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 .
DETAILED ACTION
Status of the Claims
The following office action in response to the application filed on 8/7/2024.
Claims 1-14 are previously presented.
Therefore, claims 1-14 are pending and addressed below.
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 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 pre-AIA the applicant regards as the invention.
Claims 1 and 8 recites the term “…provision resource information for managing a resource that is externally provided, and the processor refers to the provision resource information to determine whether the resource required for executing a countermeasure utilizing the resource in the designated facility can be ensured”. What “resource” does the claim refers to? What is the “provision resource information” that for “managing a resource”? What is “the resource” that required for executing a countermeasure utilizing the resource in the designated facility can be ensured? Does the resource refer to a cost? This phrase is so vague and unclear that a person having ordinary skill in the art (“PHOSITA”) could not reasonably ascertain its metes and bounds with reasonable certainty.
Dependent claims 2-7 and 9-14 are rejected under section 112(b) as indefinite for the same reasons as are applicable to claims 1 and 8.
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 therefore, subject to the conditions and requirements of this title.
Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-14 are directed to a computer system, a method and thus a statutory category of invention (Step 1: YES).
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. The claim recites the limitations of “…cost information for managing a first cost that is an amount of opportunity loss during occurrence of a disaster per facility for which a countermeasure is to be executed and a second cost required for a countermeasure of self-investment, and provision resource information for managing a resource that is externally provided, refers to the provision resource information to determine whether the resource required for executing a countermeasure utilizing the resource in the designated facility can be ensured, and selects a countermeasure to be executed on the designated facility based on the first cost, the second cost, and a result of the determination”. These recited limitations, as drafted, recite a process that, under its broadest reasonable interpretation, covers performance of fundamental economic principles or practices (including insurance, i.e. determine a countermeasure in consideration of a cost and a resource information relating to disaster recovery of a facility) but for the recitation of generic computer components. If a claim limitation, under its broadest reasonable interpretation, covers concepts of fundamental economic principles or practices but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The additional limitations (besides those that recite the abstract idea) include the presence in the computer system claim of a processor, a storage device and a network interface that are all recited at a high level of generality to perform the functions of “stores…cost information for managing a first cost… and a second cost…; refers… to the provision resource information to determine… whether the resource required for executing… a countermeasure utilizing the resource…, and selects… a countermeasure to be executed on the designated facility…”, such that it amounts no more than mere instructions to apply the exception using the generic computer components. Accordingly, the additional elements do not integrate the abstract idea into a particular application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception or amount to an inventive concept. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations of the processor, the storage device and the network interface that are all recited at a high level of generality to perform the functions of “stores…cost information for managing a first cost… and a second cost…; refers… to the provision resource information to determine… whether the resource required for executing… a countermeasure utilizing the resource…, and selects… a countermeasure to be executed on the designated facility…”, above amounts to mere instructions to apply the exception using the generic computer components. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Thus, the claim is not patent eligible.
Independent claim 8 is rejected based on the reasoning applicable to claim 1. Thus, the claim is not patent-eligible.
Dependent claims 2-7 and 9-14 are dependent on claims 1 and 8. Therefore, claims 2-7 and 9-14 are directed to the same abstract idea of claims 1 and 8. Claims 2-7 and 9-14 further recite the limitations that merely refer back to further details of the abstract idea. In addition, the additional limitations (besides those that recite the abstract idea) of the processor and the computer included in the dependent claims 2-7 and 9-14 that are all recited at a high level of generality to perform the functions of “…determines… that the resource required for executing the countermeasure utilizing the resource can be ensured; makes… the countermeasure utilizing the resource…, and selects… the countermeasure utilizing the resource as the countermeasure to be executed on the designated facility, …and selects …the countermeasure of the self- investment as the countermeasure to be executed on the designated facility” (claims 2 and 9); “calculates … an upper limit value of a cost of the countermeasure utilizing the resource…, and makes… the countermeasure utilizing the resource by executing a first matching process of selecting the available resource based on the upper limit value” (claims 3 and 10); “calculates …the upper limit value by multiplying a coefficient acquired from a profit of an operator of the facility by a smaller cost among the first cost and the second cost” (claims 4 and 11); “…calculates …power required for disaster recovery in the designated facility, and makes… the countermeasure of the self-investment based on the calculated power” (claims 5 and 12); “receives… a request to provide a resource during occurrence of a disaster…, receives…whether the resource is available from a provider…, executes… a second matching process of selecting the resource to be actually provided to the facility …, and makes …a plan for providing the resource selected by the second matching process” (claims 6 and 13); “displays… a screen on which the first cost, the second cost, and the selected countermeasure…” (claims 7 and 14), such that it amounts no more than mere instructions to apply the exception using the generic computer components. 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 dependent claims 2-7 and 9-14 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception or amount to an inventive concept. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to nothing more than an instruction to “apply it” with the judicial exception. In addition, the additional limitations (besides those that recite the abstract idea) of the processor and the computer included in the dependent claims 2-7 and 9-14 that are all recited at a high level of generality to perform the functions of “…determines… that the resource required for executing the countermeasure utilizing the resource can be ensured; makes… the countermeasure utilizing the resource…, and selects… the countermeasure utilizing the resource as the countermeasure to be executed on the designated facility, …and selects …the countermeasure of the self- investment as the countermeasure to be executed on the designated facility” (claims 2 and 9); “calculates … an upper limit value of a cost of the countermeasure utilizing the resource…, and makes… the countermeasure utilizing the resource by executing a first matching process of selecting the available resource based on the upper limit value” (claims 3 and 10); “calculates …the upper limit value by multiplying a coefficient acquired from a profit of an operator of the facility by a smaller cost among the first cost and the second cost” (claims 4 and 11); “…calculates …power required for disaster recovery in the designated facility, and makes… the countermeasure of the self-investment based on the calculated power” (claims 5 and 12); “receives… a request to provide a resource during occurrence of a disaster…, receives…whether the resource is available from a provider…, executes… a second matching process of selecting the resource to be actually provided to the facility …, and makes …a plan for providing the resource selected by the second matching process” (claims 6 and 13); “displays… a screen on which the first cost, the second cost, and the selected countermeasure…” (claims 7 and 14), above amounts to mere instructions to apply the exception using the generic computer components. When viewing the additional elements either individually or as an ordered combination, the claim as a whole does not amount to significantly more than the judicial exception because the claim does not include improvements to another technology or technical field, improvements to the function of the computer itself, and does not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. In effect, the additional limitations add the words “apply it” (or an equivalent) to the judicial exception, or mere instructions to implement an abstract idea on a computer. Mere instructions to apply an exception using the generic computer component cannot provide an inventive concept. Thus, when considering the combination of elements and the claimed as a whole, the dependent claims 2-7 and 9-14 are not patent eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tien C. Nguyen whose telephone number is 571-270-5108. The examiner can normally be reached on Monday-Thursday (6am-2pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-270-6108.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TIEN C NGUYEN/Primary Examiner, Art Unit 3694
Prosecution Insights