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 .
Priority
This application is a 371 of PCT/CN2019/090506 filed 6/10/2019, and claims priority to CN 201810628866.5 filed 6/19/2018. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant application (12/9/2020).
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/4/2026 has been entered.
Claims Status
Claims 1-17, 25, and 33 have been cancelled.
Claims 18-24, 26-32, and 34-37 remain pending and stand rejected.
Response to Arguments
Applicant’s arguments made with respect to the rejection under 35 USC 101 have been fully considered but are not persuasive.
Applicant initially argues that the Examiner’s characterization of the problem addressed is incorrect. Applicant alleges 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 demonstrates an (arguably) improved commercial process that uses computers, but does not improve the technology itself:
[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.
Applicant’s own emphasis further underscore the Examiner’s position: “because online shopping and offline shopping are independent of each other, difficult for the user to know in a timely manner whether a product, ordered online but not yet fulfilled, is available in an offline store”. This is a problem that falls squarely in the commercial realm and at best only generally links the abstract idea to a particular technological environment or field of use.
The character of the claims as a whole is not directed to improving computer performance and do not recite any such benefit. 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. The claims lack any restriction on the manner in which the computing operations are to be performed.
On page 12, Applicant states “The problem is thus not merely that consumers would like to buy things more conveniently - it is that two independent computer systems (an online transaction system and an offline transaction system) do not communicate, and there is no technical mechanism to bridge them.”. Even granting Applicant’s premise (which the Examiner does not acquiesce), The claims fails to recite details of how a solution to a problem is accomplished. That is, the computer hardware is deployed only at a high-level and there is nothing in the claims to rises to a technology-based solution instead of the idea of the solution sans any restriction on the underlying technical operations to be performed. 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”.
Although Applicant alleges that the claims, when taken together, provide a particular technical solution the Examiner disagrees. Here again, the Examiner asserts that the particular solution lies within the abstract procedure itself and manifests an improved abstract idea (rather than an improvement to the functioning of the computer or another technology or technical field). As written in the claims and described in the speciation, the computing components and their underlying functions are set forth only at a high level of generality - there is no particular solution or particular way of performing the functions of transmitting data amongst the computing hardware claimed (e.g., first transition system, second transaction system, mobile device, etc.).
Turning to Applicant’s arguments regarding Desjardins, the Examiner agrees that the larger principal in play is the determination of whether an improvement to the functioning of the computer itself or another technology or technical field exists. Clearly, the specific improvement in Desjardins concerning catastrophic forgetting bears no semblance to the claimed invention. The fact patter discussed in Desjardins aligns specifically with MPEP 2106.04(d)(1):
The courts have not provided an explicit test for this consideration, but have instead illustrated how it is evaluated in numerous decisions. These decisions, and a detailed explanation of how examiners should evaluate this consideration are provided in MPEP § 2106.05(a). In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification (e.g., “thereby increasing the bandwidth of the channel”).
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.
Similarly, MPEP 2106.05(a) provides that, 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. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.
The Examiner again disagrees that the disclosed invention seeks to improve technology, but even assuming arguendo the improvement alleged (and unsupported) is technical in nature, neither the specification nor the claims reflect any such technical explanation.
The fact patter of Desjardins follow a myriad of other similar decisions (e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., Finjan Inc. v. Blue Coat Systems, Inc., Enfish, LLC v. Microsoft Corp.) all of which emphasized claims that reflected technical solutions to technical problems that were clearly supported in the specification. Any comparison to these decisions, or attempts to use the fact pattern employed in them or in Desjardins, is inapposite.
With respect to Ex parte Carmody, this is a non-precedential decision that discussed specific improvements for training tactical plug-and-play machine learning models. The fact pattern employed by the courts in this non-precedential decision is not present when considering the current claims, and Applicant is directed to the body of precedential case law.
As discussed in previous actions, the Examiner holds that a more proper comparison of the claimed invention is to that of Affinity Labs of Tex. v. DirecTV, LLC. In that decision, the court relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016). The Examiner also reiterates Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017). Here, the courts found the claims to be directed to the abstract idea of “collecting, displaying, and manipulating data.” 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words “apply it”. 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”)).
Ultimately, a review of the claims and specification reveals a similar lack of restriction as discussed in Affinity Labs, Internet Patents, and Intellectual Ventures. Similar analysis is applicable with respect to Applicant’s arguments under Step 2B.
Further addressing the considerations of well-understood, routine and conventional functionality, the Examiner maintains that the rejection complies with the MPEP. 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. Applicant again argues that “before the claimed invention the two systems operated independently with no mechanism for coordination”. The Examiner re-emphasizes that both the specification and the claims fail to reflect a specific solution for enabling the alleged “coordination”. As discussed above, the specification lacks 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.
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 hereby indicates as 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bifolco (US 20180204256) discloses facilitate adaptive scheduling automatically to optimally distribute items, such as shipping an item in accordance with an adapted frequency for a subscription (see: abstract).
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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