DETAILED ACTION
This Office Action is in response to Applicants application filing received on May 29, 2025. Claim(s) 1-16 is/are currently pending in the instant application. The application is a Continuation of PCT/JP2023/047316 filed on December 28, 2023 and claims foreign priority to Japanese application 2023-011736 filed on January 30, 2023.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
Claim15 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
The Applicant is permitted to have a method comprising performing by the device according to claim 1, however the determination step is repeated and therefore is not different than what’s already presented in claim 1.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-20 are directed to one of the four statutory classes of invention (e.g. process, machine, manufacture, or composition of matter). The claims include a system or “apparatus”, method or “process”, or product or “article of manufacture” and is a method of managing research and development investment which is a process (Step 1: YES).
The Examiner has identified independent method Claim 15 as the claim that represents the claimed invention for analysis and is similar to independent device Claims 1 and product Claim 16. Claim 15 recites the limitations of (abstract ideas highlighted in italics and additional elements highlighted in bold)
determining an intangible asset resulting from research and development as an innovation or a dry hole according to a set criterion.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. Concluding from research and development data if a project is innovative or a “dry hold” recites a fundamental economic practice and commercial / legal interactions. Accordingly, the claim recites an abstract idea. The storage device storing instructions and the control circuit executing instructions in Claims 1 and 12 is just applying generic computer components to the recited abstract limitations. The non-transitory computer-readable recording medium storing a program in Claim 16 appears to be just software. Claims 1, 12 and 16 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
Additionally the limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Mental Processes”. Concluding from research and development data if a project is innovative or a “dry hold” recites a concept performed in the human mind. But for the “storage device” and “control circuitry” language, the claim encompasses reviewing documentation regarding a research and development project to make a determination on pursuing the intellectual property or not using his/her mind and or pen and paper. The mere nominal recitation of generic computer hardware does not take the claim out of the mental processes grouping. Accordingly, the claim recites an abstract idea. The storage device storing instructions and the control circuit executing instructions in Claims 1 and 12 is just applying generic computer components to the recited abstract limitations. The non-transitory computer-readable recording medium storing a program in Claim 16 appears to be just software. Claims 1, 12 and 16 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Mathematical Concepts”. Concluding from research and development data if a project is innovative or a “dry hold” recites mathematical calculations. The analysis of data for the innovation and calculating a ration of negative reports or records is merely mathematical calculations or formulas. Accordingly, the claim recites an abstract idea. The storage device storing instructions and the control circuit executing instructions in Claims 1 and 12 is just applying generic computer components to the recited abstract limitations. The non-transitory computer-readable recording medium storing a program in Claim 16 appears to be just software. Claims 1, 12 and 16 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
The Examiner is also addressing independent device Claim 12 the claim includes additional limitations compared to claims 1, 15, and 16. Claim 12 recites the limitations of (abstract ideas highlighted in italics and additional elements highlighted in bold)
a storage device storing instructions; and
a control circuitry coupled to the storage device, and when the instructions stored in the storage device are executed, configured to perform processing that includes:
setting a target value of an application- filing decision ratio and a target value of a report appropriateness ratio in a specific period;
accumulating application aptness information indicating whether or not a patent application procedure is carried out for a report, and appropriateness information indicating whether or not the report is appropriate;
calculating an actual value of the application-filing decision ratio in the specific period based on the application aptness information accumulated; and
calculating an actual value of the report appropriateness ratio in the specific period based on the appropriateness information accumulated.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. Setting a target vale for a decision ratio, accumulating information regarding a patent application, calculating a value of decision ration based on the information and calculating an appropriateness ratio based on the information recites a fundamental economic practice and commercial / legal interactions. Accordingly, the claim recites an abstract idea. The storage device storing instructions and the control circuit executing instructions in Claims 1 and 12 is just applying generic computer components to the recited abstract limitations. The non-transitory computer-readable recording medium storing a program in Claim 16 appears to be just software. Claims 1, 12 and 16 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite a storage device storing instructions and control circuitry for executing stored instructions (Claims 1 and 12) a device (claim 15) and/or non-transitory computer-readable recording medium storing a program (Claim 16). The computer hardware is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore claims 1, 12, 15, and 16 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0043] about implementation using general purpose or special purpose computing devices (The terminal device 4 is a computer having a communication function, and may be, for example, a personal computer (PC), a smart phone, a tablet terminal, or the like.) and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus claims 1, 12, 15, and 16 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-11 and 13-14 further define the abstract idea that is present in their respective independent claims 1, 12, 15, and 16 and thus correspond to Certain Methods of Organizing Human Activity, Mental Processes, and Mathematical Concepts and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. The dependent claims include steps or processes which are similar to that disclosed in MPEP 2106.05(d), (f), (g), and/or (h) which include activities and functions the courts have determined to be well-understood, routine, and conventional when claimed in a generic manner, or as insignificant extra solution activity, or as merely indicating a field of use or technological environment in which to apply the judicial exception.
Claim 2 can be equated to MPEP 2106.05(g)(3) iii. Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); and MPEP 2106.05(f)(2) i. A commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014); Gottschalk v. Benson, 409 U.S. 63, 64, 175 USPQ 673, 674 (1972); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);
Claims 3, 4, 6-10 are covered under MPEP 2106.05(f)(2) i. A commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014); Gottschalk v. Benson, 409 U.S. 63, 64, 175 USPQ 673, 674 (1972); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);
Claims 5, 11, 13, and 14 are covered by MPEP 2106.05(f)(2) v. Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015);
Therefore, the claims 2-11 and 13-14 are directed to an abstract idea. Thus, the claims 1-20 are not patent-eligible.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 15, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsukamoto JP 2010-020563 (hereafter Tsukamoto).
Regarding claim 1, determining whether an intangible asset resulting from research and development is an innovation or a dry hole according to a set criterion (see at least Example 1, In order to solve the above-mentioned problems and achieve the object, the computer searches the database storing the contents of each application for each application using information on the contents of the predetermined application as a search key, and the contents are similar to the predetermined application. A similar application acquisition step of acquiring a set of similar applications. In addition, each similar application included in the set of similar applications acquired by the similar application acquisition step is used as a search key, and progress information indicating the progress of the application is accumulated for each application by accumulating procedure information indicating the procedures performed on the application. And a history information acquisition step of searching a database stored in the database and acquiring a set of history information corresponding to the set of similar applications. Further, the method includes a counting step of classifying each piece of procedure information included in the set of progress information acquired by the step of acquiring the progress information for each type of procedure, and counting the number of procedure information for each classified type. Further, the method includes an output step of outputting the number counted by the counting step or the analysis result analyzed from the number to the output unit in association with the type of the procedure.).
Claim 15 and 16 are substantially similar to claim 1 and therefore rejected under the same rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art generally deals with intangible assets and their organization and management including systems and methods.
U.S. Publication 2015/0199781 A1 - Methods and systems for valuation of patents assets. Information identifying a target patent asset is received from a client device. A technology sector associated with the target patent asset is determined. A profit for the technology sector is determined. A patent contribution metric is determined corresponding to a contribution of patent assets to business in the technology sector. A price for the target patent asset is determined based on the profit for the technology sector and the patent contribution metric. A patent information output is generated for the client device based on the price for the target patent asset.
U.S. Publication 2009/0259506 A1 - A statistical patent rating method and system is provided for independently assessing the relative breadth ("B"), defensibility ("D") and commercial relevance ("R") of individual patent assets and other intangible intellectual property assets. The invention provides new and valuable information that can be used by patent valuation experts, investment advisors, economists and others to help guide future patent investment decisions, licensing programs, patent appraisals, tax valuations, transfer pricing, economic forecasting and planning, and even mediation and/or settlement of patent litigation lawsuits. In one embodiment the invention provides a statistically-based patent rating method and system whereby relative ratings or rankings are generated using a database of patent information by identifying and comparing various characteristics of each individual patent to a statistically determined distribution of the same characteristics within a given patent population. For example, a first population of patents having a known relatively high intrinsic value or quality (e.g. successfully litigated patents) is compared to a second population of patents having a known relatively low intrinsic value or quality (e.g. unsuccessfully litigated patents). Based on a statistical comparison of the two populations, certain characteristics are identified as being more prevalent or more pronounced in one population group or the other to a statistically significant degree. Multiple such statistical comparisons are used to construct and optimize a computer model or computer algorithm that can then be used to predict and/or provide statistically-accurate probabilities of a desired value or quality being present or a future event occurring, given the identified characteristics of an individual patent or group of patents.
U.S. Publication 2014/0304176 A1 - A system and method which objectively assesses the risks encountered by, and provides greater assurance among, purchasers, investors, insurers and financers of intangible property is disclosed. Such intangible assets may include patents, trademarks, copyrights and other forms of intangible assets. The system and method provides greater assurance that such intangibles have clear title or are otherwise unencumbered, are not the subject of litigation or other proceedings, and/or are valid and enforceable. The system and method of the invention may comprise: (i) a database which comprises data and other information related to the risk assessment of the intangible property; (ii) a search engine which searches and retrieves from the database data and other information related to the risk assessment of the intangible property; (iii) an assurance ranking generator which utilizes objective assessment criteria to determine accuracies and inaccuracies in the information and data, and generates an assurance ranking associated with the intangible property being assessed for risk. In addition, the system and method of the instant invention may further employ real-time and/or reactive computing systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DYLAN C WHITE whose telephone number is (571)272-1406. The examiner can normally be reached M-F 7:30-4:00 EST.
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/DYLAN C WHITE/Primary Examiner, Art Unit 3625 July 24, 2026
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