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 .
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 05/20/2024. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112(b)
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 7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 7, claim limitation “A display device that displays a user operation area for accepting input of a weight value for each of a plurality of evaluation indices for the system configuration generated by system design” renders the claim indefinite, because it is unclear what specific component(s) and/or structure of the display device is(are) configured to receive inputs of the weight value for the plurality of evaluation indices, and what claimed features Applicant points out.
Claim 8 is also rejected by virtue of each dependency on claim 7.
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.
The current 35 USC 101 analysis is based on the current guidance (Federal Register vol. 79, No. 241. pp. 74618-74633). The analysis follows several steps. Step 1 determines whether the claim belongs to a valid statutory class. Step 2A prong 1 identifies whether an abstract idea is claimed. Step 2A prong 2 determines whether any abstract idea is integrated into a practical application. If the abstract idea is integrated into a practical application the claim is patent eligible under 35 USC 101. Last, step 2B determines whether the claims contain something significantly more than the abstract idea. In most cases the existence of a practical application predicates the existence of an additional element that is significantly more.
The 35 USC 101 analysis between each element of claims and its combination is presented in the table below
Claim number and elements
Judicial exception (Step 2A Prong one)
Practical application (Step 2A Prong two)/ Significantly more (Step 2B)
Claim 1
Step2A Prong one: Yes
Step 2A Prong two: No / Step 2B: No
A system design device comprising:
at least one memory configured to store instructions; and
at least one processor configured to execute the instructions to:
Step 1: Yes, statutory class
“memory” and “processor” are high level of generalities recited to merely collect routine data used to perform abstract idea.
estimate a probability distribution of values of evaluation indices of an embodied system configuration in cases where system configurations that are candidates to be embodied have been embodied in system design involving embodiment of system configurations;
Abstract idea,
math or mental process
“estimate a probability distribution ~ …. ascertaining a current riding state …” is a math or mental process inferred from the routine data (values of evaluation indices of the system configurations).
calculate expected values of the evaluation indices on the basis of the probability distribution; and
select one of the system configurations that is a candidate to be embodied on the basis of the expected values of the evaluation indices, and embodies the selected system configuration.
Abstract idea,
math or mental process
“calculate expected values ~ … and select one of the system configurations …” is a math or mental process calculated or inferred from the previous math or mental processes, which is perform by using mathematical formula (paragraphs 0091, 0154)
“select one …” is a mental process to select one from the math results.
Claims 1-6 and 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-6 and 9 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 as addressed below and presented in the above table.
Step 2A: Prong One
Regarding Claim 1, the limitations recited in Claim 1, as drafted, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mathematical calculations and/or the mind, as presented in the above table. Nothing in the claim elements precludes the step from practically being performed in the mind and/or the mathematical calculations. For example, the limitations of “estimate a probability distribution of values of evaluation indices of an embodied system configuration in cases where system configurations that are candidates to be embodied have been embodied in system design involving embodiment of system configurations” and “calculate expected values of the evaluation indices on the basis of the probability distribution” in the context of this claim may encompass manually calculating or inferring the expected values of the evaluation indices by calculating/estimating the probability distribution of values of evaluation indices of the embodied system configuration, which are performed using mathematical formula (paragraphs 0091, 0154) for calculating the probability (see paragraphs 0091-0120 of the publication No. US 20250013550 A1 of the instant application). The limitation of “select one of the system configurations that is a candidate to be embodied on the basis of the expected values of the evaluation indices, and embodies the selected system configuration” in the context of this claim may encompass manually calculating or selecting one of the system configurations by organizing human activity to look at the mathematically calculated results and decide a system configuration to be selected.
Step 2A: Prong Two
This judicial exception is abstract ideal itself and not integrated into a practical application. In particular, the specification details use of a processor of a generic computer to perform the processes using the processor to perform “estimate a probability distribution of values of evaluation indices of an embodied system configuration in cases where system configurations that are candidates to be embodied have been embodied in system design involving embodiment of system configurations” and “calculate expected values of the evaluation indices on the basis of the probability distribution; and select one of the system configurations that is a candidate to be embodied on the basis of the expected values of the evaluation indices, and embodies the selected system configuration”. The additional elements of the “memory” and the “processor” are high level of generalities recited to merely perform generic computer functions of a generic computer component such as storing and executing the instructions to thereby perform mathematical calculations, without descriptions of its specific structure/features to perform the claimed features related to calculating the expected values and selecting one of the system configurations. The limitations of “store instructions … to execute the instructions” are insignificant extra-solution activities necessary to perform mathematical calculations. There is no showing of integration into a practical application such as an improvement to the functioning of a computer, or to any other technology or technical field, or use of a particular machine.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The limitations of “at least one memory configured to store instructions; and at least one processor configured to execute the instructions” are insignificant extra-solution activities necessary to perform mathematical calculations. See MPEP 2106.05(g). As discussed above, with respect to integration of the abstract idea into a practical application, using a generic computer component (i.e., device) to perform the processes of “estimate a probability distribution of values of evaluation indices of an embodied system configuration in cases where system configurations that are candidates to be embodied have been embodied in system design involving embodiment of system configurations” and “calculate expected values of the evaluation indices on the basis of the probability distribution; and select one of the system configurations that is a candidate to be embodied on the basis of the expected values of the evaluation indices, and embodies the selected system configuration” amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept cannot provide statutory eligibility. Claim 1 is not patent eligible.
Regarding Claims 2-6 and 9, the limitations are further directed to an abstract idea.
The limitations of “wherein the expected value is calculated for each of the multiple evaluation indices for one system configuration, and the expected values are weighted and summed for each of the multiple evaluation indices using the weight values set for each evaluation index, and one of the system configurations that is a candidate to be embodied is selected based on the obtained total value” in claim 2, “to execute the instructions to accept the setting of the weight value by the user of the system design device” in claim 3, “to calculate the probability of a constraint condition set in regards to the evaluation index holding true based on the probability distribution, wherein one of the system configurations which is a candidate to be embodied is selected based on the expected value of the evaluation index and the probability that the constraint condition holds true” in claim 4, “to estimate the probability that a qualitative condition in regards to the embodied system configuration holds true in a case where the system configuration which is a candidate to be embodied is embodied, wherein one of the system configurations which is a candidate to be embodied is selected based on the expected value of the evaluation index, the probability that the constraint condition holds true, and the smallest value among the probabilities that the qualitative condition holds true” in claim 5, and “to execute the instructions to determine whether or not there is an inconsistency in the constraint conditions set for each evaluation index with respect to the system configuration that is a candidate to be embodied, wherein the estimation of the probability distribution is suppressed in a case where it is determined that there is an inconsistency in the constraint conditions” in claim 6 may encompass mathematical processes related to manually calculating or inferring the expected value, the probability of a constraint condition set and whether or not there is an inconsistency in the constraint conditions (see paragraphs 0091-0120 of the publication No. US 20250013550 A1 of the instant application). (MPEP 2106.04(a)(2)). For the reasons described above with respect to Claim 1, the judicial exceptions are not meaningfully integrated into a practical application, or amount to significantly more than the abstract idea
Regarding Claim 9, it is a system type claim having similar limitations as of claim 1 above. Therefore, they are each rejected under the same rationale as of claim 1 above.
Claim Rejections - 35 USC § 102
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.
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.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by SATO HIDEAKI et al. (JP2010283079A, hereinafter referred to as “SATO” cited in IDS dated 05/20/2024).
SATO teaches a display device (Fig. 12, a input screen) that displays a user operation area for accepting input of a weight value for each of a plurality of evaluation indices for the system configuration generated by system design (HIRAI teaches a input screen configured to receive evaluation weight information, “the request information accepting unit 10 accepts information on the function for realizing the service process from the service provider using, for example, an input screen shown in FIG. Further, the request information receiving unit 10 receives a request, cost constraints, and evaluation weight information from the service provider using, for example, a screen shown in FIG” in page 7 of English machine translation).
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.
Claim 8 is under 35 U.S.C. 103 as being unpatentable over SATO in view of Kimura et al. (WO 2016136195 A1, hereinafter referred to as “Kimura”).
SATO teaches displays an icon (Fig. 12, an input screen) for accepting a user operation to indicate whether or not to use at least one of a plurality of evaluation indices for a system configuration generated by system design to evaluate the system configuration (HIRAI teaches a input screen configured to receive evaluation weight information, “the request information accepting unit 10 accepts information on the function for realizing the service process from the service provider using, for example, an input screen shown in FIG. Further, the request information receiving unit 10 receives a request, cost constraints, and evaluation weight information from the service provider using, for example, a screen shown in FIG” in page 7 of English machine translation; “… generates system configuration candidate information 151, for example, a screen Etc. to present to the service provider (S204).” in page 9 of English machine translation).
SATO teaches an input screen, but fails to explicitly disclose an icon for receiving an input in the input screen. However, Kimura teaches displays an icon (“the display mode for displaying a list of evaluation targets stored in the target storage unit 103 may be a table format or an icon format represented by an icon for each evaluation target” in page 9 of English machine translation).
SATO and Kimura are both considered to be analogous to the claimed invention because they are in the same field of a displaying device for receiving inputs and visualizing the flow of things. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified SATO to incorporate the teachings of Kimura by providing an icon on an input screen to receive evaluation weight information, taught by Kimura at least in page 9 of English machine translation.
Citation of Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
HIRAI et al. (JP 2010283079 A) teaches a plurality of evaluation images are input from an image processing section to an evaluation image input section (step 901), where the input evaluation images are displayed on a display 115, and a user rearranges the images with a user's evaluation standard while referring to the display, and defines an evaluation standard (step 902), evaluated values are calculated for the input evaluation images with a plurality of evaluation indexes (step 903), the evaluated values based upon the evaluation indexes are compared with the evaluation standard that the user defines to calculate correlation coefficients (step 904), and an evaluation index having the largest absolute value of the correlation coefficient is automatically selected as the closest evaluation standard for the evaluation standard that the user defines (step 905), and the images are rearranged in the order of the correlation coefficients, and listed and displayed on the display in the order of evaluated values (step 906).
Conclusion
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/BYUNG RO LEE/Examiner, Art Unit 2858
/LEE E RODAK/Supervisory Patent Examiner, Art Unit 2858
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