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 .
Introductory Remarks
In response to communications filed on 7 August 2026, claim(s) 1 and 5 is/are amended per Applicant’s request. Claim(s) 4 is/are cancelled. Claim(s) 6 and 7 is/are new. Therefore, claims 1-3 and 5-7 are presently pending in the application, of which, claim(s) 1 and 5 is/are presented in independent form.
No IDS has been received since the mailing of the last Office action.
Examiner’s Note
The rejections below group claims that may not be identical, but whose language and scope are so substantively similar as to lend themselves to grouping, in the interests of clarity and conciseness. Any citation to the instant specification herein is made to the PGPub version (if applicable). The examiner notes that no statement has been entered regarding the inventorship of individual claims as required under 37 CFR 1.56, and therefore assumes that all claims have the same inventorship or are directed to inventions that were commonly owned as of the effective filing date of the invention.
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 1-3 and 5-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim(s) recite(s) mental process steps of searching a database of information using narrowing search conditions. In this analysis, only those claim limitations stipulated as additional elements are considered to be limitations distinct from the abstract idea itself.
With respect to the independent claims, claim 1 is representative. Claim 1 recites, “An information search method comprising causing an information management device to execute a search process based on a search condition including a keyword input by a searcher and one or more narrowing keywords [], and search a database for information that matches the search condition, wherein the information search method further comprises causing the information management device to execute the search process after receiving a selection operation of causing the searcher to select, in the search condition, whether to set the one or more narrowing keywords as an AND condition for the keyword or whether to set the one or more narrowing keywords as a NOT condition for the keyword, and the information search method further comprises causing the information management device to display a plurality of categories in a selectable manner, to receive a selection of a category by the searcher, and to perform the correlation analysis for the keyword input by the searcher with words belonging to the selected category, such that the one or more narrowing keywords extracted by the correlation analysis belong to the selected category.” This closely parallels the holding of RENSSELAER POLYTECHNIC INSTITUTE v. AMAZON.COM, INC (Fed Cir, 2024-1725, 2024-1739, 2/24/2026) (hereinafter RPI).
The additional elements in the claim are: “an information management device” and “keywords extracted by correlation analysis with the keyword”. The judicial exception is not integrated into a practical application because the additional element amounts to nothing more than implementation of the abstract idea in a computer environment and/or is merely using a computer as a tool to perform the concept. See MPEP 2016.04(d)(I) and 2106.05(f); see also RPI at page 6 (“In Recentive, we determined that a claim that was directed towards applying machine learning to a “new field of use” was directed to an abstract idea because “the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment.””).
The claim does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements amount to nothing more than mere instructions to apply the exception using generic computer component(s) and insignificant extra-solution activity. These cannot provide an inventive concept, and thus the claims are patent-ineligible.
The other independent claims add no further additional elements, and are correspondingly rejected as not integrating the abstract idea into a practical application nor amounting to significantly more than the abstract idea. The dependent claims add nothing more than additional abstract idea limitations, which again do nothing to integrate the abstract idea into a practical application or amount to significantly more than the abstract idea.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (U.S. PGPub No. 2004/0249804 A1) (hereinafter Nakayama) in view of Kalin et al. (U.S. PGPub No. 2017/0193130 A1) (hereinafter Kalin).
As per claim 1, Nakayama teaches an information search method (0023) comprising causing an information management device to execute a search process based on a search condition including a keyword input by a searcher (id.) and one or more narrowing keywords extracted by correlation analysis with the keyword (0052), and
search a database for information that matches the search condition (0045-46), wherein
the information search method further comprises causing the information management device to execute the search process after receiving a selection operation of causing the searcher to select, in the search condition, whether to set the one or more narrowing keywords as an AND condition for the keyword or whether to set the one or more narrowing keywords as a NOT condition for the keyword (0053).
But Nakayama does not appear to explicitly disclose:
the information search method further comprises causing the information management device to display a plurality of categories in a selectable manner, to receive a selection of a category by the searcher, and to perform the correlation analysis for the keyword input by the searcher with words belonging to the selected category, such that the one or more narrowing keywords extracted by the correlation analysis belong to the selected category.
Kalin does disclose causing the information management device to display a plurality of categories in a selectable manner, to receive a selection of a category by the searcher, and to perform the correlation analysis for the keyword input by the searcher with words belonging to the selected category. Kalin at 0054-55. While Kalin does not explicitly disclose that the one or more narrowing keywords that are extracted by the correlation analysis belong to the selected category, Kalin does describe that the categories are selected based on the search terms, and therefore this limitation would be inherently true. It would have been obvious to one of ordinary skill in the art to incorporate the teachings of Kalin into the invention of Nakayama in order to have the information search method further comprise causing the information management device to display a plurality of categories in a selectable manner, to receive a selection of a category by the searcher, and to perform the correlation analysis for the keyword input by the searcher with words belonging to the selected category, such that the one or more narrowing keywords extracted by the correlation analysis belong to the selected category. This would have been clearly advantageous as it would improve the quality of the search results retrieved for the user, thereby increasing user satisfaction. The combination hereinafter NK.
As per claim 5, NK teaches an information search system (Nakayama at Figure 1 and corresponding description) comprising:
a database (Nakayama at 0045); and
an information management device (Nakayama at Figure 1) configured to
execute a search process based on a search condition including a keyword input by a searcher and one or more narrowing keywords extracted by correlation analysis with the keyword (Nakayama at 0023 and 0052), and
search a database for information that matches the search condition (Nakayama at 0045-46), wherein
the information management device is configured to
execute the search process after receiving a selection operation of causing the searcher to select, in the search condition, whether to set the one or more narrowing keywords as an AND condition for the keyword or whether to set the one or more narrowing keywords as a NOT condition for the keyword (Nakayama at 0053),and
For the remaining limitations, see the examiner’s remarks regarding claim 1.
As per claim 2, NK does not explicitly teach the information search method according to claim 1, wherein when a plurality of narrowing keywords including a first narrowing keyword and a second narrowing keyword having higher correlation with the keyword in this order are extracted as the one or more narrowing keywords, the information management device is configured to receive the selection operation for the first narrowing keyword and the second narrowing keyword, the first narrowing keyword and the second narrowing keyword having relatively high correlation with the keyword in this order. However, it is inherent that one keyword will necessarily have a higher correlation than the other. While it is not inherent that the selection of the higher correlated keyword is received first, this is merely a matter of design choice with no perceivable difference in patentability. See MPEP 2144.04.
As per claims 6 and 7, NK does not appear to explicitly disclose the information search method according to claim 1 [or 5], wherein
when a plurality of narrowing keywords including a first narrowing keyword and a second narrowing keyword having higher correlation with the keyword in this order are extracted as the one or more narrowing keywords, the information management device is configured to, before executing the search process, receive the selection operation for the first narrowing keyword and the second narrowing keyword, the first narrowing keyword and the second narrowing keyword having relatively high correlation with the keyword in this order, and
to sequentially provide the searcher with current hit counts of temporary search at reception of the selection operation for the first narrowing keyword and the second narrowing keyword in this order.
However, with respect to the first limitation, this limitation is obvious in view of the combination as keywords are necessarily received before the query, the combination teaches narrowing keywords, one necessarily will have a higher correlation than the other, and given that there are only two it is obvious that one of ordinary skill in the art would consider the first narrowing keyword having a higher correlation than the second.
As to the second limitation, Kalin demonstrates this. Kalin at Figs. 1B and 1E (“Categories”) and corresponding description (see e.g. 0062).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama in view of Kalin as applied to claim 1, and further in view of Shin (U.S. PGPub No. 2023/0214427 A1) (hereinafter Shin).
As per claim 3, NK does not appear to explicitly teach the information search method according to claim 2, wherein the information management device is configured to:
execute the search process when the searcher selects whether to set the first narrowing keyword as the AND condition or whether to set the first narrowing keyword as the NOT condition; and
accept no selection operation for the second narrowing keyword when a number of pieces of data matching the search condition falls below a predetermined threshold.
Shin teaches executing a search when a searcher selects a link to a narrowing term or phrase. Shin at 0015. It would have been obvious to one of ordinary skill in the art to incorporate the teachings of Shin into the combination of NK in order to execute the search process when the searcher selects whether to set the first narrowing keyword as the AND condition or whether to set the first narrowing keyword as the NOT condition. This would have been clearly advantageous as it would reduce the number of user actions required to update the search results.
As to the accepting limitation, this is considered to be obvious as it would not make sense to accept selections to trigger further searches with additional narrowing criteria if the number of results matching the search conditions specified are below a threshold of, for example, zero. One of ordinary skill in the art would recognize this to be an unnecessary burden on the search system and would have wanted to disallow receiving further narrowing criteria when the search already returns no results.
Response to Arguments
Applicant's arguments filed 7 August 2026 have been fully considered but they are not persuasive. Applicant raises several arguments, which are addressed in the order they were raised by the applicant.
First, with respect to the 101 rejection, the applicant argues that the claim recites specific computerized database functions. See remarks at pages 5-6. However the applicant does not address the cited case law that establishes that “claims that use “functional, result-focused language” or merely “encompass ordinary computers and networks to perform their ordinary functions in carrying out an abstract idea, even when narrowed to a particular use or environment,” do not provide an inventive concept capable of rendering the claims patent eligible. GoTV, 2026 WL 346200, at *11 (collecting cases).” Rensselaer at page 5. Here too the claims recite computers operating according to their ordinary functions in carrying out an abstract idea. The applicant further argues that at step 2A the claim integrates the subject matter into a practical application because it is a technical improvement to search operations and it is a specific guided technical workflow. See remarks at pages 6-7. As in Rensselaer the claims here recite merely generic computing systems and methodologies, and so do not amount to a practical application of the abstract idea. Finally, the applicant argues that the characterization of the category-based correlation analysis conventionality is unsupported under Berkheimer. However, the examiner treats correlation analysis broadly under the claims and considers it inclusive of a determination of whether the information in the database matches the selected category or not. This is the normal operation of data retrieval in search systems (including mental searches), and falls under the abstract idea of searching a database of information using narrowing search conditions. Thus, as currently claimed, the argument of against conventionality is misplaced.
The applicant finally argues that the claims are now allowable because no art was applied to prior claim 4. But the applicant did not incorporate the allowable matter into the independent claims, so this argument is spurious.
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 TYLER J TORGRIMSON whose telephone number is (571)270-5550. The examiner can normally be reached Monday - Friday 9 am - 5:30 pm.
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/TYLER J TORGRIMSON/Primary Examiner, Art Unit 2165
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