www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/167,627
`
`10/23/2018
`
`Takahiro SUGIMOTO
`
`NITIP-59949
`
`6035
`
`aR a
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`SADANANDA, ABHIIT B
`
`3624
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/11/2020
`
`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):
`
`patdocket@ pearne.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11) The drawing(s) filed on 23 October 2018 is/are: a)¥) accepted or b)() 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:
`cc) None ofthe:
`b)LJ Some**
`a)Y) All
`1.4) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have beenreceived in Application No.
`3.4) Copies of the certified copies of the priority documents have been receivedin 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)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20200526
`
`Application No.
`Applicant(s)
`16/167,627
`SUGIMOTOetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ABHIJIT B SADANANDA
`3624
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 23 October 2018.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)(J This action is FINAL. 2b))This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on__; the restriction requirement and election have been incorporatedinto this action.
`4\(Z 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`)
`)
`
`Disposition of Claims*
`1-10 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Claim(s) 1-10 is/are allowed.
`OO Claim(s
`)____ is/are rejected.
`OO Claim(s)__is/are objectedto.
`CL) Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible 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 PPHfeedback@uspto.gov.
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA 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
`
`Acknowledgmentis made of applicant’s claim for foreign priority under 35 U.S.C.
`
`119 (a)-(d). The certified copy of parent application JP 2017-210925 was received on
`
`January 4, 2019.
`
`Information Disclosure Statement
`
`The information disclosure statements (IDS) submitted on October 16, 2018 and
`
`January 9, 2020 are in compliance with the provisions of 37 CFR 1.97 and 1.98 and
`
`have been considered by the examiner.
`
`Status of Claims
`
`This is a Non-Final Action on the merits of the communication filed on October
`
`23, 2018.
`
`Claims 1-10 are currently pending.
`
`Claims 1 and 10 are independent.
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 3
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An elementin a claim for a combination may be
`expressed as a meansorstep for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An elementin a claim for a combination may be expressed as a meansor step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`suchclaim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`The claims in this application are given their broadest reasonable interpretation
`
`using the plain meaning of the claim language in light of the specification as it would be
`
`understood by one of ordinary skill in the art. The broadest reasonable interpretation of
`
`a claim element (also commonly referred to as a claim limitation) is limited by the
`
`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection I, claim limitations that meet the
`
`following three-prong testwill be interpreted under 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph:
`
`(A)
`
`the claim limitation uses the term “means”or “step” or a term used as a substitute
`
`for “means” that is a generic placeholder (also called a nonce term or a non-
`
`structural term having no specific structural meaning) for performing the claimed
`
`function;
`
`the term “means” or “step” or the generic placeholder is modified by functional
`
`language, typically, but not always linked by the transition word “for” (e.g.,
`
`

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`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 4
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`“means for’) or anotherlinking word or phrase, such as “configured to” or “so
`
`that’: and
`
`(C)
`
`the term “means”or“step” or the generic placeholder is not modified by sufficient
`
`structure, material, or acts for performing the claimed function.
`
`Use of the word “means”(or “step”) in a claim with functional language creates a
`
`rebuttable presumption that the claim limitation is to be treated in accordance with 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
`
`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
`
`acts to entirely perform the recited function.
`
`Absenceof the word “means”(or “step”) in a claim creates a rebuttable
`
`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
`
`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, is rebutted when the claim limitation recites function without reciting
`
`sufficient structure, material or acts to entirely perform the recited function.
`
`Claim limitations in this application that use the word “means”(or “step”) are
`
`being interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph,
`
`except as otherwise indicated in an Office action. Conversely, claim limitations in this
`
`application that do not use the word “means”(or “step”) are not being interpreted under
`
`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
`
`indicated in an Office action.
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 5
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`Claims 1-2 and 6-8 recite limitations that use generic placeholders coupled
`
`with functional language, but are nonetheless not being interpreted under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`Regarding Claims 1-2 and 6-8, these claims recite the generic placeholders
`tt
`
`“evaluator,”
`
`“unit,” and “generator” coupled with corresponding functional language (/.e.,
`
`“evaluates...,” “outputs...,” “generates...,” etc.), and therefore satisfy Steps A and B of
`
`the three-prong analysis. However, the specification states that “candidatesite
`
`evaluation system 1
`
`is a computer including a processor (microprocessor), a memory
`
`(storage), and a communication interface (such as a communication circuit),” wherein
`
`“[t]he memory is a ROM, or a RAM, and canstore control programs (computer
`
`programs) executed by the processor... to implement[] generator 10, evaluator 20,
`
`output unit 30, first obtaining unit 40, and second obtaining unit 50.”'
`
`It further states
`
`that the disclosure may be implemented as “a program (software)... executed by
`
`utilizing hardware resources such as a CPU, a memory, and an I/O circuit of the
`
`computer.”* In view of the disclosure as a whole,it is clear that the recited “evaluator,”
`
`“output unit,” and “generator” refer to software and that these elements are not intended
`
`to invoke interpretation as means-plus-function elements.
`
`' Specification — pg. 9 In. 4-13
`2 Specification — pg. 23 In. 17-27
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`

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`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 6
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`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 thistitle.
`
`Claims 1-9 are rejected under 35 U.S.C. 101 becausethe claims do notfall
`
`within at least one of the four categories of patent eligible subject matter.
`
`Regarding Claim 1, this claim recites a “candidate evaluation system,” which
`
`suggests that the claim is directed to the statutory category of machine or manufacture.
`
`A machine is defined as a “concrete thing, consisting of parts, or of certain devices and
`
`combinations of devices.” A manufacture is defined as “a tangible article that is given a
`
`new form, quality, property, or combination through man-madeor artificial means.”*
`
`As discussed above under Claim Interpretation, the recited “evaluator” and
`
`“output unit” represent software components, wherein an embodiment of the recited
`
`system “is a computer including a processor (microprocessor), a memory (storage), and
`
`a communication interface (such as a communication circuit).”. While the specification is
`
`generally directed to this embodiment, it explicitly states, “Although candidate site
`
`evaluation system 1 of the present disclosure has been described so far based on the
`
`embodiment, the present disclosure is not limited to the embodiment. As long as not
`
`departing from the essence of the present disclosure, an embodiment obtained by
`
`making various changes, which occurto those skilled in the art, to the present
`
`embodiment, and an embodiment obtained by combining the componentsofdifferent
`
`3 MPEP 2106.03(I)
`4 Id.
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 7
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`embodiments are also included in the scope of the present disclosure’ (emphasis
`
`added).° The specification further states that “the present disclosure may be
`
`implemented as a program that causes a computer to execute the steps,”® such as by
`
`using servers to execute the program.’ In view of the disclosure as a whole, one of
`
`ordinary skill would recognize that an embodimentof the candidate evaluation system
`
`may entirely comprise a program lacking any structure, whilst “not departing from the
`
`essenceof the presentdisclosure,” and amounts to software per se. Since a claim
`
`directed to a machine or manufacture must include tangible structure, the recited
`
`system fails to satisfy the requirements for these statutory categories.
`
`The claim is therefore does notfall within one of the four statutory categories of
`
`invention.
`
`Regarding Claims 2-9, these claims inherit and fail to cure the deficiencies of
`
`Claim 1 and are non-statutory for the reasons discussed above.
`
`Claims 1-10 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.
`
`Regarding Claim 1, this claim recites an abstract idea. The abstractidea is
`
`describedby the limitations (in emphasis):
`
`A candidate site evaluation system, comprising:
`
`5 Specification — pg. 22 In. 23 — pg. 23 In. 2
`8 Specification — pg. 23 In. 17-25
`7 Specification — pg. 9 In. 14-21
`
`

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`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 8
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`an evaluator that evaluates suitability of a candidate site in a target area
`
`based on a candidate site evaluation model and a second map, the candidatesite
`
`evaluation model being obtained as a result of machine learning using a first map
`
`that shows any area and position information indicating locations of one or more
`
`existing facilities of a predetermined business type in the any area and being for
`
`evaluating the candidate site for openinga facility of the predetermined business
`
`type, the second map showingthe target area including the candidate site to be
`
`evaluated; and
`
`an output unit...
`
`The identified limitations describe a process for evaluating suitability of a
`
`candidate site in a target area based on a candidate site evaluation model, which is a
`
`commercial activity (e.g., marketing or sales activities or behaviors) and amounts to a
`
`method of organizing human activity. The concept of evaluating existing facilities in
`
`order to select locations for new facilities is a longstanding practice in our systems of
`
`commerce, and is a form of market research that would be implemented by any
`
`business seeking to open new facilities. The limitations for obtaining the model using a
`
`first map of any area describe the concept of developing a market model, which is
`
`ordinarily performed when market research is conducted. The recitation that
`
`information is shown on maps does notbring the claims out of the abstract idea
`
`category since these features may simply comprise traditional paper-based means for
`
`presenting information.
`
`The conceptof evaluating suitability of a candidate site in a target area based on
`
`a candidate site evaluation model also amounts to a mental process. The identified
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 9
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`limitations may be carried out in the human mind using traditional paper-and-pencil
`
`techniques to view maps and perform calculations. The recitation that the particular
`
`model itself is obtained as a result of machine learning does not bring the recited data
`
`evaluation out of the mental processes category, but instead is a mere attempt to
`
`generally link the abstract idea to a particular technicalfield, as further discussed below.
`
`Viewed as a whole, the claim limitations set forth concepts that amount to both a
`
`method of organizing human activity and a mental process.
`
`The claim therefore recites a judicial exception.
`
`The claim does not include additional elements that integrate the abstract idea
`
`into a practical application. The additional elements are described by the limitations (in
`
`emphasis):
`
`A candidate site evaluation system, comprising:
`
`an evaluatorthat evaluates... based on... machine learning...; and
`
`an outputunit that outputs a result of the evaluation.
`
`The system and its componentsare recited at a high level of generality and
`
`amount to a general-purpose computer comprising software. The disclosure as a whole
`
`generically indicates that the system may be implemented as programs implemented by
`
`one or more servers or computers.® Similarly, the disclosure does not purport to provide
`
`any improvements in machine learning technology, but instead generally incorporates
`
`machine learning techniques for applying the process. This high-level invocation of
`
`computer and machine learning elements amounts to nothing more than mere
`
`8 Specification — pg. 22-23
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 10
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`instructions to apply the abstract idea on a computer or generally linking the abstract
`
`idea to a particular technological environment.
`
`The step of outputting a result describes to post-solution data-gathering thatis
`
`ancillary to the claimed process and amountsto insignificant extra-solution activity.
`
`Viewedboth individually and as an ordered combination, the additional elements
`
`are not enough to impose meaningful limits on the abstract idea.
`
`The claim is therefore directed to a judicial exception.
`
`The claim does not include additional elements that supply an inventive concept.
`
`As discussed above, with respect to the “directed to” inquiry, the system and its
`
`components as well as the invocation of machine learning amount to mere instructions
`
`to apply the abstract idea on a computer. The same analysis applies here, as merely
`
`applying an abstract idea on a computer or generally linking an abstract idea to a
`
`particular technological environment is not enough to supply an inventive concept.?
`
`The extra-solution data output is recited at a high level of generality and amounts
`
`to nothing more than generically transmitting or storing information, which has been
`
`recognized as well-understood, routine, and conventional activity. 1
`
`Viewedboth individually and as an ordered combination, the additional elements
`
`are not enough to transform the invention into one that is significantly more than the
`
`abstractidea itself.
`
`The claim is therefore directed to a judicial exception without significantly more.
`
`° MPEP 2106.05(f) and (h)
`10 MPEP 2106.05(d)(II)
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 11
`
`Regarding Claim 2, this claim recites a generator for generating the model. The
`
`concept of generating a model is part of the abstract idea, as discussed for Claim 1.
`
`The invocation of a “generator” as software fails to add anything more than mere
`
`instructions to apply the abstract idea on a computer and does not amount to a practical
`
`application or an inventive concept.
`
`Regarding Claims 3-4, these claims further limit the received information to
`
`include position information. The courts have held that merely limiting the content or
`
`source of information amounts to generally linking the claims to a field of use, which is
`
`not enough to provide anything more.
`
`Regarding Claim 5, this claim further limits the content of information involved in
`
`the data evaluation and is considered part of the abstract idea.
`
`Regarding Claims 6-7, this claim further limits the output information to include
`
`data of a certain content, which fails to add anything more to the routine function of
`
`transmitting or storing data.
`
`Regarding Claims 8-9, these claims further limit the content of information
`
`involved in the data evaluation and are considered part of the abstract idea.
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 12
`
`Regarding Claim 10, this claim recites a method describing substantially the
`
`same abstract idea and additional elements as recited in Claims 1-2 and is directed to a
`
`judicial exception without significantly more for the reasons discussed above.
`
`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 madein this Office action:
`
`A personshall 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 otherwiseavailable to the public before the effectivefiling date of the claimed
`invention.
`
`Claims 1-8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by US 2005/0222829 A1 (hereinafter “Dumas’”).
`
`Regarding Claim 1, Dumas teaches:
`
`A candidate site evaluation system (par. [0034] with reference to Fig. 1,
`
`system comprising processor, memory, and server programs), comprising:
`
`an evaluator that evaluates suitability of a candidate site in a target area
`
`based on a candidate site evaluation model and a second map, the candidatesite
`
`evaluation model being obtained as a result of machine learning usinga first map
`
`that shows any area and position information indicating locations of one or more
`
`existing facilities of a predetermined businesstype in the any area and being for
`
`evaluating the candidatesite for opening a facility of the predetermined business
`
`type, the second map showing the target area including the candidate site to be
`
`evaluated (par. [0058] and [0062], mapping past results/events fromafirst geographic
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 13
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`grid, /.e. “first map,” to a second geographic grid, /.e. “second map,” using a signature,
`
`i.e. “model,” to determinealikelihood of a similar result occurring in a different location,
`
`wherein the evaluation includes similar or complementary retailer “types,” e.g. shoe
`
`store, dress shop, mall, etc.; par. [0032]-[0033] and [0048], wherein the signature is
`
`derived basedon training data comprising new and/or updatedlayers, /.e. “machine
`
`learning,” including position information and features pertaining to variables of interest;
`
`par. [0064], real-time communication of events in presenting geospatial analysis and
`
`event prediction, i.e. continuous machine learning; par. [0033]-[0034] with reference to
`
`Fig. 1, event likelihood component or other configuration of programs); and
`
`an output unit that outputs a result of the evaluation (par. [0062], mapping
`
`results to a second grid; par. [0075] and [0078]-[0079] with reference to Fig. 18 and 21-
`
`23, outputting results in one or more output grids/layers; par. [0057]-[0059], graphical
`
`user interface for displaying updated results).
`
`Regarding Claim 2, Dumas teachesthe system of Claim 1 as discussed above,
`
`and further teaches:
`
`a generator that generates the candidate site evaluation model (par. [0033]-
`
`[0034] with reference to Fig. 1, signature derivation componentor other configuration of
`
`programs).
`
`Regarding Claim 3, Dumas teachesthe system of Claim 1 as discussed above,
`
`and further teaches:
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 14
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`wherein the position information is shown ona third map in the any area
`
`(par. [0024] and [0032], multiple grids/layers of geospatial features within a defined
`
`geospatial boundary).
`
`Regarding Claim 4, Dumas teachesthe system of Claim 1 as discussed above,
`
`and further teaches:
`
`wherein the first map and the second map include geographic information
`
`obtained from a Geographic Information System (GIS) (par. [0006]-[0007], receiving
`
`geospatial data as input; par. [0027]-[0028], employing GIS information, e.g. from a third
`
`party).
`
`Regarding Claim 5, Dumasteachesthe system of Claim 1 as discussed above,
`
`and further teaches:
`
`wherein the first map and the second map include information on at least
`
`one of an amount oftraffic, a congestion degree, a road classification, an altitude,
`
`a businesstype offacility, a facility name, and a land classification (par. [0024],
`
`information pertaining to roads, cities, towns, cemeteries, embassies, gardens,
`
`industrial facilities, junctions, educational facilities, bodies of water, settlements, national
`
`parks, city or county facilities, bridges, hotels, fuel stations, hospitals, airports, train
`
`stations, parking lots, campsites, rest areas, archeological sites, and churches/holy
`
`places).
`
`

`

`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 15
`
`Regarding Claim 6, Dumas teachesthe system of Claim 1 as discussed above,
`
`and further teaches:
`
`wherein the output unit outputs a map asthe evaluation result, the map
`
`showing a candidate site having suitability at a certain level or higher in the target
`
`area (par. [0075] and [0078]-[0079] with reference to Fig. 18 and 21-23, outputting
`
`results in one or more output grids/layers; par. [0062], establishments having gross
`
`revenues in excessof a target number).
`
`Regarding Claim 7, Dumas teachesthe system of Claim 1 as discussed above,
`
`and further teaches:
`
`wherein the output unit outputs a heat map asthe evaluation result, the
`
`heat map showing suitability of each of the locations in the target area (par. [0033]
`
`with reference to Fig. 8-11, outputting results on a choropleth graph depicting hot
`
`spots).
`
`Regarding Claim 8, Dumas teachesthe system of Claim 1 as discussed above,
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`and further teaches:
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`wherein the output unit outputs suitability of one location in the target area
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`as the evaluation result (par. [0075] and [0078]-[0079] with reference to Fig. 18 and
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`21-23, outputting results in one or more output grids/layers).
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`Regarding Claim 10, Dumas teaches:
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`

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`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 16
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`A candidate site evaluation method performed using a computer (Fig. 1),
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`the method comprising:
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`generating a candidate site evaluation model which is obtained as a result
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`of machine learning using a first map that shows any area and position
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`information indicating locations of one or more existing facilities of a
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`predetermined businesstypein the any area, and which is for evaluating a
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`candidate site for opening a facility of the predetermined business type(; par.
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`[0032]-[0033] and [0048], deriving signatures based on training data comprising new
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`and/or updated layers, /.e. “machine learning,” including position information and
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`features pertaining to variables of interest; par. [0064], real-time communication of
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`events in presenting geospatial analysis and event prediction, /.e. continuous machine
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`learning);
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`evaluating suitability of the candidate site in a target area based ona
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`second map andthe candidate site evaluation model, the second map showing
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`the target area including the candidate site to be evaluated (par. [0058] and [0062],
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`mapping past results/events fromafirst geographic grid, /e. “first map,” to a second
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`geographic grid, /.e. “second map,” using a signature, i.e. “model,” to determine a
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`likelihood of a similar result occurring in a different location, wherein the evaluation
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`includes similar or complementary retailer “types,” e.g. shoe store, dress shop, mall,
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`etc.; par. [0003]-[0004], target areas for retail establishments); and
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`outputting a result of the evaluating (par. [0062], mapping results to a second
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`grid; par. [0075] and [0078]-[0079] with reference to Fig. 18 and 21-23, outputting
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`

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`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 17
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`results in one or more output grids/layers; par. [0057]-[0059], graphical user interface for
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`displaying updatedresults).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousnessrejections setforth in this Office action:
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`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.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US
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`2005/0222829 A1 (hereinafter “Dumas”) in view of US 9,760,840 B1 (hereinafter
`
`“Tyagi”).
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`Regarding Claim 9, Dumas teachesthe system of Claim 1 as discussed above.
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`While Dumasteaches evaluating existing retail establishments, it does not
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`explicitly include a pastfacility that does not exist at present.
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`

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`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 18
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`However, Tyagi discloses a geospatial data analysis system for evaluating target
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`areasfor potential retail units (Abstract), and teaches:
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`wherein the one or more existing facilities include a facility which existed
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`in past but does notexist at present in the any area(col. 10 In. 10-24, stores which
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`have closed within a threshold amountoftime).
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`It would have been obvious for a person having ordinary skill in the art before the
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`effective filing date of invention to modify the teachings of Dumasto include those of
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`Tyagi because doing so would haveyielded predictable results and resulted in an
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`improved system.
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`It would have been recognized that applying Tyagi’s features for
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`considering closed stores to Dumas’ system for evaluating candidate sites would yield
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`predictable results because the level of ordinary skill demonstrated by the references
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`applied showsthe ability to incorporate such geospatial data processing features into
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`similar systems. One of ordinary skill would have recognized that the combination
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`would result in an improved system that leveragesall available GIS data regarding past
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`establishments in order to generate an accurate and reliable prediction.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
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`e US 20090187464 Ai — Retail store site selection and configuration formulated
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`as a mathematical optimization problem with both in-store and external data
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`as input.
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`

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`Application/Control Number: 16/167,627
`Art Unit: 3624
`
`Page 19
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`supervisor, CHRISTINE BEHNCKE can be reached on (571) 272-8103. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`

`

`Application/Control Number: 16/167,627
`