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 .
Claims Status
Claims 1-17, 25 and 33 are cancelled.
Claims 18-24, 26-32 and 34-37 remain pending and stand rejected.
Response to Arguments
Applicant's arguments with respect to the rejection under 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues that the Examiner has mischaracterized the problem addressed as belonging to the commercial realm, and that the specification has identified a “technical deficiency” including that an online system and an offline transaction system do not communicate.
The Examiner reiterates the specification’s own characterization of the invention:
[0004] Accordingly, a user can shop online by visiting an e-commerce website or using related application software on a mobile electronic device. However, for an online purchased product that is in urgent need by the user, if the online order is in an unfulfilled state (e.g., the product not been shipped yet, or the product is being delivered), the user may still need to purchase the product from an offline physical store
[0005] Therefore, there exists a need for solutions to process product transactions to correlate online shopping with offline shopping.
[0006] Embodiments of the disclosure provide methods, apparatuses, and devices for processing product transactions to solve the problem of mutual independence between online shopping and offline shopping in the present technologies, as well as the resultant inconvenience in shopping.
The character of the invention reflected by the claims is not directed to improving the functioning of the computer itself or another technology or technical field. Even the problem specific by paragraph 0039, cited by Applicant on page 12 of the Remarks, underscores the Examiner’s determination that the claims do not improve the computer itself or another technology or technical field. This is because the problem of “it is difficult for the user to know in a timely manner whether a product, ordered online but not yet fulfilled, is available at an offline store”. This problem is squarely in the commercial realm and the claimed invention does nothing more than instruct the automation of the commercial process using computer hardware. The claims of the instant application, however, merely represent the use of generic computing technology used as a tool to perform the abstract idea in an online environment.
Furthermore, there is no portion of the claim that addresses a “technical deficiency”, nor does the disclosure provide any detail concerning the configuration of the online and offline systems, how they are distinct from generic computing components, the manner by which they communicate (other than through generic processes), etc. That is to say, there is no evidence that the claimed invention improves the underlying technology itself, or otherwise provides a specific arrangement that results in significantly more. Instead, the claims use generic computing hardware described at a high level to automate the commercial process sans any evidence of an improvement to the computer itself or another technology or technical field.
This determination remains valid whether the elements are considered individually or as a whole. There is nothing in the ordered combination that moves the claims to either integrate the clearly recited abstract idea into a practical application, or otherwise provide significantly more than the abstract idea itself.
Applicant also argues that the invention solves the problem of “mutual independence between online shopping and offline shopping”. The Examiner does not agree this is tantamount to improving the functioning of the computer itself or another technology or technical field. The impetus in Applicant’s disclosure – as demonstrated above – is for an improved commercial process that uses computers, but does not improve the technology itself. Here again, the Examiner reiterates 0006:
[0006] Embodiments of the disclosure provide methods, apparatuses, and devices for processing product transactions to solve the problem of mutual independence between online shopping and offline shopping in the present technologies, as well as the resultant inconvenience in shopping.
What is also notable in this regard is the lack of disclosure of any particular manner of improving the underlying computing components, or other demonstrations that the claims go beyond “apply it” or beyond generally linking the use of the judicial exception to a particular technological environment. Even assuming arguendo the claims are addressing the problem of communication amongst devices (which the Examiner does not acquiesce), there is no specific technical solution provided to this alleged problem. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. Further, if it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification and reflected in the claims.
Accordingly, the Examiner’s findings under Step 2A (Prong One and Prong Two) are maintained.
With respect to Step 2B, the Examiner also maintains ineligibility for similar reasons as discussed with respect to Prong Two above. A review of Applicant’s specification reveals that the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. This is again because (i) the improvement envisioned is to the abstract commercial process rather than technology, and (ii) the specification lacks detail for how the computer operations are performed other than using well-understood, routine and conventional operations such as receiving or transmitting data over a network, storing or retrieving information from memory, and electronic recordkeeping.
Ultimately, a review of the claims and specification reveals a similar lack of restriction as discussed in Affinity Labs, Internet Patents, and Intellectual Ventures (discussed in the previous action).
Further addressing the considerations of well-understood, routine and conventional functionality, the Examiner maintains that the rejection complies with the MPEP. Applicant alleges that the Examiner has provided “no evidence”, which is simply false. As cited previously, the Examiner pointed specifically to MPEP 2106.05(d)(II), which outline what the courts have recognized well‐understood, routine, and conventional functions. When considered as a whole, the claims the additional elements do not add anything further than when they are considered individually.
The Examiner maintains that he claims are nothing more than “apply it”, as well as the specification’s clear lack of any disclosure of any technical explanation outside of well-understood, routine and ordinary functions such as receiving or transmitting data over a network, storing or retrieving information from memory, and electronic recordkeeping. Concerning Ex parte Martineau, this is a non-precedential decision. The Examiner refers Applicant to the body of precedential case law discussed throughout the MPEP, and reiterates that the analysis provided by the Examiner is in accordance with the precedential case law and guidance provided in the MPEP.
Lastly, Applicant is reminded that allowability over the prior art is not tantamount to eligibility. Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. The question of whether a particular claimed invention is novel or obvious is “fully apart” from the question of whether it is eligible. The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions.
Accordingly the rejection under 35 USC 101 has been maintained.
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 18-24, 26-32, and 34-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Note: The Examiner also points to the relevant discussion under the heading Response to Arguments above.
Regarding claims 18-24, 26-32, and 34-37, under Step 2A claims 18-24, 26-32 and 34-37 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 18 as representative, claim 18 recites a method comprising:
receiving an online order from a user, the online order associated with information of an unfulfilled product, the unfulfilled product purchased by the user, received for shipping, and not delivered to the user;
acquiring a facial image of the user when the user enters a physical location of the offline merchant and processing the facial image to determine identification information of the user;
acquiring account information input by the user, the account information designated as the identification information of the user;
transmitting a query, the query including the identification information of the user;
receiving the unfulfilled product responsive to the query;
determining whether the unfilled product is available in a local product repository of the second transaction system by matching, based on product information of the unfulfilled product, the unfulfilled product with products in the local product repository to determine whether the unfulfilled product or a similar product matching the unfulfilled product with a degree meeting a predetermined threshold is available in the local product repository;
transmitting product information of the unfulfilled product;
acquiring an authorization instruction from the user;
enabling the user to complete a transaction of the unfulfilled product by initiating a transfer of the unfulfilled product from the physical inventory to the user;
transmitting a confirmation of the transaction the confirmation including an identification of the unfulfilled product;
modifying the online order of the user in response to the confirmation; and,
sending an order status modification instruction to the first transaction system.
These limitations recite ‘certain methods of organizing human activity’, such as by performing commercial interactions (see: 2106.04(a)(2)(II)). This is because the limitations emphasized above set forth or describe a process for performing a transaction for an unfilled product, which is a commercial interaction (e.g., marketing or sales activities or behaviors. Accordingly, under step 2A (prong 1) the claim recites an abstract idea because the claim recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. The Examiner acknowledges that representative claim 18 does recite additional elements (e.g., the underlined below), including:
a first transaction system,
an online order,
a network,
a website or mobile application,
an image acquisition device,
a second transaction system of an offline merchant,
a facial recognition algorithm,
a touchscreen interface of the image acquisition device of the second transaction system,
a data packet,
a mobile application installed on a mobile device of the user, and,
a push notification.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 18 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Even assuming arguendo the various transmitting limitations do not form part of the abstract idea (which the Examiner does not acquiesce), the claims they are nothing more than the mere automation of manual processes (sending data) and amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware.
Additionally, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks). This is most notably true in relation to the recitation of an online order, a website or mobile application, and a network.
Lastly, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (prong 2), claim 18 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claim 18, taken individually or as a whole the additional elements of claim 18 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Furthermore, the additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the additional elements of claim 18 utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data over a network,
storing and retrieving information in memory, and
electronic recordkeeping.
Even considered as an ordered combination (as a whole), the additional elements of claim 18 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 19-24, dependent claims 19-24 recite more complexities descriptive of the abstract idea itself, while also inheriting the abstract idea of claim 18. As such, claims 19-24 are understood to recite an abstract idea under step 2A (prong 1).
Under step2A (prong 2), claims 19-24 fail to integrate the abstract idea into a practical application. Though offering further additional elements to those recited in claim 18 (e.g., product repository, display screen, et al.), these elements, considered both individually or as a whole, are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Under step 2B, claims 19-24 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims merely apply the exception on generic computing hardware, generally link the exception to a technological environment, and append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
In view of the above, claims 19-24 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Regarding claims 26-32 (apparatus) and claims 34-37 (non-transitory computer readable medium), these claims recite at least substantially similar concepts and elements as recited in claims 18-24 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 26-32 and claims 34-37 are rejected under at east similar rationale as discussed above concerning claims 18-24.
Allowable Subject Matter
Though rejected on other grounds, claims 18-24, 26-32, and 34-37 are allowable over the prior art. The Examiner incorporates the previous discussion under the heading Response to Arguments, section II, of the Final Action mailed 6/6/2024 herein.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J ALLEN whose telephone number is (571)272-1443. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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WILLIAM J. ALLEN
Primary Examiner
Art Unit 3625
/WILLIAM J ALLEN/Primary Examiner, Art Unit 3619
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