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 .
Response to Arguments
Applicant's arguments and amendments, filed 2/25/26, regarding the rejections of the claims under 35 U.S.C. 101 and under 35 U.S.C. 102(a)(1) have been fully considered but they are not persuasive.
Regarding 35 U.S.C. 101, Applicant argued:
As such, the features recited in the claims of this application are directed to improving computer functionality or improving other technologies or technical fields. Therefore, Applicant maintains that under Step 2A Prong Two of the subject matter eligibility analysis, the claims integrate any judicial exception on which they might touch into a practical application and are therefore patent eligible under 35 U.S.C. 101. Withdrawal of the rejection of Claims 1-8 under 35 U.S.C. 101 is respectfully requested.
The Examiner respectfully disagrees. The claims recite limitations that can be performed by the human mind and/or on paper and are grouped within the Mathematical Concepts and is similar to the concept of (mathematical relationships OR mathematical formulas or equations OR mathematical calculations). 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 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional element(s) of the claim(s) such as, wherein: the service use requirement includes a name of the service, a purpose for which the user uses the service, and an environment when the user uses the service, and the environment when the service is used includes a type of a communication terminal device used by the user when the service is used and a type of a communication line used by the user when the service is used, merely use(s) a computer as a tool to perform an abstract idea and/or generally link(s) the use of a judicial exception to a particular technological environment.
The use of a processor/computer as a tool 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 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)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), 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. Therefore the rejection is maintained as below.
Regarding 35 U.S.C. 102(a)(1), Applicant argued:
However, Benedetti does not disclose the features such as "a name of the service," "a purpose for which the user uses the service," and "a type of a communication terminal device used by the user when the service is used and a type of a communication line used by the user when the service is used." For example, paragraph [0060] of Benedetti describes "users of the same department, having the same role or being linked to the user via a social network (e.g., LinkedIn®, Twitter®, Facebook®, etc.)". This is neither "a type of a communication terminal device used by the user when the service is used" or "a type of a communication line used by the user when the service is used". Accordingly, Benedetti does not disclose or suggest the amended features of Claim 1, and amended Claim 1 is believed to be in condition for allowance together with any claim depending therefrom.
The Examiner respectfully disagrees and submits that Benedetti does indeed disclose these amended features. In paragraphs [0043 and 0058], Benedetti states:
[0043] A service catalog, in particular a service catalog provided via a cloud environment, may be implemented in form of a software distribution catalog such as an app store providing a digital distribution platform for computer software, often for mobile applications. Apps provide a specific set of functions not including the running of a computer system itself. Users may browse through different app categories, view information about each app and acquire apps via the app store. Selected apps may be offered for automatic download, after which the apps are installed on a user terminal device (e.g., a mobile device). (Emphasis added).
[0058] Embodiments may have the beneficial effect that a great variety of different types of information may be taken into account in order to estimate a future user satisfaction as accurately as possible. User state information may for example comprise the identity of the user (e.g., the user's name, age, gender). Furthermore, the user state information may comprise information regarding the user's role; i.e., the role for which the user intends to use the service, such as the user's role in an enterprise or in any other kind of community private and/or public. Furthermore, the user state information may comprise information regarding whether the user is married and/or whether the user has children. User interest information may comprise information about the user's interests. This information may for example comprise information about most recent topics followed by the user (e.g., in social communities, in the internet, and/or via newsletters). User preference information may comprise information about the user's preferences, such as review and feedback by the user regarding other topics and/or services from which conclusions may be drawn in view of the service requested. Furthermore, a user preference information may comprise information about configurations and/or services chosen by the user previously. User configuration information may refer to the user environment and the information technology (IT) infrastructure used by he user. For example, the user location may be taken into account. In particular, IT aspects of the location where the services are going to be provided and/or consumed may be considered (e.g., a slow or fast network, specific security requirements such as Virtual Private Network (VPN) or no available internet access etc.). Furthermore, the proximity of infrastructure elements that may improve the effectiveness of a requested service may be taken into account (e.g., a storage service for a local provider, possible support from local developers, etc.). Furthermore, assets available for the user as well as assets required by the requested service may be taken into account. Assets may be physical as well as digital assets, such as e.g. hardware, firmware, and software assets. The available infrastructure may be decomposed into assets, and events of a knowledge base (e.g., an information technology infrastructure library (ITIL) or a configuration management database (CMDB)) may be used to evaluate particular aspects of the service, such as e.g. changes, incidents, and/or problems related to the involved assets, which may help to establish a likelihood for problems occurring, when using the available infrastructure for implementing the service. Furthermore, user defined configurations may be compared with other configurations for the same service. Configuration similarities may be evaluated and matches may be found with configuration-related positive and/or negative events, in order to understand the possible level of satisfaction for the configuration chosen by the user. (Emphasis added).
As shown herein, Benedetti clearly discloses "a name of the service," "a purpose for which the user uses the service," and "a type of a communication terminal device used by the user when the service is used and a type of a communication line used by the user when the service is used" (“Apps provide a specific set of functions not including the running of a computer system itself. Users may browse through different app categories, view information about each app and acquire apps via the app store… In particular, IT aspects of the location where the services are going to be provided and/or consumed may be considered (e.g., a slow or fast network, specific security requirements such as Virtual Private Network (VPN) or no available internet access etc.) … Furthermore, assets available for the user as well as assets required by the requested service may be taken into account. Assets may be physical as well as digital assets, such as e.g. hardware, firmware, and software assets.”). Thus Benedetti teaches the claimed limitations.
The Examiner respectfully reminds applicant of the broadest reasonable interpretation standard (See MPEP 2111), "During examination, the claims must be interpreted as broadly as their terms reasonably allow." In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004) (The USPTO uses a different standard for construing claims than that used by district courts; during examination the USPTO must give claims their broadest reasonable interpretation.) In Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005), the court further elaborated on the “broadest reasonable interpretation" standard and recognized that “The Patent and Trademark Office (“PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction." Thus, when interpreting claims, the courts have held that Examiners should (1) interpret claim terms as broadly as their terms reasonably allows and (2) interpret claim phrases as broadly as their construction reasonably allows. In conclusion, upon taking the broadest reasonable interpretation of the claims, the cited reference teaches all of the claimed limitations and the rejections are maintained as below.
Specification
The amendments to the Specification filed on 2/25/26 contain errors. For instance, the amendment, “Figs. 3A and 3B are diagrams Fig. 3 is a diagram for describing an example of a procedure of processing by the data processing apparatus according to the one embodiment of the present invention” contains grammatical errors as the phrase “Fig. 3 is a diagram” was not deleted. All of the amendments contain similar errors.
Drawings
The drawings received on 2/25/2026 are acceptable.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities: claim 1 recites the limitation, “the service user requirement of the user” in lines 4-5. This should read: the service use requirement of the user. Claim 7 is objected to for reciting similar limitations. Appropriate correction is required.
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 4-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite mental processes which can be performed by a human (i.e., receiving, storing and calculating as in claims 1 and 6). These limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components. This judicial exception is not integrated into a practical application because the combination of additional elements fails to integrate the judicial exception into a practical application. The claims are directed to an abstract idea with generic computer elements and these generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claim(s) do not include any additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 4-5 and 7-8 are held to be patent ineligible under 35 USC 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea.
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 (i.e., changing from AIA to pre-AIA ) 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(s) 1 and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benedetti et al. (2018/0268347).
As per claim 1, Benedetti et al. teaches a data processing apparatus comprising: input circuitry that receives an input related to a service use requirement of a user [paragraph 0021];
a memory that stores information indicating a relationship between the service user requirement of the user and a requirement related to provision of a service to the user [paragraphs 0022-0025]; and
calculation circuitry that calculates a requirement related to provision of the service to the user on a basis of a result of input by the input circuitry and the information stored in the memory [paragraph 0040],
wherein: the service use requirement includes a name of the service, a purpose for which the user uses the service, and an environment when the user uses the service [paragraphs 0043-0045], and
the environment when the service is used includes a type of a communication terminal device used by the user when the service is used and a type of a communication line used by the user when the service is used [paragraphs 0058 and 0107].
As per claim 4, Benedetti et al. teaches the data processing apparatus according to claim 1, wherein the calculation circuitry: calculates a value of a requirement of the service on a basis of the type of the service among results of input by the input circuitry, calculates an adjustment value of the value of the requirement of the service on a basis of the purpose for which the user uses the service and the environment when the user uses the service among the results of input by the input circuitry, and calculates the requirement related to provision of the service to the user on a basis of the calculated value of the requirement of the service and the calculated adjustment value [paragraphs 0064-0067].
As per claim 5, Benedetti et al. teaches the data processing apparatus according to claim 1, wherein: the information stored in the memory is an ontology that inputs a result of input by the input circuitry and outputs a requirement related to provision of the service to the user, and is constructed such that the output requirement related to provision of the service approaches correct answer information [paragraph 0074].
As per claim 7, Benedetti et al. teaches the data processing method according to claim 6, wherein: the service user requirement of the user includes a type of the service, a purpose for which the user uses the service, and an environment when the user uses the service [paragraph 0028].
As per claim 8, Benedetti et al. teaches a non-transitory computer-readable medium having computer-executable instructions that, upon execution of the instructions by a processor of a computer, cause the computer to perform the method of claim 6 [paragraph 0036].
Claim 6 has similar limitations as to the rejected claims above therefore it is being rejected under the same rationale.
There are prior art made of record not relied upon but is considered pertinent to applicant's disclosure. See attached.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 RANODHI N SERRAO whose telephone number is (571)272-7967. The examiner can normally be reached Monday to Friday 8:00 am to 4:00 pm.
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Ranodhi N. Serrao
/RANODHI SERRAO/Primary Examiner, Art Unit 2444