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 .
DETAILED ACTION
2. Claims 1-10 are presented for examination.
3. This office action is in response to the claims filed 12/23/2024.
4. Claims 1 and 9 are independent claims.
5. The office action is made Non-Final.
Information Disclosure Statement
6. The information disclosure statement (IDSs) submitted on 12/23/2024 was considered by the examiner.
Claim Rejections – 35 USC § 101
7. 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.
8. Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category. See MPEP 2106.03.
Claim 1 recites the steps or acts…, and thus is a process (a series of steps or acts). A process is a statutory category of invention. (Step 1: YES).
Claim 9 recites a system comprising: at least one processor. The claim is directed to a physical circuit, which is a machine and/or manufacture, and falls within one of the statutory categories of invention. (Step 1: YES).
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Claims 1 and 9 recite in part the steps: “transmitting transmission data based on reporter data prepared by the reporter to a transmission destination in connection with the administrator; preparing a backup of the transmission data; preparing verification information to be used for verifying that the backup has not been falsified; and storing the backup together with the verification information in a database of the reporter.”
“Transmitting data” (or "transmitting transmission data") is generally considered an abstract idea under 35 U.S.C. § 101, especially when it involves routine or conventional computer activities. Under the Alice/Mayo framework, simply collecting, organizing, or transmitting data using generic computer components is often seen as a method of organizing human activity or a mental process, rather than a technical improvement.
"Preparing a backup and/or verification information of transmission data" (or backing up data records) is considered an abstract idea under 35 U.S.C. § 101, as it is classified as a fundamental, well-understood practice of data management and organization.
“Storing a backup together with verification information in a database’ is considered an abstract idea under 35 U.S.C. § 101, according to recent Federal Circuit rulings. The courts generally define such actions as "backing up data records" which is deemed a well-understood, routine, and conventional business practice that existed long before the advent of computers.
The steps of claim 1 solely involves simply collecting, organizing, or transmitting data using generic computer components. See MPEP 2106.04(a)(2), subsection III (Step 2A, Prong One: YES).
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
Claim 1 recites the additional elements of “a computer, a processor and a database” and claim 9 recites the additional elements of “an information processing apparatus”, and claim 20 recites the additional elements of “a data transmission unit, a data storage unit, a circuit and a processor”. Those elements are recited at a high level of generality, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f).
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO), and the claims are directed to the judicial exception. (Step 2A: YES).
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole amount to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
As explained with respect to Step 2A, Prong Two, the additional elements were found to be mere instructions to apply the exception using a generic computer. (Step 2B: NO). The claim is not eligible.
The dependent claims 2-8 and 10 merely incorporate additional elements that narrow the abstract idea without yielding an improvement to any technical field, the computer itself, or limitations beyond merely linking the idea to a particular technological environment.
Claims 2, 5, 6, 8 and 10, falls within collecting, organizing, or transmitting data using generic computer components groupings of abstract ideas.
Claims 3, 4 and 7, falls within “Mathematical concepts” groupings of abstract ideas.
Claim Rejections - 35 USC § 101
9. 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.
10. Claims 9 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
11. At least Claim 9 does not fall within at least one of the four categories of patent eligible subject matter because they are directed to an information management device…comprising: a data transmission unit…and a data storage unit. Paragraph [0101] of this instant published specification “each function provided by the reporter terminal 50 and each of the servers 100r, 100i can be provided by software and hardware that executes the software, only software, only hardware, or a complex combination thereof.”, has provided evidence that the claimed system is a software per se, wherein a series of modules are to be executed. The claims do not define structural and functional descriptive material used in interrelationship between the computer software and the hardware like a memory or processor. Software per se does not fit within recognized categories of statutory subject matter therefore it is directed to non-statutory subject matter.
Claim Rejections - 35 USC § 112(f)
12. 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.
13. Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f). The presumption that 35 U.S.C. 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) The presumption that 35 U.S.C. 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
Claim limitations of claim 9 has been interpreted under 35 U.S.C. 112(f), because they use a generic placeholder “a data transmission unit” and “a data storage unit”, respectively coupled with functional language “that transmits” and “to process”, “that prepares and stores”, without reciting sufficient structure to achieve the function.
Since the claim limitation(s) invoke 35 U.S.C. 112(f), claim 9 has been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification and Figs 2 and 3 shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) limitation. It is noted that in claim 9 (The information management device according to claim 9, further comprising: at least one of (i) a circuit and (ii) a processor having a memory storing computer program code, wherein: the at least one of the circuit and the processor having the memory is configured to cause the information management device to provide at least one of: the data transmission unit; and the data storage unit.), therefore, “a data transmission unit” and “a data storage unit” in the information management device are separated from the other elements cited in claim 9 (a circuit and memory).
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f), applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f), or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f).
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Examiner Note
14. The Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the Applicant(s). Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Claim Rejections - 35 USC § 102
15. 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.
16. 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;
17. Claims 1-10 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Natanzon et al (US 20200228323 A1) hereinafter as Natanzon.
18. Regarding claim 1, Natanzon teaches An information management method for managing information collected by a reporter under a management of an administrator executed by a computer (Fig 1 discloses aspects of an example operating environment (An information management method executed by a computer), [0014], “The blockchain network may include a ledger, and an administrator.”), the information management method comprising a process executed by at least one processor (Fig 1 discloses aspects of an example operating environment (An information management method executed by a computer) and Fig 2 discloses aspects of an example host configuration (comprising a processor 506 and memory 502)),
wherein: the process includes:
transmitting transmission data based on reporter data prepared by the reporter to a transmission destination in connection with the administrator (Fig 1, [0029-0030], “Each of the data management elements (DME) 302, 304 and 306 (the reporter terminals) may include a respective adapter 302a, 304a, and 306a, which can take the form of a blockchain software plugin. Inclusion of the adapters 302a, 304a and 306a enables the corresponding DMEs 302, 304 and 306 to act as nodes of the blockchain network 200, and communications between the DMEs 302, 304 and 306 and elements of the blockchain network (transmission destination) may take place by way of the respective adapters 302a, 304a and 306a.”, transmission data (data plus hash), see also Fig 2, “DME (reporter;
preparing a backup of the transmission data (Fig 3. Steps 602-604, [0056], “DME creates a backup of data. In conjunction with creation of the backup 602, the data management element may also create metadata 604 concerning the content of the backup and concerning such information as identity of the entity that created the backup, and a transaction ID”);
preparing verification information to be used for verifying that the backup has not been falsified (Fig 3, step 606-612, [0057], “After the backup has been created 602, and corresponding metadata generated 604, the backup is hashed 606. The resulting hash uniquely identifies the data of the backup”, [0058], “An aggregate hash (verification information) is then generated 612 based on the backup hash, the metadata, and the last observed key… a hash may be generated on the following combination of elements: backup hash+metadata+last observed key.”); and
storing the backup together with the verification information in a database of the reporter ([0041], “the hash of the backup data, and creation/storage of the aggregate key, are performed automatically, and immediately, after the backup has been generated. Thus, there is assurance that the aggregate key accurately reflects the backup creation time.”, Fig 3, step 614-616, [0058], “After the aggregate hash has been generated 612, it may be transmitted 614 to the blockchain network for storage as a block in the blockchain (storage). In at least some embodiments, the processes 606, 608, 612, and 614, are collectively performed in as short a timespan as possible.”).
19. Regarding claim 2, Natanzon teaches the invention as claimed in claim 1 above and further teaches wherein: the preparing of the verification information includes assigning consecutive management numbers as the verification information to the backup to be stored in the database ([0014-0016], “The hash value, which is stored in the blockchain, may be generated, for example, by the data protection element that performs the backup process. A global key generator periodically creates a key that is also stored in the blockchain. Storing the key that was the last key created prior to the backup, in association with that backup, will prove that the backup was created after the key was generated.”, [0045], “the hashes can be thought of as analogous to fingerprints, in that each hash uniquely corresponds to the particular set of data from which the hash was derived.”, [0058], “a hash may be generated on the following combination of elements: backup hash+metadata+last observed key.”).
20. Regarding claim 3, Natanzon teaches the invention as claimed in claim 1 above and further teaches wherein: the preparing of the verification information includes generating hashed data, as the verification information, by hashing the backup using a hash function ([0045], “the hashes can be thought of as analogous to fingerprints, in that each hash uniquely corresponds to the particular set of data from which the hash was derived.”, see also Fig 3, step 606, [0058], “a hash may be generated on the following combination of elements: backup hash+metadata+last observed key.”).
21. Regarding claim 4, Natanzon teaches the invention as claimed in claim 3 above and further teaches wherein: the generating of the hashed data includes: combining the reporter data with the backup ([0014], “a hash value is generated that describes the content, that is, the data (reporter data), and metadata relating to the backup. Any suitable hashing algorithm can be used.”, [0040], “After a backup has been created by a DME, the adapter, or another element, of that DME may generate a hash of the backup data”, [0042], “a record, in the form of the aggregate hash, is thus created that identifies the data in the backup, the time that the backup was created, and the metadata concerning the backup.”, Fig 3, step 612).
22. Regarding claim 5, Natanzon teaches the invention as claimed in claim 3 above and further teaches wherein: the process further includes changing a content of the process for hashing the backup ([0016], “The two restored, and verified, backups can then be compared to each other to then determine whether or not the personal data was actually deleted. If so, the personal data will appear in the first, earlier, backup, but not in the second, later, backup.”, [0047], [0062], “the restored backups may be compared 712 to each other in order to identify what, if any, changes took place between the time that the first backup was created and the time that the second backup was created…useful for determining whether or not particular data included in the first backup was deleted at some point prior to the time the second backup was created.”).
23. Regarding claim 6, Natanzon teaches the invention as claimed in claim 1 above and further teaches wherein: the process further includes: acquiring a transmission log that records that the transmission data having a same content as the backup has been transmitted to the transmission destination; and the storing of the backup includes storing the transmission log in the database together with the backup ([0014], “A global key generator periodically creates a key (a transmission log) that is also stored in the blockchain. Storing the key (a transmission log) that was the last key created prior to the backup, in association with that backup, will prove that the backup was created after the key was generated.”, [0056], “a transaction ID”).
24. Regarding claim 7, Natanzon teaches the invention as claimed in claim 1 above and further teaches wherein:
the reporter data includes history body data recorded on the reporter and history metadata accompanied with the history body data ([0038], “metadata also embraces transaction metadata, that is, information about a particular transaction involving, for example, a backup, such as creation of the backup.”, [0056], “create metadata 604 concerning the content of the backup and concerning such information as identity of the entity that created the backup, and a transaction ID”); and
the process further includes generating, as information to be included in the transmission data, a first hash value acquired by hashing the history body data using a hash function, and a second hash value acquired by hashing pre-process data including at least the history metadata using the hash function ([0016], [0045], [0061-0062], “two hashes thus created 704 are then compared 706”).
25. Regarding claim 8, Natanzon teaches the invention as claimed in claim 1 above and further teaches wherein: the process further includes storing a change record that records a change in a content added to the backup in the database in connection with the backup when the change is added to the backup ([0062], “the restored backups may be compared 712 to each other in order to identify what, if any, changes took place between the time that the first backup was created and the time that the second backup was created…useful for determining whether or not particular data included in the first backup was deleted at some point prior to the time the second backup was created.”).
26. Regarding claim 9, this claim recites a system performs the method of claim 1 and is rejected under the same rationale.
27. Regarding claim 10, Natanzon teaches the invention as claimed in claim 9 above and further teaches The information management device according to claim 9, further comprising: at least one of (i) a circuit and (ii) a processor having a memory storing computer program code, wherein: the at least one of the circuit and the processor having the memory is configured to cause the information management device to provide at least one of: the data transmission unit; and the data storage unit (Fig 2).
CONCLUSION
28. The prior art made of record and not relied upon is considered pertinent to applicant s disclosure.
Bijoy et al (US 20220398165 A1)
Kodama et al (US 20210234851 A1)
Schmeling et al (US 20190180291 A1)
Chopra et al (US 20220269809 A1)
Vorsprach et al (US 20140379660 A1)
Xiao et al (US 20210109917 A1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HICHAM SKHOUN whose telephone number is (571)272-9466. The examiner can normally be reached Normal schedule: Mon-Fri 10am-6:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Ng can be reached at 5712701698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HICHAM SKHOUN/Primary Examiner, Art Unit 2164