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
1. This is in response to the applicant's communication filed on 01/14/2026, wherein:
Claims 1-6, and 9-16 are pending. Claims 1-6, 10-14 have been amended. Claims 7-8 have been canceled by the Applicant. Claims 15-16 are new.
The Examiner’s notes:
2. Rejection under 103 for independent claims 1, 12-14 (and their dependency) has been withdrawn since amended independent claims 1, and 12-14 as a whole recites a combination of limitations that has been found as define over prior art of record: {The combination of Tazume; (JP 2021-135859 A), Takahashi et al; (JP 6419915 B1), and KAI et al; (JP 2020-170332 A) fail to fairly teach such a method and system, as claimed as a whole, including the underlined subject matter: “after the authentication operation, generate the reference information regarding the second package based on the acquired identification information”.
However, independent claims 1, 12-14 are still rejected under 101 below.
Claim Objections
3. Claims 15 and 16 are objected to because of the following informalities:
Dependent claims 15 and 16 are dependent of the information processing method claim 13. However, both dependent claims 15 and 16 recites “the information processing system according to claim 13”, which is incorrect (again claim 13 is a method claim but not a system claim). Appropriated correction is required.
Claim Interpretation
4. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
5. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
6. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder (e.g., unit) that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: an authorization unit …… (claim 3), a communication unit that transmits…. (claim 10); and the communication unit transmits…., when the collection of the package of the other recipient is authorized by the authorization unit (claim 11).
Because this/these claim limitation(s) above is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
7. 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.
8. Claim 12 is 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:
Independent claim 1 recites “An information processing system comprising:
a memory configured to store registration information including proxy authorizer information
regarding a proxy authorizer who has registered the recipient receiving a first package as a collection proxy for a second package of the proxy authorizer, in response to a prior permission operation by the proxy authorizer for the recipient; and a processor configured to: notify a recipient who receives a first package, of reference information regarding a second package of the proxy authorizer corresponding to the registration information that is registered in advance by the recipient; acquire identification information obtained by an authentication operation performed by the recipient upon collecting the first package; and after the authentication operation, generate the reference information regarding the second package based on the acquired identification information.”
However, Independent claim 12 recites: “An information processing device comprising:
a memory configured to store registration information including proxy authorizer information
regarding a proxy authorizer who has registered the recipient receiving a first package as a collection proxy for a second package of the proxy authorizer, in response to a prior permission operation by the proxy authorizer for the recipient; and a processor configured to: notify a recipient who receives a first package, of reference information regarding a second package of the proxy authorizer corresponding to the registration information that is registered in advance by the recipient; acquire identification information obtained by an authentication operation performed by the recipient upon collecting the first package; and after the authentication operation, generate the reference information regarding the second package based on the acquired identification information.”
It is unclear because independent claim 12 seems to be a duplicate claim as it is identical in scope with the independent claim 1. The only difference between independent claim 1 and independent claim 12 is recitation in the preambles (“an information processing system comprising” in claim 1 and “an information processing device including” in claim 12). However, the Applicant’s specification does not give a different meaning between “system” and “device”. Therefore, it seems that the scope of independent claim 1 and independent claim 2 is the same. Appropriated correction is required. The Office respectfully submits the Applicant to amend claim 12 to be different with claim 1 in order for the 112(b) rejection to be withdrawn.
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.
9. The claimed invention (Claims 1-6 and 9-16) is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) abstract ideas including “Certain Methods of Organizing Human Activity”, which has/have been identified/found by the courts as abstract ideas in MPEP 2106.04(a). This judicial exception is not integrated into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because it/they is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications:
10. Step 1: Does the Claim Fall within a statutory Category?
Claims 1-6, 9-11 and 12: Yes, these claims are system, which recites a memory, a processor……….., and therefore are directed to the statutory class of machine and article of manufacture.
Claims 13, 15-16: Yes, this claim is method and therefore are directed to the statutory class of process.
Claim 14: Yes, claim 14 recites a non-transitory computer-readable storage medium, which is interpreted as a system because it recites a computer to execute….., and therefore are directed to the statutory class of machine.
11. Step 2A prong 1, Step 2A prong 2 and Step 2B:
Independent claim 1 (Step 2A, Prong I): is directed to an abstract idea of “Certain Methods of Organizing Human Activity”:
Step/limitations 2-4 of notify a recipient who receives a first package, of reference information regarding a second package of the proxy authorizer corresponding to the registration information that is registered in advance by the recipient (limitation 2); acquire identification information obtained by an authentication operation performed by the recipient upon collecting the first package another recipient corresponding to registration information that is registered in advance by the recipient (limitation 3); and after the authentication operation, generate the reference information regarding the second package based on the acquired identification information (limitation 4) ” falls within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps mainly describe the concepts of commercial or legal interactions (include subject matter relating to agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and/or managing personal behavior or relationships or interactions between people (including following rules or instructions).
Independent claim 1, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. In particular, the claim recites underlined additional elements (i.e., a memory; a processor….) to perform abstract steps/limitations 2-4 mentioned above. The additional element(s) in all of the steps is/are -recited at a high-level of generality such that it amounts no more than mere instructions to apply the judicial exception(s) using a generic computer component(s) (i.e., a memory; a processor….); thus, they do not integrate the identified abstract idea into a practical application. Also, limitation 1 of “a memory configured to store registration information including proxy authorizer information regarding a proxy authorizer who has registered the recipient receiving a first package as a collection proxy for a second package of the proxy authorizer, in response to a prior permission operation by the proxy authorizer for the recipient” is merely storing data, which is considered as “insignificant extra solution activity”; thus, it does not integrate the identified abstract idea into a practical application. See MPEP 2106.05(g). Further, limitation 2 of “…notify a recipient……” via a processor is also merely transmitting data/ sending data, which is considered as “insignificant extra solution activity”; thus, it does not integrate the identified abstract idea into a practical application. See MPEP 2106.05(g). Accordingly, again, this/these additional element(s) does/do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Again, 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. As discussed above with respect to integration of the abstract idea into a practical application, again, the additional element of using generic computer components (i.e., a memory; a processor ….) to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. see MPEP 2106.05(f). For the above mentioned reasons, viewed the claim as a whole, the additional elements/additional steps/additional limitations individually and in combination do not integrate the identified abstract idea into a practical application. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
Independent claim 1 (step 2B): The additional element in claim 1 (i.e., a memory; a processor...) is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus they are not significantly more than the identified abstract idea. In other word, the underlined additional elements “i.e., a memory; a processor.….….” is/are amounts no more than mere instructions to apply the judicial exception(s) of step/limitation mentioned above; thus, they are not significantly more than the identified abstract idea. see MPEP 2106.05(f). Also, limitation 1 of “a memory configured to store registration information including proxy authorizer information regarding a proxy authorizer who has registered the recipient receiving a first package as a collection proxy for a second package of the proxy authorizer, in response to a prior permission operation by the proxy authorizer for the recipient” is merely storing data, which is considered as “insignificant extra solution activity”; thus, is not significantly more than the identified abstract idea.. See MPEP 2106.05(g). Further, limitation 2 of “…notify a recipient……” via a processor is also merely transmitting data/ sending data, which are considered as “insignificant extra solution activity”; thus, is not significantly more than the identified abstract idea. See MPEP 2106.05(g). Again, 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.
When revaluating limitations 1- 2 mentioned above of “a memory configured to store registration information including proxy authorizer information regarding a proxy authorizer who has registered the recipient receiving a first package as a collection proxy for a second package of the proxy authorizer, in response to a prior permission operation by the proxy authorizer for the recipient” (limitation 1); and “…notify a recipient……” (limitation 2) via a processor in step 2B here, this storing data and transmitting data/ sending data are also well-understood, routine and conventional activities. The use of generic computer to store data and transmit data/send data through an unspecified generic computer does not impose any meaningful limit on the computer implementation of the abstract idea, and is/are considered as well-understood, routine, conventional activity. According to MPEP 2106.05 (d), elements that the Courts have recognized as well-understood, routine, conventional activity in particular fields are e.g., "Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93”.
Thus, evidences has been provided to show these additional elements are well-understood, routine, conventional activity according to MPEP 2106.07 (a) (III). Therefore, for the above mentioned reasons, viewed as a whole, even in combination, the above additional steps/additional elements/additional limitations do not amount to significantly more/do not provide an inventive concept. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
As per independent claims 12, 13 and 14: Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, a device claim 12, a method claim 13 and a program claim 14 are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same/similar reasons as the system claim(s) 1. The underlined components (i.e., memory configured to store….; a processor; a non-transitory computer-readable storage medium storing a program causing a computer to execute …..) described in independent claims 12-14 add nothing of substance to the underlying abstract idea. They are merely using as tools to implement the identified abstract idea and/or are general link to technological environment. Thus, are not significantly more than the identified abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 2-6, 9-11 and 15-16 are merely add further details of the abstract steps/elements recited in claims 1 and 13 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that in dependent claims 3, 10-11, the additional elements of (e.g., an authorization unit, a communication unit/the communication unit) are recited at a high level of generality/recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. In other word, the underlined additional elements “an authorization unit, a communication unit/the communication unit” is/are amounts no more than mere instructions to apply the judicial exception(s) of step/limitation mentioned above; thus, do not integrate the identified abstract idea into a practical application and are not significantly more than the identified abstract idea. see MPEP 2106.05(f).
Further, in dependent claims 10-11, the limitations of: “a communication unit/the communication unit that transmits ……..” are merely transmitting data, which is considered as “insignificant extra solution activity”; thus, do not integrate the identified abstract idea into a practical application, and is not significantly more than the identified abstract idea. See MPEP 2106.05(g). In addition, the additional element in claims 10-11 of “a terminal” is merely recited as a destination where information (e.g., a proxy-service completion) is being sent to; which is considered as general link to technological environment; does not integrate the identified abstract idea into a practical application, and is not significantly more than the identified abstract idea. See MPEP 2106.05(h).
Therefore, Looking at the limitations as an ordered combinations adds nothing that is not already present when looking at the elements taken individually. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself. Therefore, dependent claims 2-6, 9-11 and 15-16 are also non-statutory subject matter.
Claim Rejections - 35 USC § 103
12. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
13. Rejection under 103 for independent claims 1, 12-14 (and their dependency) has been withdrawn since amended independent claims 1, and 12-14 as a whole recites a combination of limitation that has been define over prior art of record.
Prior Art that is pertinent to Applicant’s disclosure
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miyazaki et al; (JP7314490B, wherein teaches A delivery system includes: a receiving unit that receives permission from a receiver who receives packages, the permission allowing delivery companies to inquire for information on the receiver; an obtaining unit that, when the permission is granted, from each of the delivery companies, obtains information on a corresponding one of the packages addressed to the receiver; and a generation unit that, when the information obtained by the obtaining unit satisfies a predetermined condition, generates information which allows the packages addressed to the receiver to be collectively delivered.
Oyama et al; (JP2003316869A), wherein teaches To provide a home delivery service system that can provide a home delivery requester with more accurate predicted arrival time of package. SOLUTION: The home delivery service system according to the present invention comprises: An information processing terminal (33) for reading the baggage information from a tag displaying the baggage information including at least a baggage ID which is identification information of the baggage to be delivered and destination information of the baggage to be delivered, and a transportation vehicle for delivering the baggage An in-vehicle system (31) including a position detecting means (313) for detecting position information of the transportation vehicle, and a transportation vehicle communication means (311) for transmitting the luggage information and the position information to a service center (1). Arrival time calculation provided at a service center and calculating an estimated arrival time of the package using the operation route of the transport vehicle, traffic information of the operation route, package information and position information transmitted from the on-board system. Means (10 13), and a communication server for notifying the predicted arrival time obtained by the arrival time calculation means.
Further see other reference in PTO-892 form.
Response to Arguments
15. Regarding 112(f): Claim Interpretation under 112(f) for claims 1-2, 4, 6 and 12 has been withdrawn since Applicant has amended claims 1-2, 4, 6 and 12. However, claim interpretation under 112(f) for claims 3 and 10-11 has been maintained since these claims still recites “an authorization unit” (claim 3) ; and “a communication unit/the communication unit” (claims 10 and 11).
Regarding 112(b) rejection: Rejection under 112(b) for independent claim 12 still maintained because independent system claim (device claim) 12 recites the same limitations as independent system claim 1. Again, It is unclear because independent claim 12 seems to be a duplicate claim as it is identical in scope with the independent claim 1. The only difference between independent claim 1 and independent claim 12 is recitation in the preambles (“an information processing system comprising” in claim 1 and “an information processing device including” in claim 12). However, the Applicant’s specification does not give a different meaning between “system” and “device”. Therefore, it seems that the scope of independent claim 1 and independent claim 2 is the same. Appropriated correction is required. The Office respectfully suggests the Applicant to amend independent claim 12 to be different with claim 1 in order for this 112(b) rejection to be withdraw.
Regarding 101: Applicant’s arguments regarding 101 have been fully considered but are not persuasive. Please see the Office’s responses back to the Applicant’s arguments below.
Regarding 103: Rejection under 103 for independent claims 1, 12-14 has been withdrawn since the amended independent claims 1, 12-14 as a whole recites a combination of limitations that has been found as define over prior art of record.
16. Responding back to Applicant regarding 101 on pages 7-9 in the Applicant’s remarks:
On page 7, Applicant argued: “…….The Office's conclusion that the claims are directed to an abstract idea is based on an overgeneralization that does not account for the specific, concrete limitations of the amended claims. The claimed subject matter is not directed to a generic concept of notification but to a specific, practical solution for operational inefficiency in package logistics namely, the problem of redundant user trips when a proxy recipient is unaware of other available packages. The solution is a structured, cause-and-effect process integrated into a specialized system. The system's memory is configured to store registration information that is itself the result of a distinct "prior permission operation by the proxy authorizer," establishing a secure, pre-authorized relationship before any logistics event occurs.”
The Office’ response: The Office respectively submit that the Office has walked through carefully and explained in details (Step 2A: Prong 1 and 2, and step 2B) with respect to actual amended claim limitations (individually as well as in combination) of why they are an “abstract idea, not integrate the abstract idea into a practical application and not significantly more” based on MPEP 2106.04(a); MPEP 2106.05(f); MPEP 2106.05(g); MPEP 2106.05(h); and MPEP 2106.07(a) (III). Again, See the details under 101 rejection above.
Regarding Applicant’s assertion above that {e.g., The claimed subject matter is not directed to a generic concept of notification but to a specific, practical solution for operational inefficiency in package logistics namely, the problem of redundant user trips when a proxy recipient is unaware of other available packages. The solution is a structured, cause-and-effect process……….store registration information that is itself the result of a distinct "prior permission operation by the proxy authorizer," establishing a secure, pre-authorized relationship before any logistics event occurs} are abstract idea and/or solution of abstract idea but not an improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
Further, the Office respectfully submits that even though, the claimed invention (claims 1, 12, 13, 14) as a whole recites a combination of limitations that is specifice and novelty; however, please note that specific/narrow/novel abstract idea is still an abstract idea. See the July 2015 update page 3, the Courts indicate: "When identifying abstract ideas, examiners should keep in mind that judicial exceptions need not be old or long-prevalent, and that even newly discovered judicial exceptions are still exceptions, despite their novelty. For example, the mathematical formula in Flook, the laws of nature in Mayo and the isolated DNA in Myriad were all novel, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were ‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection”. Please also see at least Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750 (Fed. Cir. 2014) as an example. Further, please see buySAFE, Inc. v. Google, Inc., 112 USPQ2d 1093 (Fed. Cir. 2014), which stated that “in defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow. Mayo, 132 S. Ct. at 1303”. In other word, buySAFE , Flook, Myriad, and Ultramercial are examples of where a narrow/specific abstract or novel abstract idea are still considered abstract ideas. Further, see the recent case: SAP America v. Investpic (Fed Cir, 2017-2081, 5/15/2018), wherein the Court indicates a new or novel abstract idea is not enough to pass 101. In addition, see MPEP 2106.05(a) further explains this when it state “It is important to note, the judicial exception alone cannot provide the improvement” and MPEP 2106.05(a)(II) where it states “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology”.
On page 8, Applicant argued: “The processor is then configured to acquire identification information from an authentication operation performed by the recipient upon collecting the first package. This authentication is not mere data input but acts as a triggering event. Critically, only after this authentication does the system generate the reference information regarding the second package, ensuring the information is contextually relevant to the recipient's verified, immediate presence. Finally, the specific recipient is notified. This ordered combination - centered on the prior permission architecture, the authentication event as a gate, and the subsequent conditional generation - integrates any underlying idea into a practical application that imposes meaningful limits on the system's operation. This combination provides an inventive concept that amounts to significantly more than any judicial exception. The claimed sequence introduces a dynamic, event-driven data processing mechanism that improves the functioning of a logistics management system. The conditioning of the generation of a notification for a second package upon the authenticated collection of a first package within a pre-authorized proxy framework is not conventional. This specific interaction achieves the technical benefit of reducing redundant trips by generating and delivering actionable information at the precise moment the information becomes contextually relevant, representing an advancement over passive or schedule-driven systems. Accordingly, reconsideration and withdrawal of the 35 U.S.C. § 101 rejections is believed appropriate and is respectfully requested.”
The Office’s response: However, the Office respectfully submits that looking at the Applicant above arguments, many of these claimed features/limitations (e.g., acquire identification information from an authentication operation performed by the recipient upon collecting the first package…; after this authentication does the system generate the reference information regarding the second package;… the recipient is notified), that were called “Abstract idea” (in step 2A Prong I under 101 rejection above) by the Office are mistakenly used by the Applicant as additional elements/additional limitations (step 2A prong II and step 2B) to argue that these limitations integrates the underlying abstract idea into a practical application and provide an inventive concept that amounts to significantly more than any judicial exception. The Office respectfully disagrees.
The Office respectfully submits that what Applicant are referring above (e.g., acquire identification information from an authentication operation performed by the recipient upon collecting the first package. This authentication is not mere data input but acts as a triggering event. Critically, only after this authentication does the system generate the reference information regarding the second package, ensuring the information is contextually relevant to the recipient's verified, immediate presence…; the specific recipient is notified; the generation of a notification for a second package upon the authenticated collection of a first package within a pre-authorized proxy framework…; benefit of reducing redundant trips by generating and delivering actionable information at the precise moment….) are abstract idea and/or solutions of the abstract idea but not integrates the underlying abstract idea into a practical application and provide an inventive concept that amounts to significantly more than any judicial exception as argued above by the Applicant.
The Office respectfully remind the Applicant that Step 2A prong 2 is to “Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s), and Evaluating those additional elements to determine whether they integrate the exception into a practical application of the exception”. According to the new 2019 guideline, in step 2A prong 2: “limitations are not indicative of integration into a practical application when recited in a claim with a judicial exception include: Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f); and/or Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP 2106.05(g); and/or Generally linking the use of the judicial exception to a particular technological environment or field of use, as discussed in MPEP 2106.05(h)”. As already pointed out under 101 rejection in Step 2A prong 2 of claim 1 (the same hold true with claims 12-14), the additional elements/additional limitations (e.g., a processor, a computer, a non-transitory computer-readable storage medium storing a program causing a computer to execute….)are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; and Adding insignificant extra-solution activity to the judicial (e.g., a memory configured to store registration information…..; and notify a recipient…. via a processor in claims 1 and 12-14). Please see details under Step 2A Prong 2 of 101 rejection above. Therefore, again the Office respectfully submits that viewed the claim as a whole, the additional elements individually and in combination do not integrate the identified abstract idea into a practical application. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
The Office further respectfully submits that according to MPEP 2106.05(II): “Step 2B asks: Does the claim recite additional elements that amount to significantly more than the judicial exception? Examiners should answer this question by first identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s))…..”. According to MPEP 2106.05(I)(A): “Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include: i. Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)); ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)); iii. Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)); or iv. Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)).”
As already pointed out under 101 rejection in Step 2A prong 2 and step 2B in claim 1 (the same hold true for claims 12-14), the additional elements/additional limitations {e.g., e.g., a processor, a computer, a non-transitory computer-readable storage medium storing a program causing a computer to execute……} are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; and the additional elements/additional limitations {e.g., a memory configured to store registration information…..(limitation 1); and notify a recipient…. via a processor (limitation 2)} are merely storing data, and transmitting data/sending data, which are considered as Adding insignificant extra-solution activity to the judicial. Therefore, these additional elements are not significantly more than the identified abstract idea/judicial exception. Further, when viewed the claim as a whole, these additional elements individually and in combination do not integrate the identified abstract idea into a practical application, and do not provide inventive concept/ significantly more. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
For the above mentioned reasons, the Office respectfully disagrees with the Applicant’s assertion that the claimed invention “integrates any underlying idea into a practical application that imposes meaningful limits on the system's operation….., provides an inventive concept that amounts to significantly more than any judicial exception. The claimed sequence introduces a dynamic, event-driven data processing mechanism that improves the functioning of a logistics management system”.
For the above-mentioned reasons, rejections under 35 U.S.C. 101 for independent claim 1 still remain and/or given. Claims 12-14 recite similar features/limitations as in claim 1; thus, are rejected under 101 for the same/similar reasons as in claim 1. Dependent claims are dependent of their base claims 1 and 13. Applicant did not have any further argument for the dependent claims beyond their dependency on the independent claim, which have been addressed above. Therefore, the rejections on these claims remain and/or given.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thuy Nguyen whose telephone number is 571-272-4585 and fax number is 571-273-4585. The examiner can normally be reached on Mon-Thurs, 8:30 am to 5: 00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Ilana Spar can be reached on 571-270-7537. The FAX number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THUY N NGUYEN/
Primary Examiner, Art Unit 3622.
Prosecution Insights