string including progress information of a procedure communicated between the Patent Office and an applicant for at least one application relating to the intellectual property right, from the intellectual property right database;
a step of recognizing, for each application relating to the intellectual property right, one or a plurality of pieces of the progress information generated in time series for the application relating to the intellectual property right from the character string including the progress information; and
a step of determining, for the recognized progress information, which office action from the Patent Office corresponds to an action for the application relating to the intellectual property right taken by the applicant of the application relating to the intellectual property right,
wherein the method further includes
a reception step of receiving extraction information having one or a plurality of pieces of progress information of any procedure including information in time series, the procedure being communicated between the Patent Office and the applicant regarding an application relating to an intellectual property right,
a step of acquiring identification information for specifying the application relating to the intellectual property right and information to be extracted indicating one or a plurality of pieces of the progress information generated in time series, from the character string for each application relating to the intellectual property right, and
an extraction step of extracting the identification information of the application relating to the intellectual property right having the information to be extracted, which matches the extraction information including a time series order of the extraction information, based on the received extraction information.
Step 2A Prong Two
In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Here, claim 15 as a whole, looking at the identified additional elements individually and in combination, does not integrate the judicial exception into a practical application. First, the non-underlined additional elements merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)), and generally link the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)). Additionally, regarding the specification and claims, there is no improvement in the functioning of a computer or an improvement to other technology or technical field present (MPEP §§ 2106.04(d)(1) and 2106.05(a)), there is no applying or using the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition present (MPEP § 2106.04(d)(2)), there is no implementing the judicial exception with or using the judicial exception in conjunction with a particular machine or manufacture that is integral to the claim present (MPEP § 2106.05(b)), there is no effecting a transformation or reduction of a particular article to a different state or thing present (MPEP § 2106.05(c)), and there is no applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment present, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e)). Thus, the claim as a whole is directed to a judicial exception and thus requires further analysis at Step 2B to determine if the claim as a whole, amounts to significantly more than the exception itself (See MPEP 2106.04, subsection II).
Step 2B
Step 2B determines whether the claim as a whole amount to significantly more than the exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Here, the additional elements, taken individually and in combination, do not result in claim 15, as a whole, amounting to significantly more than the judicial exception. As discussed previously with respect to Step 2A, the additional elements merely serve as a tool to perform an abstract idea and generally link the use of the judicial exception to a particular technological environment. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims Free of Art
The closest prior art of record is US 2014/0379388 A1 to Lundberg et al. (“Lundberg”). Lundberg teaches:
a first memory that stores an information processing program for an application relating to an intellectual property right; a processor that executes the information processing program for an application relating to an intellectual property right to process information on the application relating to the intellectual property right acquired from an intellectual property right database, wherein the processor performs (paras 274-291; Fig.4)
a process of acquiring a character string including progress information of a procedure communicated between the Patent Office and an applicant for at least one application relating to the intellectual property right, from the intellectual property right database, (paras 34, 146-157)
a process of recognizing, for each application relating to the intellectual property right, one or a plurality of pieces of the progress information generated in time series for the application relating to the intellectual property right from the character string including the progress information, and (paras 34, 146-157)
a process of determining, for the recognized progress information, which office action from the Patent Office corresponds to an action for the application relating to the intellectual property right taken by the applicant of the application relating to the intellectual property right; and (paras 34, 146-157)
a second memory that stores (paras 274-291; Fig.4) a table for information processing, the table including a first area including an item in which identification information for specifying the application relating to the intellectual property right is registered, and a second area including a plurality of items in which a plurality of pieces of progress information of procedures that are generatable in time series are registered, respectively, the procedures being communicated between the Patent Office and the applicant, (Fig.3; paras 52-57)
Therefore, the prior art does not teach, neither singly nor in combination the following:
wherein the processor performs a registration process of registering the acquired identification information in the item of the first area of the table, and registering the one or plurality of pieces of the progress information in a corresponding item of the progress information in the second area of the table.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2002/0019836 A1 to Uchio et al. discloses: an information processing apparatus for efficiently managing documents and various procedures related to a patent application. Information related to a patent application is accumulated in a database for each case, and managed for due date. When an inventor has to study a case, a request to study the case is issued to the inventor through a network, and the state of the study by the inventor is checked through the network. Furthermore, related prior art is managed in a database, thereby efficiently filing an application with Patent Office.
US 2002/0161733 A1 to Grainger discloses: A method of managing documents related to a patent application. In one embodiment the method includes generating an invention disclosure from a first client system coupled to a server system over a first communication network, where the first client system is associated with a first technology developer; storing the generated invention disclosure in a database accessible to the server system; drafting a patent application for the invention disclosure from a second client system coupled to the server system over a second communication network, where the second client system is associated with a patent practitioner; storing the drafted patent application in the database; generating an instruction to file the patent application from a client system associated with either the technology developer or the patent practitioner; and receiving the instruction at the server system and causing the patent application to be filed in a patent office.
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 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.
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/ARI SHAHABI/Primary Examiner, Art Unit 3697