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 .
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 1-7 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.
For claims 1, 6, 7, the claim recites the generation of argument case information that is “related to a specific application that has been granted only by argument without amendment or correction of translation errors for a notice of reasons for rejection immediately before the grant among past applications for which the person in charge has performed examination based on the person-in-charge information.” This language is considered to be indefinite because it is not clear what the scope of the claim language is. The argument case information that is being generated is claimed as being related to an application. The claim then attempts to describe the application as being an application that has been granted only by argument without amendment or correction of translation errors for a notice of reasons for rejection immediately before the grant among past applications for which the person in charge has performed examination based on the person-in-charge information.”. It is not clear what this language is trying to define about the application or the actual step at hand which is the generation of case argument information. What is required of the claim by describing an application that the generated information is related to? What does this require of the case information generation itself if anything at all? Also, it is not clear what the portion of the language means that recites “for a notice of reasons for rejection immediately before the grant among past applications for which the person in charge has performed examination based on the person-in-charge information.”. It is not clear what the specific application language of the claim is attempting to recite and one wishing to avoid infringement would not be reasonable aware of the claim scope such that they would understand under what conditions infringement would occur. This renders the claim indefinite.
For claim 5, it is not clear what the claim is attempting to recite. The claim recites “wherein the processor specifies the specific application from progress information of the past applications”. Claim 1 does not appear to recite an step of specifying an application, it just recites the generation of case information that is related to a specific application, but there is no specifying occurring in the claim scope for an application. What does it mean to specify the specific application from progress information of the past applications? This is not clear and renders the claim indefinite.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite an apparatus, a method, and a non-transitory computer readable medium storing a program to cause the recited functions to occur; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of providing intellectual property related information to a user that relates to person in charge information for applications being examined by the person in charge.
Using claim 1 as a representative example that is applicable to claims 6, 7, the abstract idea is defined by the elements of:
receive[s] person-in-charge information of a person in charge who has performed examination of a certain application, person-in-charge information for specifying a person in charge who has performed examination of an application relating to an intellectual property right for which a notice of rejection has been received, or identification information for specifying the application relating to the intellectual property right for which the notice of rejection has been received,
extracts the person-in-charge information for specifying the person in charge who has performed examination of the application relating to the intellectual property right for which the notice of rejection has been received based on the identification information in a case where the identification information has been received, and
generates argument case information related to a specific application that has been granted only by argument without amendment or correction of translation errors for a notice of reasons for rejection immediately before the grant among past applications for which the person in charge has performed examination based on the person-in-charge information
The above limitations are reciting a process where a person in charge of examining an application is identified and case information is generated for the user for matters such as the examination of an intellectual property application. The claimed invention is akin to a user obtaining information about patent examiners and the applications they work on and the office actions issued by the examiners that sets forth the reasons for rejection of claims. The claimed steps of receiving the information, extracting information, and generating case information are all functions that can be performed by people with no technology at all. The providing of information that relates to a person in charge who is examining an application is considered to be a legal interaction type of abstract idea that is receiving, storing, and analyzing office actions from patent offices and examiners to provide information to interested parties. This is claiming a certain method of organizing human activities type of abstract idea.
For claims 1, 6, the additional elements of the claim is the recitation to the processor that is executing the claimed steps that have been found to be defining the abstract idea. Claim 7 recites the non-transitory computer readable medium that is storing a program to cause the steps to occur. These elements are reciting that the abstract idea is to be implemented by use of a computer with a processor.
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device with a processor that is being merely used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected which is a link to computer technology, also see MPEP 2106.05(h). This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination with the claim as a whole because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device with a processor that is being merely used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected which is a link to computer technology, also see MPEP 2106.05(h). This does not amount to the claim reciting significantly more than the abstract idea. The claims 1, 6, 7, do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 2-5, the claims are reciting a further embellishment of the same abstract idea that was found for claim 1. Claiming the information such as an application number of argument information, claiming that a summary of the argument is generated, outputting the case information, and specifying the application as claimed are all elements that are part of the abstract idea. The claims do not recite any further additional elements for consideration other than the processor of claim 1, where the processor has been treated in the same manner that was set forth for claim 1, see MPEP 2106.05(f), (h). The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
Therefore, for the above reasons, claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without 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.
Claim(s) 1, 2, 4-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holt et al. (20080021900).
For claims 1, 4, 5 (as best understood due to 112b rejection), 6, 7, Holt discloses a computerized system and method for obtaining and storing intellectual property related data for applications that are being examined by a patent office, such as for patent applications filed with the USPTO. Disclosed is an examiner information system 100 (satisfies the claimed processor) that is used to aggregate information about patent applications that are worked on by examiners who are in charge of the examination for an IP application. Person in charge information is received, which is the receipt of information from a patent office that identifies an examiner, see paragraphs 017-020, 023. Examiner name is one piece of information that is obtained and used by the system. Data about patent applications is received and the data is analyzed to extract information such as the name of the examiner that is in charge of examining a given application. This satisfies the claimed receiving and extracting step for the person in charge information.
For claim 2, Holt discloses information such as application number, see paragraph 023. Holt receives and stores information such as examiner name and/or application number.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holt et al. (20080021900) in view of Deibler et al. (20210192125).
For claim 3, not disclosed is that the processor creates a summary of argument from the argument information. This has been interpreted as being the summarization of a document such as an office action from the USPTO.
Deibler discloses a system and method for summarizing a document. Deibler discloses that the system includes a summarization model that is used to summarize a document, with disclosure to summarizing a legal document found in paragraph 133. As is taught by Deibler in paragraph 004, the ability to summarize information such as a document is of utmost importance to users that work with different types of documents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Holt with the ability to summarize legal documents as taught by Deibler, for the documents in Holt that are involved in the prosecution of a patent application, such as office actions and other prosecution related documents. This teaching from Deibler that is being provided to Holt will provide for the ability to allow a user to receive a summary of an office action as opposed to having to read it in its entirety. This would have been obvious to provide to Holt yields the predictable result of providing a user in holt with a summary of documents stored by the system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Admon (20160232630), Perkowski et al. (20160048936), Lundberg (20150206260), Carstens et al. (20140365386), Holt (20120226684; 20120203791), Frank et al. (7386460; 7346518; 2006085220, 20060080136) are disclosing systems that deal with storing and analyzing intellectual property related information sch as patents and patent applications. This is relevant to the claimed invention as far as the obtaining and processing of IP information for pending applications at a patent office is something that is well known in the art and goes back to the mid 2000s.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/ Primary Examiner, Art Unit 3626