DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is in reply to the amendments filed on 15 December 2025.
Claims 1 and 5 have been amended.
Claims 2-3 and 6-7 were previously canceled.
Claims 1, 4, 5, and 8 are currently pending and have been examined.
Response to Amendment
Applicant’s amendments are insufficient to overcome the 112 rejections of Claims 4, 5 and 8 previously raised. See updated grounds of rejection set forth below.
Applicant’s amendments are insufficient to overcome the 101 rejections previously raised. See updated grounds of rejection set forth below.
Response to Arguments
Applicant’s arguments filed on 15 December 2025 have been fully considered but are not persuasive.
Applicant argues that the amended claims are not indefinite. Examiner respectfully disagrees. The claims inconsistently reference a calculated magnitude of maturity (Claim 1) and storing maturity upper limit information for managing an upper limit of the maturity (Claim 4). It remains unclear if the upper limit of maturity is for the calculated magnitude of maturity from claim 1 or some other value or indication of maturity. The amendments did not clarify or correct this inconsistency in claims 4, 5 or 8. The rejections are respectfully maintained and updated below.
Additionally, Claims 5 and 8 refers to both a “magnitude of maturity” and “the maturity” and it is unclear if those are the same values or different values indicative of maturity. Clarification and correction is required.
Regarding the 101, applicant argues that the amended claims recite patent eligible subject matter and the additional elements integrate the judicial exception into a practical application. Examiner respectfully disagrees. Merely describing “automatically” identifying a system to be improved using maturity analysis does not demonstrate any implementation of additional elements that are integrated into a practical application. The claim functions are merely applied by a computer. In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e. through the use of a computer for performing calculations, as is the case here. The 101 rejection is respectfully maintained and updated below as necessitated by the amendments to the claims.
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.
Claims 4, 5 and 8 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.
Claims 4, 5 and 8 recite the limitation calculating "the maturity”. There is insufficient antecedent basis for this limitation in the claim. The independent claims previously introduce “a magnitude of maturity” but it is unclear if “the maturity” is referencing the magnitude of maturity or some other calculated maturity value, level or degree. Appropriate correction and clarification are required.
Claim 5 recites identifying a target system to be improved by referring to the matching information “based on a plurality of the maturity”. It is unclear if the identified improvement is based on the calculated maturity for each of the plurality of targets, if a plurality of maturity values are somehow combined to form the basis of the identification or if a maturity value is somehow made plural. Clarification and correction are required.
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, 4, 5, and 8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The independent claims 1 and 5 recite calculating a magnitude of maturity of each of the plurality of target business systems of the first business operator based on a formula and identifying a business system to be improved as a target system to be improved from among the plurality of target business systems by referring to the matching information based on the magnitude of maturity. These limitations, as drafted, are a process step that, under its broadest reasonable interpretation, covers performance of the limitations in the mind. A user can mentally observe and evaluate a magnitude of maturity and identify a business system to be improved by referencing analysis information as well identify a provider by referring to provider information. But for the “by the at least one computer” the claims encompass a user simply evaluating data to calculate maturity and identifying a system to be improved and provider in their mind. The mere nominal recitation of a generic computer, processor or system does not take the claim out of the mental processing grouping. Thus, the claims require a mental process, which is an abstract idea.
This judicial exception is not integrated into a practical application. The claims recite additional elements including a computer system including a computer, processor, storage device and network interface. The computer system is recited at a high level of generality and is configured to store information including matching information and provider information, acquires data and presents information by the computer. These limitations amount to mere data gathering/storage and transmission/output, which are forms of insignificant extra solution activity. The computer that performs the calculating and identifying steps is also recited at a high level of generality and merely automate those steps. Each of the additional components is no more than mere instructions to apply the exception using a generic computer component. The combination of these additional elements is no more than mere instructions to apply the exception in a generic computer environment with generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application. The claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed with respect to step 2A Prong 2, the additional elements in the claims amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B and does not provide an inventive concept.
For the storing information, acquiring data and presenting information that were considered extra solution activity in step 2A, these have been re-evaluated in step 2B and determined to be well-understood, routine and conventional activity in the field. The specification does not provide any indication that the computer is anything other than a generic, off the shelf computer component, and the Symantec, TLI and OIP Techs court decisions in MPEP 2106.05d indicate that mere collection, receipt and transmission of data by generic devices over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here.
Dependent claims 4 and 8 include all of the limitations of the independent claims and therefore recite the same abstract idea. The claims describe managing an upper limit of the maturity by selecting one of the systems, evaluating whether the maturity reaches an upper limit and identifying the target system to be improved from a plurality of systems that do not reach the upper limit which merely narrows the abstract concept by further evaluating the data through mental process steps without setting forth any additional elements that transform the claim into a patent eligible invention. The steps are merely applied by a computer and are generically linked to the system environment.
Claims 1, 4, 5, and 8 are therefore drawn to ineligible subject matter as they are directed to an abstract idea without significantly more.
Distinguishable over Prior Art
None of the prior art of record taken individually or in combination teach matching information that shows a correspondence between a magnitude of maturity representing a degree of promotion of digital transformation in a business operation and a business system to be improved or the steps for acquiring specific data and using that data as a basis for calculating maturity and identifying target business systems to be improved. Claims 1, 4, 5, and 8 would be allowable if sufficiently amended to overcome the pending 112 and 101 rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE Z DELICH whose telephone number is (571)270-1288. The examiner can normally be reached on Monday - Friday 7-3:30.
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/STEPHANIE Z DELICH/Primary Examiner, Art Unit 3623