DETAILED ACTION
Status of Claims
Claims 1-13 are pending. Objections and rejection are recited below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application, filed on 16 October 2024 is a National Stage entry of PCT/JP 2023/000678, International Filing Date: 12 January 2023 claims foreign priority to Japanese Application 2022-081868, filed 18 May 2022. Accordingly, this application is given priority from 18 May 2022.
Claim Interpretation
Regarding claims 1-13, clauses such as “for determining fee information related to operation of the aircraft” in representative claim 1 are merely statements of intended use which do not affect the method step of “enabling provision”. Similar phrasing will be interpreted accordingly.
A recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04.
USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ401, 403-04 (Fed. Cir. 1983). Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter. See Gulack, 703F.2d at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However, USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). The rationale behind the printed matter cases, in which, for example, written instructions are added to a known product, has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists. See In re Kao, 639 F.3d1057, ___, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011); King Pharmaceuticals Inc. v. Eon Labs Inc., 616 F.3d1267, ___, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010). See MPEP § 2111.05.
Claim Objections
Claims 1-13 are objected to because the claims are structured such that it is hard to determine what Applicant is claiming as his invention. If the Applicant wishes to claim a method, he should use a structure similar to:
“A method for determining fee information related to operation of an aircraft, the method comprising:
acquiring, by a controller, risk information based on a foreign object that could cause damage to an aircraft; and
enabling, by the controller, provision of the acquired risk information as a common indicator for determining fee information related to operation of the aircraft.
If the Applicant wishes to claim a system/ apparatus, he should use a structure similar to:
“A system/ apparatus for determining fee information related to operation of an aircraft, the system comprising a controller configured to:
acquiring risk information based on a foreign object that could cause damage to an aircraft; and
enabling provision of the acquired risk information as a common indicator for determining fee information related to operation of the aircraft.”
If the Applicant wishes to claim a computer readable medium, he should use a structure similar to:
“A non-transitory computer readable medium storing a program executable by one or more processors to cause an information processing apparatus to execute functions comprising:
acquiring risk information based on a foreign object that could cause damage to an aircraft; and
enabling provision of the acquired risk information as a common indicator for determining fee information related to operation of the aircraft.”
Correction is required.
Claims 2-7 and 9-12 are objected to because the dependent claims which recite “wherein the controller is configured to” should be written “wherein the controller is further configured to”.
Claims 3 and 8 are objected to because the preamble “The information processing apparatus according to claim 1 or 2, wherein ….” Is vague and indefinite because it is no clear which claim upon which it depends. For purposes of examination, the preamble will be interpreted as will be interpreted as “The information processing apparatus according to claim 1, wherein …”.
Claim 5 is objected to because the limitation:
the controller is configured to calculate the base amount of the airport fee to be lower as the risk information is higher.
seems to be counter intuitive in that in that, in the art of insurance, higher risk necessitates higher fees (such as premiums). Clarification is requested.
Claim 7 is objected to because the limitation:
configured to generate second notification information upon determining that the calculated base amount has reached a second threshold and provide the second notification information to a user referring to the risk information.
refers to “a second threshold” and “a second notification”. However, there is neither a “first threshold” nor a “first notification” (emphasis added) in the claims upon which this claim depends. Examiner suggests referring to “a threshold” and “a notification”. Correction is requested. threshold
Claim 8 is objected to because it is not clear if the Applicant is claiming a system or an apparatus.
For purpose off examination, the preamble will be interpreted as:
An information processing system comprising:
a controller configured to:
acquire risk information based on a foreign object that could cause damage to an aircraft, and
enable provision of the acquired risk information as a common indicator for determining fee information related to operation of the aircraft;
a first information processing terminal to be used by an airline that operates the aircraft;
a second information processing terminal to be used by a management company of an airport used in operation of the aircraft; and
a third information processing terminal to be used by an insurance company with which the airline contracts as an insured party.
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.
Claims 1-13 are rejected under 35 U.S.C. 112(b) 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.
Regarding claims 1, 12 and 13, the representative limitation:
enabling, by the controller, provision of the acquired risk information as a common indicator for determining fee information related to operation of the aircraft.
Is vague and indefinite for several reasons. First, “enabling provision” is not a clear method step; the metes and bounds of “enabling” are not clearly conveyed.
Second, the term "common", as in “common indicator”, is a relative term which renders the claim indefinite. The term “common indicator” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 9, the term "optimize" is a relative term which renders the claim indefinite. The term “optimize” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Moreover, the Examiner finds that because particular claims are rejected as being indefinite under 35 U.S.C. § 112(b), it is impossible to properly construe claim scope at this time (See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) “Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing art rejections even though the claims are indefinite, the claims are construed and the art is applied as much as practically possible.
Claims 2-11 are rejected by way of dependency on a rejected independent claim.
The art rejections below are in view of the 112(b) rejections stated above.
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 1-13 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.
In the instant case, claims 1-7 are directed to an “apparatus” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of determining risk which is a method of organizing human activity or mental process.
in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p.p. 50-57 (Jan. 7, 2019))). Claims recite:
acquiring risk information based on a foreign object that could cause damage to an aircraft, and
enabling provision of the acquired risk information
The phrase “as a common indicator” is merely a description of data and does not impose any meaningful limit on the computer implementation of the abstract idea.
Limitations such as:
for determining fee information related to operation of the aircraft
are merely statements of intended use which do not further limit the claim.
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional element of a controller represent the use of a computer as a tool to perform an abstract idea. It does no more than generally link the abstract idea to a particular field of use. Therefore, the additional element does not integrate the abstract idea into a practical application as it does no more than represent a computer performing functions that correspond to (i.e. automate) the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of determining risk using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 2-11 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 a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 2-7 and 9-11 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of determining risk.
In claim 8, the features:
a second information processing terminal, and
a third information processing terminal
add technology to the abstract idea of the independent claim. However, these terminals are generic technological components, and their function is not specified. Accordingly, each one is used in its normal, expected, and routine manner. The components are recited at a high level of generality which do not improve another technology or technical field nor the functioning of the computer itself. Further, statements such as “to be used by a management company” are statements of intended use which do not further limit the claims.
Accordingly, none of the dependent claims add a technological solution to the method of organizing human activity in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claim 12 otherwise styled as computer readable medium, and claim 13 styled as a method a would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Helitzer et al (US Pub. No. 20050055248 A1) in view of Dennes et al (US Pub. No. 20200369098 A1).
Regarding claims 1, 12 and 13, Helitzer teaches a method and a computer system in combination with sensor technology located proximate to an insurable interest for transmitting, such as over the Internet, risk mitigation utilization data to a centralized database for analysis, publishing, underwriting, selling and managing insurance products [0002]. He teaches:
a controller – [0040],wherein the controller is configured to:
acquire risk information based on a foreign object that could cause damage to an aircraft – [0022], [0030], [0032], [0036], [0038] and [0040], and
enable provision of the acquired risk information as a common indicator for determining fee information related to operation of the aircraft – [0033] “insurance costs”, [0054} “technology information pertinent to reducing costs associated with certain avoidable hazards and losses”, and [0071] “the risk of loss or hazards associated with the insurable business property”.
Helitzer teaches risks of hazards [0071]. Helitzer does not explicitly disclose:
risk information based on a foreign object that could cause damage to an aircraft.
However, Dennes teaches method and related system for monitoring a grid circuit positioned in a tire to detect damage to conductors of the grid circuit [0003] and [0004]. The method includes transmitting information about the damage to a computer of a vehicle [Id.]. The tire may be of a vehicle, trailer, motor vehicle or aircraft [0024]. He teaches detecting a puncture of a foreign object into the tire by disturbing one or more of the conductors in the grid circuit, wherein a gyroscope sensor is integrated with the grid circuit [0041].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Helitzer’s disclosure to include detecting aircraft tire damage as taught by Dennes because it allows for early detection of a tire puncture which reduces the risk that the tire is damaged beyond repair - Dennes [0022].
Regarding claim 2, Helitzer does not explicitly disclose acquiring the risk information based on damage to each tire attached to the aircraft for each location at which the tire may have been damaged.
However, Dennes teaches this at [0041] as discussed in the rejection of claim 1. Accordingly, this claim is rejected for the same reasons.
Regarding claim 3, Helitzer does not explicitly disclose generating first notification information upon determining that the acquired risk information has reached a first threshold and provide the first notification information to a user referring to the risk information.
However, Dennes teaches notification of a tire puncture using a Tire Pressure Monitoring System (TPMS) which detects a change in tire pressure below a hardcoded threshold. [0021].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Helitzer’s disclosure to include notifying a driver of a change in tire pressure below a threshold as taught by Dennes because it allows for early detection of a tire puncture which reduces the risk that the tire is damaged beyond repair - Dennes [0022].
Regarding claim 4, Helitzer teaches calculating a base amount of the fee information based on the risk information - [0021], [0035] and [0054].
Regarding claim 5, Helitzer teaches calculating the base amount of an airport fee to be lower as the risk information is higher [0024]-[0026] and [0078]. Examiner notes that lower premiums are indicative of lower insurable risk.
Examiner notes that “fee information as including an airport fee paid by an airline that
operates the aircraft” is merely a statement of intended use which does not further limit the claim.
Regarding claim 6, Helitzer teaches the fee information as including an insurance premium paid to an insurance company [0078]. Examiner notes that “being paid by an airline, as an insured party, that operates the aircraft” is merely a statement of intended use which does not further limit the claim.
Regarding claim 7, Helitzer does not explicitly disclose generating second notification
information upon determining that the calculated base amount has reached a second threshold and providing the second notification information to a user referring to the risk information.
However, Dennes teaches this at [0021] as discussed in the rejection of claim 3 and is hence, rejected for the same reasons.
Regarding claim 8, Helitzer teaches:
a first information processing terminal to be used by an airline that operates the aircraft – [0053];
a second information processing terminal to be used by a management company of an airport used in operation of the aircraft – [0053];; and
a third information processing terminal to be used by an insurance company with which the airline contracts as an insured party – [0053].
Examiner notes that the phrases beginning with “being used by …” are merely statements of intended use which do not further limit the claim.
Regarding claim 9, Helitzer teaches the first information processing terminal being configured to optimize an operation plan of the aircraft based on the risk information – [0036] and [0038].
Regarding claim 10, Helitzer teaches calculating, based on the risk information, an airport fee to be received by the management company from the airline {0078]. Examiner notes that “to be received by the management company from the airline” are merely statements of intended use which do not further limit the claim.
.Regarding claim 11, Helitzer teaches to calculating, based on the risk information, an insurance premium to be received by the insurance company from the airline that is the insured party [0078].
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Sanchez: “COUPLING SYSTEM AND METHOD OF USE THEREOF”, (US Pub. No. 20210317882 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692