Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to applicant's communication of November 15, 2024. The rejections are stated below. Claims 1-7 are pending and have been examined.
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.
2. Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
3. Claim 6 is directed to the abstract idea of “processing business/financial information to make investment decisions” which is grouped under “organizing human activity… fundamental economic practice” [mitigating risk) in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance).
4. Claim 6 recites “a method of …, the …: a first keyword extracting step of extracting a first keyword from business content of a first enterprise; a growth potential score calculating step of calculating a growth potential score for the business content, based on the first keyword; and a determining step of determining whether to invest in the first enterprise, based on the growth potential score”.
These limitations describe an abstract idea of processing business/financial information to make investment decisions and corresponds to Certain Methods of Organizing Human Activity (fundamental economic practice such as hedging or mitigating risk).
5. Claim 6 also recites as additional elements such as “controlling an information processing apparatus, causing a computer to execute” which do no more than implement the abstract idea and/or provide a particular technological environment. Therefore, claim 6 is directed to an abstract idea without a practical application (Step 2A - Prong 2: NO).
6. Further, as the additional elements of claim 6 do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field. Thus, claim 6 is not patent eligible (Step 2B: NO).
7. Claims 1 and 7 also recite the abstract idea of a processing business/financial information to make investment decisions and corresponds to Certain Methods of Organizing Human Activity (fundamental economic practice such as hedging or mitigating risk). Claim 1 includes the additional elements of “an information processing apparatus, a first keyword extraction unit, and determination unit”. Claim 7 includes the additional elements of “a non-transitory computer readable medium storing computer program that causes a computer to execute”. The additional elements of claims no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
8. Claims 2 recites “… that converts the first keyword into a patent classification code; and an … that analyzes a patent application related to the patent classification code, wherein the … calculates the growth potential score for the business content, based on a result of analysis by the …” which further describe the abstract idea. The claim includes “conversion units, analysis unit, and growth potential score calculation unit” as an additional elements. The additional elements of claim 2 do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. And, as the additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve the functioning of a computer or improve any other technology or technical field (MPEP 2106.05(a).
9. Claims 3 recites “wherein the … calculates at least one of a growth rate in number of applications, a registration rate, or a citation rate for patent applications related to the first keyword” which further describe the abstract idea. The claim includes “analysis unit” as an additional element. The additional element of claim 3 does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. And, as the additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve the functioning of a computer or improve any other technology or technical field (MPEP 2106.05(a).
10. Claims 4 recites “a patent information acquisition unit that acquires patent information held by a second enterprise that has invested in the first enterprise; a second keyword extraction unit that extracts a second keyword from the patent information;” which further describe the abstract idea. The claim includes “patent information acquisition unit, second keyword extraction unit, third keyword extraction unit, matching score calculation unit, and output unit a patent information acquisition unit that acquires patent information held by a second enterprise that has invested in the first enterprise; a second keyword extraction unit that extracts a second keyword from the patent information” as an additional elements. The additional elements of claim 4 do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. And, as the additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve the functioning of a computer or improve any other technology or technical field (MPEP 2106.05(a).
11. Claim 5 recites “wherein the matching score calculation unit calculates the matching score, based on a degree of overlap between the second keyword and the third keyword for each predetermined business domain” which further defines the abstract idea.
Claim Rejections – 35 USC §112
17. 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.
18. Claims 2-5 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.
23. Claim 2 recites:
“…a conversion unit … an analysis unit ”.
24. The claim limitations above do not use the word “means” but are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use generic placeholders, that are coupled with functional language, “acts”, without reciting sufficient structures to perform the recited functions and the generic placeholders are not preceded by structural modifiers.
These claim limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
25. Claim 4 recites:
“…a patent information acquisition unit … a second keyword extraction unit … a third keyword extraction unit … a matching score calculation unit … an output unit ”.
26. The claim limitations above do not use the word “means” but are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use generic placeholders, that are coupled with functional language, “acts”, without reciting sufficient structures to perform the recited functions and the generic placeholders are not preceded by structural modifiers.
These claim limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
27. Claims 3 and 5 are rejected on the grounds as that they depend on claim 2 and 4 respectively.
Claim Rejections – 35 USC 102
28. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
form the rejections under this section made in this Office action.
A person shall be entitled to a patent unless -
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
29. Claims 1 and 6-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Andrews et al. [US Pub No. 2012/0296845 A1].
30. Regarding claim 1, Andrews discloses an information processing apparatus, comprising:
a first keyword extraction unit that extracts a first keyword from business content of a first enterprise (0041, 0055);
a growth potential score calculation unit that calculates a growth potential score for the business content, based on the first keyword (0065); and
a determination unit that determines whether to invest in the first enterprise, based on the growth potential score (0065, claims 12 and 19).
31. Regarding claim 6, Andrews discloses a method of controlling an information processing apparatus, the method causing a computer to execute:
a first keyword extracting step of extracting a first keyword from business content of a first enterprise (0041, 0055);
a growth potential score calculating step of calculating a growth potential score for the business content, based on the first keyword (0065); and
a determining step of determining whether to invest in the first enterprise, based on the growth potential score (0065, claims 12 and 19).
32. Regarding claim 7, Andrews discloses a non-transitory computer-readable medium storing computer program that causes a computer to execute:
a first keyword extracting step of extracting a first keyword from business content of a first enterprise (0041, 0055);
a growth potential score calculating step of calculating a growth potential score for the business content, based on the first keyword (0065); and
a determining step of determining whether to invest in the first enterprise, based on the growth potential score (0065, claims 12 and 19).
Claim Rejections - 35 USC § 103
33. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
34. Claim 2 is rejected under 35 U.S.C. 103(a) as being unpatentable over Andrews et al. Andrews et al. [US Pub No. 2012/0296845 A1]in view of Jason et al. [KR-20210039136-A].
35. Regarding claim 2, Andrews does not disclose however Jason teaches a conversion unit that converts the first keyword into a patent classification code (0013); and
an analysis unit that analyzes a patent application related to the patent classification code (0013), wherein
the growth potential score calculation unit calculates the growth potential score for the business content, based on a result of analysis by the analysis unit (0013). Before the effective filing date, it would have been obvious to a person of ordinary skill in the art to modify the disclosure of Andrews to include the teachings of Jason. The rationale to combine the teachings would be for automatic classification of patent documents using machine learning.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN T POE whose telephone number is (571)272-9789. The examiner can normally be reached on Monday-Friday 9:30 am through 6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached on 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.T.P/Examiner, Art Unit 3692 /KEVIN T POE/
/RYAN D DONLON/Supervisory Patent Examiner, Art Unit 3692