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 Claims
This is a nonfinal rejection in response to claims filed on 02/25/2025. Claims 1-20 are pending and are examined herein.
Priority
The present application has a 371 application #PCT/US23/72126 filed on 2023-08-12, with a US provisional application filed on 2022-09-01.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
-Fig. 2, reference numbers 200, 210, 220, 230, and 240 are not mentioned in the specification.
-Fig. 3, reference numbers 300, 310, 320, 330, and 340 are not mentioned in the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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.
Claims 1-20 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited. For example, the lack of indentation makes it unclear whether the “algorithm” of claim 1, performs the “That makes one or more decisions on an intellectual property asset or group of assets;” Furthermore, it is unclear whether “Based on internally defined data points, externally defined data points, or any combination;” applies to the preceding line or the following line. It is also indefinite whether “That determines the one or more decisions on at least one predefined data points” is a continuation of the decisions made in the preceding steps, or if it is a new determination based on predefined data points that differ from the internally defined or externally defined data points.” Finally, it is indefinite as to whether the “Displays the one or more decisions to one or more user” is an action performed by the algorithm, or whether it is part of the steps of the method on its own. These issues in claim 1, also apply to independent claims 8 and 15, which are replete with the same indefinite language, and are narrative in form. Dependent claims 2-7, 9-14, and 16-20 are also rejected under 112(b) by virtue of their dependency on independent claims 1, 8, and 15. However, they are also replete with their own errors. For example, claims 2, 9, and 16 states, “Wherein the predefined data point or data points for the one or more decisions being updated after a user requests the one or more decision.” Due to the grammatical error, it is unclear whether the updating applies to the predefined data points or to the one or more decisions. Further issues are analyzed below.
Claims 2, 5, 6, 9, 12, 13, 16, 19 and 20 are 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.
- Regarding claims 2, 9, and 16, the phrase "such as" in “such processes as Al or machine learning” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). If the claims are intended to cover specifically AI or machine learning, then the user is encouraged to remove “such processes as.”
- Claims 5, 12, and 19 recites the limitation “the company” however, there is no previously mentioned company in the claims, and it is unclear which company is being referred to. Thus, here is insufficient antecedent basis for this limitation in the claim. The applicant may correct the claims by stating “a company” instead.
- Claims 6, 13, and 20 recites the limitation “the portfolio,” however, there is no portfolio previously mentioned in the claims, and it is unclear whether this is a new portfolio or the same group of intellectual property assets already mentioned. Thus, here is insufficient antecedent basis for this limitation in the claim. The applicant may correct this issue by replacing the limitation with “a portfolio” or “a portfolio of the intellectual property assets.”
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 15-20 rejected under 35 U.S.C. 101 because the 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 the claims are directed to a computer program product comprising: one or more computer readable storage media, without necessarily limiting the storage media to non-transitory forms. Since the claims do not limit the media to non-transitory forms, the broadest reasonable interpretation (BRI) of the claims must include transitory forms of signal transmission ((often referred to as "signals per se"), such as a propagating electrical or electromagnetic signal or carrier wave;). MPEP 2106.03 states, “Even when a product has a physical or tangible form, it may not fall within a statutory category. For instance, a transitory signal, while physical and real, does not possess concrete structure that would qualify as a device or part under the definition of a machine, is not a tangible article or commodity under the definition of a manufacture (even though it is man-made and physical in that it exists in the real world and has tangible causes and effects), and is not composed of matter such that it would qualify as a composition of matter. Nuijten, 500 F.3d at 1356-1357, 84 USPQ2d at 1501-03. As such, a transitory, propagating signal does not fall within any statutory category.”
This rejection may be addressed by amending the claims such that the computer readable storage media is limited to “non-transitory computer readable storage media.” Furthermore, the claims are reanalyzed under the 2 step process below, as if the limitation is limited to non-transitory forms, for purposes of compact prosecution.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Is the claim to a Process, Machine, Manufacture, or Composition of Matter
The independent claims 1, 8, and 15 are treated as the representative claims for the 2-step analysis. The dependent claims will be reanalyzed after the initial 2-step analysis on the independent claims. The representative claims are directed to:
Claims 1-7: A method comprising:
Claims 8-14 : A system comprising: A processor; and A memory in communication with the processor, the memory containing program instructions that, when executed by the processor, are configured to cause the processor to perform a method, the method comprising:
Claims 15-20 : A computer program product comprising: One or more computer readable storage media and program instructions stored on the one or more computer readable storage media, the stored program instructions comprising:
Claim 1 and 16 is directed to a method which falls within process. Claim 8 is a system claim, which falls under apparatus or machine. Claim 15 is claimed a computer program product operating on computer readable storage media, which is treated as if it falls within “manufacture.” Therefore, all of the claims are directed to at least potentially eligible subject matter category and are to be further analyzed under step 2.
Step 2a Prong 1: Is the claim reciting a Judicial Exception(A Law of Nature, a Natural Phenomenon (Product of Nature), or An Abstract Idea?)
The claims under the broadest reasonable interpretation in light of the specification are analyzed herein. Representative claims 1, 8, and 15 are marked up, isolating the abstract idea from additional elements, wherein the abstract idea is in bold and the additional elements have been italicized as follows:
Claim 1 Preamble: A method comprising:
Claim 8 Preamble: A system comprising: A processor; and A memory in communication with the processor, the memory containing program instructions that, when executed by the processor, are configured to cause the processor to perform a method, the method comprising:
Claim 15 Preamble: A computer program product comprising: One or more computer readable storage media and program instructions stored on the one or more computer readable storage media, the stored program instructions comprising:
Claim 1 Body (also representative of claims 8 and 15):
- An algorithm;
- That makes one or more decisions on an intellectual property asset or group of assets;
- Based on internally defined data points, externally defined data points, or any combination;
- That determines the one or more decisions on at least one predefined data points; and
- Displays the one or more decisions to one or more user.
When evaluating the bolded limitations of the claims under the broadest reasonable interpretation in light of the specification, it is clear that representative claims 1, 8, and 15 recite an abstract idea under the category of “certain methods of organizing human activity.” This abstract idea grouping found in MPEP 2106.04(a)(2)(II) includes concepts related to “fundamental economic principles or practices,” “commercial or legal interactions,” and “managing personal behavior or relationships or interactions between people.” The present invention falls squarely within the subcategory “commercial or legal interactions” which includes “agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations.” The claims merely recite the abstract idea of using an algorithm to make decisions on intellectual property assets based on data points, and displaying the output to a user. MPEP 2106.04(a)(2)(II)(B) states, “Other examples of subject matter where the commercial or legal interaction is advertising, marketing or sales activities or behaviors include: ...ii. using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps, 609 F.2d 481, 485, 203 USPQ 812, 816 (CCPA 1979);” In this example, similar to the present disclosure, use of an algorithm to inform business decisions, especially when recited at the level of breadth that it is recited, falls squarely within “certain methods of organizing human activity.” Therefore, the claims at least recite an abstract idea and are further analyzed under Step 2a Prong 2.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claims 1, 8, and 15 recite the following additional elements:
Claim 8- A system comprising:
-A processor; and
-A memory in communication with the processor, the memory containing program instructions that, when executed by the processor, are configured to cause the processor to perform a method, the method comprising:
Claim 15: A computer program product comprising:
- One or more computer readable storage media and program instructions stored on the one or more computer readable storage media, the stored program instructions comprising:
The additional elements are no more than a recitation of the words “apply it” (or an equivalent) or mere instructions to implement an abstract idea or other exception on a general purpose computer or generic computing components. In this case, the abstract idea of “using an algorithm to make decisions on intellectual property assets based on data points, and displaying the output to a user” is being performed on ordinary computing components such as a system processor, memory, computer, and computer readable storage media. Please see MPEP 2106.05(f) for more information on Mere Instructions to Apply An Exception. Therefore, since the claims recite functions that can be performed by any general purpose computer, as described in the present specification [0027-0034], it is not directed to any improvement to computer functionality, nor does it recite an improved computing infrastructure. See MPEP 2106.05(a). Therefore, the additional elements, whether analyzed individually or as a combination, fail to integrate the abstract idea into a practical application because it is merely equivalent to “apply it” or mere instructions to implement the abstract idea on a generic computer.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Continuing the analysis, the additional elements of claim 1, 8, and 15 are reanalyzed:
Claims 1, 8, and 15 recite the following additional elements:
Claim 8- A system comprising:
-A processor; and
-A memory in communication with the processor, the memory containing program instructions that, when executed by the processor, are configured to cause the processor to perform a method, the method comprising:
Claim 15: A computer program product comprising:
- One or more computer readable storage media and program instructions stored on the one or more computer readable storage media, the stored program instructions comprising:
When analyzed individually or in combination, these additional elements have not been found to include significantly more for the same reasons set forth in the Prong 2 rejection, specifically because the additional elements are generic computing devices in which the abstract idea is merely instructed to be performed on(see MPEP 2106.05(f). Furthermore, no improvements to these generic computing devices have been purported since they are performing functions well within their ordinary capacity(a processor to process instructions). Even when viewed as a whole, nothing in the claims meaningfully limits the abstract idea to a particular technological environment or provides significantly more (an inventive concept).
Regarding Dependent Claims 2-7, 9-14, and 16-20, the claims are re-evaluated under the full 2-step process, but are still directed to the abstract idea for the reasons set forth herein.
Dependent claims 2, 9, 16 merely further limit the abstract idea by reciting that the data points are updated as the user requests the one or more decision. This is more of the same abstract idea because given its broadest reasonable interpretation, it is recited with such generality that it can encapsulate a business or user merely importing more data. This action still would fall within “certain methods of organizing human activity,” because it is merely a commercial or legal interaction. When considering that the updated data points can be either through additional data, prior requested decisions by a user, “such processes as AI or machine learning,” or any combination, it is clear that the claims are recited with a high level of generality that they are still directed to an abstract idea, because there are no further additional elements recited. Even when considering the “AI or machine learning” limitation, which is optional, it would still not integrate the abstract idea into a practical application or provide significantly more, since it is merely a general link (MPEP 2106.05(h)) to the technological field of artificial intelligence. Even when considering individually or in combination with the previously presented additional elements, the combination of claims is still no more than mere instructions to perform the abstract idea on a generic computer. Even when viewed as a whole, nothing meaningfully limits the abstract idea such that it is significantly more.
Claims 3, 4, 7, 10, 11, 14, 17 and 18 merely further limit the abstract idea, either by indicating a process that a user can perform actions based on the findings (claims 3, 10, 17), that the algorithm is particularly for determining whether annuities or maintenance feeds should be paid on the asset group (4, 11, 18) or that a certain percent of decisions is made on the asset (7, 14). Even when considering these limitations, the claims are still directed to “commercial or legal interactions” because these activities all fall within business practices carried out by individuals. No further additional elements have been added, however, even when considering the further limited abstract idea with the previously presented additional elements, it is still merely “apply it” or mere instructions to perform the abstract idea on a generic computer. Even when viewed as a whole, nothing in the claims integrated the abstract idea into a practical application or meaningfully limits the abstract idea such that it is significantly more.
Claims 5, 6, 12, 13, 19 and 20 further limit the abstract idea by adding that the algorithm weighs each data point based on factors such as “expected business roadmap, costs, budget...) (claims 5, 12, 19) or “forecasted effects on the portfolio (claims 6, 13, 20). However, determining the weights of the algorithm even based on such factors is still a “certain method of organizing human activity,” because it still carries out the abstract business decision or “commercial interaction,” that broadly makes decisions based on certain data points. Weighing the data points on forecasted financial effects is a further extension of the same abstract idea. There are no further additional elements recited and even when considering the additional limits in combination with the previous additional elements, nothing in the claims integrates the abstract idea into a practical application. Even when viewed as a whole, nothing in the meaningfully limits the abstract idea such that it is significantly more.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 7-11, and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tabata et al. (US 20150178847 A1) hereinafter Tabata.
Regarding Claims 1, 8, 15:
Tabata discloses a patent portfolio management system that calculates the patent value, the payable amount for a patent, displays the patent’s to be abandoned or maintained on the patent schedule, and finalizes the decision via user input. Tabata teaches:
Claim 1 Preamble: A method comprising:(Tabata [0039] Further, a patent portfolio management method according to claim 11 comprises steps of:)
Claim 8 Preamble: A system comprising: A processor; and A memory in communication with the processor, the memory containing program instructions that, when executed by the processor, are configured to cause the processor to perform a method, the method comprising: (Tabata [0061] A patent portfolio management apparatus includes a control device 12, a storage device 100, an input device 6 and a display device 8. )
Claim 15 Preamble: A computer program product comprising: One or more computer readable storage media and program instructions stored on the one or more computer readable storage media, the stored program instructions comprising: (Tabata [0080] The input device 6 is adapted to input items necessary for the patent annual fee management through a screen of a client personal computer. First, an application program for the patent portfolio management apparatus according to an embodiment of the present invention is activated by a keyboard or a mouse of the input device 6, so that a patent annual fee management screen is displayed through a predetermined menu screen.)
Claim 1 Body (also representative of claims 8 and 15):
-An algorithm; (Tabata [0108] Next, after patent value score of each of the applications are calculated, the patent value calculation unit 19 sums up the calculated patent value scores per each of the groups of applications and patents constituting the patent portfolio, and calculates a total value score for each of the groups. At the same time, the patent value calculation unit 19 calculates an average value score by dividing the total value score by a total number of applications of the patent portfolio. The above-mentioned operation is performed per each of the extracted groups of the applications and patents.)
-That makes one or more decisions on an intellectual property asset or group of assets; (Tabata [0146] Thereupon, the annual fee payable amount is recalculated by the annual fee payable amount calculation unit 28, so that the annual fee payable amount as a result of the reconsiderations is displayed as a bar graph 40 as shown in FIG. 6. As a result of the reconsiderations, the annual fee payable amount is confirmed to be the same with or in the vicinity of the target annual fee amount, thereby making it possible to terminate the series of patent evaluation operations for management of the annual fee payable amount.[0147] Upon completion of the patent evaluation, patents to be maintained and patents to be abandoned are distinguished from each other, and the control device 12 outputs the evaluation result of the series of patent information for annual fee management. [0184] The decision logic as explained above can be achieved by having a computer make a decision by comparison between the target amount and the payable amount after the reduction. To be more specific, the decision logic can be achieved by having the control device 12 as shown in FIG. 2A or FIG. 2B provided therein with a comparison unit and a decision unit. In case that the target amount is unreached (YES in step S8), the decision logic returns to the step S6 again to have the PPF to be abandoned further selected.)
-Based on internally defined data points, externally defined data points, or any combination; (Tabata [0107] These software titles for patent analysis are considered to be adapted to process the published patent information, to raise items such as a number of drawings, a number of independent claims, a number of patent classification codes, a number of inventors, a number of cited references, a number of reasons for rejection, a number of times referenced as a citation of reason for rejection, a number of opposition requests filed, a number of provisions of information and the like, to multiply an importance factor to the raised items and to normalize data as necessary so that the value scores are adjusted with time variation. [0155] In the above description of the embodiment, the first storage section 1 stores therein four kinds of patent related data. However, the first storage section 1 may be adapted to store therein only published data such as the bibliographic data and the examination data, in which case the applicant outsources the patent portfolio management to an external investigation agency.)
-That determines the one or more decisions on at least one predefined data points; and(Tabata [0156] This allows the corporation to apply the first embodiment based on the published data, so that the PPFs of the groups of applications and patents to be maintained or abandoned are determined, thereby making it possible to identify the individual applications and patents to be maintained from among the groups of applications and patents thus determined to be abandoned. The applicant corporation that outsourced the patent portfolio management can receive a PPF evaluation result analyzed by the external investigation agency, so that the evaluation data and the PPF evaluation is reconsidered by an internal computer system using the internal data owned in the corporation, thereby making it possible to confirm the groups of the applications and patents that should truly be abandoned. [0191] If the total annual fee payable amount is approximately equal to the target amount or within the allowable amount range (NO in step S9), the total annual fee payable amount is determined to be approximately equal to the target amount (Step S10), and in this case a process to finalize the PPFs to be abandoned and the patents to be maintained is executed (Step 11), and the evaluation work is finished. Needless to say, by the aforementioned process, an after adjustment bar graph 102 in FIG. 13 will be approximately as tall as a target amount bar graph 103, although not shown as such in FIG. 13.)
-Displays the one or more decisions to one or more user. (Tabata [0215] The result of selecting the PPFs to be abandoned can be confirmed by the graph as shown in FIG. 6. To be more specific, the graph allows the use to confirm whether or not the annual fee payable amount is moved close to the target annual fee amount 35. [0211] Further, the fourth embodiment is explained hereinafter. In the first embodiment, the patent portfolio management apparatus is so constructed to display the screen as shown in FIG. 5 on which are simultaneously displayed the schedule 21, inclusive of the number of patents 23, the total value score 24 and the average value score 25 of the extracted patent portfolio management numbers 22 and the PPF value map 26, so that the user can select the PPFs to be abandoned. However, the patent portfolio management apparatus may otherwise be so constructed to have the computer automatically select the PPFs to be abandoned, rather than to allow the user to select the same.)
Regarding Claims 2, 9, 16:
Tabata teaches The method of claim 1/ The system of claim 8/ The computer program product of claim 15:
Furthermore, Tabata teaches:
- Wherein the predefined data point or data points for the one or more decisions being updated after a user requests the one or more decision;(Tabata [0128] In the above-mentioned explanation, the check boxes 30 are adapted specify the PPFs to be abandoned. However, the check boxes 30 may otherwise be adapted to specify the PPFs to be maintained. [0129] After marking the three check boxes 30 as described above, a calculation button 31 arranged below the schedule 21 is depressed, so that the annual fee payable amount is recalculated. Marking the check boxes 30 and depressing the calculation button 31 can be done for example through a cursor movement on the screen or clicking by a mouse of the input device 6. [0130] Next, the result of the recalculation of the patent annual fee payable amount is displayed on the display device 8 as a graph shown in FIG. 6. The graph has a vertical axis representing the total payable amount of the annual fee. The graph has a bar graph 35 and a bar graph 33 along its horizontal axis as shown in FIG. 6. The bar graph 35 shows a target amount, while the bar graph 33 shows the total amount of the annual fee of the patents currently owned by the corporation. [0131] In the present embodiment, some groups of the applications and patents in the PPF are extracted, and the total payable amount of annual fee for all the extracted groups of the applications and the patents is shown. ) In the embodiments above, Tabata describes “recalculating the annual fee payable amount” which satisfies updating a predefined data point.
- Wherein the predefined data point or data points are updated through a user, additional data, prior requested decisions by a user, such processes as Al or machine learning, or any combination.(Tabata [0078] The application data stored in the first storage section 1 needs to be successively updated, so that the control device 12 may be adapted to update the application data stored in the first storage section 1 by periodically taking in the published patent information from the database 210, for example through the internet 200 as shown in FIG. 2B.) The limitation only requires one out of the list of “a user, additional data, prior requested decisions by a user, such processes as Al or machine learning, or any combination” and since “additional data” is taught in [0078], the limitation is satisfied.
Regarding Claims 3, 10, 17:
Tabata teaches: The method of claim 1 further comprising/ The system of claim 8 wherein the method further comprises:/ The computer program product of claim 15, wherein the program instructions, stored on the one or more computer readable storage media, further comprises:
-A process by which a user can perform actions based on the algorithm's findings to update said asset or group of assets.(Tabata [0214] However, the patent portfolio management apparatus may be so constructed to allow the user to specify the coefficient a and b of the formula y=(a/x)+b on the screen of FIG. 5, although not shown, so that the position of the reference line 27 can be adjusted, thereby making it possible to allow the user to increase or decrease the PPFs to be abandoned at his or her own discreet. [0194] For example, it may be possible to determine whether or not there is any valuable patent included in PPF-B by a schedule of patents in PPF-B displayed on the screen as shown in FIG. 7. For example, in a case the "Abandon Japan Only" 51 is selected, the foreign applications are to be maintained, while in a case the "Abandon Foreign Only" 52 is selected, the Japanese application is to be maintained. In case the "Maintain Individual Application" 53 is selected, the "Maintenance Required" column 44 turns to accept an input, so that the individual application can be specified to be maintained by checking the "Maintenance Required" column 44.)
Regarding Claims 4, 11, 18:
Tabata teaches: The method of claim 1/ The system of claim 8/ The computer program product of claim 15:
- Wherein the algorithm determines whether annuities or maintenance fees should be paid on said asset or group of assets.(Tabata [0002] The present invention relates to an apparatus and a method for patent portfolio management adapted to provide an evaluation information per each of groups of patent applications and patents constituting a patent portfolio, based upon the evaluation information of each of individual patent applications constituting the patent portfolio, and thereby to assist in determining whether to maintain or abandon per each of the groups of the patent applications and the patents. [0206] When either one of the graph of FIG. 6 or the graph of FIG. 13 is displayed on the display device 8, the control device 12 determines whether or not the annual fee payable amount after the reconsideration is approximately equal to the target amount or within the allowable amount range (Step S15). This determination is also an automatic determination by the computer. In a case of failure in restoration to the target amount (NO in step S15), the process returns to the step S13 so that further patents to be restored (maintained) are selected. )
Regarding Claims 7, 14:
Tabata teaches: The method of claim 1/ The system of claim 8/ The computer program product of claim 15:
- Wherein the algorithm determines a percentage of decisions to be made on the asset or group of assets.(Tabata [0189] Thereafter, in step 9, the control device 12 determines whether or not the target amount is largely exceeded in the case that the target amount is reached. The user may preliminarily define criteria of "largely exceeded". For example, "largely exceeded" can be defined to indicate a state that an amount of difference exceeds 10% or 5% (allowable amount range), so that whether or not the target amount is largely exceeded can be automatically determined by a computer. [0190] This can be achieved by paving the control device 12 as shown in FIG. 2A or FIG. 2B provided therein with a comparison and determination program. However, in a case that the user desires to override a result of the determination by a machine rather than following the determination by the machine, so that the amount be further decreased, the user can return to the step 4 for inputting the target amount, where a revised target amount can be inputted.) The broadest reasonable interpretation of the claim above is that a percent of the decisions are made by the algorithm itself. In the case of Tabata, a user can define a threshold range in which the decision is automatically determined by the algorithm, thus the limitation is satisfied.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5, 6, 12, 13, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tabata et al. (US 20150178847 A1), in view of Crouse et al. (US 20210350484 A1) hereinafter Crouse
Regarding Claims 5, 12, 19:
Tabata teaches The method of claim 1/ The system of claim 8/ The computer program product of claim 15:
However, Tabata fails to teach:
- Wherein the algorithm weighs each data point or data points based on one or more of an expected business roadmap for the company, costs, budget, manufacturing location, market factors, comments from internal meetings, or a combination thereof.
Alternatively, Crouse discloses a framework for analyzing the monetary valuation of a portfolio of intellectual property assets using a variety of types of data. Crouse teaches:
- Wherein the algorithm weighs each data point or data points based on one or more of an expected business roadmap for the company, costs, budget, manufacturing location, market factors, comments from internal meetings, or a combination thereof.(Crouse [0032] After identifying a group of the intangible assets 106 to be analyzed, the intangible assets evaluation service 102 may determine a framework 114 by which intangible assets 106 are to be analyzed. In particular implementations, frameworks utilized to analyze intangible assets may include a number of factors 116 that are indicative of value of intangible assets...Additionally, the components 118 for individual factors 116 of a framework 114 used to evaluate the intangible assets 106 may be weighted. In certain implementations, the individual components 118 for individual factors 116 of the framework 114 may be weighted differently. In some implementations, the weighting of the components 118 may be based on the information utilized to determine metrics for the individual components 118. For example, information that directly corresponds to determining a metric for a component 118 may be weighted more heavily than information that indirectly may be utilized to determine a metric for the component 118. [0063] At 324, the intangible assets evaluation service 102 may determine a valuation characteristic relating to opportunity with respect to the patent portfolio 314. In various implementations, the intangible assets evaluation service 102 may determine an opportunity with respect to the patent portfolio 314 based on analyzing a number of opportunity factors 326 in relation to data associated with the patent portfolio 314. The opportunity factors 326 may include a market size and growth component and the intangible assets evaluation service 102 may determine a metric for the market size and growth component by identifying markets associated with products and/or services associated with the patent portfolio 314. The intangible assets evaluation service 102 may determine a size of the markets related to the products and/or services associated with the patent portfolio 314 by analyzing financial data and determining revenue generated through sales of the goods and/or services in included in the particular market. [0056] The data obtained from the data sources 302, 304, 306 may include a business plan of an organization that is associated with the patent portfolio 314, a marketing strategy of the organization, and information related to product and/or service offerings by the organization.) Crouse’s teachings of determining opportunity factors based on market size satisfies at least one out of the list, therefore the limitation is satisfied.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present disclosure to modify Tabata by adding the teachings of Crouse, particularly by weighing the data points of the algorithm based on market factors. One of ordinary skill would have found the outcome as a result of inserting Crouse’s asset analysis program into Tabata to have a predictable outcome since Tabata teaches that any patent analysis software may be used for calculating the patent value score. One of ordinary skill in the art would have been motivated to use Crouse’s technique as it would allow for the improved accuracy of qualitative analyses of a patent’s value. (Crouse [0078] The use of at least one of the one or more coverage metrics 322, the one or more opportunity metrics 328, or the risk metrics 334 may improve the accuracy of subsequent qualitative analyses and/or quantitative analyses of additional patent portfolios.)
Regarding Claims 6, 13, 20:
Tabata teaches The method of claim 1/ The system of claim 8/ The computer program product of claim 15:
However, Tabata fails to teach:
- Wherein the algorithm weighs each data point or data points based on forecasted effects on the portfolio.
Alternatively, Crouse teaches:
- Wherein the algorithm weighs each data point or data points based on forecasted effects on the portfolio.(Crouse [0056] The intangible assets evaluation service 102 may also obtain additional data from the data sources 302, 304, 306, such as research and development costs and intellectual property costs. The intellectual property costs may include expenses incurred by an organization to obtain the patent portfolio 314. Further, the intangible assets evaluation service 102 may obtain data related to present markets where goods and/or services of the organization are offered, future markets where the goods and/or services of the organization are expected to be offered, known competitors of the organization, potential competitors of the organization, financial data of the organization, financial forecasts of the organization... [0110] Opportunity may correspond to a predicted amount of increase in revenue of the organization attributable to the plurality of intellectual property assets. [0046] The weightings 218 may indicate an amount of impact that a particular factor has on valuation of intellectual property. Additionally, components associated with individual factors may also have weightings 218. In an illustrative example, a component of a risk factor related to the potential to invalidate a patent may have a higher weighting than a component of the risk factor associated with the impact of case law on the patent.) The weightings indicate an amount that a particular factor has on a valuation, therefore, since the factors include a predicted amount of increase in revenue and financial forecasts, the limitation is satisfied.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present disclosure to modify Tabata by adding the teachings of Crouse, particularly by weighing the data points of the algorithm based on the forecasted effects of the data points. One of ordinary skill would have arrived at the predictable outcome of weighing the data points based on forecasted effects on the portfolio, because the weights in Crouse determine the valuation of the patent. Since Tabata teaches that any method for valuating the patent may be used, one of ordinary skill in the art would have been motivated to use Crouse’s technique as it would allow for the improved accuracy of qualitative analyses of a patent’s value. (Crouse [0078] The use of at least one of the one or more coverage metrics 322, the one or more opportunity metrics 328, or the risk metrics 334 may improve the accuracy of subsequent qualitative analyses and/or quantitative analyses of additional patent portfolios.)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: -Spangenberg et al. (US 20190259114 A1) discloses a Qscore for ranking the quality or value of patents to inform users to make critical decisions based on the commercial value and maintenance fees.
- Steven W. Lundberg (US 20230334575 A1) discloses a method for budgeting for patent portfolio annuities or maintenance fees, and inform users on which patents to keep alive through a budget projection.
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/NICO L PADUA/ Junior Patent Examiner, Art Unit 3626
/JESSICA LEMIEUX/ Supervisory Patent Examiner, Art Unit 3626
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