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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: on page 1, lines 24-26, it is unclear what the citation, i.e., “[Citation List] [Patent Literature] [0004] Patent Document 1: JP 2020-75152 A” represents. Clarification is required.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 17 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The term “recording medium” is not clearly described in the specification to understand exactly what it is. It is mentioned once on page 1, in line 10, in the “TECHNICAL FIELD” Section. It says: “[0002] The present invention relates to a display mode determination method and a program (recording medium).” It can be speculated that a program “records” computer program instructions. However, it is unclear what the nature of the “medium” is. The specification discusses another form of medium on page 7, line 18, “a long-term storage medium such as a flash memory…” However, there is no indication that the “recording medium” and the “storage medium” are related.
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.
Claim 17 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 states “A recording medium for causing the computer to execute the display mode determination method according to claim 1.” However, this is indefinite, since the recording medium only “stores” the instructions. When a computer reads the instruction and then executes them, then it causes the computer to perform he claimed method steps of claim 1. Characterizing the medium to “cause” the computer to execute the method is not an accurate description of the nature of a recording medium. Furthermore, the way it is claimed, the computer instructions are not required to be embedded in the recording medium as the recording medium just needs to perform the “cause”, e.g., an execution initiation command in the medium to start the execution of the instructions stored somewhere else, e.g., in RAM.
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.
Claim 17 is rejected under 35 U.S.C. 101 because he claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because “a recording medium” is not necessarily a non-transitory medium. See MPEP 2106.03
Allowable Subject Matter
Claims 1-16 are allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
* A US-20210201709-A1 2021-07-01 LEE; Juhye G06F1/1624 1/1
* B US-20120242598-A1 2012-09-27 Won; Sohui G06F3/04886 345/173
* C US-20250298503-A1 2025-09-25 Noda; Kenji G06F3/0481 1/1
* D US-20250165138-A1 2025-05-22 LEE; Minkyung G06F3/0482 1/1
* E US-10956651-B1 2021-03-23 Leem; Yojin G06F3/04842 1/1
* F US-20210011609-A1 2021-01-14 ZHANG; Xin G06F3/0236 1/1
* G US-20200218413-A1 2020-07-09 VanDuyn; Isaac Sterling G06F3/04842 1/1
* H US-20200174636-A1 2020-06-04 Milkovic; Thom G06F3/04842 1/1
* I US-20190191208-A1 2019-06-20 Coenen; Rob H04N21/4312 1/1
* J US-20160313877-A1 2016-10-27 HA; Da-Yun G06F3/04842 1/1
* K US-20160062584-A1 2016-03-03 COHEN; Michael G06F3/0485 715/784
* L US-20140331170-A1 2014-11-06 HYUN; Junho G06F3/04842 715/835
* M US-20130063384-A1 2013-03-14 Ito; Hiroyuki G06F3/0485 345/173
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/STEPHEN S HONG/Supervisory Patent Examiner, Art Unit 2178
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