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 .
Claim Status
Claims 1-10 are pending.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The following is Examiner's analysis of the claimed invention under the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG)
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. Claim 1 recites a machine (device), claim 5 recites process (method), claim 9 recites a manufacture (computer program product comprising a computer-readable recording medium).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. Claim 1 (and similar claims 5 and 9) recites “determine whether the target record is one of the records in the activated state or one of the records in the deactivated state: determine whether the target record includes a data pattern designated by the search command” which falls within the mental processes grouping of abstract ideas. Making determinations about target records covers performance of the limitation in the mind; therefore, the claim recites an abstract idea.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. Claim 1 recites “a portable electronic device comprising: a memory configured to store one or more records each being in an activated state and one or more records each being in a deactivated state; and one or more processors coupled to the memory and configured to” which amounts to merely including instructions to implement an abstract idea on a computer.
Claim 1 recites “a control method for a portable electronic device, the method comprising: storing, in a memory of the portable electronic device, one or more records each being in an activated state and one or more records each being in a deactivated state” which is mere necessary data gathering.
Claim 1 (and similar claims 5 and 9) recites “receive a search command from an external device: obtain a target record designated by the search command, the target record being obtained by searching the records in the activated state and the records in the deactivated state stored in the memory” which is mere necessary data gathering.
Claim 1 (and similar claims 5 and 9) recites “generate response data responding to the search command after determining that the target record includes the data pattern, the response data including an identifier of the target record and a tag indicating that the target record is one of the records in the activated state or one of the records in the deactivated state; and output the response data to the external device” which is insignificant-extra solution activity tangentially related to the invention. Adding a final step of “generating and outputting response data” does not add a meaningful limitation to the judicial exception, and therefore, the additional element is insignificant-extra solution activity.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
The courts have determined merely including instructions to implement the abstract idea on a computer does not qualify as “significantly more” when recited in a claim with a judicial exception (See Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984).
Claim 1 (and similar claims 5 and 9) recites “generate response data responding to the search command after determining that the target record includes the data pattern, the response data including an identifier of the target record and a tag indicating that the target record is one of the records in the activated state or one of the records in the deactivated state; and output the response data to the external device” which is transmitting data over a network. The courts have determined transmitting data over a network is well‐understood, routine, and conventional functionality when claimed in a merely generic manner (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362).
There is no indication that the elements of the claim, individually nor in combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
For the reasons above, claims 1, 5, and 9 are rejected as being directed to nonpatentable subject matter under §101. This rejection applies equally to the dependent claims. The additional limitations of the dependent claims are addressed briefly below:
Regarding claim 2
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a system (device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the one or more processors are configured to output a search result corresponding to the record in, in a case where two or more records as target records are obtained by searching the memory, generate the response data by arranging the identifier of each target record to follow the corresponding tag for each of the activated state (Activate) and a search result corresponding to the record in the deactivated state” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 3
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a system (device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the search command designates, as the target record, a record in the activated state and/or a record in the deactivated state” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 4
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a system (device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the search command includes a parameter for designating one file or a plurality of files, each being constituted by one or more records” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 6
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “further comprising in a case where two or more records as target records are obtained by searching the memory, generating the response data by arranging the identifier of each target record to follow the corresponding tag for each of the activated state and the deactivated state” which is mere necessary data gathering and outputting.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 7
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the search command designates, as the target record, a record in the activated state and/or a record in the deactivated state” which is mere necessary data gathering and outputting.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 8
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the search command includes a parameter for designating one file or a plurality of files, each being constituted by one or more records” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 10
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a manufacture (computer program product).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the processing to be executed by the computer further includes, in a case where two or more records as target records are obtained by searching the memory, generating the response data by arranging the identifier of each target record to follow the corresponding tag for each of the activated state and the deactivated state” which is mere necessary data gathering and outputting.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Taken alone, the additional elements of the dependent claims do not amount to significantly
more than the above-identified judicial exception (the abstract idea). 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.
Claim Rejections - 35 USC § 103
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 1, 2, 5, 6, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Osborne et al (US 20020106622 A1) hereafter Osborne in view of Boxrec
Regarding claim 1, Osborne teaches a portable electronic device comprising: a memory configured to store one or more records each being in an activated state and one or more records each being in a deactivated state; and one or more processors coupled to the memory and configured to: receive a search command from an external device(Para 0061, a utility for performing searches); obtain a target record designated by the search command the target record being obtained by searching the records in the activated state and the records in the deactivated state stored in the memory (Para 0061, a utility for performing searches according to predefined criteria, a utility for creating customized certification status reports, a utility for viewing all active or all active and inactive records); determine whether the target record is one of the records in the activated state or one of the records in the deactivated state (Para 0061, a utility for viewing all active or all active and inactive records); determine whether the target record includes a data pattern designated by the search command (Para 0061, a utility for performing searches according to predefined criteria).
Osborne does not appear to explicitly teach generate response data responding to the search command after determining that the target record includes the data pattern, the response data including an identifier of the target record and a tag indicating that the target record is one of the records in the activated state or one of the records in the deactivated state; and output the response data to the external device.
In analogous art, Boxrec teaches generate response data responding to the search command after determining that the target record includes the data pattern, the response data including an identifier of the target record and a tag indicating that the target record is one of the records in the activated state or one of the records in the deactivated state (Male Box-pro Ratings all time (inactive)/ active); and output the response data to the external device (Muhammad Ali; heavyweight; inactive). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Osborne to include the teaching of Boxrec. One of ordinary skill in the art would be motivated to implement this modification in order to output records corresponding to an activated or deactivate state, as taught by Boxrec (Search for active and inactive boxers).
Regarding claim 2, Osbourne in view of Boxrec teaches the portable electronic device according to claim 1, wherein the one or more processors are configured to, in a case where two or more records as target records are obtained by searching the memory, generate the response data by arranging the identifier of each target record to follow the corresponding tag for each of the activated state and the deactivated state (Para 0061, a utility for viewing all active or all active and inactive records, a utility allowing the administrator to manage the records, and a help utility).
Claim 5 is the method claim corresponding to the device claim 1, and is analyzed and rejected accordingly.
Claim 6 is the method claim corresponding to the device claim 2, and is analyzed and rejected accordingly.
Claim 9 is the product claim corresponding to the device claim 1, and is analyzed and rejected accordingly.
Claim 10 is the product claim corresponding to the device claim 2, and is analyzed and rejected accordingly.
Claims 3, 4, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Osborne in view of Boxrec further in view of Chen et al (US 20170161333 A1) hereafter Chen
Regarding claim 3, Osborne in view of Boxrec teaches the portable electronic device according to claim 1, as shown above. Osborne in view of Boxrec does not appear to explicitly teach wherein the search command designates, as the target record, a record in the activated state and/or a record in the deactivated state.
In analogous art, Chen teaches wherein the search command designates, as the target record, a record in the activated state and/or a record in the deactivated state (Para 0026, a search granularity status for a defined search granularity class can have an integrity status, pending status, or an inactive status). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Osborne in view of Boxrec to include the teaching of Chen. One of ordinary skill in the art would be motivated to implement this modification in order to provide search query granularity, as taught by Chen (Para 0002, A data synchronization stream of data records to generate a search index based on the one or more search granularity classes is indexed).
Regarding claim 4, Osborne in view of Boxrec in view of Chen teaches the portable electronic device according to claim 1, wherein the search command includes a parameter for designating one file or a plurality of files, each being constituted by one or more records (Para 0013, a computer system, such as a managed file transfer (MFT) system, may receive a search request from a target computer system, where the target computer system is requesting near-real time access to data stored in one or more computer systems of the cloud environment, as well as near-real time access to data from a synchronization data stream). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Osborne in view of Boxrec to include the teaching of Chen. One of ordinary skill in the art would be motivated to implement this modification in order to provide search query granularity, as taught by Chen (Para 0002, A data synchronization stream of data records to generate a search index based on the one or more search granularity classes is indexed).
Claim 7 is the method claim corresponding to the device claim 3, and is analyzed and rejected accordingly.
Claim 8 is the method claim corresponding to the device claim 4, and is analyzed and rejected accordingly.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brooks Hale whose telephone number is 571-272-0160. The examiner can normally be reached 9am to 5pm est.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sanjiv Shah can be reached on (571) 272-4098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.T.H./Examiner, Art Unit 2166
/SANJIV SHAH/Supervisory Patent Examiner, Art Unit 2166
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