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
Claims 1, and 7-12 have been examined in this Final Rejection. Claims 1, and 7-12 are currently pending. Claims 2-6 were canceled.
Priority
Application 19/2257,562 filed 06/04/2025 claims priority to foreign application JP2024-100032 filed 06/20/2024.
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, and 7-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1, and 7-12 are directed to a system, method, or product which are/is one of the statutory categories of invention. (Step 1: YES).
Claims 1, 11, and 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites a method and computing device for determining a distribution of intellectual property data. For Claims 1, 11, and 12 the limitations of (Claim 1 being representative):
[…];
[…]; and
[…]:
acquire predetermined acquisition information from intellectual property data […], the predetermined acquisition information including at least one of a number of applications, a number of published applications, a number of patents, a number of citations, a number of cited times, and a total of their weighted values with respect to a plurality of applicants and a plurality of technology classifications;
calculate, an intellectual property evaluation value in each of a first predetermined period and a second predetermined period, which is a later period of time than the first predetermined period, based on the acquisition information for each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications;
calculate a difference value by subtracting the intellectual property evaluation value in the first predetermined period from the intellectual property evaluation value in the second predetermined period with respect to each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications;
calculate an expected value based on the difference value with respect to each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications;
calculate a square mean value based on the difference value with respect to each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications;
calculate a standard deviation based on the expected value and the square mean value with respect to each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications;
calculating a normal distribution based on the expected value and the standard deviation with respect to each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications;
calculate a random variable of the normal distribution and a total weighted value of the expected value and the standard deviation with respect to each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications;
divide the normal distribution into first, second, and third areas with respect to each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications, the first area being smaller than a specific threshold range, the second area being within the specific threshold range, the third area being larger than the specific threshold range;
generate distribution information corresponding to:
a diagram based on the expected value, the standard deviation, the normal distribution with the first, second, and third areas, the random variable, and the total weighted value; and
first indication of a focusing technology classification of the plurality of technology classifications by each applicant of the plurality of applicants;
determine the focusing technology classification associated with a concentration and selection trend and an investment direction of each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications based on the diagram and the first indication; and
provide the distribution information to the external device such that the diagram is displayed on a display of the external device, the diagram and the first indication indicating the investment direction for each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications.
The above limitations are analyzing data, such as data from patent documents and other forms of IP related disclosures is a form of market analysis, which is a concept that is a fundamental economic practice. Many companies are known to perform some kind of competitor analysis to identify any competitors in different markets and for various product lines. Analyzing IP information to generate a distribution between data sets in different technology classifications, is considered to represent a certain method of organizing human activities. A human being can perform the claimed steps that defines the abstract idea. The Examiner additionally notes that the claimed steps of acquiring information from intellectual property data, calculating an evaluation value in each technology classification during a predetermined period based on the acquired information, generating a distribution based on the evaluation value, and graphing the distribution, can all be performed by people manually performing the claimed steps. For these reasons the claims are found to be reciting a certain method of organizing human activities that is reciting a fundamental economic practice of performing market analysis.
Alternatively, the claim as drafted, is a process that, under the broadest reasonable interpretation, covers mathematical concepts. The Examiner notes that “Mathematical Concepts” includes a mathematical relationships, mathematical formulas or equations, and mathematical calculations. If a claim limitation, under its broadest reasonable interpretation, covers a numerical formula or equation it will be considered as falling within the “mathematical concepts” grouping. In addition, there are instances where a formula or equation is written in text format that should also be considered as falling within this grouping. Claim 1 includes calculating a difference value, calculating an expected value, calculating a square mean value, calculating a standard deviation, valuating a normal distribution, calculating a random variable, calculating a total weighted value, and dividing the normal distribution. The types of identified abstract ideas are considered together as a single abstract idea for analysis purposes. Accordingly, Claims 1, 11 and 12 recite an abstract idea. (Step 2A- Prong 1: YES. The claims recite an abstract idea).
This judicial exception is not integrated into a practical application. Claims 1, 11, and 12 recites the additional elements of a communication interface (Claims 1), an external device (Claims 1), a memory configured to store a program (Claims 1, Claim 11), a processor configured to execute the program (Claims 1, Claim 11, Claim 12) and a computer program product embodying computer readable instructions stored on a non-transitory computer-readable medium for causing a computer (Claim 12), that implements the identified abstract idea. These additional elements are not described by the applicant and are recited at a high-level of generality (i.e., one or more generic computers performing a generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer components. Accordingly, even in combination these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Claims 1, 11, and 12 are directed to an abstract idea. (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. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a communication interface (Claims 1), an external device (Claims 1), a memory configured to store a program (Claims 1, Claim 11), a processor configured to execute the program (Claims 1, Claim 11, Claim 12) and a computer program product embodying computer readable instructions stored on a non-transitory computer-readable medium for causing a computer (Claim 12), to perform the noted steps 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 (“significantly more”). Accordingly, even in combination, these additional elements do not provide significantly more. As such claims 1, 11, and 12 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more).
Dependent Claims 7-10 are similarly rejected because they either further define/narrow the abstract idea of independent claim 1 as discussed above and/or do not further limit the claim to a practical application or provide an inventive concept such that the claims are subject matter eligible even when considered individually or as an ordered combination. Claim(s) 7 merely describe(s) generating the distribution information in which normal distribution is placed on coordinate axes in three dimensions as the diagram, with a random variable axis based on the specific threshold range as the random variable of the normal distribution, a base axis as at least one of the expected value of the normal distribution, the standard deviation of the normal distribution, and the total weighted value, and a probability density axis as a probability density of the normal distribution. Claim(s) 8 merely describe(s) generating the distribution information in which the normal distribution is placed on coordinate axes in two dimensions as the diagram, with a random variable axis based on the specific threshold range as the random variable of the normal distribution and a base axis as at least one of the expected value of the normal distribution, the standard deviation of the normal distribution, and the total weighted value. Claim(s) 9 merely describe(s) generating the distribution information in which the normal distribution on coordinate axes in three dimensions as the diagram, with a random variable axis based on the specific threshold range as the random variable of the normal distribution, a probability density axis as a probability density of the normal distribution, and a time axis. Claim(s) 10 merely describe(s) generating the distribution information in which the normal distribution on coordinate axes in two dimensions as the diagram, with a random variable axis based on the specific threshold range as the random variable of the normal distribution and a time axis.
Claims 7-10 include the additional elements of a processor. The processor is analyzed in the same manner as the acquisition unit, calculation unit, distribution generation unit, and the distribution placement unit in the independent claim and does not provide a practical application or significantly more for the same reasons above. Therefore claims 7-10 are considered patent ineligible for the reasons given above.
Subject Matter Distinguishable from Prior Art
The cited prior art of record fails to expressly teach or suggest, either alone or in combination the features of calculating the difference value by subtracting the intellectual property evaluation values in the predetermined time periods with respect to each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications, calculating an expected value based on the difference value, calculating a square mean value based on the difference value, calculating a standard deviation value based on the expected value and the square mean value, calculating a normal distribution based on the expected value and standard deviation, calculating a random variable of the normal distribution and a total weighted value of the expected value and the standard deviation, dividing the normal distribution into first, second, and third areas with respect to each applicant of the plurality of applicants and each technology classification of the plurality of technology classifications where the first area is smaller than a specific threshold range, the second area being withing the threshold range, and the third area being larger than the threshold range, determining the focusing technology associated with a concentration and selection trend and an investment direction of each applicant and technology classification based on the diagram and first indication, and providing display of the distribution information.
Masuyama (US 20100114587 A1) discloses acquiring predetermined acquisition information, and calculating an intellectual property evaluation value. Yoshino (US 20060122849 A1) discloses creating a distribution diagram. In particular, the cited prior art of record fails to expressly teach or suggest all of the features in the independent claims. Therefore, in combination with the other limitations clearly claimed render claim 1, 11, and 12 allowable over the prior art. Claims 7-10 are also allowable over the prior art due to their dependency on claim 1.
Response to Arguments
Applicant's arguments filed 07/06/2026 with respect to 35 U.S.C. § 101, have been fully considered but they are not persuasive. Applicant argues that the amended claim 1 recites what the processor is configured to perform in detail that amounts to significantly more than the alleged judicial exception and integrates the alleged abstract idea into a practical application because the amended features of claim 1 are features performed by a processor and should be categorized as either (1) applying the judicial exception with, or by use of, a particular machine, or (2) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial expectation to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The Examiner respectfully disagrees. MPEP 2106. 04(a)(2)(II) states that a claimed invention is directed to certain methods of organizing human activity if the identified claim elements contain limitations that encompass fundamental economic principles or practices, commercial or legal interactions, or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The Examiner submits that the identified claim elements represent fundamental economic principles or practices that a person or persons, with or without the aid of a computer, would follow to determine an investment trend. Further, the claim elements cover mathematical principles. Providing information to an external device such that a diagram is displayed on a display of the external device, the diagram and the first indication indicating the investment direction for each applicant of the plurality of applications and each technology classification of the plurality of technology classifications, and the claim as a whole is not an additional technological improvement, but rather part of the abstract idea itself, i.e. displaying information for an investment trend based on calculated values. Applicant has not identified any specific technological mechanism for how the processor or external device is being used that would distinguish it from being used from generic computing components (apply it). In other words, there is no technical architecture that would amount to a practical application or significantly more, only high-level instructions using generic computing components to determine an investment direction. Based on the updated rejection above, and the response presented here the 101 rejection is maintained.
Applicant's arguments filed 07/06/2026 with respect to 35 U.S.C. § 102, have been fully considered and are persuasive. The 35 U.S.C. § 102 rejection is withdrawn in light of the amendments.
Applicant's arguments filed 07/06/2026 with respect to 35 U.S.C. § 103, have been fully considered and are persuasive. The 35 U.S.C. § 103 rejection is withdrawn in light of the amendments.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/E.M.K./Examiner, Art Unit 3626
/EMMETT K. WALSH/Primary Examiner, Art Unit 3626
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