Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 04/02/2026.
Claims 37, 47 have been amended.
Claims 1-36, 42, 45, 52, 55, have been canceled.
Claims 37-41, 43-44, 46-51, 53-54, 56-60 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 04/02/2026 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
With regard to “non-statutory obviousness-type double patenting rejection” of claims 1-2, 4-6, 13- 14, 16-18, and 37 of co-pending Application No. 13/839,007.", Applicant has acknowledged the Double Patenting rejection and requested that this rejection be held in obeyance until the claims are otherwise in condition for allowance. However, the non-statutory obviousness-type double patenting rejection will be maintained in the Office Action until such time as the conflicting claims are amended or terminal disclaimer is filed or abandoned of the application.
a. The Pending Claims Are Not "Directed To" Any Abstract Idea
Applicant argues that “claim 37 is directed to modifying a digital map interface based on GPS coordinates and a real-time location a mobile device. For example, claim 37 includes claim elements related to providing and modifying a digital map interface such as but not limited to, "providing, on the touch screen of the first mobile device, at the first user interface of the mobile application, a digital map interface associated with a dynamic rendering of the interactive map- based route based on the GPS information and in real-time with respect to the indication via the touch screen of the first mobile device," "causing a first modification to the digital map interface based on the availability of the digital content," and "causing a second modification to the digital map interface based on a determination that a real-time location of the first mobile device corresponds to the location of a third-party merchant" that are clearly not "commercial interactions" such as structuring a sales force or marketing company, using an algorithm for determining the optimal number of visits by a business representative to a client, or providing offer-based price optimization. Applicant therefore respectfully submits that labeling the claims of the subject application as "commercial interactions" is a broad overgeneralization of the claims that ignores several specific limitations provided throughout the claims. Accordingly, Applicant respectfully submits that claims are not directed to "methods of organizing human activities" or any other abstract idea according to MPEP § 2106. For at least the similar reason, other claims are not directed to any abstract idea. Applicant respectfully submits that pending claims are patent eligible under the first prong of Step 2A (page 7/12)”.
Examiner disagrees. Claim 37 recites among other limitations, the limitations of “providing, on the touch screen of the first mobile device, at the first user interface of the mobile application, a digital map interface associated with a dynamic rendering of the interactive map- based route based on the GPS information and in real-time with respect to the indication via the touch screen of the first mobile device," " generating a second notification indicating availability of digital content associated with the third-party merchant; causing a first modification to the digital map interface based on the availability of the digital content," and "causing a second modification to the digital map interface based on a determination that a real-time location of the first mobile device corresponds to the location of a third-party merchant” by capturing, recording and collecting the set of temporally sequential GPS coordinates associated with the interactive map-based route that indicates enroute to the location of third -party merchant. Capturing, recording and collecting set of temporally sequential GPS coordinates associated with the interactive map-based route that indicates enroute to the location of third -party merchant causing a first modification to the digital map interface based on the availability of the digital content and generating a second notification indicating availability of digital content associated with the third-party merchant are directed to analyzing data and determining results based on the analysis.
Since analyzing data is part of the abstract idea itself, any improvement obtained by automating the analyzing of the data in an improvement to the abstract idea which is an improvement in ineligible subject matters (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.
As such, the claims as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors because they merely gather data, analyze the data, determine results based on the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes). Therefore, the claim rejection of claims 37-41, 43-44, 46-51, 53-54, 56-60 is maintained.
Second Prong of Step 2A:
Applicant argues that “ claim 37 is similar to claim 1 of Example 37 in that claim 37 recites features directed to automatically "generating a second notification indicating availability of digital content associated with the third-party merchant," "transmitting the second notification to the first mobile device," "causing a first modification to the digital map interface based on the availability of the digital content," and "causing a second modification to the digital map interface based on a determination that a real-time location of the first device corresponds to the location of a third-party merchant." These additional elements recite a practical application resulting in an improved digital map interface for a mobile device (page 9/12)”.
Examiner disagrees. The instant claims bear no similarity to Example 37, because the instant claim merely display data in the manner in which it is received, whereas the claims in Example 37 was found eligible, under step 2 A prong 2, because the claimed additional element of GUI is integrated into a practical application. The claim as a whole integrates the mental process into a practical application. Specifically, the additional elements recite a specific manner of automatically displaying icons to the user based on usage which provides a specific improvement over prior system, resulting in an improved user interface for electronic devices. Thus the claim in example 37 is eligible because the claim is not recited an abstract idea. The instant claims are ineligible because the claims recite and directed to an abstract idea, as shown above and in the rejection below.
The instant invention does nothing that could even be remotely similar to the claims of example 37. Thus, the rejection is maintained. As such Applicant's claimed solution is NOT technological and does not addresses a technological problem. Accordingly, the claim rejection of claims 37-41, 43-44, 46-48, 50-51, 53-54, and 56-60 rejection under 35 U.S.C. §101 is maintained.
Applicant argues that “ Similar to the claims in Core Wireless, claim 37 recites an improved "digital map interface" which provides an interface that improves the efficiency of using the claimed "first mobile device" based on the claimed "set of actions" as well as the claimed "first modification" and the claimed "second modification" to the "digital map interface." As such, Applicant respectfully submits that the claims of the subject application are directed towards an improvement of the technological field of mobile devices and/or digital map-based interfaces. Accordingly, Applicant respectfully requests withdrawal of the rejection under 35 U.S.C. § 101 at least because the alleged judicial exception is integrated into a practical application under prong two of Step 2A (page 10/12)”.
Examiner disagrees. In Core wireless, the patent discloses improved display interfaces particularly to electronic devices with small screens, allowing user to more quick access to desired data stored in and functions of applications included in the device. Here, the currently amended independent claims Do Not reduce the number of steps needed to access or suppress information Nor provide a specific improvement over prior art systems, because the use of the notification here is not more efficient and/or different than any existing notification used in prior computer systems. The use of the notification here is dependent upon having the map interactive application open and running. Contrasted to core-wireless the summary window does not dependent on having the application running, it drives the application from the main memory (see page 20 of the court decision). Also, Applicant does not identify any problem particular to improving the functioning of the computer or to a graphical user interface that the claims overcome using the claimed notification. Accordingly, the claim rejection of claims 37-41, 43-44, 46-48, 50-51, 53-54, and 56-60 rejection under 35 U.S.C. §101 is maintained.
b. the pending claims recite Significantly More than any alleged abstract idea:
Applicant argues that “the claims are also eligible under Step 2B of the two-prong inquiry included in the 2019 Revised Patent Subject Matter Elgibility Guidance (page 11/12)”.
Examiner disagrees. Under Step 2a, Prong 2, the improvement to a technology or technological field must be rooted in the additional element. Additional elements are those elements outside of the identified abstract idea itself. In the instant case the only additional elements are (mobile device, mobile application, user interface, memory, server, GPS, touch screen ), which are just general-purpose computers with generic computing components upon which the abstract idea is applied human which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2 or be considered significantly more under Step 2b. User interfaces i.e touch screen with buttons for performing user input is old and well known as per Usability.gov. As per Affinity v. Direct TV such generic user interfaces are generic computer components. Thus, any improvement obtained by practicing the abstract idea, is an improvement obtained by practicing the abstract idea and not rooting in the additional elements upon which the abstract idea is applied. Improvements of this nature are not patent eligible (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because there are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). As discussed above with respect to integration of the abstract idea into a practical application, the computer elements are just “apply it” on a computer. (See MPEP 2106.05(f) – Mere Instructions to Apply an Exception – “Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible.” Alice Corp., 134 S. Ct. at 235). As such Applicant’s claimed solution is NOT technological and does not addresses a technological problem.
Therefore, the claim rejection of claims 37-41, 43-44, 46-51, 53-54, 56-60 rejection under 35 USC § 101 is maintained.
With regard to claims 37 and 47 rejection under 35 USC § 112 second paragraph rejection, Applicant’s response clarified the claims rejection, therefore the rejection is withdrawn.
Double Patenting
“Non-statutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinguishing from claims in a first patent. Non-statutory double patenting includes rejections based on either a one-way determination of obviousness or a two-way determination of obviousness. Non-statutory double patenting could include a rejection which is not the usual “obviousness-type” double patenting rejection. See MPEP § 804.
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit https://www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to https://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 37-41, 43-44, 46-51, 53-54, 56-60 provisionally rejected on the ground of non-statutory double patenting over claims 1-2, 4-6 and 13-14, 16-18 and 37 of co-pending Application No: 13/839,007. This is a provisional double patenting rejection since the conflicting claims have not yet been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because they are obvious variation of each other. Claims 37-56 of the instant application do recite receiving, via a touch screen of a first mobile device, at a first user interface of a mobile application, the mobile application running on the first mobile device, an indication to take a tour; receiving, at a touch screen of the second mobile device, at a second user interface of the mobile application, the mobile application running on the second mobile device, an indication to generate the tour and causing a second modification to the digital map interface based on a determination that a real-time location of the first device corresponds to the location of a third-party merchant;
It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to include in the instant application receiving, via a touch screen of a first mobile device, at a first user interface of a mobile application, the mobile application running on the first mobile device, an indication to take a tour; receiving, at a touch screen of the second mobile device, at a second user interface of the mobile application, the mobile application running on the second mobile device, an indication to generate the tour; and causing a second modification to the digital map interface based on a determination that a real-time location of the first device corresponds to the location of a third-party merchant with the motivation of providing users with continuously real -time updated advertising messages tailored to users based on their current location and thus increasing product marketability.
The subject matter claimed in the instant application is fully disclosed in the referenced co-pending application and would be covered by any patent granted on that co-pending application since the referenced co-pending application and the instant application are claiming common subject matter, as follows: generating tour information based on proximity of the user to a location. Furthermore, there is no apparent reason why applicant would be prevented from presenting claims corresponding to those of the instant application in the other co-pending application.
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 37-41, 43-44, 46-51, 53-54, 56-60 are directed to a method and no-transitory computer -readable storage medium which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 37-41, 43-44, 46-51, 53-54, 56-60 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the following abstract idea: “receiving, from a user, an indication to activate a beginning of an interactive map-based route for the first user; accessing, Global Positioning System (GPS) information associated with the interactive map-based route, the GPS information comprised of a set of temporally sequential GPS coordinates collected from a second user in real-time as the second user traversed a real-world environment; the set of temporally sequential GPS coordinates comprising a first subset of temporally sequential GPS coordinates identified as route information indicating a route traversed by the second user in the real world environment and configured to enable derivation of the route, a sequence of stops along the route, and a distance of the interactive map-based route, and a second subset of GPS coordinates identified as stop information, wherein the stop information is associated with stop content, and wherein the stop content is configured to enable derivation of searchable tags and searchable keywords; providing, to the first user, a digital map interface associated with a dynamic rendering of the interactive map-based route based on the GPS information and in real-time with respect to the indication via the first user, wherein the GPS information is generated by: receiving, by the second user an indication to generate the interactive map-based route, wherein the interactive map-based route is associated with the GPS information, which is comprised of the set of temporally sequential GPS coordinates collected from the second user in real-time as the second user traverses the real-world environment; the set of temporally sequential GPS coordinates comprising the first subset of temporally sequential GPS coordinates identified as the route information indicating the route traversed by the second user in the real world environment and configured to enable derivation of the route, the sequence of stops along the route, and the distance of the interactive map-based route, and the second subset of GPS coordinates identified as the stop information, wherein the stop information is associated with the stop content, and wherein the stop content is configured to enable derivation of the searchable tags and the searchable keywords; capturing, in real-time, location information of the second user over a period of time as the second user traverses the real-world environment; associating the location information, as the location information is captured while the second user traverses the real-world environment, in sequence, to the set of temporally sequential GPS coordinates; recording, to memory, the location information as the location information is captured, to the set of temporally sequential GPS coordinates; associating a plurality of location information to the second subset of GPS coordinates as candidate stop information upon a determination that the plurality of location information is co- located within a predefined distance for a duration of time exceeding a predefined threshold; recording, to memory, the plurality of location information, as a candidate stop; receiving an indication, at the second user, that tour generation is over; and uploading, to the server, the set of temporally sequential GPS coordinates, including the first subset of temporally sequential GPS coordinates and the second subset of GPS coordinates identified as stop information; capturing, using an antenna of the first mobile device and in response to the indication via the touchscreen of the first mobile device, a set of GPS coordinates in real-time as the first mobile device traverses the real-world environment; wirelessly transmitting the set of GPS coordinates from the first mobile device to the server; in response to both:(1) a first determination, based on a comparison between the set of GPS coordinates associated with the first user and the set of temporally sequential GPS coordinates associated with the second user, that the first user during the interactive map-based route activated via the first user has traversed at least a portion of the interactive map-based route associated with the set of temporally sequential GPS coordinates collected from the second user; and(2) a second determination, based on the set of GPS coordinates associated with the first user is enroute to a location of a third-party merchant that corresponds to a particular GPS coordinate of the set of temporally sequential GPS coordinates associated with the interactive map-based route, triggering a set of actions associated with a third-party merchant associated with the third-party merchant, wherein the third-party merchant is different than (i) the first user that activates the interactive map-based route via the touch screen of the first user and (ii) the second user that collects the set of temporally sequential GPS coordinates associated with the interactive map-based route, and wherein the set of actions comprising at least comprises: generating a first notification indicating that the first user is enroute to the location of the third-party merchant; transmitting the first notification to the third-party merchant to render visual data associated with the first user via the third-party merchant, wherein the third-party merchant is different than (i) the first user and (ii) the second user; generating a second notification indicating availability of digital content associated with the third-party merchant; transmitting the second notification to the first user; causing a first modification to a graphical element of the digital map interface based on the availability of the digital content; and causing a second modification to the digital map based on a determination that a real-time location of the first user corresponds to the location of a third-party merchant..
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing and sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components of mobile device comprising software (i.e., a mobile application), mobile device, mobile application, user interface, touch screen, memory, server, GPS”. The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receiving, via a touch screen of a first mobile device, at a first user interface of a mobile application, the mobile application running on the first mobile device, an indication to activate a beginning of an interactive map-based route for the first mobile device;
receiving, at a touch screen of the second mobile device, at a second user interface of the mobile application, the mobile application running on the second mobile device, an indication to generate the interactive map-based route, wherein the interactive map-based route is associated with the GPS information, which is comprised of the set of temporally sequential GPS coordinates collected from the second mobile device in real-time as the second mobile device traverses the real-world environment;
receiving an indication on the touch screen of the second mobile device, at the second user interface of the mobile application, that tour generation is over;
recording, to memory, the plurality of location information, as a candidate stop;
providing, on the touch screen of the first mobile device, at the first user interface of the mobile application, a digital map interface associated with a dynamic rendering of the interactive map-based route based on the GPS information and in real-time with respect to the indication via the touch screen of the first mobile device, wherein the GPS information is generated by..;
accessing, from a server, Global Positioning System (GPS) information associated with the interactive map-based route, the GPS information comprised of a set of temporally sequential GPS coordinates collected from a second mobile device in real-time as the second mobile device traversed a real-world environment;
recording, to memory, the location information as the location information is captured, to the set of temporally sequential GPS coordinates;
transmitting the first notification to the third-party merchant device to render visual data associated with the first mobile device via a third user interface of the third-party merchant device, wherein the third user interface of the third-party merchant device is different than (i) the first user interface of the first mobile device and (ii) the second user interface of the second mobile device;
transmitting the second notification to the first mobile device;
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components of mobile device comprising software (i.e., a mobile application), user interface, touch screen, memory, server, GPS”, to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using “mobile device comprising software (mobile device comprising software (i.e., a mobile application), user interface, touch screen, memory, server, GPS”, to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from paragraph 92 of the applicant’s specification) and the affinity v Direct TV decision which states that a database (e.g a memory) is a generic computer component); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receiving, via a touch screen of a first mobile device, at a first user interface of a mobile application, the mobile application running on the first mobile device, an indication to activate a beginning of an interactive map-based route for the first mobile device (receiving data);
receiving, at a touch screen of the second mobile device, at a second user interface of the mobile application, the mobile application running on the second mobile device, an indication to generate the interactive map-based route, wherein the interactive map-based route is associated with the GPS information, which is comprised of the set of temporally sequential GPS coordinates collected from the second mobile device in real-time as the second mobile device traverses the real-world environment (receiving data);
receiving an indication on the touch screen of the second mobile device, at the second user interface of the mobile application, that tour generation is over (receiving data);
recording, to memory, the plurality of location information, as a candidate stop (storing data);
providing, on the touch screen of the first mobile device, at the first user interface of the mobile application, a digital map interface associated with a dynamic rendering of the interactive map-based route based on the GPS information and in real-time with respect to the indication via the touch screen of the first mobile device (displaying data);
accessing, from a server, Global Positioning System (GPS) information associated with the interactive map-based route, the GPS information comprised of a set of temporally sequential GPS coordinates collected from a second mobile device in real-time as the second mobile device traversed a real-world environment; (e..g, transmitting a request for and receiving data in response to the request), from a server, ..."
recording, to memory, the location information as the location information is captured, to the set of temporally sequential GPS coordinates ( storing data);
transmitting the first notification to the third-party merchant device to render visual data associated with the first mobile device via a third user interface of the third-party merchant device, wherein the third user interface of the third-party merchant device is different than (i) the first user interface of the first mobile device and (ii) the second user interface of the second mobile device ( transmitting data );
transmitting the second notification to the first mobile device (transmitting data);
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No). For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claim 47.
The dependent claims 38-41, 43-44, 46, 48-51, 53-54, 56-60 appear to merely further limit the abstract idea and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No). Thus, based on the detailed analysis above, claims 37-41, 43-44, 46-51, 53-54, 56-60 are not patent eligible.
Possible Allowable Subject Matter
Claims 37-41,43-44, 46-51, 53-54,56-60 would be allowed, if the Applicant were to be able to overcome the claim rejection under 35 USC § 101 and the “Double Patenting” rejection above.
The following is a statement of reasons for the indication of allowable subject matter: The most relevant prior art the examiner has found is:
Tom, US Pub No: 2012/0036467 A1, teaches Systems and methods are provided for producing tours. The system includes, but is not limited to a data storage device that is configured to store a plurality of POI inputs and/or routes. A server is operatively coupled to the data storage device and is configured to host a website accessible via a worldwide computer network, obtain a search criterion from a user accessing the website, retrieve a subset of the POI inputs and/or routes corresponding to the search criterion from the data storage device, arrange the POI inputs and/or routes of the subset in a manner corresponding to the search criterion to form the tour, at least temporarily store the tour in an electronic file compatible with a mobile device, and electronically deliver the electronic file to the user.
Busch, US Pub No:2012/0302259 A1, teaches record the location of a user and transmit targeted content to a user based upon their current and past location information. A network includes a server programmed with a database of location information, a database of user information, and a wireless communication system capable of communicating with the user's mobile device. The location of the mobile device is ascertained and recorded. The location information is analyzed to determine the businesses visited by the user, and other behaviors of the user. The system has access to the reported locations of a plurality of mobile devices. This aggregate location information is used in order to determine which business locations are currently popular, busy, or not busy.
Examiner has not been able to find a reference that teaches the limitations of independent claims : 1) a first determination, based on a comparison between the set of GPS coordinates associated with the first mobile device and the set of temporally sequential GPS coordinates associated with the second mobile device, that the first mobile device during the interactive map-based route activated via the touch screen of the first mobile device has traversed at least a portion of the interactive map-based route associated with the set of temporally sequential GPS coordinates collected from the second mobile device; and(2) a second determination, based on the set of GPS coordinates associated with the first mobile device, that the first mobile device is enroute to a location of a third-party merchant that corresponds to a particular GPS coordinate of the set of temporally sequential GPS coordinates associated with the interactive map-based route, triggering a set of actions associated with a third-party merchant device associated with the third-party merchant; herein the third-party merchant device is different than (i) the first mobile device that activates the interactive map-based route via the touch screen of the first mobile device and (ii) the second mobile device that collects the set of temporally sequential GPS coordinates associated with the interactive map-based route, and wherein the set of actions comprises: generating a first notification indicating that the first mobile device is enroute to the location of the third-party merchant; transmitting the first notification to the third-party merchant device to render visual data associated with the first mobile device via a third user interface of the third-party merchant device, wherein the third user interface of the third-party merchant device is different than (i) the first user interface of the first mobile device and (ii) the second user interface of the second mobile device; generating a second notification indicating availability of digital content associated with the third-party merchant.
Even if the examiner were to find prior art that disclosed the above limitation, it would not have been obvious to one or ordinary skill in the art to combine such a reference (s) of the prior art of Tom/ Busch without the use of the applicant’s claims as a roadmap and, thereby using impermissible hindsight.
As such, claims 37-41,43-44, 46-51, 53-54,56-60 would be allowable over the prior art if the applicant were to be able to overcome the 35 USC 101 and double patenting rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant' s disclosure.
Rosso et al, US Pub No:2012/0135756 A1 teaches a method includes retrieving event data posted by a plurality of users related to a first user, the event data including indications of at least one geographic area. The event data is compared with predetermined trigger data. A quality value of the at least one geographic area is determined based on the comparison of the event data with predetermined trigger data, and an indication of the quality value of the at least one geographic area is transmitted to a second user. A user contribution based mapping system is further provided.
Bush, US Pub No: 2019/0266641 A1 teaches record the location of a user and transmit targeted content to a user based upon their current and past location information. A network is configured to include a server programmed with a database of targeted content, a database of location information, a database of user information, a database searching algorithm, and a wireless communication system capable of communicating with the user's mobile device. The location of the mobile device is ascertained and recorded. The location information is analyzed to determine the routes taken by the user, businesses visited by the user, and other behaviors of the user. Targeted content is sent to the mobile device of the user or exposure to physical content is tracked. Whether the user visits the physical locations associated with the content is monitored. Detailed conversion tracking is provided to producers of targeted content and business owners
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 files within TWO MONTHS from 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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [ Mon-Thursday 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFAF OSMAN BILAL AHMED/Primary Examiner, Art Unit 3622
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