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 .
Introduction
The following is a final Office Action in response to Applicant’s communications received on January 2, 2026. Claims 1 and 3-5, 11-14 and 20-21 have been amended, claim 2 has been canceled.
Currently claims 1 and 3-21 are pending, Claims 1, 11 and 20 are independent.
Response to Amendments
Applicant’s amendments necessitated the new ground(s) of rejection in this Office Action.
The 35 U.S.C. § 112 (b) rejection to claims 20-21 as set forth in the previous Office Action is withdrawn in view of Applicant’s Remarks that the preamble of Claim 20 recites “A method for operating an apparatus” and the claim does not merely recite that the apparatus is “configured to” perform the recited steps.
Applicant’s amendments to claims 1 and 3-5, 11-14 and 20-21 are NOT sufficient to overcome the 35 U.S.C. § 101 rejection as set forth in the previous Office Action. Therefore, the 35 U.S.C. § 101 rejection to claims 1 and 3-21 is maintained.
Response to Arguments
Applicant’s arguments filed on January 2, 2026 have been fully considered but they are not persuasive.
In the Remarks on page 19, Applicant’s arguments regarding the 35 U.S.C. § 101 rejection that Office Action appears to assert that the claims must either improve the functioning of a hardware device or transform an article. This is incorrect. As reflected by Claim 1 in Example 42 of the 2019 Revised Patent Subject Matter Eligibility Guidance. Similar to claim 1 of Example 42, the pending independent claims “store information, provide remote access to the stored information, update the stored information, convert the updated information, automatically generate a message whenever updated information is stored, and transmit…message to the users”.
In response to Applicant’s arguments, the Examiner respectfully disagrees. The hypothetical claim 1 of Example 42 was deemed patent-eligible because it improved a specific improvement over prior art systems by allowing remote user to share information in real time a standardized form regardless of the format in which the information was input by the user. Thus, it addressed technological difficulties related to incompatible computer formats, disparate geographic locations, and the untimely sharing of information. Applicant has neither identified nor demonstrated that the present claims provide such a specific improvement over prior art systems. But instead, claim 20, for example, recites limitations of “detecting the mobile device connecting to the wireless network of the first restaurant or second restaurant (observation of WIFI connection), obtaining customer information and restaurant information (data gathering), receiving a first request for a reservation at the first restaurant (data gathering), determining that the first request cannot be currently satisfied at the first restaurant (evaluation and judgment), identifying one or more accommodating restaurants able to satisfy the first restaurant (observation), generating information accessible by the mobile device with alternate possible reservations at the identified one or more accommodating restaurant based on the first request (displaying), receiving a selection of the second restaurant (data gathering), identifying a minimum amount of time for the customer to move from the first restaurant to the second restaurant, identifying the second restaurant as being able to satisfy the first request of the reservation for the specified number of guests based on the identified minimum amount of time for the customer to move from the first restaurant to the second restaurant (observation), receiving a second request to make a second reservation at the second restaurant (data gathering), detecting that the mobile device connected at the second restaurant (observation), tracking movement of the customer from the first restaurant to the second restaurant (observation), updating the tab to indicate the second restaurant as the current restaurant associated with the customer (displaying), identifying that the second request and the first request are related based on the stored customer information (observation), identifying correlation of performance of the second restaurant and performance of the first restaurant based on identifying that the second request is related to the first request (observation), and initiating collection of payment from the customer at the second restaurant”, which can be performed in the human mind. Thus, the claim falls within the mental processes grouping. That is, nothing in the claims converts the information into a standardized format, regardless of the format of the information entered by the user.
In the Remarks on page 22, Applicant argues that none of the portions of Tyler provides any discussion that could reasonable be understood to disclose or suggest identifying “correlation of performance of [a] second restaurant and performance of [a] first restaurant based on identifying that [a] second request is related to [a] first request.”
Tyler mentions that changes in the structure of the business will change performance of the restaurant over time (see ¶ 137). Tyler discloses receiving one or more requests for seating reservations from a remote device; the reservations can include information, such as a time, date, party size and reservation identifier (e.g., a party name). In particular, the reservations can specify seating criteria selected by a customer, such as a request for a particular table or a seating location (e.g., indoor vs. outdoor seating), a scenic quality, such as tables adjacent to a window with a scenic view, booth or banquette seating (see ¶ 11, ¶ 38). However, Tyler and the cited references do not disclose identify correlation of the performance of the second restaurant and the performance of the first restaurant based on identifying that the second request is related to the first request, because at best, Tyler discloses the seating arrangement for a first floor of restaurant can be displayed next to a seating arrangement for a second floor of a restaurant (see ¶ 107). Therefore, the 35 U.S.C. § 103 rejection to claims 1 and 3-21 is withdrawn herein.
Examiner’s Notes
Regarding Claim 20, the Examiner respectfully notes that the structural elements from “the apparatus including:” to “(iii) at least one processor” are interpreted as part of the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976); Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Additionally, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention. See MPEP 2111.02.
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 and 3-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As per Step 1 of the subject matter eligibility analysis, it is to determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
In this case, Claims 1 and 3-10 are directed to an apparatus comprising at least one memory and at least one processor, which falls within the statutory category of a machine; and claims 11-19 are directed to a non-transitory computer-readable medium embodying a computer program, which falls within the statutory category of a product. Claim 20-21 are directed to a method for controlling an apparatus, which falls within the statutory category of a process.
In Step 2A of the subject matter eligibility analysis, it is to “determine whether the claim at issue is directed to a judicial exception (i.e., an abstract idea, a law of nature, or a natural phenomenon). Under this step, a two-prong inquiry will be performed to determine if the claim recites a judicial exception (an abstract idea enumerated in the 2019 Guidance), then determine if the claim recites additional elements that integrate the exception into a practical application of the exception. See 2019 Revised Patent Subject Matter Eligibility Guidance (2019 Guidance), 84 Fed. Reg. 50, 54-55 (January 7, 2019).
In Prong One, it is to determine if the claim recites a judicial exception (an abstract idea enumerated in the 2019 Guidance, a law of nature, or a natural phenomenon).
Taking the method as representative. Claims 20-21 recites the limitations of “detecting the mobile device connecting to the wireless network of the first restaurant or second restaurant (observation of WIFI connection), obtaining customer information and restaurant information (data gathering), receiving a first request for a reservation at the first restaurant (data gathering), determining that the first request cannot be currently satisfied at the first restaurant (evaluation and judgment), identifying one or more accommodating restaurants able to satisfy the first restaurant (observation), generating information accessible by the mobile device with alternate possible reservations at the identified one or more accommodating restaurant based on the first request (displaying), receiving a selection of the second restaurant (data gathering), identifying a minimum amount of time for the customer to move from the first restaurant to the second restaurant, identifying the second restaurant as being able to satisfy the first request of the reservation for the specified number of guests based on the identified minimum amount of time for the customer to move from the first restaurant to the second restaurant (observation), receiving a second request to make a second reservation at the second restaurant (data gathering), detecting that the mobile device connected at the second restaurant (observation), tracking movement of the customer from the first restaurant to the second restaurant (observation), updating the tab to indicate the second restaurant as the current restaurant associated with the customer (displaying), identifying that the second request and the first request are related based on the stored customer information (observation), identifying correlation of performance of the second restaurant and performance of the first restaurant based on identifying that the second request is related to the first request (observation), and initiating collection of payment from the customer at the second restaurant, correlating performance of the first restaurant and performance of the second restaurant over time to identify that the performance of the second restaurant over time to identify that the performance of the second restaurant is dependent upon the performance of the first restaurant”. None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. The limitations, as drafted, are processes that, under their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “using at least one processor” and “at least one memory”, nothing in the claim preclude the steps from practically being performed in the mind. For example, regardless whether the mobile device connection is detected, the steps of “receiving a first request to make a reservation at the first restaurant, determining that the first request cannot be satisfied at the first restaurant, identifying the second restaurant that satisfies the first request, and adjusting the performance of the restaurants” can be performed in the human mind. Thus, the claim falls within the mental processes grouping. See 84 Fed. Reg. 52. Accordingly, the claims recite an abstract idea.
In Prong Two, it is to determine if the claim recites additional elements that integrate the exception into a practical application of the exception.
Beyond the abstract idea, claim 20 recites the additional elements of “mobile device” and “at least one processor” for performing the steps including “store customer information related to a mobile device of a customer and restaurant information related to performances of first and second restaurant, communicate with a wireless network of the first restaurant and a wireless network of the second restaurant, receive a first request to make a reservation at the first restaurant for a specified amount of guests, and generate a webpage accessed by the mobile device with alternate possible reservations based on the first request for the specified amount of guests not being satisfied at the first restaurant. These additional elements are recited at a high level of generality and merely invoked as tools to perform the generic computer functions including receiving, storing, displaying and transmitting information over a network. For example, the specification discloses “The type of processing devices 210 include microprocessors, microcontrollers, digital signal processors, field programmable gate arrays, application specific integrated circuits, and discreet circuitry” (see ¶ 38); “receiving a request for a reservation over the Internet, by text message, by email, or by phone; receiving a request directly over the Internet (such as via a webpage)” (see ¶ 77); and “presenting (displaying) information identifying the alternate possible reservation to the user via a webpage”. Thus, receiving a request for a reservation from a wireless mobile phone or by text, and presenting the alternate possible reservations to the user via a webpage may only improve the ease of communication for users, but none of these additional elements reflects an improvement to the functioning of a computer itself or another technology, effects a transformation or reduction of a particular article to a different state or thing, or 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, such that the claim as a whole is more than a drafting effect designed to monopolize the exception. Therefore, the additional elements do not integrate the judicial exception into a practical application. The claims are directed to an abstract idea, the analysis proceed to Step 2B.
In Step 2B of Alice, it is "a search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept’ itself.’” Id. (alternation in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
The claims as described in Prong Two above, nothing in the claims that integrates the abstract idea into a practical application. The same analysis applies here in Step 2B.
Claim 20 recites the additional elements of “at least one memory”, “at least one processor”, and “a wireless transceiver” for performing the steps for performing the steps including “store customer information related to a mobile device of a customer and restaurant information related to performances of first and second restaurant, communicate with a wireless network of the first restaurant and a wireless network of the second restaurant, receive a first request to make a reservation at the first restaurant for a specified amount of guests, and generate a webpage accessed by the mobile device with alternate possible reservations based on the first request for the specified amount of guests not being satisfied at the first restaurant. These additional elements are recited at a high level of generality and merely invoked as tools to perform the generic computer functions including receiving and transmitting information over a network. For example, the specification discloses “The type of processing devices 210 include microprocessors, microcontrollers, digital signal processors, field programmable gate arrays, application specific integrated circuits, and discreet circuitry” (see ¶ 38); and “receiving a request for a reservation over the Internet, by text message, by email, or by phone” (see ¶ 77). Taking the claim elements separately and as an ordered combination, these additional elements, at best, may perform the step of “receiving information from the mobile device [over a wireless network]; storing information; and “transmitting information to the mobile device [over a wireless network]”. However, using generic computer components for performing generic computer functions such as receiving, storing, and transmitting have been recognized by the courts as merely well-understood, routine, and conventional functions of generic computers. See MPEP 2106.05 (d) (II) (Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); Storing and retrieving information in memory, Versata Dev. Group, Inc. V. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326-27, 122 USPQ2d 1377, 1379-80 (Fed. Cir. 2017) (claim reciting multiple abstract ideas, i.e., the manipulation of information through a series of mental steps and a mathematical calculation, was held directed to an abstract idea)). Thus, simply implementing the abstract idea on a generic computer for performing generic computer functions do not amount to significantly more than the abstract idea. (MPEP 2106.05(a)-(c), (e-f) & (h)).
For the foregoing reasons, claims 20-21 cover subject matter that is judicially-excepted from patent eligibility under § 101 as discussed above, the other claims 1, 3-10 and 11-19 parallel claims 20-21—similarly cover claimed subject matter that is judicially excepted from patent eligibility under § 101.
Therefore, the claims as a whole, viewed individually and as a combination, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims are not patent eligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 PAN G CHOY whose telephone number is (571)270-7038. The examiner can normally be reached on 5/4/9 compressed work schedule.
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/PAN G CHOY/Primary Examiner, Art Unit 3624
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