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 .
Status of the Claims
Claims 1-8 are currently pending.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on October 30, 2023. It is noted, however, that applicant has not filed a certified copy of the JP2023-185299 application as required by 37 CFR 1.55.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: ELECTRONIC APPARATUS FOR GENERATING COMPONENT REUSE SCHEDULE INFORMATION.
Claim Interpretation
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.
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.
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 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: the "units" in claims 1-8.
Because this/these claim limitation(s) 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 described in the specification 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 § 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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-8, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including: acquiring reuse information related to a reuse history of the specific component; generating reuse schedule information indicating a future reuse mode of the specific component based on the reuse information; and controlling to display the future reuse mode of the specific component based on the reuse schedule information
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information for determining the uses of recyclable components (i.e., in the terminology of the 2019 Revised Guidance, fundamental economic practices). Additionally, it recites processes that can be performed mentally (e.g., a person observing component reuse information, evaluating it, and arriving at a judgment of a future reuse mode of the component).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content, then displaying the results, similar because at another level of abstraction the claims could be characterized as process of gathering and analyzing information of a component's reuse information, then displaying the results; University of Florida Research Foundation v. GE Company, 916 F.3d 1363 (Fed. Cir. 2019)—collecting, analyzing, manipulating (including converting into a different format), and displaying data, similar because at another level of abstraction the claims could be characterized as collecting, analyzing, manipulating, and displaying component reuse data; In re: Killian, No. 2021-2113, Fed. Cir., Aug. 23, 2022)—collecting information, understanding that information, and determining eligibility for benefits, similar because at another level of abstraction the claims could be characterized as collecting information, understanding that information, and determining a component's eligibility for reuse).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (electronic apparatus, acquisition unit, generation unit, display control unit, display unit—all recited at a high level of generality). Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, "units," etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it."
Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (electronic apparatus, acquisition unit, generation unit, display control unit, display unit—see published Specification ¶¶ 0020, 84-87, 93 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims merely set forth further refinements of the abstract idea without changing the analysis already presented (i.e., they merely narrow the abstract idea without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims (i.e. generic computer and display with instructions to apply the abstract idea there).
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. They do not add any new additional elements to be analyzed here. Accordingly, they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
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.
Claims 1-4, 6, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawai, et al., U.S. Pat. Pub. No. 2006/0294415 (Reference A of the attached PTO-892).
As per claim 1, Kawai teaches an electronic apparatus including a replaceable specific component, comprising: an acquisition unit acquiring reuse information related to a reuse history of the specific component (¶¶ 0040, 43); a generation unit generating reuse schedule information indicating a future reuse mode of the specific component based on the reuse information (¶¶ 0048-49); and a display control unit controlling a display unit to display the future reuse mode of the specific component based on the reuse schedule information (¶¶ 0047-48; Fig. 4).
As per claim 2, Kawai teaches claim 1 as above. Kawai further teaches the reuse schedule information is information indicating whether a recycled product of the specific component can be manufactured using the specific component (¶¶ 0048-49), or whether the specific component can be decomposed into materials and reused.
As per claim 3, Kawai teaches claim 1 as above. Kawai further teaches the display control unit controls the display unit to display the future reuse mode of the specific component at a replacement time of the specific component and when the specific component is detached from the electronic apparatus (¶¶ 0044, 48-50).
As per claim 4, Kawai teaches claim 1 as above. Kawai further teaches the display control unit controls the display unit to display whether the specific component is a recycled product of the specific component manufactured in the past using the specific component (¶ 0048).
As per claim 6, Kawai teaches claim 2 as above. Kawai further teaches the generation unit generates the reuse schedule information indicating that a recycled product of the specific component can be manufactured using the specific component when a number of reuses of the specific component indicated by the reuse information is equal to or less than a reference value (¶ 0048; Fig. 4).
As per claim 8, Kawai teaches claim 1 as above. Kawai further teaches the display control unit controls the display unit to display a number of times at which the specific component is manufactured as a recycled product of the specific component in the past (¶¶ 0047-49; Fig. 4).
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 (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 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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kawai, et al. in view of Yamada, U.S. Pat. Pub. No. 2008/0281732 (Reference B of the attached PTO-892).
As per claim 5, Kawai teaches claim 4 as above. Kawai does not explicitly teach the display control unit controls the display unit to display that a contribution to environmental protection is made with use of the specific component when the specific component is a recycled product of the specific component manufactured in the past using the specific component; which is taught by Yamada (¶¶ 0021, 26, 126, 227, 231). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Yamada—namely, to increase users' environmental awareness. Moreover, this is merely a combination of old elements in the art of recycling electronic components. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kawai, et al. in view of Jeong, et al., U.S. Pat. Pub. No. 2023/0009714 (Reference C of the attached PTO-892)
As per claim 7, Kawai teaches claim 6 as above. Kawai further teaches the generation unit generates the reuse schedule information indicating that the specific component is no longer being able to be manufactured into a recycled product when the number of reuses of the specific component indicated by the reuse information is larger than the reference value (¶ 0048; Fig. 4). Kawai does not explicitly teach that by no longer being able to be manufactured into a recycled product the specific component can be can be decomposed into materials and reused; which is taught by Jeong (¶ 0003). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Jeong—namely, to recover waste materials from components that have reached their useful life. Moreover, this is merely a combination of old elements in the art of recycling electronic components. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Sakaino, et al., U.S. Pat. Pub. No. 2023/0084454 (Reference D of the attached PTO-892) relates to generating component reuse schedule information.
Munakata, et al., U.S. Pat. Pub. No. 2022/0358551 (Reference E of the attached PTO-892) relates to generating component reuse schedule information.
Ishiguro, et al., U.S. Pat. Pub. No. 2014/0294447 (Reference F of the attached PTO-892) relates to generating component reuse schedule information.
Hayashi, et al., U.S. Pat. Pub. No. 2010/0008693 (Reference G of the attached PTO-892) relates to generating component reuse schedule information.
Suda, et al., U.S. Pat. Pub. No. 2003/0151648 (Reference H of the attached PTO-892) relates to generating component reuse schedule information.
Kotak, et al., End of electric vehicle batteries: Reuse vs. recycle, Energies, Vol. 14, No. 8, 2021, 2217 (Reference U of the attached PTO-892) relates to generating component reuse schedule information.
Tse, et al., A Methodology for Assessing the Reusability of Recycled Organic Photoconductive Drums for Laser Printer, INTERNATIONAL CONFERENCE ON DIGITAL PRINTING TECHNOLOGIES. IS & T SOCIETY FOR IMAGING SCIENCE AND TECHNOLOGY, 1996 (Reference V of the attached PTO-892) relates to generating component reuse schedule information.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628