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 action is a non-final, first office action in response to the preliminary amendment filed 06/23/2025. Claims 1 – 14 are currently pending and have been examined.
Priority
The Examiner has noted the Applicants claiming Foreign Priority from Japanese Application 2023-039571, filed 03/14/2023. Certified copies of the priority documents have been received.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/23/2025 was filed before the mailing date of the first office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Novel/Nonobvious Subject Matter
Claims 4 & 8 – 9 are not rejected over the prior art.
The closest prior art, Takenaka (US 20170004570 A1), discloses, in [0094] – [0095] & [0115], offering a new contract to a “customer considering the renewal of the lease agreement for the leased component” which is based on the previous usage and maintenance information as per [0086] – [0093]. However, Takenaka fails to disclose wherein, when a number of times that a component of the rental equipment has been cleaned or washed, the number being included in the information about maintenance of the rental equipment, exceeds a predetermined number, the extension of the rental of the rental equipment is offered as per claim 4; wherein, when the information about the type of business where the rental equipment is used indicates a predetermined type of business, the new rental is offered as per claim 8; and wherein the predetermined type of business is a type of business in which the rental equipment is likely to get dirty or a type of business in which operating load of the rental equipment is likely to be high as per claim 9.
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses 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 limitation(s) is/are:
Claim 1 & 14:
• a control part, wherein the control part is configured to: obtain {…} (claim 1) / a control part provided in the information processing device… is configured to: obtain {…} (claim 14)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the entire specification yielded the below corresponding structures corresponding to the above generic placeholders:
• [0046] The server device 30 has a control part 32. The control part 32 is a hardware structure for running programs, and may be a central processing unit (CPU), an application-specific integrated circuit (ASIC), a field programmable gate array (FPGA), etc. For example, the server device 30 can execute various processes described below by running programs on a CPU.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 9 is rejected under 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 pre-AIA the applicant regards as the invention.
The limitation “operating load of the rental equipment is likely to be high” in claim 9 is indefinite. It is unclear as to what would constitute an operating load being “high,” as “high” is a relative term, and the metes and bounds of Applicant’s instant invention are unclearly claimed. For the purpose of examination, “operating load of the rental equipment is likely to be high” will be interpreted as an operating load being any possible degree, level, or equivalents thereof.
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 – 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1 – 12 & 14 are directed to a system (i.e., a machine). Claim 13 is directed to a method (i.e., a process). Therefore, claims 1 – 14 all fall within the one of the four statutory categories of invention.
Step 2A, Prong One
Independent claims 1 & 13 substantially recite: “obtain contract information about rental equipment rented to a user; obtain operation information about operation of the rental equipment; and offer a new contract for the user based on the contract information and the operation information.” Independent claim 14 recites: “obtain contract information about rental equipment rented to a user; obtain operation information about operation of the rental equipment; and display and offer content of a new contract for the user… based on the contract information and the operation information.”
The limitations stated above are processes that, under the broadest reasonable interpretation, covers performance of the limitation in a business relation or commercial interaction. That is, the functions in the context of the claims encompass managing an equipment lease. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in a commercial interaction, or while managing personal behavior or relationships or interactions between people, but for the recitation of generic computer components, then it falls within the "Certain Methods of Organizing Human Activity" grouping of abstract ideas e.g., “commercial or legal interactions (including marketing or sales activities or behaviors; business relations, and following rules or instructions).” Accordingly, the claims recite an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. Claims 1 & 13 – 14, as a whole, amount to merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent) exception. Claim 1 recites the additional computer-related elements of: “information processing device comprising a control part, wherein the control part is configured to.” Claim 13 recites the additional computer-related elements of: “executed by a control part of an information processing device that includes the control part.” Claim 14 recites the additional computer-related elements of: “information processing system, in which an information processing device and an information processing terminal are communicably coupled, wherein a control part provided in the information processing device or the information processing terminal is configured to” and “on the information processing terminal.”
The additional elements of “information processing device comprising a control part, wherein the control part is configured to,” “executed by a control part of an information processing device that includes the control part,” “information processing system, in which an information processing device and an information processing terminal are communicably coupled, wherein a control part provided in the information processing device or the information processing terminal is configured to,” and “on the information processing terminal” are recited at a high-level of generality, such that, when viewed as whole/ordered combination, amount to no more than mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)).
Accordingly, these additional elements, when viewed as a whole/ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements amount to no more than merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent), and do not provide integration of the recited abstract ideas into a practical application. The same analysis applies here in Step 2B, i.e., merely invoking the generic components as a tool to perform the abstract idea or “apply it” (See MPEP 2106.05(f)) does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
Therefore, the additional elements of “information processing device comprising a control part, wherein the control part is configured to,” “executed by a control part of an information processing device that includes the control part,” “information processing system, in which an information processing device and an information processing terminal are communicably coupled, wherein a control part provided in the information processing device or the information processing terminal is configured to,” and “on the information processing terminal” fail to integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claims adds significantly more (i.e., an inventive concept) to the abstract idea. There is no indication that the combination of elements, taken both individually and as an ordered combination, improves the functioning of a computer or improves any other technology. Thus, the claims are not patent eligible.
Furthermore, dependent claims 2 – 12 are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims, when considered both individually and as an ordered combination, do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea with generic computer components that conduct generic computer functions within a certain field of use, and thus are ineligible.
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)(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.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1 – 2 & 13 – 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takenaka (US 20170004570 A1).
As per claim 1, Takenaka discloses an information processing device comprising a control part ([0026], [0029] – [0030], & [0106] – [0108], computer comprising a CPU), wherein the control part is configured to:
• obtain contract information about rental equipment rented to a user (See [0036], [0043] – [0048], [0053] – [0054], [0056] – [0061], & [0086], noting obtaining “an example of information stored in the lease agreement information storage unit” such as “a contracting party ID, a contracting party name, the lease period (EOH), a previous component ID, a previous component type, a previous component unit price (yen), previous component maintenance charges (yen), previous component lease charges (yen), a previous component usage time (EOH), and “Has component been replaced? (YES or NO)” information”);
• obtain operation information about operation of the rental equipment ([0065] – [0067], obtaining information including “the usage time, expressed as equivalent operating hours (EOH), of the leased component that has been used by the contracting party” and also “information indicates whether or not the leased component that has been used by the contracting party identified by the contracting party ID from the time of conclusion of the lease agreement and that is identified by the previous component ID has been replaced.” Also see [0086] – [0093] & [0100].);
• and offer a new contract for the user based on the contract information and the operation information ([0094] – [0095] & [0115], offering a new contract to a “customer considering the renewal of the lease agreement for the leased component” comprising an “estimate for the expenses associated with the gas turbine including the lease charges after renewal estimated by the lease charges estimating unit 113,” which is based on the usage and maintenance information as per [0086] – [0093].).
As per claim 2, Takenaka discloses the limitations of claim 1. Takenaka further discloses:
• wherein content of the new contract for the user is: an extension of a rental of the rental equipment ([0094] – [0095], offering a new contract comprising “the renewal of the lease agreement for the leased component”); or a new rental to provide new rental equipment for replacement.
As per claim 13, see the above relevant rejection of claim 1. Additionally, Takenaka discloses a method of offering a contract executed by a control part of an information processing device that includes the control part (claim 14, [0001], [0013], [0017], & [0124]).
As per claim 14, Takenaka discloses an information processing system, in which an information processing device and an information processing terminal are communicably coupled ([0116] – [0119] & [0122], CPU of computer 800 communicatively connected to extremal computing device to perform the steps), wherein a control part provided in the information processing device or the information processing terminal is configured to:
• obtain contract information about rental equipment rented to a user (See [0036], [0043] – [0048], [0053] – [0054], [0056] – [0061], & [0086], noting obtaining “an example of information stored in the lease agreement information storage unit” such as “a contracting party ID, a contracting party name, the lease period (EOH), a previous component ID, a previous component type, a previous component unit price (yen), previous component maintenance charges (yen), previous component lease charges (yen), a previous component usage time (EOH), and “Has component been replaced? (YES or NO)” information”);
• obtain operation information about operation of the rental equipment ([0065] – [0067], obtaining information including “the usage time, expressed as equivalent operating hours (EOH), of the leased component that has been used by the contracting party” and also “information indicates whether or not the leased component that has been used by the contracting party identified by the contracting party ID from the time of conclusion of the lease agreement and that is identified by the previous component ID has been replaced.” Also see [0086] – [0093] & [0100].);
• and display and offer content of a new contract for the user, on the information processing terminal, based on the contract information and the operation information ([0094] – [0095] & [0115], offering a new contract to a “customer considering the renewal of the lease agreement for the leased component” comprising an “estimate for the expenses associated with the gas turbine including the lease charges after renewal estimated by the lease charges estimating unit 113,” which is based on the usage and maintenance information as per [0086] – [0093]. As per [0106] – [0107] the new contract is output to “display 805.”).
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 3 & 11 are rejected under 35 U.S.C. 103 as being unpatentable over Takenaka (US 20170004570 A1) in view of Stannard et al. (US 20160210688 A1).
As per claim 3, Takenaka discloses the limitations of claim 2. Regarding the following limitation, Takenaka discloses obtaining contract information about rental equipment rented to a user in at least [0036], [0043] – [0048], [0053] – [0054], [0056] – [0061], & [0086]). To the extent to which Takenaka does not appear to explicitly disclose wherein the following information is in the contract information, Stannard teaches:
• wherein the contract information includes information about a type of business where the rental equipment is used ([0018] – [0019], information including a “customer job type, customer industry” of the rental customer).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the aforementioned information of Stannard in the contract information of Takenaka with the motivation “to ensure the proper supplier is matched with the appropriate customer so that each party is satisfied,” as evidenced by Stannard ([0020]).
Takenaka further discloses:
• wherein the operation information includes: information about maintenance of the rental equipment ([0065], [0067], & [0087], maintenance (replacement) information for a leased component; information about operating time of the rental equipment ([0066] - [0067] & [0090], usage time for a leased component); or information about power consumption of the rental equipment.
As per claim 11, Takenaka / Stannard discloses the limitations of claim 3. Takenaka further discloses:
• wherein the user who is renting the rental equipment and to whom the extension of the rental of the rental equipment is offerable when a contract period specified in the contract information expires is notified that the extension of the rental of the rental equipment is possible ([0094] – [0095] & [0115], displaying an offer for a new contract to a “customer considering the renewal of the lease agreement for the leased component” comprising an “estimate for the expenses associated with the gas turbine including the lease charges after renewal estimated by the lease charges estimating unit 113).
Claims 5 & 10 are rejected under 35 U.S.C. 103 as being unpatentable over Takenaka / Stannard, in further view of Hall (US 20070192112 A1).
As per claim 5, Takenaka / Stannard discloses the limitations of claim 3. Regarding the following limitation, Takenaka discloses obtaining contract information about rental equipment rented to a user in at least [0036], [0043] – [0048], [0053] – [0054], [0056] – [0061], & [0086]). To the extent to which Takenaka / Stannard does not appear to explicitly disclose wherein the following information is in the contract information, Hall teaches:
• when information about failures of the rental equipment, included in the information about maintenance of the rental equipment, indicates that the rental equipment failed during a rental period, the new rental is offered ([0026], equipment that is broken is replaced.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the aforementioned information of Hall in the contract information of Takenaka / Stannard with the motivation of “enhancing the lifetime of the tools as much as possible to make them as cost effective as possible while at the same time ensuring the possibility of the tools being returned and recycled,” as evidenced by Hall ([0026]).
As per claim 10, Takenaka / Stannard discloses the limitations of claim 3. Regarding the following limitation, Takenaka discloses obtaining contract information about rental equipment rented to a user in at least [0036], [0043] – [0048], [0053] – [0054], [0056] – [0061], & [0086]). To the extent to which Takenaka / Stannard does not appear to explicitly disclose wherein the following information is in the contract information, Hall teaches:
• wherein the information about failures of the rental equipment, included in the information about maintenance of the rental equipment, indicates that the rental equipment failed a predetermined number of times or more during a rental period ([0026], equipment that is has failed a single time is replaced.); wherein the information about failures of the rental equipment indicates that a specific component of the rental equipment has failed; or wherein the information about power consumption of the rental equipment indicates that a rate of increase in power consumption is greater than or equal to a predetermined amount.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the aforementioned information of Hall in the contract information of Takenaka / Stannard with the motivation of “enhancing the lifetime of the tools as much as possible to make them as cost effective as possible while at the same time ensuring the possibility of the tools being returned and recycled,” as evidenced by Hall ([0026]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Takenaka / Stannard / Hall, in further view of Ranganathan et al. (US 20220067769 A1).
As per claim 6, Takenaka / Stannard / Hall discloses the limitations of claim 5. Regarding the following limitation, Takenaka discloses obtaining contract information about rental equipment rented to a user in at least [0036], [0043] – [0048], [0053] – [0054], [0056] – [0061], & [0086]). To the extent to which Takenaka / Stannard / Hall does not appear to explicitly disclose wherein the following information is in the contract information, Ranganathan teaches:
• when the information about failures of the rental equipment indicates that a specific component of the rental equipment has failed, the new rental is offered ([0016], [0024], [0035], [0037], [0055], if a component such as a motherboard or other hardware fails, a “replacement device” may be provided.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the aforementioned information of Ranganathan in the contract information of Takenaka / Stannard / Hall with the motivation of providing “increased customer satisfaction,” as evidenced by Ranganathan ([0038]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Takenaka / Stannard, in further view of Kikuchi et al. (US 20020128853 A1).
As per claim 7, Takenaka / Stannard discloses the limitations of claim 3. Regarding the following limitation, Takenaka discloses obtaining contract information about rental equipment rented to a user in at least [0036], [0043] – [0048], [0053] – [0054], [0056] – [0061], & [0086]). To the extent to which Takenaka / Stannard does not appear to explicitly disclose wherein the following information is in the contract information, Kikuchi teaches:
• when the information about power consumption of the rental equipment indicates that a rate of increase in power consumption is greater than or equal to a predetermined amount, the new rental is offered ([0024], [0052] – esp. [0056], & [0069] – [0072], when a measured consumed power information is higher than a previously-measured level it is determined that “replacement is necessary” of the electric appliance.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the aforementioned information of Kikuchi in the contract information of Takenaka / Stannard with the motivation “to construct an electric appliance renting system which is capable of protecting the Earth environment,” as evidenced by Kikuchi ([0012]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Takenaka in view of Kikuchi et al. (US 20020128853 A1).
As per claim 12, Takenaka discloses the limitations of claim 1. To the extent to which Takenaka does not appear to explicitly disclose the following limitation, Kikuchi teaches:
• wherein the rental equipment is an air conditioner ([0015], [0035] – [0036], [0042], & [0069], a rented electric appliance is “an e-air conditioner 31.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the aforementioned information of Kikuchi in the contract information of Takenaka / Stannard with the motivation “to construct an electric appliance renting system which is capable of protecting the Earth environment,” as evidenced by Kikuchi ([0012]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN J KIRK whose telephone number is (571)272-6447. The examiner can normally be reached Monday -Friday 9:00-5:00.
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/BRYAN J KIRK/Examiner, Art Unit 3628
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