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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 22, 2025 has been entered.
Status of the Claims
Claims 1-8 were previously pending. Claims 1-8 were amended and new claims 9-10 were added in the reply filed December 22, 2025. Claims 1-10 are currently pending.
Response to Arguments
Applicant's amendments obviate the interpretation made under § 112(f).
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive. "Accordingly, the presently claimed invention allows for searching for similar performance data along the flow of similar business processes. See para. [0110]. Conventional technologies simply the creation of business flows. However, they do not allow searching for a similar business flow or performance data. See para. [0006]. Therefore, the presently claimed invention improves the technology of automatic research and development of material informatics by improving the searching of business flow data structures." Remarks, 13. Searching for similar business flows or performance data is an abstract economic/commercial process, it is not a technology. All of the limitations highlighted (Remarks, 13-14) comprise parts of the abstract idea. "It is important to note, the judicial exception alone cannot provide the improvement." MPEP 2106.05(a).
Applicant's arguments filed with respect to the rejections made under § 103 have been fully considered but are not persuasive. "However, Yoshiuchi does not disclose the search condition, as set forth in claim 1. That is, Yoshiuchi does not disclose 'a search condition, which includes a reference business flow (e.g., 411 in Fig. 17) and performance data similarity search condition (e.g., one or more of 414, 415, 417 in Fig. 17), the reference business flow including a target business name, a previous business name in the reference business flow and a post business name subsequent to the target business in the reference business flow (e.g., 1641, 1642, 1643 of Fig. 4),' as set forth in claim 1." Remarks, 17. Yoshiuchi is not relied upon for all of these elements, some of which are taught by Roelofs. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The remaining arguments do not particularly point out how the claims differ from the prior art and, as such, only amount to a general allegation of patentability.
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 non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-10, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including:
generate performance data in the business process; and
collect performance data generated and manages the performance data in association with a configuration of the executed business flow,
collect performance data of each business process from the data generation device for each of the business flows, and store the collected performance data in association with a business of the business process and a related element related to the business, and
receive an input of a search condition, the search condition including a reference business flow and performance data similarity search condition, the reference business flow including a target business name, a previous business name in the reference business flow and a post business name subsequent to the target business in the reference business flow,
extract one or more business flows, as similar business flows, which are determined to be similar to the reference business flow from among a plurality of business flows based on the search condition,
extract first performance data of the similar business flows,
extract, as an extraction result, similar performance data determined to be similar to the extracted first performance data based on the search condition,
wherein the business flow is including a plurality nodes and representing a connection relationship between a plurality of businesses represented as nodes among the plurality of nodes and a component node, among the plurality of nodes, indicating an input component or an output component of each business in the business flow, the business flow beginning with a material node, among the plurality of nodes, and ending with a finished product node, among the plurality of nodes.
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information for managing business operation of an enterprise (i.e., in the terminology of the 2019 Revised Guidance, fundamental economic practices or commercial interactions). Additionally, it covers purely mental processes (e.g., a person observing business performance data, evaluating it with similar business flows, and arriving at a conclusion at an extraction result).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content, then displaying the results, similar because at another level of abstraction the claims could be characterized as process of gathering and analyzing information of similar business performance flows, then displaying the results; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)—obtaining and comparing intangible credit card data, similar because at another level of abstraction the claims could be characterized as obtaining and comparing intangible business flow performance data; University of Florida Research Foundation v. GE Company, 916 F.3d 1363 (Fed. Cir. 2019)—collecting, analyzing, manipulating, and displaying data, which also characterizes the invention albeit with a different type of data).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (information management system, data generation device, information management server, storage device, data structure, memory storing instructions, processor coupled to the memory—all recited at a high level of generality).
Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2, i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there (information management system, data generation device, information management server, storage device, data structure, memory storing instructions, processor coupled to the memory). See also published Specification ¶¶ 0039-42 describing these at a high level of generality and as generic, conventional computers.
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims only set forth further refinements of the abstract idea without changing the analysis already presented (i.e., they merely narrow the same abstract idea identified above without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general link to a technological environment and instructions to implement the abstract idea as the independent claims (i.e., generic computers).
Dependent Claims Step 2B:
The dependent claims merely use the same general link to a technological environment and instructions to implement the abstract idea as the independent claims (i.e., generic computers). Accordingly, for the same reasons they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiuchi, et al., U.S. Pat. Pub. No. 2020/0090103 (Reference A of the PTO-892 part of paper no. 20250714) in view of Roelofs, et al., U.S. Pat. Pub. No. 2016/0217399 (Reference A of the PTO-892 part of paper no. 20251013).
As per claim 1, Yoshiuchi teaches a business information management system that manages business information related to each business process of each business flow for a plurality of business flows each including one or more business processes, the business information management system comprising:
a data generation device that generates performance data in the business process (¶¶ 0043-44, 51); and
a business information management server that collects performance data generated by the data generation device and manages the performance data in association with a configuration of the executed business flow (¶ 0044),
wherein the business information management server includes:
a memory and a processor coupled to the memory, the memory storing instructions that when executed by the processor, configures the processor to (¶ 0097):
collect performance data of each business process from the data generation device for each of the business flows, and store the collected performance data in a storage device in association with a business of the business process and a related element related to the business (¶¶ 0060, 65, 68), and
receive an input of a search condition, the search condition including a reference business flow and performance data similarity search condition, the reference business flow including a target business name (¶¶ 0128-29, 142; see also ¶ 0089—data includes a business identifier that specifies a business),
extract one or more business flows, as similar business flows, which are determined to be similar to the reference business flow from among a plurality of business flows based on the search condition (¶¶ 0130-31),
extract first performance data similar to performance data of the of the similar business flows (¶¶ 0130, 143),
extract, as an extraction result, similar performance data determined to be similar to the extracted first performance data based on the search condition (¶¶ 0143-44).
Yoshiuchi does not explicitly teach a reference business flow that is a business flow as a reference having a previous business name in the reference business flow and a post business name subsequent to the target business in the reference business flow; wherein the business flow is a data structure including a plurality nodes and representing a connection relationship between a plurality of businesses represented as nodes among the plurality of nodes and a component node, among the plurality of nodes, indicating an input component or an output component of each business in the business flow, the business flow beginning with a material node, among the plurality of nodes, and ending with a finished product node, among the plurality of nodes. However, this is taught by Roelofs (¶¶ 0063-67, 73). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Roelofs—namely, to graphically model different businesses in a flow. Moreover, this is merely a combination of old elements in the art of business process analysis. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results. Additionally, even if Yoshiuchi is interpreted not to disclose a target business name; this is also taught by Roelofs at the same sections and would have been obvious to incorporate for the same reasons.
As per claim 2, Yoshiuchi in view of Roelofs teaches claim 1 as above. Yoshiuchi further teaches when one or more items in the business or the related element are designated as extraction target items of the similar performance data, after extracting the performance data similar to the performance data of the reference business flow, the performance data search unit extracts and outputs performance data in the extraction target item from among the extracted performance data (¶¶ 0130-132).
As per claim 3, Yoshiuchi in view of Roelofs teaches claim 1 as above. Yoshiuchi further teaches the search condition related to the similarity of the business flow includes at least one of a difference in a number of businesses designating an allowable range of similarity with respect to a total number of the businesses included in the reference business flow or a difference in a number of items designating an allowable range of similarity with respect to a total number of the related elements included in the reference business flow (¶¶ 0104, 130-132).
As per claim 4, Yoshiuchi in view of Roelofs teaches claim 1 as above. Yoshiuchi further teaches one or more similarity determination conditions as an allowable range of similarity with respect to the performance data are set for an arbitrary item of the business or the related element as the search condition related to the similarity of the performance data (¶¶ 0104, 130-132).
As per claim 5, Yoshiuchi in view of Roelofs teaches claim 1 as above. Yoshiuchi further teaches the business information management server further includes a data similarity candidate generation unit that: compares performance data of the reference business flow with performance data of a plurality of business flows associated with the performance data stored in the storage device on a basis of threshold setting designated by a user, specifies one or more similarity determination conditions as an allowable range of similarity for performance data of the business flow that satisfies the threshold setting, on a basis of a difference from the performance data of the reference business flow, and generates a candidate of a similarity set selectable as a search condition related to the similarity of the performance data using the specified similarity determination conditions (¶¶ 0141-143).
As per claim 6, Yoshiuchi in view of Roelofs teaches claim 1 as above. Yoshiuchi further teaches a reliability of performance data of each business flow can be set by a user for a plurality of business flows associated with the performance data stored in the storage device, and in a case where a search condition related to the reliability is designated when the similar performance data is searched, the performance data search unit extracts performance data similar to the performance data of the reference business flow, and then extracts and outputs performance data satisfying the reliability designated by the search condition from among the extracted performance data (¶¶ 0106, 144).
As per claim 7, Yoshiuchi in view of Roelofs teaches claim 1 as above. Yoshiuchi further teaches the business information management server further includes a performance data factor analysis unit that performs factor analysis on an extraction result of the similar performance data extracted by the performance data search unit using a predetermined method with a predetermined item in the business or the related element designated by a user as an analysis target, and outputs, as an analysis result, performance data in which a contribution rate to the predetermined item of the analysis target exceeds a predetermined threshold (¶¶ 0135-136).
As per claim 8, Yoshiuchi in view of Roelofs teaches a data search method by a business information management system the performs the functions of analogous claim 1 (see citations and obviousness rationale above).
As per claim 9-10, Yoshiuchi in view of Roelofs teaches claim 1 as above. Yoshiuchi further teaches receiving a plurality of extraction target items designated from one or more business processes the reference business flow, the extraction target items being performance data of the reference business flow (¶¶ 0128-29); acquiring performance data from each of the similar business flows related to each of the plurality of extraction target items (¶¶ 0130, 143); determining one or more of the acquired performance data which exceeds a predetermined threshold (¶¶ 0104, 131); and displaying the determined one or more of the acquired performance data which exceed the predetermined threshold (¶ 0160).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hornix, Performance analysis of business processes through process mining, Master's Thesis, Eindhoven University of Technology (2007) (Reference U of the attached PTO-892) relates to a business information data search method.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628