Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Claims 1 and 7-15 have been examined in this application.
The filling date of this application number recited above is 16-July-2024. Domestic Benefit/National Stage priority has been claimed for Continuation of PCT/JP23/00596 and Foreign priority has been claimed for JP-2022-005561 in the Application Data Sheet, thus the examination will be undertaken in consideration of 12-January-2023 and 18-January-2022, as the priority date, for applicable claims.
The information disclosure statement (IDS) submitted on 17-July-2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 and 7-15 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. The Claims are directed to an abstract idea, Mental Process and/or Certain Methods of Organizing Human Activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.
As per Claims 1, 14, and 15, the claims recite “An information processing [entity] comprising:
a first storage means that stores first trust information that is information related to a fact that a stock option is entrusted from a trustor to a first trustee;
an inquiry means that inquires whether to designate a beneficiary for all or some of the stock options before a certain period of time prior to occurrence of a beneficiary designation event of a trust indicated by the first trust information;
a response reception means that receives a response to an inquiry by the inquiry means;
a second storage means that stores second trust information that is information related to a fact that, in a case where the response received by the response reception means does not designate all the beneficiaries, the stock option for which no beneficiary is designated among the stock options related to the first trust information is entrusted from the trustor to the second trustee;
a generation means that generates a point granting reference table and a correction factor table indicating a reference for granting a point to a potential beneficiary;
a potential beneficiary registration means that registers the potential beneficiary;
a point management means that manages points of the potential beneficiaries on the basis of the point granting reference table and the correction factor table; and
a determination means that determines the number of stock options to be granted to the potential beneficiary according to the point of the potential beneficiary managed by the point management means in a case where the response received by the response reception means designates a beneficiary.”
The limitation of the claims recited above, considering the claims without the additional elements (e.g. device, non-transitory computer-readable storage medium, program, computer, etc.), under its broadest reasonable interpretation (BRI), recites Mental Processes and/or Certain Methods of Organizing Human Activities. The method recited above is a process of receiving data and performing data analysis (e.g. store data, collect data, compare data, generate data table, register data, etc.).
All these steps recited by the claims can be practically performed in the human mind, or by a human using a pen and paper. See MPEP 2106.04(III)(A):
“In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include:
• a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
• claims to "comparing BRCA sequences and determining the existence of alterations," where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 763, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014);
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011); and
• a claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind, In re Brown, 645 Fed. App'x 1014, 1016-17 (Fed. Cir. 2016) (non-precedential).”
Although the claims may recite using a computing system to perform the steps of data analysis, performing a mental process on a generic computer still recite a mental process. See MPEP 2106.04(III)(C):
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").”
Additionally, the claims recite the process of data analysis associated with financial information (e.g. stock options, trust, beneficiary designation, etc.) to perform transactions (e.g. determine number of stock options, grant point to potential beneficiary, etc.), wherein these steps are fundamental economic principles or practices and/or commercial or legal interactions, which are under certain methods of organizing human activities.
Therefore, the claims recite an abstract idea, mental process and/or certain methods of organizing human activities.
This judicial exception is not integrated into practical application. In particular, the claims recite an additional element of “device”, “non-transitory computer-readable storage medium”, “program”, and “computer” to perform the method recited above by instructing the abstract idea to be performed “by” these generic computer components. These general computer components are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. These elements are generic, off-the-shelf components available to the public, and does not require any specialized hardware or equipment to perform the claimed method, and are merely applied to perform its basic functionalities, such as: receive data, determine data, select data, compare data, store data, and generate data, as disclosed by Specification:
[0022] “The information processing device 100 is a computer. The information processing device 100 may be any computer. The information processing device 100 may be a device generally referred to as a personal computer or a device referred to as a supercomputer”
Mere instructions to implement the abstract idea on a generic computer system, or merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) is not indicative of integration into a practical application; see MPEP 2106.05(f). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, determine, generate, or store data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., mental process or certain methods of organizing human activities) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, the additional element of using a computer based system is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. The claims lack sufficient technical details to provide how these limitations may provide technological steps or technical details on how it is particularly implemented on a computer to improve its system or any of its underlying hardware or components (e.g. how it is performed on the system, how it could improve the system itself, how it could manipulate the system to function in a specific way other than its generic functionality, and/or how it could improve any of the underlying technology), but merely applies the generic computer system to perform its generic functionalities. Merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) is not indicative of an inventive concept (aka “significantly more”). In view of the Specification, the judicial exception is not applied with or used by a particular machine. As held in Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 199 (1978) and Bancorp Services v. Sun Life, 687 F.3d 1266, 1276, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012), “the routine use of a computer to perform calculations cannot turn an otherwise ineligible mathematical formula or law of nature into patentable subject matter.” The claims are not patent eligible.
Regarding dependent claims, they are still directed to an abstract idea without significantly more.
Claim 7 recites “further comprising: a delivery guideline creating means that creates a delivery guideline on the basis of the point granting reference table and the correction factor table.” The claim provides further details regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claim 8 recites “wherein at the time of designation of the beneficiary, after designating a provisional person to be granted, the provisional person to be granted is confirmed as the beneficiary when a confirmation condition is satisfied.” The claim provides further details regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claim 9 recites “further comprising: a delivery guideline creating means that creates a delivery guideline on the basis of the point granting reference table and the correction factor table.” The claim provides further details regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claim 10 recites “further comprising: a reading means that reads a book price of the stock option related to the first trust information included in the first trust information stored in the first storage means, wherein the second storage means stores the book price of the stock option related to the second trust information included in the second trust information by taking over the book price read by the reading means.” The claim provides further details regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claim 11 recites “further comprising: a delivery guideline creating means that creates a delivery guideline on the basis of the point granting reference table and the correction factor table.” The claim provides further details regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claim 12 recites “wherein at the time of designation of the beneficiary, after designating a provisional person to be granted, the provisional person to be granted is confirmed as the beneficiary when a confirmation condition is satisfied.” The claim provides further details regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
Claim 13 recites “further comprising: a delivery guideline creating means that creates a delivery guideline on the basis of the point granting reference table and the correction factor table.” The claim provides further details regarding the data, which is still part of the abstract idea, and mere “apply it” is not indicative of integration into a practical application.
These additional steps of each claims fail to remedy the deficiencies of their parent claim above because they are merely further limiting the rules used to conduct the previously recited abstract idea, and are therefore rejected for at least the same rationale as applied to their parent claim above.
Claims 7-13, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are sufficient to integrate into a practical application and do not amount to significantly more than the judicial exception. Similarly to the independent claim, each claim recites using a generic computer system to perform the abstract idea as mentioned above. Mere “apply it” is not “significantly more”. Therefore, prong 2 and step 2B analysis are similar to above and these claims are not eligible.
Therefore, Claims 1 and 7-15 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hagan (US 20050149425 A1) discloses [Abstract] “The investment account structure provides increasing income financial products wherein each subscriber invests in a financial contractual product/program and designates beneficiaries. The beneficiary is assigned, along with other who are demographically similar, to a contract group”;
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY H JUNG whose telephone number is (571)270-5018. The examiner can normally be reached Mon - Fri 9:30 - 5:30.
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/HENRY H JUNG/ Examiner, Art Unit 3695
/CHRISTINE M Tran/ Supervisory Patent Examiner, Art Unit 3695
