UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`14/418,300
`
`01/29/2015
`
`Fumiaki OOBAYASHI
`
`HOKUP0271WOUS
`
`6130
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19mm
`CLEVELAND, OHIO 441 15
`UNITED STATES OF AMERICA
`
`SCHEUNEMANN RICHARD N
`
`MW
`
`3624
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/27/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`
`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`14/418,300
`Examiner
`RICHARD N SCHEUNEMANN
`
`Applicant(s)
`OOBAYASHI etal.
`Art Unit
`AIA Status
`3624
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 11 January 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) C] This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1,3—8,10,12,14—16 and 18—20 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) 1,3—8,10,12,14—16 and 18—20 is/are rejected.
`
`[:1 Claim(s)
`
`is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
`
`is/are: a)D accepted or b)l:] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)D All
`
`b)I:I Some”
`
`c)CI None of the:
`
`1.[:]
`
`Certified copies of the priority documents have been received.
`
`2.[:]
`
`Certified copies of the priority documents have been received in Application No.
`
`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) C] Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180424
`
`

`

`Application/Control Number: 14/418,300
`Art Unit: 3624
`
`Page 2
`
`DETAILED ACTION
`
`Introduction
`
`This Final Office Action is in response to an amendment filed on January 11, 2018, for
`
`the application with serial number 14/418,300.
`
`Claims 1, 3, and 8 are amended.
`
`Claims 2, 9, 11, 13, and 17 are canceled.
`
`Claims 1, 3-8, 10, 12, 14-16, and 18-20 are pending.
`
`Examiner Interview
`
`Response to Remarks/Amendments
`
`1.
`
`The Examiner’s account of the interview is inconsistent with the Applicant’s account.
`
`Specifically, although the Examiner conceded that the present amendments would overcome
`
`the prior art rejections, the Examiner never agreed that the amendments would overcome the
`
`rejections under 35 USC §112. Those rejections are maintained.
`
`35 USC §112 jaj Rejections
`
`2.
`
`The Applicant contends that 1j[0055]-[0070] demonstrate how to calculate an evaluation
`
`value/concentration ratio. This statement in and of itself is evidence of the inadequacy of the
`
`disclosure. A reading of the specification does not make clear that an ‘evaluation value’ and
`
`‘concentration ratio’ are equivalent and interchangeable terms. The specification merely states
`
`

`

`Application/Control Number: 14/418,300
`Art Unit: 3624
`
`Page 3
`
`in 1j[0057], for example, that ‘the evaluation value about the concentration ratio calculated using
`
`the answering time will be described.’ The rejection is maintained.
`
`35 USC §112 jb) Rejections
`
`3.
`
`The amendments do not clarify how to use a statistics value to create an evaluation
`
`value of a concentration ratio because they merely incorporate language from original claim 2
`
`into claim 1. The rejection is accordingly maintained.
`
`35 USC §101 Rejections
`
`4.
`
`The Applicant traverses the rejection of the claims under 35 USC §101, contending that
`
`the claims are similar to the claims from McRo. However, the claims from McRo recited an
`
`improvement to lip-synching technology that is rooted in computer technology. The present
`
`claims recite a mathematical calculation that could be executed by hand, but a general purpose
`
`computer is recited for execution. Although the Applicant contends that it is unreasonable to
`
`expect the calculations to be performed by hand or in the human mind, the calculations could, in
`
`theory, be performed by hand or in the human mind. The Examiner further notes that
`
`mathematical formulas are ineligible abstract ideas. The rejection is accordingly maintained.
`
`35 USC §103 Rejections
`
`5.
`
`In light of the Applicant’s amendments, the rejection of the claims under 35 USC §103 is
`
`withdrawn.
`
`35 U.S.C. 101 reads as follows:
`
`Claim Rejections - 35 USC § 101
`
`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.
`
`

`

`Application/Control Number: 14/418,300
`Art Unit: 3624
`
`Page 4
`
`6.
`
`Section 101 of the Patent Act defines subject matter eligibility and the Supreme Court
`
`has “long held that this provision contains an important implicit exception: Laws of nature,
`
`natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank
`
`Int’l, 134 S.Ct. 2347, 2354 (2014) “The ‘abstract ideas’ category embodies the longstanding rule
`
`that ‘[a]n idea of itself is not patentable.”’ Alice, 134 S.Ct. at 2355.
`
`In Alice, the Supreme Court
`
`emphasized that the “Mayo framework” provides “a framework for distinguishing patents that
`
`claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-
`
`eligible applications of those concepts.” Id. Under the Mayo framework, “[w]e must first
`
`determine whether the claims at issue are directed to a patent-ineligible concept.” Id. Next, “we
`
`consider the elements of each claim both individually and ‘as an ordered combination” to
`
`determine whether the additional elements ‘transform the nature of the claim’ into a patent-
`
`eligible application.” Id. To be patentable, a claim must do more than simply state the law of
`
`nature or abstract idea and add the words “apply it.” Mayo, 132 S.Ct. at 1294; Benson, 409 U.S.
`
`at 67. Furthermore, “the mere recitation of a generic computer cannot transform a patent-
`
`ineligible abstract idea into a patent-eligible invention.” Alice, 134 S.Ct. at 2358. “Thus, if a
`
`patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea
`
`‘on .
`
`.
`
`. a computer,” that addition cannot impart patent eligibility.” Id. A challenged claim,
`
`properly construed, must incorporate enough meaningful limitations to ensure that it claims
`
`more than just an abstract idea and not just a mere “‘drafting effort designed to monopolize the
`
`[abstract idea].”’ Alice, 134 S.Ct. at 2357. “Simply appending conventional steps, specified at a
`
`high level of generality,” is not “enough” for patent eligibility. Id. (quoting Mayo, 132 S.Ct. at
`
`1292). Thus, we analyze the claims to determine whether the claims embody a patent-eligible
`
`application of an abstract idea or merely nothing more than the abstract idea itself.
`
`7.
`
`Claims 1, 3-8, 10, 12, 14-16, and 18-20 are rejected under 35 U.S.C. 101. The claimed
`
`invention is directed to non-statutory subject matter because the claimed invention recites a
`
`judicial exception (Le, a law of nature, a natural phenomenon, or an abstract idea) without
`
`

`

`Application/Control Number: 14/418,300
`Art Unit: 3624
`
`Page 5
`
`significantly more. Although claims(s) 1, 3-7, 10, 12, 14-16, and 18-20 are all directed to one of
`
`the four statutory categories of invention, the claims are directed to concentration ratio
`
`measurement (as evidenced by the preamble of exemplary claim 1; “A concentration ratio
`
`measurement apparatus”), an abstract idea. As indicated in the Interim Guidance on Subject
`
`Matter Eligibility, an idea of itself is an ineligible abstract idea, including collecting information,
`
`analyzing it, and displaying certain results of the collection and analysis. See
`
`https://www.uspto.gov/sites/default/files/documents/ieg-qrs.pdf, referencing Electric Power
`
`Group, LLC v. Alstom. 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016). Similarly here,
`
`the claims recite steps for collecting test data, analyzing it, and storing the results of the
`
`analysis. The limitations of exemplary claim 1 include: “present a plurality of recognition objects
`” u
`u u
`
`to a test subjec ,
`
`allow the test subject to input an answer,
`u u
`
`evaluate a concentration ration of
`
`the test subject on the mental work,
`
`extracting two or more kinds of prescribed cognitive
`” n
`
`elements included in the recognition object,” “choosing .
`
`.
`
`. an option,
`
`store the plurality of
`
`recognition objects,” “present the plurality of recognition objects stored in the recognition object
`” a
`
`storage part,
`
`store .
`
`.
`
`. the at least one of the answering time and the right or wrong answer for
`
`each of the plurality of recognition objects,” and “calculate an evaluation value of the
`
`concentration ratio.” The steps are all steps for data input, data analysis, and data storage
`
`related to the abstract idea of concentration ration measurement that, when considered
`
`individually and as a whole, do not amount to significantly more than the abstract idea of
`
`concentration ratio measurement. The dependent claims further recite steps for data collection,
`
`data storage, and data analysis that do not amount to significantly more. The claims do not
`
`include additional elements that are sufficient to amount to significantly more than the judicial
`
`exception because the claims do not recite an improvement to another technology or technical
`
`field, nor do they recite an improvement to the functioning of the computer itself. The claims
`
`require no more than a generic computer (an apparatus with ‘presentation device,” ‘input
`
`device,” and ‘evaluation device” in claim 1) to perform generic computer functions that are well-
`
`

`

`Application/Control Number: 14/418,300
`Art Unit: 3624
`
`Page 6
`
`understood, routine and conventional activities previously known to the industry. The use of a
`
`computer to acquire data and manipulate data is well-understood, routine, and conventional (as
`
`evidenced by 1j[0018] of the specification; “the evaluation device 10 may be realized by
`
`executing a program with a general-purpose computer”). Therefore, the claims recite an
`
`ineligible abstract idea under 35 USC §101.
`
`8.
`
`Furthermore: Claim 8 is rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to non-statutory subject matter.
`
`Independent claim 8 is directed to a computer program as described in the preamble.
`
`Software per se is not patentable under § 101; therefore, the claimed invention does not fall
`
`within a statutory class of patentable subject matter. See MPEP 2106.01. Examiner
`
`recommends amending the claim to clearly include hardware in order to overcome this rejection.
`
`Claim Rejections - 35 USC § 1 12
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`IN GENERAL—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`9.
`
`Claims 1, 3-8, 10, 12, 14-16, and 18-20 are rejected under 35 U.S.C. 112(a) or 35
`
`U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description
`
`requirement. The claim(s) contains subject matter which was not described in the specification
`
`in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a
`
`

`

`Application/Control Number: 14/418,300
`Art Unit: 3624
`
`Page 7
`
`joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession
`
`of the claimed invention.
`
`Independent claims 1 and 8 recite, “an evaluating arithmetic part
`
`configured to calculate an evaluation value that evaluates the concentration ratio quantitatively
`
`using a statistics value of the work information stored in the work memory part while the plurality
`
`of recognition objects are presented on the presentation device.” However, no algorithm or
`
`workflow for creating an ‘evaluation value’ of the concentration ratio is provided in the
`
`specification or claims. When examining computer-implemented functional claims, examiners
`
`should determine whether the specification discloses the computer and the algorithm (e.g., the
`
`necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such
`
`that one of ordinary skill in the art can reasonably conclude that the inventor invented the
`
`claimed subject matter.
`
`If the specification does not provide a disclosure of the computer and
`
`algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor
`
`possessed the invention including how to program the disclosed computer to perform the
`
`claimed function, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph,
`
`for lack of written description must be made. The level of detail required to satisfy the written
`
`description requirement varies depending on the nature and scope of the claims and on the
`
`complexity and predictability of the relevant technology. See MPEP §2161.01. The present
`
`claims recite all manners of using statistics to calculate an ‘evaluation value’ of a concentration
`
`ratio. Essentially, the claims recite a genus of calculations that is not adequately defined with
`
`species in the specification. The specification names a ‘statistics value’ in 1j[0054]-[0056], but it
`
`is unclear what statistics are used in the calculation. The situation is similar to the situation in
`
`the case, LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45, 76 USPQ2d
`
`1724, 1731-32 (Fed. Cir. 2005).
`
`In that case, the claims broadly covered all manners of making
`
`a calculation, but the specification only claimed a specific manner of making the calculation.
`
`The specification of the present application does not describe a specific manner of making the
`
`

`

`Application/Control Number: 14/418,300
`Art Unit: 3624
`
`Page 8
`
`calculation, and the broader manner of making the calculation is also not disclosed. The written
`
`description is inadequate. The dependent claims inherit the deficiency.
`
`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.
`
`10.
`
`Claims 1, 3-8, 10, 12, 14-16, and 18-20 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 pre-AIA the
`
`applicant regards as the invention.
`
`Independent claims 1 and 8 recite, “an evaluating arithmetic
`
`part configured to calculate an evaluation value that evaluates the concentration ratio
`
`quantitatively using a statistics value of the work information stored in the work memory part
`
`while the plurality of recognition objects are presented on the presentation device.” It is unclear
`
`how to use a statistics value to create an evaluation value of a concentration ratio at least
`
`because it is unclear what constitutes an ‘evaluation value of a concentration ratio.’ The claims
`
`are indefinite. The dependent claims inherit the deficiency.
`
`Conclusion
`
`11.
`
`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
`
`

`

`Application/Control Number: 14/418,300
`Art Unit: 3624
`
`Page 9
`
`will expire on the date the advisory action is mailed, and any extension fee 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.
`
`12.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to RICHARD N SCHEUNEMANN whose telephone number is (571)270-
`
`7947. The examiner can normally be reached on M-F 9am-5pm EST.
`
`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, Anita Coupe can be reached on 571-270-3614. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
`
`would like assistance from a USPTO Customer Service Representative or access to the
`
`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`

`

`Application/Control Number: 14/418,300
`Art Unit: 3624
`
`/R|CHARD N SCHEUNEMANN/
`
`Primary Examiner, Art Unit 3624
`
`Page 10
`
`