DETAILED ACTION
Notice of 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted was filed on the mailing date of the application on January 27, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 8 and 16-20 are objected to because of the following informalities:
Claim 8, lines 3-4, “providing, by an information processing apparatus, a terminal apparatus” should read --providing, by an information processing apparatus[[,]] to a terminal apparatus--.
For claims 16-20, line 1, “The medium according to claim” should read --The non-transitory computer readable medium according to-- as this seems to be a typographical error of the term “a non-transitory computer readable medium.”
Appropriate correction is required.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) 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) 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) because the claim limitations use 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 limitations are:
“providing, by an information processing apparatus ..a content…” in claim 8.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they 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 these limitations interpreted under 35 U.S.C. 112(f), Applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
Claim Interpretation
The claim limitations “providing, by an information processing apparatus, a terminal apparatus owned by a customer who has ordered the package with a content that is set to be viewable by the customer, during delay time from the scheduled delivery time to a delivery completion time at which the delivery of the package is completed,” as recited in claim 8, “predicting a time period during which a highlight part of the viewed content is delivered, and setting the predicted time period as a time period during which the package is not delivered,” as recited in claim 11, does not move to distinguish the claimed invention from the cited art. The phrases are conditional/contingent limitations with the noted “in a case in which delivery of a package to a designated delivery point is not completed by a scheduled delivery time,” as recited in claim 8, and “in a case in which the provided content is being viewed on the terminal apparatus,” as recited in claim 11, steps not necessarily performed.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. As such, the claim limitation will not be given patentable weight. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) for an analysis of contingent claim limitations in the context of both method claims and system claims; See MPEP §2111.04 II.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-7 are drawn to a machine, claims 8-14 are drawn to a process, and claims 15-20 are drawn to an article of manufacture, each of which is within the four statutory categories (e.g., a process, a machine). (Step 1: YES).
Step 2A – Prong One: In prong one of step 2A, the claims are analyzed to evaluate whether they recite a judicial exception.
Claim 1 (representative of claims 8 and 15) recites/describes the following steps:
“in a case in which delivery of a package to a designated delivery point is not completed by a scheduled delivery time, provide … a customer who has ordered the package with a content that is set to be viewable by the customer, during delay time from the scheduled delivery time to a delivery completion time at which the delivery of the package is completed.”
These steps, under broadest reasonable interpretation, describe or set-forth providing content to a customer waiting for a delivery, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Each of the depending claims likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis. Any elements recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim.
Step 2A – Prong Two:
The claims recite the additional elements/limitations of: “an information processing apparatus comprising: a communication interface; and a controller configured to establish communication by the communication interface,” and “a terminal apparatus,” (claim 1); “an information processing apparatus, a terminal apparatus,” (claim 8); “a non-transitory computer readable medium storing a program configured to cause an information processing apparatus to execute operations,” and “a terminal apparatus,” (claim 15).
The requirement to execute the claimed steps/functions using “an information processing apparatus comprising: a communication interface; and a controller configured to establish communication by the communication interface,” and “a terminal apparatus,” (claim 1); “an information processing apparatus, a terminal apparatus,” (claim 8); “a non-transitory computer readable medium storing a program configured to cause an information processing apparatus to execute operations,” and “a terminal apparatus,” (claim 15), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See § MPEP 2106.05(f).
Remaining dependent claims 2-7, 9-14, and 16-20 either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
As discussed above in “Step 2A – Prong 2,” the requirement to execute the claimed steps/functions using “an information processing apparatus comprising: a communication interface; and a controller configured to establish communication by the communication interface,” and “a terminal apparatus,” (claim 1); “an information processing apparatus, a terminal apparatus,” (claim 8); “a non-transitory computer readable medium storing a program configured to cause an information processing apparatus to execute operations,” and “a terminal apparatus,” (claim 15), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more.” See MPEP § 2106.05(f).
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer.
Remaining dependent claims 2-7, 9-14, and 16-20 either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claims amount to significantly more than the abstract idea identified above (Step 2B: NO).
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 1-6, 8-13, and 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tazume (US 2023/0196263 A1).
Regarding claim 1, Tazume discloses an information processing apparatus comprising: a communication interface; and a controller configured to establish communication by the communication interface (Par. [0034], Each of the delivery machine 1, the information processing server 2, and the user terminal 3 can be connected to a communication network NW; Par. [0053]), wherein the controller is configured to,
in a case in which delivery of a package to a designated delivery point is not completed by a scheduled delivery time (Par. [0060], in a case where the recipient feels dissatisfied when viewing the map image presented by the delivery machine position presenting unit 231, such as a case where there is a plurality of delivery destinations and the delivery machine 1 is stopped at a delivery destination of another user for a long time),
provide a terminal apparatus owned by a customer who has ordered the package (Par. [0075], Here, the content providing unit 233 may determine whether or not the delivery status of the delivery machine 1 is delivery in progress in response to the provision request from the user terminal 3, and provide the content specified in step S2 to the user terminal 3 in a case where the delivery status is determined to be delivery in progress (that is, after waiting until the delivery status changes to delivery in progress)) with a content that is set to be viewable by the customer (Par. [0049], Examples of the content type (category) include electronic book, music, moving image (video), and game),
during delay time from the scheduled delivery time to a delivery completion time at which the delivery of the package is completed (Par. [0060], during the delivery waiting time, when the delivery status of the article is delivery in progress, the content may be provided to the user terminal 3. That is, the content can be output when the delivery status is delivery in progress).
Regarding claim 2, Tazume discloses the information processing apparatus according to claim 1. Tazume discloses wherein the content is video, animation, music, and/or an electronic book (Par. [0049], Examples of the content type (category) include electronic book, music, moving image (video), and game).
Regarding claim 3, Tazume discloses the information processing apparatus according to claim 1. Tazume discloses wherein the controller is configured to further provide the terminal apparatus with a discount service limited during the delay time at a predetermined website that sells goods or services (Par. [0063], “If you receive the package within x minutes from the arrival of the package, a discount coupon that can be used at the time of purchase of viewed content will be granted.” is displayed as information indicating that the benefit is granted to the recipient in a case where the time from the arrival of the delivery machine 1 to the receipt of the article by the recipient is short).
Regarding claim 4, Tazume discloses the information processing apparatus according to claim 1. Tazume discloses wherein the controller is configured to, in a case in which the provided content is being viewed on the terminal apparatus, predict a time period during which a highlight part of the viewed content is delivered, and set the predicted time period as a time period during which the package is not delivered (Par. [0070], calculates the delivery waiting time until the delivery machine 1 arrives at the delivery destination of the article on the basis of, for example, the scheduled arrival time at the delivery destination of the delivery machine 1 (step S1); Par. [0071], in a case of specifying content of a size, a type, or a reproduction time according to the delivery waiting time, the content specifying unit 232 determines whether or not the delivery waiting time is y minutes (for example, 30 minutes) or more).
Regarding claim 5, Tazume discloses the information processing apparatus according to claim 1. Tazume discloses wherein the controller is configured to provide the terminal apparatus with an amount corresponding to a length of the delay time (Par. [0059], for the content of the type according to the delivery waiting time, for example, a table that defines a correspondence relationship between the delivery waiting time and the content type may be used. FIG. 5 is a diagram illustrating an example of a table that defines a correspondence relationship between the delivery waiting time and the content type).
Regarding claim 6, Tazume discloses the information processing apparatus according to claim 1. Tazume discloses wherein the incentive is a service point, mileage, video viewing time, a coupon, a lottery, and/or a charged item for a game (Par. [0063], “If you receive the package within x minutes from the arrival of the package, a discount coupon that can be used at the time of purchase of viewed content will be granted.” is displayed as information indicating that the benefit is granted to the recipient in a case where the time from the arrival of the delivery machine 1 to the receipt of the article by the recipient is short).
Regarding claim 8, Tazume discloses an information processing method comprising, in a case in which delivery of a package to a designated delivery point is not completed by a scheduled delivery time (Par. [0060], in a case where the recipient feels dissatisfied when viewing the map image presented by the delivery machine position presenting unit 231, such as a case where there is a plurality of delivery destinations and the delivery machine 1 is stopped at a delivery destination of another user for a long time),
providing, by an information processing apparatus (Par. [0034], Each of the delivery machine 1, the information processing server 2, and the user terminal 3 can be connected to a communication network NW; Par. [0053]), a terminal apparatus owned by a customer who has ordered the package (Par. [0075], Here, the content providing unit 233 may determine whether or not the delivery status of the delivery machine 1 is delivery in progress in response to the provision request from the user terminal 3, and provide the content specified in step S2 to the user terminal 3 in a case where the delivery status is determined to be delivery in progress (that is, after waiting until the delivery status changes to delivery in progress)) with a content that is set to be viewable by the customer (Par. [0049], Examples of the content type (category) include electronic book, music, moving image (video), and game),
during delay time from the scheduled delivery time to a delivery completion time at which the delivery of the package is completed (Par. [0060], during the delivery waiting time, when the delivery status of the article is delivery in progress, the content may be provided to the user terminal 3. That is, the content can be output when the delivery status is delivery in progress).
Regarding claim 9, Tazume discloses the information processing method according to claim 8. Tazume discloses wherein the content is video, animation, music, and/or an electronic book (Par. [0049], Examples of the content type (category) include electronic book, music, moving image (video), and game).
Regarding claim 10, Tazume discloses the information processing method according to claim 8. Tazume discloses wherein the controller is configured to further provide the terminal apparatus with a discount service limited during the delay time at a predetermined website that sells goods or services (Par. [0063], “If you receive the package within x minutes from the arrival of the package, a discount coupon that can be used at the time of purchase of viewed content will be granted.” is displayed as information indicating that the benefit is granted to the recipient in a case where the time from the arrival of the delivery machine 1 to the receipt of the article by the recipient is short).
Regarding claim 11, Tazume discloses the information processing method according to claim 8. Tazume discloses wherein the controller is configured to, in a case in which the provided content is being viewed on the terminal apparatus, predict a time period during which a highlight part of the viewed content is delivered, and set the predicted time period as a time period during which the package is not delivered (Par. [0070], calculates the delivery waiting time until the delivery machine 1 arrives at the delivery destination of the article on the basis of, for example, the scheduled arrival time at the delivery destination of the delivery machine 1 (step S1); Par. [0071], in a case of specifying content of a size, a type, or a reproduction time according to the delivery waiting time, the content specifying unit 232 determines whether or not the delivery waiting time is y minutes (for example, 30 minutes) or more).
Regarding claim 12, Tazume discloses the information processing method according to claim 8. Tazume discloses wherein the controller is configured to provide the terminal apparatus with an amount corresponding to a length of the delay time (Par. [0059], for the content of the type according to the delivery waiting time, for example, a table that defines a correspondence relationship between the delivery waiting time and the content type may be used. FIG. 5 is a diagram illustrating an example of a table that defines a correspondence relationship between the delivery waiting time and the content type).
Regarding claim 13, Tazume discloses the information processing method according to claim 8. Tazume discloses wherein the incentive is a service point, mileage, video viewing time, a coupon, a lottery, and/or a charged item for a game (Par. [0063], “If you receive the package within x minutes from the arrival of the package, a discount coupon that can be used at the time of purchase of viewed content will be granted.” is displayed as information indicating that the benefit is granted to the recipient in a case where the time from the arrival of the delivery machine 1 to the receipt of the article by the recipient is short).
Regarding claim 15, Tazume discloses a non-transitory computer readable medium storing a program configured to cause an information processing apparatus to execute operations (Par. [0034], Each of the delivery machine 1, the information processing server 2, and the user terminal 3 can be connected to a communication network NW; Par. [0053]), the operations comprising,
in a case in which delivery of a package to a designated delivery point is not completed by a scheduled delivery time (Par. [0060], in a case where the recipient feels dissatisfied when viewing the map image presented by the delivery machine position presenting unit 231, such as a case where there is a plurality of delivery destinations and the delivery machine 1 is stopped at a delivery destination of another user for a long time),
providing a terminal apparatus owned by a customer who has ordered the package (Par. [0075], Here, the content providing unit 233 may determine whether or not the delivery status of the delivery machine 1 is delivery in progress in response to the provision request from the user terminal 3, and provide the content specified in step S2 to the user terminal 3 in a case where the delivery status is determined to be delivery in progress (that is, after waiting until the delivery status changes to delivery in progress)) with a content that is set to be viewable by the customer (Par. [0049], Examples of the content type (category) include electronic book, music, moving image (video), and game),
during delay time from the scheduled delivery time to a delivery completion time at which the delivery of the package is completed (Par. [0060], during the delivery waiting time, when the delivery status of the article is delivery in progress, the content may be provided to the user terminal 3. That is, the content can be output when the delivery status is delivery in progress).
Regarding claim 16, Tazume discloses the non-transitory computer readable medium according to claim 15. Tazume discloses wherein the content is video, animation, music, and/or an electronic book (Par. [0049], Examples of the content type (category) include electronic book, music, moving image (video), and game).
Regarding claim 17, Tazume discloses the non-transitory computer readable medium according to claim 15. Tazume discloses wherein the controller is configured to further provide the terminal apparatus with a discount service limited during the delay time at a predetermined website that sells goods or services (Par. [0063], “If you receive the package within x minutes from the arrival of the package, a discount coupon that can be used at the time of purchase of viewed content will be granted.” is displayed as information indicating that the benefit is granted to the recipient in a case where the time from the arrival of the delivery machine 1 to the receipt of the article by the recipient is short).
Regarding claim 18, Tazume discloses the non-transitory computer readable medium according to claim 15. Tazume discloses wherein the controller is configured to, in a case in which the provided content is being viewed on the terminal apparatus, predict a time period during which a highlight part of the viewed content is delivered, and set the predicted time period as a time period during which the package is not delivered (Par. [0070], calculates the delivery waiting time until the delivery machine 1 arrives at the delivery destination of the article on the basis of, for example, the scheduled arrival time at the delivery destination of the delivery machine 1 (step S1); Par. [0071], in a case of specifying content of a size, a type, or a reproduction time according to the delivery waiting time, the content specifying unit 232 determines whether or not the delivery waiting time is y minutes (for example, 30 minutes) or more).
Regarding claim 19, Tazume discloses the non-transitory computer readable medium according to claim 15. Tazume discloses wherein the controller is configured to provide the terminal apparatus with an amount corresponding to a length of the delay time (Par. [0059], for the content of the type according to the delivery waiting time, for example, a table that defines a correspondence relationship between the delivery waiting time and the content type may be used. FIG. 5 is a diagram illustrating an example of a table that defines a correspondence relationship between the delivery waiting time and the content type).
Regarding claim 20, Tazume discloses the non-transitory computer readable medium according to claim 15. Tazume discloses wherein the incentive is a service point, mileage, video viewing time, a coupon, a lottery, and/or a charged item for a game (Par. [0063], “If you receive the package within x minutes from the arrival of the package, a discount coupon that can be used at the time of purchase of viewed content will be granted.” is displayed as information indicating that the benefit is granted to the recipient in a case where the time from the arrival of the delivery machine 1 to the receipt of the article by the recipient is short).
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.
Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tazume (US 2023/0196263 A1) in view of Fredrich et al. (US 2018/0285809 A1), hereinafter Fredrich.
Regarding claim 7, Tazume discloses the information processing apparatus according to claim 1. Tazume does not explicitly disclose wherein the controller is configured to, upon receiving, from the terminal apparatus, a postponement request to postpone a delivery time, notify the terminal apparatus of a scheduled delivery time set in response to the postponement request. Fredrich teaches wherein the controller is configured to, upon receiving, from the terminal apparatus, a postponement request to postpone a delivery time, notify the terminal apparatus of a scheduled delivery time set in response to the postponement request (Par. [0040]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the content system of Tazume to include the delivery postponement abilities of Fredrich since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 14, Tazume discloses the information processing method according to claim 8. Tazume does not teach further comprising, upon receiving, from the terminal apparatus, a postponement request to postpone a delivery time, notify the terminal apparatus of a scheduled delivery time set in response to the postponement request. Fredrich teaches wherein the controller is configured to, upon receiving, from the terminal apparatus, a postponement request to postpone a delivery time, notify the terminal apparatus of a scheduled delivery time set in response to the postponement request (Par. [0040]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the content system of Tazume to include the delivery postponement abilities of Fredrich since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
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/Patrick Kim/Examiner, Art Unit 3628