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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,029,963. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application substantially claims same limitations as the patent with one exception. The patent `963 states “identifying the rectilinear boxes by using a color contrast between the rectilinear boxes of the physical scorecard and a background color of the physical scorecard”, whereas the current application claims “identifying the rectilinear boxes by using a contrast between the rectilinear boxes of the physical scorecard and a background of the physical scorecard”. However, it would have been obvious for one with ordinary skill in the art, at the time of the invention to modify the scoring system to allow for character extraction based on contrast between the rectilinear boxes instead of color to allow the system to identify user scores on any color score card regardless of color contrast.
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 21-40 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.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S.___(2014).
Claims 21-32 are directed to a computer implemented method; and claims 32-40 are directed to a system. As such, the claims are directed to statutory subject matter under Step 1 of the Alice flowchart; however, all the claims, as currently presented are directed to a judicial exception (i.e. an abstract idea), see claim 21, which states: “manually handwriting characters, including a plurality of individual hole scores of the round of golf, at least partially within rectilinear boxes of a physical scorecard; (b) capturing a photograph of the physical scorecard including the handwritten characters using a camera of a user device of a user; (c) accessing the photograph in an application of the user device using the golf scoring system; (d) identifying the rectilinear boxes by using a contrast between the rectilinear boxes of the physical scorecard and a background of the physical scorecard; (e) removing the rectilinear boxes without removing the handwritten characters; (f) after removing the rectilinear boxes, extracting at least the handwritten characters from the physical scorecard; (g) after extracting at least the handwritten characters, calculating a score of the round of golf using the extracted handwritten characters on the application using the golf scoring system; and (h) after calculating the score, transmitting the score to the user using the application.”
Addressing the claims under Step 2A, the claims are held to be directed to concepts similar to those found to be abstract, either as outlined in the 2014 lEG/July 2015 Update to Subject matter eligibility, or, as compared to certain decisions rendered by the courts. The claims describe the steps of converting a picture of a physical document into a digital image. The addition of the limitations that narrow the idea (such as the steps of acquisition) merely aide in the description of the abstract idea and therefore do not render the claims any less abstract.
The claims at issue are directed to mathematical algorithms (i.e. calculating a score of a round of golf). In particular, the courts have found mathematical algorithms to be abstract ideas (i.e. a mathematical procedure for converting one form of numerical representation to another in Benson, or an algorithm for calculation parameters indication an abnormal condition in Grams). The courts have found that analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. (See Electric Power Group, LLC v. Alstom S.A., (Fed. Cir. 2015) citing e.g., TLI Commc'ns, 823 F.3d at 613; Digitech, 758 F.3d at 1351; Bancorp Servs., L.L.C. v.Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRFTech., Inc. v. Int'ITrade Comm'n, 601 F.3d 1319,1333 (Fed. Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook, 437 U.S. 584, 589-90 (1978); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
Finally, the concept of identifying, converting and transmitting information to a user further represents ‘an idea itself’ (see July 2015 Update: Section III (C)) inasmuch as it is related to processes of identifying, comparing, processing, and presenting data. Several precedential cases have found concepts relating to processes of identifying, comparing, processing, and presenting data to be mere ideas in themselves. One example includes selecting/identifying displayed data, manipulating the data through encoding and decoding processes, and generating new outputs/displays (Recognicorp, LLC, v. Nintendo Co., Ltd., Nintendo of America, Inc., No. 2:12-cv-01873-RAJ (2017)). The courts have addressed other computerized processes for of identifying, comparing, processing, and presenting data including data collecting and comparing known information (Classen Immunotherapies Inc. v. Biogen IDEC 659 F.3d 1057(Fed. Cir. 2011)), collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group, LLC v. Alstom 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016))] extracting, organizing, storing and transmitting data (Content Extraction and Transmission LLC v. Wells Fargo Bank, National Ass'n. 776 F.3d 1343 (Fed. Cir. 2014)) and obtaining and comparing intangible data (Cybersource Corp v. Retail Decisions, Inc. 654 F.3d 1366, 99 U.S.P.Q. 2d 1690 (Fed. Cir. 2011)) (see July 2015 Update: Section III (C)).
Therefore, while it is understood that the claims in the current application are not verbatim recitations of the guidelines or case law, the detailed analysis provided above shows how the current claim limitations at issue closely parallel the concepts provided by the guidelines and the precedential case law, and are therefore considered to be directed to an abstract idea (Step 2A: YES).
Step 2A, Prong Two: Claims 21-40 does not contain additional elements that integrate the abstract idea exception into a practical application because the additional elements are mere instructions to apply the abstract idea exception; MPEP §2106.05(f). (2) generally link the judicial exception to a particular technological environment; MPEP § 2106.05(h); (3) are insignificant extra solution activity; MPEP § 2106.05(g). The additional elements are limited to generic computer components. The additional elements are: a camera for capture image, a network access layer [communication]; interface system [scoring system software], and a message data packet.
Under Step 2B, the examiner acknowledges the additional limitations (i.e. accessing the photograph in an application; identifying the rectilinear boxes by using a contrast between the rectilinear boxes of the physical scorecard and a background of the physical scorecard; removing the rectilinear boxes, extracting at least the handwritten characters from the physical scorecard). These limitations however are used for data gathering and presentation and as such merely represents insignificant pre and post solution activity. Even assuming arguendo that the claims are not insignificant pre and post solution activities or mental activities, each of the functions performed by the machinery are well-understood, routine, and conventional (i.e., receiving and processing data, and receiving or transmitting data over a network, e.g., using the Internet to gather data (see July 2015 Update: Section IV) and see: The Federal Circuit evaluated claims relating to the receipt of certain data (from a scanner), recognizing data fields from that data, and then storing that data).
Additionally, these are merely generic recitations of computers and networks performing basic functions and the claims amount to nothing more than implementing the abstract idea on a computer. The limitations taken as a whole amount to nothing more than implementing the concept of converting a picture of a physical document into a digital image with routine, conventional activity specified at a high level of generality in a particular technological environment. When viewed either as individual limitations or as an ordered combination, the claims as a whole do not add significantly more to the abstract idea of converting a physical document into a digital image.
Ultimately, the claimed system function solely as an obvious mechanism to achieve the claimed result, failing to impart a meaningful limit on the claim scope [see SiRF Tech., Inc. v. ITC (Fed. Cir. 2010)]. The claims at issue here do not rise to overriding the routine and conventional sequence of events ordinarily performed by the computer, nor do they set forth with any specificity the interactions of the machine itself. Conversely, the claims are only specific in how the computer is used to facilitate the abstract idea itself using routine and conventional operations of the generic machinery, and are silent as to any detail or property that would transform the otherwise generic machinery into a specialized or special purpose machine. Even when considered as an ordered combination, the computer components of applicant's method add nothing that is not already present when they are considered individually. Viewed as a whole, the claims simply convey the idea itself facilitated by generic computing components.
Thus, under Step 2B, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The claims provide minimal technical structure or components for further consideration either individually or as ordered combinations with the independent claims. As such, additional recited limitations in the dependent claims only refine the identified abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
Examiner’s Note
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Moriarty (6,062,991) refers to golf players calculation, communication and record keeping of golf game scores. In addition communication of information pertaining to weather, flow of play, course topology and layout, advertising, service needs, emergency medical and security, rules of play and personal messages are provided to the players throughout the golf course by the apparatus. The apparatus includes a group of mechanisms distributed throughout the golf course area of play for the purpose of transferring this information between the players and the apparatus interactively and in real time. In the preferred embodiment the mechanisms distributed around the course are statically located, use photoelectric means for their electrical power needs and transfer data by radio communication means to and from a computing mechanism. The apparatus includes a computing mechanism that performs calculation steps needed to determine the golf game scores and also manages the transfer and storage of the various communications. In addition it extracts and saves information pertaining to the use of the course and its services for course management to use in accounting, planning and course improvement tasks. The computing mechanism can include programs to detect bottlenecks in the flow of play and alert course managers of the bottlenecks. In one embodiment, "timestamp" data which includes time, date, and/or location data is appended to at least some messages passed between the golfer interface and the manager interface. Additional programs that determine corrective modifications to the flow of play can be included in the computing mechanism.
King (8,064,700) refers to a device for capturing rendered tex. The device incorporates one or more visual sensors that receive visual information as a part of capturing rendered text. The visual sensors are collectively capable of capturing both text that is permanently printed on a page, and text that is displayed transitorily on a dynamic device. The device further incorporates a visual information disposition subsystem for disposing of visual information received by the visual sensors. The device further incorporates a package that bears the visual sensors and the visual information disposition subsystem, and is suitable to be held in a human hand.
Leitz (20130234842) refers to automated scoring of a golf match for a group of players includes a controller with a memory in communication with a processor. The memory includes program instructions for execution by the processor to load player data including handicap information into a server, load course data into the server, identify team members, automatically assign team pairing based on handicap information of each team member and generate a scorecard for the golf match, the scorecard including the handicap information and team pairing information.
The referenced citations made in the rejection(s) above are intended to exemplify areas in the prior art document(s) in which the examiner believed are the most relevant to the claimed subject matter. However, it is incumbent upon the applicant to analyze the prior art document(s) in its/their entirety since other areas of the document(s) may be relied upon at a later time to substantiate examiner's rationale of record. A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). However, "the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed ...." In re Fulton, 391F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIT PANDYA whose telephone number is (571)272-2823. The examiner can normally be reached M-F 9:30-6:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUNIT PANDYA/ Primary Examiner, Art Unit 3715