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 .
This Office Action is responsive to communication filed on 10/16/2025.
Claims 19 - 32 are currently pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/16/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19 – 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 16 of U.S. Patent No. 12,468,594 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters claimed in instant application can also find in patent ‘594.
Certain limitation found in claim 1 of patent 594 but not in claim 1 of instant application such as “an object with second mode”, instead of “an image”, “first identification information for identifying a first image”, “first document information including a first description describing a cause of the first mode represented by the first image”. It would have been obvious to one with ordinary skill in the art before the effective filling date of the claim invention to broaden the claims at no additional cost in development.
The following is a table comparison between claim 19 of instant application and claim 1 patent ‘594.
Instant application ‘244 Patent ‘594
An information processing apparatus communicably connectable to a communication terminal through a network, the information processing apparatus
comprising:
one or more memories configured to:
An information processing apparatus communicably connected to a communication terminal through a network, comprising:
one or more memories that
store a first image that visually represents a first mode of a predetermined state, and a
first description describing the first mode represented by the first image; and
Store state information indicating a predetermined state of a problem that occurs in an object, the predetermined state including a first mode and a second mode,
store a second image that visually represents a second mode of the predetermined
state, and a second description describing the second mode represented by the second image;
and
store the state information in association with first identification information for identifying a first image that visually represents the first mode of the predetermined state, and first document information including a first description describing a cause of the first mode represented by the first image, and
store the state information in association with second identification information for identifying a second image that visually represents the second mode of the predetermined state, and second document information including a second description describing a cause of the second mode represented by the second image; and
circuitry configured to:
cause the communication terminal to display a search screen at which a user enters a
text related to the predetermined state;
receive, from the communication terminal, the text entered by the user at the
communication terminal;
circuitry configured to:
receive from the communication terminal through the network, a text entered by a
user at the communication terminal;
specify the first image and the second image based on the text entered by the user by
referring to the one or more memories;
specify the first image identified by the first identification information and the
second image identified by the second identification information stored in
association with the state information based on the entered text;
transmit, to the communication terminal, first screen information for a selection
screen including the first image and the second image specified;
transmit to the communication terminal through the network, first screen information
of a selection screen including the first image and the second image specified;
cause the communication terminal to display the selection screen that presents, in a
selectable manner, the first image and the second image together with the text entered by the user, the selection screen configured to allow the user to select the first image or the second image;
cause the communication terminal to display the first image and the second image
specified in a selectable manner, together with the text entered by the user, on the selection screen where the user selects from the first image and the second image;
receive, from the communication terminal, first specific information for specifying the
first image in response to a selection of the first image by the user on the selection screen, and second specific information for specifying the second image in response to a selection of the second image by the user on the selection screen;
receive from the communication terminal through the network, first specific information for specifying the first image when the user selects the first image on the selection screen, and second specific information for specifying the second image when the
user selects the second image on the selection screen;
in response to receiving the first specific information for specifying the first image,
generate first description information based on the first description describing the first mode, and transmit the first description information to the communication terminal; and
in response to receiving the first specific information for specifying the first image,
generate first description information including a part or all of the first description
describing the cause of the first mode based on the first specific information for
specifying the first image or video selected by the user on the selection screen, and
transmit the first description information to the communication terminal through the network; and
in response to receiving the second specific information for specifying the second
image, generate second description information based on the second description describing the second mode, and transmit the second description information to the communication terminal.
in response to receiving the second specific information for specifying the second
image, generate second description information including a part or all of the second description describing the cause of the second mode based on the second specific information for specifying the second image selected by the user on the selection screen, and transmit the second description information to the communication terminal through the network.
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 19 - 32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 19 - 32 are directed to a " method, an apparatus and a non-transitory recording medium with instructions and processor…", and therefore, directed to a statutory category.
Step 2A, Prong One:
The independent claims 19, 31 - 32, include the following limitations that are directed to an abstract idea:
“store a first image that visually represents a first mode of a predetermined state, and a first description describing the first mode represented by the first image;”, and “store a second image that visually represents a second mode of the predetermined state, and a second description describing the second mode represented by the second image”, as drafted, recites a mentally process as an evaluation or judgement. The Act of “storing an image file alongside a corresponding textual description” is merely a data manipulation process. A human can easily perform this exact process mentally or with pen and paper. See Court case in Whitserve LLC v. Dropbox, the court ruled that requesting, transmitting, and storing data records is an unpatentable abstract idea.
“specify the first image and the second image based on the text entered by the user by referring to the one or more memories” as drafted, recites a mentally process as an evaluation or judgement. A human can easily perform this concept in their mind or using pen and paper. For instance, a person can read text written by someone else, remember a past event (referring to a memory), and point out two corresponding photographs (specifying the first and second images). The process of collecting data (text input), comparing it to stored data (memories), and retrieving matching subsets (images) is an abstract process. In cases like RecogniCorp v. Nintendo and TLI Communications, the Federal Circuit ruled that encoding, classifying, and matching image data using conventional logic is a patent-ineligible abstract concept.
“transmit, to the communication terminal, first screen information for a selection screen including the first image and the second image specified” as drafted, recites a mentally process as an evaluation or judgement. The Acts of "transmit to a communication terminal" or "displaying information" describe routine, generic data-routing practices that predate modern computers. See Court case in Whitserve LLC v. Dropbox, the court ruled that requesting, transmitting, and storing data records is an unpatentable abstract idea.
“cause the communication terminal to display the selection screen that presents, in a selectable manner, the first image and the second image together with the text entered by the user, the selection screen configured to allow the user to select the first image or the second image”, as drafted, recites a mentally process as an evaluation or judgement. Displaying two images alongside user-entered text and letting a user select one is a basic human concept of choice and presentation, simply computerized. It merely describes the desired end result of an interface without provide detail how the communication terminal's operating system or hardware is fundamentally improved. See Court case IBM v. Zillow Group (2022), Electric Power Group v. Alstom (2016) wherein collecting and displaying data in a user-selectable or consumable manner is a core abstract concept.
“in response to receiving the first specific information for specifying the first image, generate first description information based on the first description describing the first mode, and transmit the first description information to the communication terminal”, as drafted, recites a mentally process as an evaluation or judgement. The claim recites receiving input data ("first specific information"), generating derivative text/metadata ("description information based on the first description describing the first mode"), and transmitting it ("transmit to the communication terminal"). These processes are treated as receiving, converting, and transmitting generic information as analogized to human mental processes or fundamental business/communication practices (similar to Electric Power Group or general data-gathering/combining).
“in response to receiving the second specific information for specifying the second image, generate second description information based on the second description describing the second mode, and transmit the second description information to the communication terminal”, as drafted, recites a mentally process as an evaluation or judgement. The claim recites receiving input data ("first specific information"), generating derivative text/metadata ("description information based on the first description describing the first mode"), and transmitting it ("transmit to the communication terminal"). These processes are treated as receiving, converting, and transmitting generic information as analogized to human mental processes or fundamental business/communication practices (similar to Electric Power Group or general data-gathering/combining).
Step 2A, Prong Two:
The claim recites additional elements such as:
“receive, from the communication terminal, the text entered by the user at the communication terminal”, is insignificant extra-solution activity. This limitation recited as retrieval/receiving of data (i.e. mere data gathering) or at most selecting a particular data source (i.e. text entered by user) to be manipulate (i.e. by a searching process). This does not provide integration into a practical application.
“receive, from the communication terminal, first specific information for specifying the first image in response to a selection of the first image by the user on the selection screen, and second specific information for specifying the second image in response to a selection of the second image by the user on the selection screen”, is insignificant extra-solution activity. This limitation recited as retrieval/receiving of data (i.e. mere data gathering) or at most selecting a particular result (i.e. first image, second image) to be processed (i.e. by a searching process). This does not provide integration into a practical application.
The claim recites the term "An information processing apparatus communicably connectable to a communication terminal through a network ", "one or more memories", “circuitry configured to…”, and “A non-transitory recording medium storing a plurality of instructions which, when executed by one or more processors” which is a high-level recitation of a generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application. These components are just generic, off-the-shelf computer hardware acting as a tool to execute the abstract concept.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
In this case, using a "An information processing apparatus communicably connectable to a communication terminal through a network ", "one or more memories", “circuitry configured to…”, and “A non-transitory recording medium storing a plurality of instructions which, when executed by one or more processors” are considered conventional or routine computer functions. Because the additional elements amount to nothing more than routine data-gathering and standard computer implementation, they fail to provide an inventive concept.
Accordingly, the additional limitations are not providing significantly more than the
judicial exception. Looking at the claim, as a whole, does not change this conclusion and
therefore, the claim is ineligible.
The dependent claims 20 includes “in a case in which one of the first image and the second image is specified, generate description information based on the description stored in the one or more memories in association with the one of the first image and the second image; and transmit the description information to the communication terminal”, is description of a mental process. Retrieving/generating description text based on an image index and sending it. Resembles generic data lookup and communication.
The dependent claim 21 includes “in specifying the first image and the second image by referring to the one or more memories, calculate a degree of similarity based on feature vectors of images stored in the one or more memories, and extract an image having a higher degree of similarity than a predetermined threshold” is considered as metal process/Data manipulation. The act of comparing two things (images), evaluating their similarity against a "predetermined threshold," and "extracting" (selecting) the best match is a logical filtering process that can conceptually be performed in the human mind or with pen and paper. The core of the claims describe mathematical concept (Calculating a "degree of similarity" based on "feature vectors" is essentially executing mathematical equations on multi-dimensional data arrays.
The dependent claim 22, includes “generate the first description information or the second description information by applying the text data to a template prepared in advance” is considered as metal process/Data manipulation as identified in MPEP 2106.05(g) and does not provide integration into a practical application. Filling text data into a predefined template (like filling out a form, a mail-merge, or writing a template-based summary) is an activity a human can perform using a pen and paper or purely in their mind. The phrase describes what the system does (generates information using a template) rather than how a specific technological mechanism or hardware limitation accomplishes it. Merely taking a long-standing human activity (using templates to draft documents) and telling a generic computer to do it faster does not escape being abstract.
The dependent claim 23, includes “wherein each of the first description and the second description includes at least one of a text describing a cause of the predetermined state, a text describing countermeasure, or a text describing the predetermined state in detail” is considered as metal process/Data manipulation as identified in MPEP 2106.05(g) and does not provide integration into a practical application. The language describes what the information is (a cause, a countermeasure, or details about a state) rather than how a computer or system technically processes it. Collecting, displaying, or manipulating information based purely on its intellectual content is a classic abstract idea.
The dependent claim 24 - 25, includes “generate second screen information for an answer screen including a display of the first description information or the second description information; and transmit the generated second screen information to the communication terminal” is description of a mental process, as identified in MPEP 2106.05(g) and does not provide integration into a practical application. Retrieving/generating description text based on an image index and sending it. Resembles generic data lookup and communication.
The dependent claim 26, includes “ indicate by symbols, sentences or words that have a causal relationship with the sentences or words related to the predetermined state, among the sentences or words that are displayed in the display of the text entered by the user; and indicate by the symbols, sentences or words that have the causal relationship with the sentences or words related to the predetermined state displayed in the display of the first description information or the second description information” is mental process/organizing human activity. Analyzing text, identifying semantic or logical relationships (causality), and drawing user attention to them is a process that can be performed entirely in the human mind or by a person using a pen and paper. Extracting information from one data set (the user's text) and mapping it to another data set (description info) is viewed as mere manipulation of data, which courts consistently rule as abstract.
The dependent claim 27, includes “wherein the first screen information and the second screen information are web content data that is displayed by a web browser application or an application including a web browser function” describes a mental process. The Acts of displaying, organizing, or presenting information (like web content or UI layouts) via generic browser functions as an abstract concept, similar to organizing human activity or mental data processing ( See Internet Patents Corp. v. Active Network, Inc., Broadband ITV v. Amazon).
The dependent claim 28 - 29, includes “wherein the answer screen includes at least a display of information on one or more articles used to improve the predetermined state” describes the general presentation of data. Courts case (such as in Electric Power Group or Interval Licensing) have repeatedly ruled that collecting data, analyzing it, and displaying the results on a screen is a generic, abstract mental process or a method of organizing human activity. While the phrase mentions improving a "predetermined state," if the claim does not explicitly disclose how the computer hardware or technical user interface itself is functionally improved, it will be viewed as merely using a generic computer to display an abstract result.
Claims 19 – 30, 32 , Applicant claims the abstract idea on a device with general circuitry and a non-transitory computer readable recording medium with instruction to carry-out the method as in claim 31, without adding further limitations that amount to more than generally linking the use of the exception to a particular technological environment (See Recentive Analytics v. Fox Corp. (2025)). Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to "perform pre-diagnosis of uncertainty… generating a prompt template … performing inference" do not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. The claims are not patent eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAM LINH T NGUYEN whose telephone number is (571)272-4024. The examiner can normally be reached M-F: 7:00 - 3:00 pm.
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/CAM LINH T NGUYEN/Primary Examiner, Art Unit 2161
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