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
The examiner acknowledges Applicant’s claim of benefit to Provisional Patent Application No. 62/957,915 filed on 01/07/2020.
Status of Claims
Applicant’s communications filed on 1/20/2026 have been considered.
Claims 1, 5-7, 10-11 and 17 have been amended.
Claims 4, 8, 14, 16, 19 and 21-22 have been canceled.
Claims 1-2, 5-7, 9-12, 15, 17-18 and 23-24 are currently pending and have been examined.
Response to Arguments
Applicant’s arguments filed with respect to the rejection of claims under 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues that the claims do not recite an abstract idea because “the claim recites a specific interaction between hardware components… the program application controls camera operation, rather than passively receiving images” (Remarks Page 10). With respect to the amended claims, it is noted that a digital data exchange system comprising: a personal computing device of a first party, the personal computing device including a program application, a computer-readable storage medium, a camera, a display, and transceiving circuitry, wherein the program application controls the camera, the program application controls the transceiving circuitry to communicate to a remote server; and the remote server including one or more processors and a second computer-readable storage medium, the one or more processors configured to: processing the generated image; and communicating to vendor computing devices have been analyzed as additional elements and accordingly are not analyzed under Step 2A, Prong 1. The amendments further recite limitations including generating an image depicting identification indicia corresponding to a desired product or service, the identification indicia in the image including at least one of a printed purchase receipt, an identification code, or a product model number, generating a request message that includes the image and additional information about the desired product or service, communicating the request message, storing a directory of information about the plurality of different vendors, determine a selected subset of the vendors in the directory based on relevancy between the desire product or service in the request message and products or services offered by the vendors in the directory; communicate the request message to the selected subset of the vendors without communicating the request message to the vendors in the directory that are not in the selected subset; compile the information by sorting the information based on at least one of price or proximity to a location of the first party, and generate the offer message to include a sorted list of the offers for sale or the promotional materials as compiled. These limitations represent Certain Methods of Organizing Human Activity, in that they recite commercial or legal interactions. For example, the claims recite collection and analysis of image data pertaining to a product in order to determine a subset of vendors that will receive a request message, and subsequently receiving responses from the vendors to generate an offer message for a consumer. The specification (see at least [0007]) discloses that response messages from consumers include one or more of an offer for sale for the at least one desired product or service or promotional material related to the at least one desired product or service, further indicating that the claims fall under the judicial exception. Accordingly, the claims are directed towards an abstract idea, and the rejection has been maintained.
Applicant further cites CardioNet v. InfoBionic (Remarks Page 10). This argument has been considered but is not persuasive. The claims in CardioNet were recognized as being directed to an improvement to cardiac monitoring technology, and accordingly not directed to an abstract idea. The instant claims are not analogous to those in CardioNet, in that they do not recite an analogous technological improvement to cardiac monitoring technology. Accordingly, the rejection has been maintained.
Applicant argues that the claims recite a practical application because “[the claim] replaces manual entry with camera-based acquisition, which improves usability and reliability… this has the technical benefit of reducing user strain and increasing accuracy of identifier capture (over human input processes…)” (Remarks Page 11). This argument has been considered but is not persuasive. 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, and conversely, if the specification explicitly sets forth an improvement but in a conclusory manner the examiner should not determine the claim improves technology. MPEP 2106.04. Applicant’s specification provides no explanation of an improvement to the functioning of a computer or other technology. This is reflected in paragraph [0003] of Applicant’s specification, which describes the claimed invention as improving methods for identifying potential customers and distributing promotional materials to potential consumers. It is further noted that paragraph [0027] discloses that a camera of a tablet computer may generate an image of a printed purchase receipt, a bar or QR code, a model number associated with a specific product, and/or the like, and then can upload the image to the DDE system 116. However, the statements made in Applicant’s specification do not provide any technical detail regarding how the claimed invention is providing any improvement to the functioning of the computer/other technology, thereby making the statements merely conclusory. Furthermore, “improving usability and reliability” and “reducing user strain and increasing accuracy of identifier capture” are not technological improvements. The claimed additional elements, as recited above, are merely peripherally incorporated in order to implement the abstract idea. The claimed process, while arguably resulting in improved collection of data, is not providing any improvement to another technology or technical field. Accordingly, the additional elements, both individually and considered as a whole, do not represent a technological improvement.
Applicant further cites Core Wireless (Remarks Page 11). This argument has been considered but is not persuasive. The claims in Core Wireless were recognized as being directed to an improved user interface that displays an application summary of unlaunched applications, where the summary data is selectable by a user to launch the respective application, and accordingly not directed to an abstract idea. The instant claims are not analogous to those in Core Wireless, in that they do not recite an analogous technological improvement to user interface technology. Accordingly, the rejection has been maintained.
With regards to Applicant’s argument that the claimed invention provides a “benefit of reducing manual input required to request a product” (Remarks Page 11), it is noted that this does not represent an improvement to technology. As discussed above, Applicant’s specification does not describe the claimed technology in such a way that one of ordinary skill in the art would recognize a technological improvement, making Applicant’s statements conclusory. Accordingly, and the rejection has been maintained.
Applicant further argues that the claims recite an inventive concept because “the combination of automated actions and interactions is not routine or generic when considered as a whole” (Remarks Page 12). This argument has been considered and is not persuasive. The courts have held computer-implemented processes not to be significantly more than the abstract (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement the abstract idea. MPEP 2106.05. As discussed above, the claims amount to merely using a computer as a tool to perform an abstract idea, without any improvement to the claimed technology. The consideration of the claim elements as a whole does not change this conclusion. While the claim recites a combination of elements, said elements include generic computing technology that is merely utilized in order to implement the abstract idea. Accordingly, the rejection has been maintained.
With regards to Applicant’s argument that the independent claims overcoming the prior art is strong evidence that the subject matter is not well-understood, routine or conventional (Remarks Page 12), this argument has been considered but is not persuasive. The question of whether a particular claimed invention is novel or obvious is "fully apart" from the question of whether it is eligible. As made clear by the courts, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016). Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. See MPEP 2106.05(I). Accordingly, non-obviousness under 35 U.S.C, 103 has no bearing on the eligibility of the claims over 35 U.S.C. 101, and the rejection has been maintained.
With regards to Applicant’s argument that the claim 1 includes limitations that impose meaningful limits on the scope of the claimed subject matter and are not performed in conventional sales and marketing processes (Remarks Page 12), this argument has been considered but is not persuasive. As discussed above, the claims amount to merely using a computing environment as a tool to perform an abstract idea, and are accordingly insufficient to provide an inventive concept. Accordingly, the rejection has been maintained.
The 101 rejection of claim 11 has been maintained for the reasons discussed above with respect to claim 1.
Claim Interpretation
Regarding Claim 1, the claim recites “process the captured image”. There is no prior recitation of “a captured image”, or “capturing an image” in the previously cited claim limitations, and accordingly there is a lack of antecedent basis regarding this limitation. For examination purposes, the limitation has been interpreted as “process the image”. Appropriate correction is required.
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 1-2, 5-7, 9-12, 15, 17-18 and 23-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 1 of the Subject Matter Eligibility Test for Products and Processes, the claims must be directed to one of the four statutory categories. See MPEP 2106.03. Claims 1-2, 5-7, 9-10 and 23-24 are directed towards a machine. Claims 11-12, 15 and 17-18 are directed towards a process. Therefore, claims 1-2, 5-7, 9-10, 12, 15, 17-18 and 23-24 are directed to one of the four statutory categories (Step 1: YES, regarding claims 1-2, 5-7, 9-12, 15, 17-18 and 23-24).
Under Step 2A of the MPEP, it is determined whether the claims are directed to a judicially recognized exception. See MPEP 2106.04. Step 2A is a two-prong inquiry.
Under Prong 1, it is determined whether the claim recites a judicial exception. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception.
Taking Claim 1 as representative, claim 1 recites limitations that fall within the certain methods of organizing human activity groupings of abstract ideas, including:
generate an image depicting identification indicia corresponding to a desired product or service, the identification indicia in the image including at least one of a printed purchase receipt, an identification code, or a product model number,
generate a request message that includes the image and additional information about the desired product or service,
communicate the request message,
storing a directory of information about the plurality of different vendors,
receive the request message,
determine the desired product or service indicated by the identification indicia;
determine a selected subset of the vendors in the directory based on relevancy between the desire product or service in the request message and products or services offered by the vendors in the directory;
communicate the request message to the selected subset of the vendors without communicating the request message to the vendors in the directory that are not in the selected subset;
receive multiple response messages from the vendors of the selected subset which generate the response messages based on the request message, the response messages including one or both of offers for sale of the desired product or service or promotional materials related to the desired product or service,
compile information from the response messages to generate an offer message,
compile the information by sorting the information based on at least one of price or proximity to a location of the first party, and
generate the offer message to include a sorted list of the offers for sale or the promotional materials as compiled; and
communicate the offer message;
receive the offer message and present the sorted list of the offers for sale or the promotional materials.
Claim 11 recites the same limitations believed to be abstract as recited in claim 1, and additionally recites a method; and accessing a directory of information about a plurality of different vendors.
Claims 1 and 11, as exemplary, recites the abstract idea of presenting offers and promotions to customers. These recited limitations fall within the "Certain Methods of Organizing Human Activities" Grouping of abstract ideas as it relates to commercial interactions of sales activities or behaviors. Accordingly, the claim recites an abstract idea. See MPEP 2106.04.
Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claims 1 and 11 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong 2, it is determined whether the claim recites additional elements that integrate the exception into a practical application of the exception.
Claim 1 recites additional elements beyond the judicial exception(s), including A digital data exchange system comprising: a personal computing device of a first party, the personal computing device including a program application, a computer-readable storage medium, a camera, a display, and transceiving circuitry, wherein the program application controls the camera, the program application controls the transceiving circuitry to communicate to a remote server; and the remote server including one or more processors and a second computer-readable storage medium, the one or more processors configured to: process the image; and communicate to vendor computing devices. Claim 11 recites the same additional elements as recited in claim 1.
These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Claims 1 and 11 specifying that the abstract idea of presenting offers and promotions to customers is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the Alice/Mayo test, when considered both individually and as a whole, the limitations of claims 1 and 11 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1 and 11 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1 and 11 are “directed to” an abstract idea (Step 2A: YES). Accordingly, the judicial exception is not integrated into a practical application.
Next, under Step 2B, the instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, the additional elements of A digital data exchange system comprising: a personal computing device of a first party, the personal computing device including a program application, a computer-readable storage medium, a camera, a display, and transceiving circuitry, wherein the program application controls the camera, the program application controls the transceiving circuitry to communicate to a remote server; and the remote server including one or more processors and a second computer-readable storage medium, the one or more processors configured to: process the image; and communicate to vendor computing devices amount to no more than mere instructions to apply the exception using generic computer components. For the same reason these elements are not sufficient to provide an inventive concept. Therefore when considering the additional elements alone, and in combination, there is no inventive concept in the claim, and thus the claim is not patent eligible (Step 2B: NO).
Dependent claims 2, 5-7, 9-10, 12, 15, 17-18 and 23-24, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. As for dependent claims 2, 5-7, 10, 12, 18 and 23, these claims recite limitations that further define the same abstract idea noted in independent claims 1 and 11, and do not recite any additional elements other than those recited in independent claims 1 and 11. Therefore, claims 2, 5-7, 10, 12, 18 and 23 are considered patent ineligible for the reasons given above.
As for dependent claims 9, 15, 17 and 24, these claims recite limitations that further define the abstract idea noted in independent claims 1 and 11. Additionally, they recite the following additional limitations:
wherein the program application provides a graphical user interface utilized by the first party;
performing image analysis on the purchase receipt, via the one or more processors of the remote server; and
wherein the program application of the personal computing device is configured to notify the first party… via at least one of generating a vibrating alert, generating an audible alert sound, or displaying a text-based notification message on the display of the personal computing device.
The additional elements of a graphical user interface, performing image analysis, and generating a vibrating alert or generating an audible alert sound are all recited at a high level of generality such that they amount to no more than instructions to apply the judicial exception in a generic technological environment. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Accordingly, under the Alice/Mayo test, claims 1-2, 5-7, 9-12, 15, 17-18 and 23-24 are ineligible.
Subject Matter Free of Prior Art
Claims 1 and 11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office Action. 2, 5-7, 9-10, 12, 15, 17-18 and 23-24 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
Upon review of the evidence at hand, it is concluded that the totality of the evidence in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of the Applicant’s invention as the noted features amount to more than a predictable user of elements in the prior art. The allowable features are as follows:
receive multiple response messages from the vendor computing devices of the selected subset which generate the response messages based on the request message, the response messages including one or both of offers for sale of the desired product or service or promotional materials related to the desired product or service,
compile information from the response messages to generate an offer message, and communicate the offer message to the personal computing device of the first party,
wherein the program application of the personal computing device is configured to receive the offer message and to present, on the display, the sorted list of the offers for sale or the promotional materials.
The most relevant prior art made of record includes previously cited Mohan (US 20180260862 A1), hereinafter Mohan, previously cited Prabhune et al. (US 20190205955 A1), hereinafter Prabhune, previously cited Yachin et al. (US 11587059 B1), hereinafter Yachin, previously cited Berlin et al. (US 20070214062 A1), hereinafter Berlin, and previously cited NPL Reference U (“Javkar et al., ‘Best Offer Recommendation Service,’ 2016”), hereinafter U.
Mohan discloses a computer-implemented service for generating service request vendor attribute content in response to a new service request inquiry from a customer (Mohan: [abstract]). Mohan further discloses a personal computing device of a first party including a program application, a computer-readable storage medium, a display, and transceiving circuitry (Mohan: [0026-0028]). Mohan further discloses wherein the program application generates a request message that includes additional information about the desired product or service, the program application controls the transceiving circuitry to communicate the request message to a remote server (Mohan: [0024][0040]). Mohan further discloses storing a directory of information about a plurality of different vendors (Mohan: [0031][0034]). Mohan further discloses receiving the request message from the personal computing device and communicating the request message to vendor computing devices of multiple vendors (Mohan: [0042][0050]). Mohan further discloses determining a selected subset of the vendors in the directory based on relevancy between the desired product or service in the request message and the vendors in the directory (Mohan: [0044]). Mohan further discloses receiving multiple response messages from the vendor computing devices which generate the response messages based on the request message, the response messages including one or both of offers for sale of the desired product or service or promotional materials related to the desired product or service (Mohan: [0053-0054]). Mohan further discloses responsive to receiving the response messages, generating bid notifications from gathered bid amounts from vendors (Mohan: [0054-0055]). Mohan further discloses sorting the information based on at least one of price or proximity to a location of the first party (Mohan: [0045-0048]). Mohan further discloses receiving the bid notification and presenting, on the display, the offers for sale or the promotional materials from the vendors that communicated the response messages (Mohan: [0040][0054-0055]). Yet Mohan does not explicitly disclose the limitations regarding the personal computing device including a camera, wherein the program application controls the camera to generate an image depicting identification indicia, the image including at least one of a printed purchase receipt, an identification code, or a product model number, wherein the program application generates a request message that includes the image; process the image; receive multiple response messages from the vendor computing devices of the selected subset which generate the response messages based on the request message; compile information from the response messages to generate an offer message; and communicating the offer message, wherein the offer message includes a sorted list.
Prabhune discloses a system and methods to coordinate buyer-initiated personalized offer requests for products and services (Prabhune: [abstract]). Prabhune further discloses a personal computing device of a first party (Prabhune: [0020-0021]). Prabhune further discloses compiling information to generate an offer message, and communicating the offer message to a customer (Prabhune: [0029]). Yet Prabhune does not explicitly disclose the limitations regarding the personal computing device including a camera, controlling the camera to generate an image depicting identification indicia, generating a request message that includes the image, and generate the response messages based on the request message, and compile information from the response messages to generate an offer message, and presenting a sorted list of the offers.
Yachin discloses a system and method for completing online transactions via a mobile device that identifies candidate items for purchase for a user (Yachin: [abstract]). Yachin further discloses that an end user mobile device includes an onboard camera through which the end user may capture images of products, and the client-side platform searches product catalogues to identify the candidate items (Yachin: [Col 4 Ln 25-Col 5 Ln 32]). Yachin further discloses that, once item attributes based on the captured image have been identified, the client-side platform retrieves and displays catalogued information including multiple candidate items, the price of the candidate items, and the vendors offering the candidate items (Yachin: [Col 5 Ln 33-Col 6 Ln 10]). This cited portion of Yachin further discloses that candidate items may be more or less prominently displayed based on if the items are offered by candidate vendors. Yet Yachin does not explicitly disclose the limitations regarding the image including at least one of a printed purchase receipt, an identification code, or a product model number, and receiving multiple response messages from the vendor computing devices of the selected subset which generate the response messages based on the request message.
Berlin discloses an electronically accessible site in which customers may purchase a desired product by selecting the distributor that he wants to receive the product from (Berlin: [abstract]). Berlin further that discloses that a list including product related information and distributor identification is displayed to the customer in response to a customer accessing the website (Berlin: [0021-0022]). Berlin further discloses that, when a product is provided by multiple distributors, the list may include a plurality of distributors, and the customer may actively communicate a selection of a distributor from the list (Berlin: [0024][0034]). Yet Berlin does not explicitly disclose the limitations regarding the personal computing device including a camera, controlling the camera to generate an image depicting identification indicia, generating a request message that includes the image, and generate the response messages based on the request message, and compile information from the response messages to generate an offer message, and presenting a sorted list of the offers.
NPL Reference U teaches a recommendation service capable of aggregating deals, coupons and offers from multiple parties, and determining which offers would be relevant for a user with a given profile and/or online payment mechanism (NPL: [Page 1, Paragraph 1]). NPL Reference U further discloses a user interface for presenting recommendations to the user (NPL: [Page 4, Paragraphs 2-3]). NPL Reference U further discloses taking offers from various content providers and outputting the best offers available for the user at that time (NPL: [Page 4, Paragraph 4]). NPL Reference U further discloses that recommendations are provided in response to the user submitting a request via the user device regarding an item the user is interesting buying (NPL: [Page 4, Paragraphs 7-10]). Yet NPL Reference U does not explicitly disclose the limitations regarding the personal computing device including a camera, controlling the camera to generate an image depicting identification indicia, generating a request message that includes the image, and generate the response messages based on the request message, and compile information from the response messages to generate an offer message, and presenting a sorted list of the offers.
While these references arguably teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant’s disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). Accordingly, claims 1, 11 and 19, taken as a whole, are indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims allowable over the prior art. Claims 2, 5-7, 9-10, 12, 15, 17-18 and 23-24, depend from claims 1 and 11, respectively, and are therefore indicated as containing allowable subject matter.
Additionally, the Examiner further emphasizes the claims as a whole and herby asserts the totality of the evidence neither anticipates nor renders obvious the particular combination of elements as claimed. That is, the Examiner emphasized the claims as a whole and hereby asserts that the totality of evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for combining or otherwise modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be obvious to one of ordinary skill in the art because any combination of the evidence at hand to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
Examiner further notes that the claims overcome the currently cited prior art in light of the Patent Board’s Appeal Decision, filed 7/22/2025, in which it was determined that Prabhune does not teach or suggest a list of response messages containing offers for sale, and additionally that said list taught by Prabhune is not compiled “responsive to receiving the response messages,” as claimed (See Appeal Decision, [Pages 13 and 14]), and the previously filed rejection under 35 USC 103 was reversed.
It is hereby asserted by the Examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
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 ZACHARY R DONAHUE whose telephone number is (571)272-5850. The examiner can normally be reached M-F 8a-5p.
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/ZACHARY RYAN DONAHUE/Examiner, Art Unit 3689
/MARISSA THEIN/Supervisory Patent Examiner, Art Unit 3689
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