FINAL REJECTION
Introduction
This Office action is responsive to the communications filed December 2, 2025. Claims 1-20 were amended. Claims 1-20 are pending.
Response to Arguments
As per the specification, the brackets from the headings in the specification have not been removed. Therefore, the objection is maintained.
Applicant has amended the claims, thereby overcoming the objection.
As per claim 19, Applicant has amended the claim to over the rejection under 35 USC 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
The 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph rejection of claim 20 has been withdrawn.
Applicant’s amendment fails to overcome the rejection of claims 1-19 under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph as indicated below.
As per the 35 USC 101, Applicant asserts that the amendment to the claims “to include additional elements that are significantly more than the judicial expectation.” However, the Examiner respectfully disagrees as highlighted in the rejection below.
Applicant's arguments have been fully considered but they are not persuasive. Particularly, Applicant asserts that Ono fails to teach wherein the indicator element is a subset of the components of the ecosystem. However, Ono discloses, at paragraph [0080], the client determines… the selected organism selected from the candidate selected organisms, which suggest a subset.
Specification
The disclosure is objected to because of the following informalities: The headings in the specification is enclosed in brackets, which suggest deletion. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
specifying unit that…specifies…an indicator element to server as an indicator of a feature of an ecosystem recited in claims 1 and 19;
presentation control unit that controls presentation of the indicator element recited in claim 2;
evaluation unit that…calculates an evaluation score for evaluating a state of the target ecosystem recited in claim 3;
evaluation score predictor…calculates a predicated value recited in claim 12;
AR object generator that generates an AR object in claim 13; and
selection unit that selects …a component in the ecosystem information that belongs to an element group, among element groups classified according to properties of components, to which a predetermined component does not belong as recited in claim 15.
The claims recite the generic placeholders “specifying unit,” “presentation control unit,” “evaluation unit,” “evaluation score predictor” and “selection unit” for performing the functions identified above. Upon review, the Examiner notes that the claimed phrase meets Prongs (A) and (B) as set forth in MPEP § 2181, subsection I. Additionally, the Examiner notes that "input circuitry," “specifying unit,” “presentation control unit,” “evaluation unit,” and “selection unit” is not being modified by sufficiently definite structure, material, or acts for achieving the specified function; therefore, the claimed phrase meets Invocation Prong (C).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
In reviewing the original disclosure, the Examiner finds that the specification discloses “specifying unit,” “presentation control unit,” “evaluation unit,” “generation unit” and “selection unit” at paragraph [0066]. Particularly, the disclosure states “In Fig. 4, the server 12 includes a database 51, a specifying unit 52, a presentation control unit 53, an evaluation unit 54, and a selection unit 57.” However, it is unclear from the specification which structure and algorithm are performing the corresponding function for these elements, the AR generator and predicator.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 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.
The following claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
specifying unit that…specifies…an indicator element to server as an indicator of a feature of an ecosystem recited in claims 1 and 19;
presentation control unit that controls presentation of the indicator element recited in claim 2;
evaluation unit that…calculates an evaluation score for evaluating a state of the target ecosystem recited in claim 3;
an evaluation score predictor…calculates a predicated value recited in claim 12;
AR object generator that generates an AR object in claim 13; and
selection unit that selects …a component in the ecosystem information that belongs to an element group, among element groups classified according to properties of components, to which a predetermined component does not belong as recited in claim 15.
However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. It is unclear from the specification which structure and algorithm are performing the corresponding function.
Claims 4-11, 14 and 16-18 are rejected based on their dependency from independent claim 1.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 12 and 13 recite the limitation "the information processing device" in 1. There is insufficient antecedent basis for this limitation in the 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.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-18 are directed to a non-transitory computer-readable. Claim 19 is directed to a device and claim 20 is directed to a method. Therefore, these claims fall within the four statutory categories of invention.
For example, claim 1 recites an abstract idea of collecting data from multiple data sources, analyzing the data, and displaying the results. 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 include observations, evaluations, judgments, and opinions. The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). See MPEP § 2106.04(a)(2), subsection III.
The claim limitations reciting the abstract idea are grouped within the “method processes” grouping of abstract ideas as they relate to collecting and processing known information. More specifically, the following the bolded claim elements recite additional elements while the other claim elements recite the abstract idea. according to MPEP 2106.04(a).
A non-transitory computer readable medium containing program instructions for causing a computer to perform information processing, the information processing comprising:
a specifying unit that, analyzes ecosystem information of a plurality of ecosystems, specifies, from components of the ecosystem information, an indicator element to serve as an indicator of a feature of an ecosystem
wherein the indicator element is a subset of the components of the ecosystem.
Independent claims 19 and 20 recite similar language.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional element(s) of the claim(s) such as the specifying unit and indicator element are merely used as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of collecting and processing known information. Viewed as a whole, the use of specifying unit and indicator element as tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer or computer networks performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of the specifying unit and indicator element to perform the steps amounts to no more than using generic hardware or software to automate and/or implement the abstract idea of collecting and processing known information. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of collecting and processing known information. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
The dependent claims further describe the abstract idea such as a presentation control unit that controls presentation of the indicator element by transmitting the name of the indicator element to a terminal; and
an evaluation unit that, using the indicator elements of a target ecosystem to be evaluated, calculates an evaluation score for evaluating a state of the targe ecosystem.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 103
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 1-6, 9-11, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2023/0121145 to Ono.
As per claim 1, Ono discloses a specifying unit that, analyzes ecosystem information of a plurality of ecosystems, specifies, from components of the ecosystem information, an indicator element to serve as an indicator of a feature of an ecosystem (paragraphs [0053]-[0058] -information management system and ecosystem information DB)
wherein the indicator element is a subset of the components of the ecosystem (paragraph [0080] – the selected organism selected from the candidate selected organisms).
Also, functional recitation(s) using the word "for" or other functional language (e.g. “that”) have been considered, but does not patentable distinguish the claim from the prior art because they are regarded as intended use language. A recitation of the intended use of the claimed product must result in a structural difference between the claimed product and the prior art in order to patentably distinguish the claimed product from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claimed limitation. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) ("The manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself."); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See also MPEP §§ 2114 and 2115. Unless expressly noted otherwise by the Examiner, the claim interpretation principles in this paragraph apply to all examined claims currently pending.
As per claim 2, Ono discloses a presentation control unit that controls presentation of the indicator element by transmitting the name of the indicator element to a terminal (paragraph [0053] – display unit). Transmitting the name to terminal this is considered nonfunctional descriptive material that is not functionally involved in the system. The display unit of Ono would perform the same regardless of the data is being displayed. Hence, this descriptive material will not distinguish the claimed invention from the prior art in term of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983): In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
As per claim 3, Ono discloses an evaluation unit that, using the indicator elements of a target ecosystem to be evaluated, calculates an evaluation score for evaluating a state of the target ecosystem (paragraph [0054]- backend of the business server group).
As per claim 4, Ono discloses as the indicator element, the specifying unit specifies the component for which an evaluation score is calculated such that ecosystems having different states are distinguished from each other (Fig. 3B and paragraph [0060]).
As per claim 5, Ono discloses as the indicator element, the specifying unit specifies the component that serves as an indicator of a similarity with a specific ecosystem (Fig. 3B; paragraph [0060]).
As per claim 6, Ono discloses as the indicator element, the specifying unit specifies a component that serves as an indicator of a similarity with the specific ecosystem designated by a user or the specific ecosystem having a distribution with respect to a plant according to a power law (Fig. 3B; paragraph [0060]).
As per claim 9, Ono discloses as the evaluation score, the evaluation unit calculates a predicted value of the specific component calculated by a prediction formula that predicts the specific component using the indicator element (paragraph [0037]).
As per claim 10, Ono discloses the specific component is information pertaining to biodiversity or metabolites (claim 1 above and Fig. 6).
As per claim 11, Ono discloses as the evaluation score, the evaluation unit calculates a predicted value of a degree of conformity calculated by a prediction formula that, using the indicator element, predicts a value representing a distribution pertaining to a plant in an ecosystem following a power law (Figs. 3-7 and claim 7 above).
As per claim 15, Ono discloses a selection unit that selects, as an indicator element candidate, a component in the ecosystem information that belongs to an element group, among element groups classified according to properties of components, to which a predetermined component does not belong (paragraph [0010] and [0054]-computer) .
As per claim 16, Ono discloses the ecosystem information includes, as the component, some or all of: climate information, vegetation information, chemical information, physical information, and biological information of soil of the ecosystem, and chemical information, physical information, and biological information of plants (Fig. 3B). The claims recite the conditional /optional language “--or." Although the conditional/optional language has been considered, Applicants are reminded that optional or conditional elements do not narrow the claims because they can always be omitted. See MPEP §2111.04: "Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation."
As per claim 17, Ono discloses the ecosystem information includes, as the component, some or all of: a climate zone, amount of precipitation, and sunlight intensity of the ecosystem, a coverage rate of vegetation covering topsoil, and a percentage of a niche of the vegetation, pH, Electric Conductivity (EC), hardness, and exchangeable potassium content of soil, and soil microbial diversity, and a chloroplast content, a nitrate ion concentration, and a flavonoid expression level of an individual plant, a coverage rate of a plant species covering topsoil, and plant diversity (Fig. 3B). Although the conditional/optional language has been considered, Applicants are reminded that optional or conditional elements do not narrow the claims because they can always be omitted. See MPEP §2111.04: "Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation."
As per claim 18, Ono discloses the ecosystem information includes a qualitative variable component and a quantitative variable component (Fig. 3-7).
Claims 19 and 20 are rejected on the same rationale as claim 1.
Claims 7, 8, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ono as applied to claims 1 above, and further in view of U.S. Publication No. 2024/0346029 to Neumann.
As per claim 7, Ono discloses the specifying unit. Ono does not expressly disclose performing logistic regression analysis with L1 regularization, using a dummy variable indicating whether an ecosystem is the specific ecosystem as a response variable and the component of the ecosystem information of the plurality of ecosystems including the specific ecosystem as an explanatory variable, and specifies the component serving as the explanatory variable remaining in the L1 regularization as the indicator element. Neumann discloses this feature (paragraph [0098]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Neumann into system of Ono. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claim 8, Neuman discloses wherein using the indicator element of a target ecosystem to be evaluated, a result of computing a linear predictor obtained through the logistic regression analysis, or a posterior probability that the target ecosystem is the specific ecosystem, is calculated as an evaluation score for evaluating a state of the target ecosystem (paragraphs [0098] and [0112]). Also, the “wherein clause” has been considered; however, it merely expresses the intended results. See MPEP§ 2111.04. It is not a step that needs to be performed and does not patentable distinguish over the disclosure of the prior art
As per claim 12, Neuman discloses an evaluation score predictor that, using a trained model that takes vegetation information of an ecosystem as an input and outputs an evaluation score for evaluating the state of the ecosystem calculated using the indicator element of the ecosystem, calculates a predicted value for the evaluation score of an ecosystem having vegetation represented by predetermined vegetation information (paragraphs [0068] and [0117]).
As per claim 13, Neuman discloses Augmented Reality (AR) object genrator that generates an AR object representing an evaluation score for evaluating the state of the target ecosystem to be evaluated, calculated using the indicator element of the target ecosystem, or the component of the target ecosystem, the AR object being displayed as AR in a predetermined space containing the target ecosystem, and transmits the AR object to a terminal that performs AR display (paragraph [0086]; Fig. 3).
As per claim 14, Neuman discloses wherein the generation unit generates the AR object generator representing the indicator element of the target ecosystem (paragraph [0103]; Fig. 1).
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 JALATEE WORJLOH whose telephone number is (571)272-6714. The examiner can normally be reached Monday-Friday 6:00am-2:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Hayes can be reached at (571) 272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jalatee Worjloh/Primary Examiner, Art Unit 3697
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