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 .
Procedural Summary
This is responsive to the claims filed 03/18/2024.
The Examiner acknowledges the preliminary amendment filed on 03/18/2024 in which amendments were submitted.
Claims 1-16 are pending.
Applicant’s IDS submission is acknowledged and provided herewith.
The Drawings filed on 03/18/2024 are noted.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 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 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or, for pre-AIA , the applicant regards as the invention.
First, claims 1-14 recite various elements which are claimed not in terms of their structures, but in terms of their functions. Such an approach is explicitly permitted by 35 USC 112(f), which states:
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.
However, the quid pro quo for the convenience of employing this claiming technique is that the corresponding structure for each such element must be clearly linked or associated to the function recited, so that the element may be construed in the manner specified by the statute. When a clear link or association is not present, it is impossible to determine the metes and bounds of the claim containing the element, and the claim therefore fails to satisfy the requirement of 35 USC 112(b) that an invention must be particularly pointed out and distinctly claimed. See MPEP 2181.
The following claim elements are limitations that invoke 35 U.S.C. 112(f) paragraph because a skilled artisan would conclude that they are so devoid of structure that the drafter constructively engaged in means-plus-function claiming (for example, by using “means” or a nonce term that is not an art-recognized name of a structure of class of structures in conjunction with functional language):
“designated object creation means” as recited in claims 1, 4-9, and 15-16;
“IC card information acquisition means” as recited in claims 2, 6, and 8;
“related object creation means” as recited in claims 1, 3, and 15-16;
“acquisition means” as recited in claim 14; and
any other claimed “means for” in conjunction with functional language that may have been inadvertently omitted from the list above.
However, for each element listed above, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or act performs the claimed function. Consequently, each claim containing an element listed above fails to particularly point out and distinctly claim the subject matter which the applicant regards as his invention.
For each claim and each limitation listed above, 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
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function.
For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Note: Applicant is respectfully reminded that a trivial amendment (such as replacing the word “means” with an equally non-structural term such as “unit” or “section” or “module” or “device” would not be sufficient to prevent the claims from being interpreted under 35 USC 112(f). Furthermore, for a computer-implemented invention, examples of “corresponding structure” include a specific arrangement of circuitry or a specific algorithm running on a general-purpose processor. Merely referencing a specialized computer (e.g., a “bank computer”), some undefined component of a computer system (e.g., an “access control manager”), “logic,” “code,” or elements that are essentially a black box designed to perform the recited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function. See MPEP 2181.
Any claim not specifically addressed above is rejected for inheriting the deficiencies of a parent 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.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 1 recites a “a program for causing an information processing apparatus to function as:…” The claim fails to define any structure or hardware. Accordingly, the recited “program” is computer software per se and is not a “process,” a “machine,” a “manufacture” or a “composition of matter,” as defined in 35 U.S.C. 101.
Claims 1 to 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The examiner follows the two step-analysis, as described in MPEP 2106 (available at https://www.uspto.gov/web/offices/pac/mpep/s2106.html). The following diagram is an overview of the steps involved.
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Step 1 of the two step-analysis considers whether the claims fall into one of the four statutory categories of invention such as a process, machine, manufacture, or composition of matter. The instant invention claims an information processing apparatus, and an object creation method. As such, the claimed invention falls into the broad statutory categories of invention. However, claims that fall within one of the four statutory categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas.
Step 2A has been further divided into two prongs as shown in the following diagram.
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Under prong 1 of step 2A, the examiner considers whether the claim recites an abstract idea, law of nature or natural phenomenon. The term “abstract idea” is not interpreted as a layperson might. Instead, the term “abstract idea” is interpreted as described in legal opinions by courts.
According to MPEP 2106.04(a):
the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Here, representative claim 16 recites the following (with emphasis)(and similarly recited Claims 1 and 15): “Claim 16. (Original) An object creation method performed by an information processing apparatus, the object creation method comprising:
a designated object creation step of creating a designated object in a case where record data of an IC card, which is read from an IC tag or an IC chip in which information of the IC card is registered satisfies a condition; and
a related object creation step of creating, in a case where the record data does not satisfy the condition, a related object according to an elapsed time from reading of the record data to reading of next record data and presence or absence of a change in the next record data read.”
The underlined portions of representative claim 16 generally encompass the abstract idea, with substantially similar features in claims 1 and 15. The abstract idea may be viewed, for example, as: each of at least one step or instruction or rule for: (i) an observation, judgement or evaluation, which is a mental process under the 2019 PEG. (see MPEP § 2106.04(a)(2), subsection III).
The claims generally encompass the steps of creating, determining, reading, which are steps that can be done in the human mind. The dependent claims include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed. Accordingly, each of Claims 1 to 16 recites an abstract idea.
Step 2A, Prong 2
Under prong 2 of step 2A, the examiner considers whether the additional elements in the claims integrate the abstract idea into a practical application. According to 2019 PEG, a consideration indicative of integration into a practical application includes improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)) or adding a specific limitation other than what is well-understood, routine, conventional activity, or adding unconventional steps that confine the claim to a particular application (a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (MPEP § 2106.05(d)). Conversely, considerations not indicative of integration include adding words “apply it” (or equivalent) with the judicial exception or mere instructions to implement the abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. (MPEP 2106.05(f)); adding insignificant extra-solution activity (MPEP 2106.05(g)), or generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)).
Here, the abstract idea is not integrated into a practical application. The claims are recited so generically (no details whatsoever are provided other than in name only) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
The creating, determining, comparing, and reading elements in the claims are deemed to be data gathering and data presentation for the use of the judicial exception and similarly are recited at a high level of generality. Thus, these limitations are a form of insignificant extra-solution activity (See MPEP 2106.05(g), See also selecting a particular source and type of data to be manipulated where “Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)).
Even when the limitations are viewed in combination, the additional elements in this claim do no more than automate the organizing activities needed to be performed, using the one of more computer components as tools. While this type of automation is an improvement in a general sense as opposed to performance manually, there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Latric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality).
Furthermore, the additional elements do not serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Accordingly, Claims 1, 15, and 16 as a whole does not integrate the recited judicial exception into a practical application and these claims are directed to the judicial exception. Thus, Claims 1-16 lack the eligibility requirements of Step 2 Prong II.
STEP 2B
Finally, under step 2B, the examiner evaluates whether the additional elements:
add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The present claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements recite designated object creation means, related object creation means, IC card information acquisition means, and acquisition means. These additional elements are generically claimed computer components which enable a game to be conducted by performing the basic functions of: (i) receiving, processing, and storing data, (ii) automating mental tasks and (iii) receiving or transmitting data over a network, e.g., using the Internet to gather data. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application.
Additionally, a claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims.
Furthermore, taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 15 and 16 (and their dependent Claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to conduct a game with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The above-identified additional elements, when viewed as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
For at least the above reasons, the apparatuses of Claims 1 to 16 are directed to applying an abstract idea (e.g., mental process) on a general purpose computer without (i) improving the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) providing a technical solution to a problem in a technical field (as in DDR). In other words, none of Claims 1 to 16 provides meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. 208 (2014).
AIA Notice
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, and 9-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication 2008/0153581 A1 to Hedrick et al. (hereinafter Hedrick).
Regarding Claim 1, and similarly recited Claims 15 and 16, (Original) Hedrick discloses an information processing apparatus comprising:
designated object creation means for creating a designated object in a case where record data of an IC card, which is read from an IC tag or an IC chip in which information of the IC card is registered satisfies a condition (paras. [0080], [0099], [0105] discloses a card management system having a card management assembly 11a; one or more data exchange card read-write devices 12 for receiving, updating, reading and dispensing data cards … the data card includes an integrated circuit or chip, as described below. The integrated circuit includes a data card processor and one or more memory devices. These data cards are commonly known as I/C cards or chip cards, and are also known as "smart cards" though this term is often casually used to refer to data cards in general (whether or not they include an integrated circuit)); and
related object creation means for creating, in a case where the record data does not satisfy the condition, a related object according to an elapsed time from reading of the record data to reading of next record data and presence or absence of a change in the next record data read (paras. [0123], [0126], [0135]).
Regarding Claim 2, (Original) Hedrick discloses the information processing apparatus according to claim 1, further comprising:
IC card information acquisition means for determining a type of near field communication technology of the IC card, and reading the record data varying by use of the IC card (paras. [0123, [0126], [0148]), from the IC card, wherein
the condition is coinciding between at least a part of the record data and a setting value associated with the designated object (paras. [0123, [0126], [0148]), and
in a case where it is determined that the record data does not satisfy the condition, the related-object creation means creates a first related object in a case where there is no change in the next record data read after a time corresponding to a difference between at least the part of the record data and the setting value has elapsed, and a second related object in a case where there is a change in the next record data read (paras. [0123, [0126], [0148]).
Regarding Claim 3, (Original) Hedrick discloses the information processing apparatus according to claim 2, wherein
the related-object creation means creates the first related object or the second related object at a timing of reading the next record data in a case where the difference from the setting value is within a predetermined range (paras. [0135]-[0136] discloses this card management program directs the processor 112 to move a card 116, which a player has used to play the gaming device, from the card processing station 118 to the used card holder 120 on one or more conditions. One condition is if such used card 116 remains in the processing station 118 a designated amount of time after the player has finished playing the gaming device 110).
Regarding Claim 5, (Currently amended) Hedrick discloses the information processing apparatus according claim 2
Regarding Claim 7, (Currently amended) Hedrick discloses the information processing apparatus according to claim 1
Regarding Claim 9, (Currently amended) Hedrick discloses the information processing apparatus according to claim 1
Regarding Claim 10, (Currently amended) Hedrick discloses the information processing apparatus according to claim 2
Regarding Claim 11, (Currently amended) Hedrick discloses the information processing apparatus according to claim 1 used to determine whether or not the condition is satisfied is read is different from the IC card from which the next record data is read (paras. [0135]-[0136], [0157], [0196]).
Regarding Claim 12, (Currently amended) Hedrick discloses the information processing apparatus according to claim 1
Regarding Claim 13, (Currently amended) Hedrick discloses the information processing apparatus according to claim 1
Regarding Claim 14, (Currently amended) Hedrick discloses the information processing apparatus according to claim 1 .
Conclusion
Claims 1-16 are examined above.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and is provided in the Notice of References cited.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Lewis can be reached at (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.N.H/Examiner, Art Unit 3715 /DAVID L LEWIS/Supervisory Patent Examiner, Art Unit 3715