DETAILED ACTION
Status of the Application
This Office Action is in response to Application Serial 17/201,632. In response to the Examiner’s action mail dated May 29, 2026, Applicant amended claims 1, 12 and 20, on mail date August 31, 2026. Claims 5, 6, 9, 10, 11, 16, and 17 are cancelled. Claims 1-4, 7-8, 12-15, and 18-20 are pending in this application.
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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 31, 2026, has been entered.
Information Disclosure Statement
Applicant did not submit an information disclosure statement for consideration.
Response to Amendments
Claims 1-4, 7-8, 12-15, and 18-20 are pending in this application. The claims 1, 12 and 20 are amended. Claims 5, 6, 9, 10, 11, 16, and 17 are cancelled.
Regarding the 35 U.S.C. 101 rejection, the amendments are not persuasive. The claims 1-4, 7-8, 12-15, and 18-20 are rejected under 35 U.S.C. 101, see below.
Response to Arguments
Applicant’s arguments filed on August 31, 2026, have been fully considered but they are not persuasive and/or are moot in view of the revised rejections. Applicant’s arguments will be addressed herein below.
Claim Rejections under 35 U.S.C. 101
On pages 10-11 of the Applicant’s 35 U.S.C. 101 arguments, the Applicant traverses, Applicant has amended the claim 1 (and similarly claims 12 and 20) so that the claim is not directed toward judicial exception and are instead directed toward patentable subject matter. As such, Applicant submits that these rejections are rendered moot, at least in view of the amendments to claims contained herein.
Dependent claims 2-4 and 7, 8, and 11 ultimately depend from claim 1 and are therefore directed to patentable subject matter for at least similar reasons as claim 1. Claims 9 and 10 have been cancelled. Claims 13-15, 18, and 19 ultimately depend from claim 12 and are therefore directed to patentable subject matter for at least similar reasons as claim 12. Accordingly, for at least the above reasons, Applicant requests the Examiner reconsider and withdraw the rejections to claims 1-4, 7-15, and 18-20 under 35 U.S.C 101.
Examiner respectfully disagrees with Applicant’s 35 U.S.C. 101 argument. The claims 1-4, 7-15, and 18-20 are examined under 35 U.S.C. 101 in light of “Subject Matter Eligibility Guidance”. Claims 1-4, 7-8,11-15, and 18-20 in view of the limitation recites the abstract ideas of requesting a surrogate for a delivery request, receiving availability information of a surrogate, generating an instruction for the surrogate, and indicating the completion of the delivery. These claim limitations recite commercial interactions or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), and thus, the claims recite certain methods of organizing human activity.
The pending claims recite certain methods of organizing human activity, and thus, the limitations of the claims recite an abstract idea. Since the claims recite an abstract idea, the claims are directed to a judicial exception at Step 2A prong one.
Examiner notes the Applicant’s specification supports “surrogate” being defined as a person, or a drone. See specification [026]. The embodiment the Applicant is claiming is unclear.
This judicial exception is not integrated into a practical application under the second prong of Step 2A. In light of the Applicant’s specification [027] – [029], [046]-[047]. The system 400 may include the requestor device 202, surrogate device 304, and/or the surrogacy provider device 206 the system 400 may further include a surrogate database 402 for storing storage information. The system 400 may further include a mapping service 404 for presenting a map to one or more presenter’s devices 202, and thus, the claims are adding the words “apply it” (or equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f).
The map is an output displayed on the processor. The claims are using a computer to display the map, which is “apply it”. See MPEP 2106.05(f).
At Step 2B, the claims are considered as a whole. The claims are “apply it.” – See MPEP 2106.05 (f). Applicant amended the claims to include the limitations: wherein the respective surrogate includes a surrogate device comprising drone having capacity and authentication to perform functions associated with at least some of the surrogacy criteria. Pointing to specification [0134] and as recited in the limitations of the claims the drone is apply-it. See MPEP 2106.05 (f). The Applicant is encouraged to integrate the drone into the functions that the limitations are performing. The claims are not patent eligible.
Applicant should clearly recite the metes and bounds of the invention as supported by the specification. The claims recite, “… receive, via a network interface, a plurality of surrogate data objects, each surrogate data object corresponds to a respective surrogate and a corresponding surrogate data object for a respective surrogate includes availability information for the respective surrogate and at least a copy of a state issued identification associated with a respective individual associated with the respective surrogate, wherein the respective surrogate includes a surrogate device comprising a drone having capacity and authentication to perform functions associated with at least some of the surrogacy criteria”. First this limitation seems to teach a Markush, such as an alterative to choose a person or a drone. Next, the limitations are divorced from the use of the drone which recited in the later part of the claim. Applicant is welcome to request an Examiner interview.
The limitation of an overly map is not supported by the specification. Examiner encourages the Applicant to clarify this teaching as supported in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-4, 7-8,11-15, and 18-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims recites, “…overlay the grid on a digital rendering of a map, wherein the overlaid grid illustrates, on the rendering of the map on the display associated with the requestor device, wherein the overlaid grid is configured…”. The term(s) “…overlay grid…” and “… overlaid grids …” is not necessitated by the specification. Applicant is encouraged to clarify or correct the recited limitation claim reciting “overlay grid”.
Claim 1-4, 7-8,11-15, and 18-20 rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Regarding claim1-4, 7-8,11-15, and 18-20, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Applicant should clearly recite the metes and bounds of the invention. The claims recite, “… receive, via a network interface, a plurality of surrogate data objects, each surrogate data object corresponds to a respective surrogate and a corresponding surrogate data object for a respective surrogate includes availability information for the respective surrogate and at least a copy of a state issued identification associated with a respective individual associated with the respective surrogate, wherein the respective surrogate includes a surrogate device comprising a drone having capacity and authentication to perform functions associated with at least some of the surrogacy criteria; … ”. It is unclear whether a person with a state identification is used “such as” the surrogate person or a surrogate drone.
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 1-4, 7-8, 11 are machine.
Claims 12-15, 18-19 are process.
Claim 20 is manufacture.
Claims 5, 6, 9, 10, 11, 16, and 17 are cancelled.
Claims 1-4, 7-8,11-15, and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims (claim 1 and similarly claims 12 and claim 20) recite, “…receive, … a request data object including requestor information and request information including a package delivery request for a package, … receive, at least, input from a requestor that corresponds to the requestor information and the request information, … generate the request data object based on the input that corresponds to the requestor information and the request information; identify, using the request data object, surrogacy criteria corresponding to the requestor information, wherein the request data object includes at least one of a package delivery request, a pet monitoring request, and a child or senior monitoring request; receive, … a plurality of surrogate data objects, each surrogate data object corresponds to a respective surrogate and a corresponding surrogate data object for a respective surrogate includes availability information for the respective surrogate and at least a copy of a state issued identification associated with a respective individual associated with the respective surrogate, wherein the respective surrogate includes … having capacity and authentication to perform functions associated with at least some of the surrogacy criteria; output, … , the availability information for each respective surrogate that meets the surrogacy criteria, wherein the availability information includes, for each respective surrogate, at least a surrogate name and cross streets associated with a surrogate location overlay the grid on a digital rendering of a map, wherein the overlaid grid illustrates, on the rendering of the map on the display associated with the requestor device, wherein the overlaid grid is configured to allow the requestor to interact with aspects of the overlaid grid: identify a street address associated with each respective surrogate location and selectively remove from the overlaid grid on the digital rendering of the map, the identified street address associated with each respective surrogate location to protect the privacy of each respective surrogate; receive a surrogate selection, wherein the requestor provides the surrogate selection based on the availability information and by interacting… ; determine, based on the surrogate selection and the copy of the state-issued identification for each surrogate data object, a surrogate; generate, based on the requestor information and the determined surrogate, surrogacy instructions including drone-delivery instructions to deliver the package from the determined surrogate to the requestor when a requestor pickup confirmation indicates that the requestor has not picked up the package; transmit, to a second instance of the surrogate provider application executed on a surrogate device associated with the determined surrogate, … a surrogacy instruction data object including the surrogacy instructions; output,… ; receive, … , the requestor pickup confirmation indicating whether the requestor has picked up the package; and receive a surrogacy end data object including a surrogacy end indicator indicating completion of delivery of the package by the drone to the requestor, wherein the request data object includes requestor location, the availability information includes a surrogate location, and the surrogacy criteria includes physical proximity between the requestor location and the surrogate location …”. Claims 1-4, 7-8,11-15, and 18-20 in view of the limitations recite the abstract idea of requesting a surrogate for a delivery request, receiving availability information of a surrogate, generating an instruction for the surrogate, and indicating the completion of the delivery and these claims recite commercial interactions or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), and thus, the claims recite certain methods of organizing human activity.
The pending claim recites certain methods of organizing human activity, and thus, the limitations of the claims recite an abstract idea. Since the claims recite an abstract idea, the claims are directed to a judicial exception at Step 2A, prong one.
The judicial exception is not integrated into a practical application under the second prong of Step 2A, prong two. In particular, the claims recite the additional elements beyond the recited abstract idea of, “A system for online surrogacy comprising: a server computing device comprising: a processor; and a memory including instructions that, when executed by the processor, cause the processor to,” “from a first instance of a surrogate provider application executed on a requestor device,” “wherein the first instance of the surrogate provider application includes a software application executed on the requestor device and is configured to”, “wherein the first instance of the surrogate provider application is further configured to”, “via a network interface,”, “a surrogate device comprising a drone ”, “on a display associated with the requestor device”, “with the display associated with the requestor device”, “the surrogate device comprising the drone, ” “to a display device associated with the surrogate device, the surrogacy instructions using the second instance of the surrogate provider application”, “from the requestor device” in claim 1 (and similarly claim 12 and claim 20); and “A non-transitory computer-readable storage medium, comprising executable instructions that, when executed by a processor, facilitate performance of operations, comprising:” in claim 20; however, when viewed as an ordered combination, and pursuant to the broadest reasonable interpretation, each of the additional elements are computing elements recite adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea. – see MPEP 2106.05 (f).
Claim 1 (and similarly claim 12 and claim 20), recite limitations that are executing instructions using a computer. In claim 1, the limitations “using the request data object”, “overlay the grid on a digital rendering of a map, wherein the overlaid grid illustrates, on the rendering of the map on the display associated with the requestor device, wherein the overlaid grid is configured”, “from the overlaid grid on the digital rendering of the map”, “surrogacy instructions including drone-delivery instructions”, “including a surrogacy end indicator”. These limitations are data elements gathered for the instructions that is/are executed by the computer. These limitations are adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea. – see MPEP 2106.05 (f).
Regarding the dependent claims. The dependent claims do not cite additional elements beyond the elements that are recited in the independent claims.
Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing abstract idea at Step 2A, prong two.
Additionally, at Step 2A, prong two, the claims also fail to recite any improvements to another technology or technical field, improvements to the functioning of the computer itself, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine the claim to a particular useful application, and/or meaningful limitations beyond generally linking the use of an abstract idea to a particular environment.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements when considered both individually and as an ordered combination do not amount to significantly more, - See MPEP 2106.05 (f) – mere instructions to apply an exception. The claims are not an improvement at Step 2A prong two.
When evaluated at step 2B, it is MPEP 2106.05 (d) – 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).
Although the Applicant’s limitations positively recite “…surrogacy instruction including drone-delivery instructions” and “… comprising drone..”, the drone, as recited in the claims, is used as a computer that is ingesting information and outputting a the completion of a delivery. The broad recitations of comprising a drone is ”apply it”. As indicated in the claims and the specification [026] the surrogate can be a person or a drone. Since a person, in the alternative of a drone, can be used to receive delivery instructions and output delivery completion, the claims are reciting a judicial exception, using a computer to execute delivery instruction, and the claims do not amount to significantly more.
Examiner concludes that the additional elements in combination fail to amount to significantly more than the abstract idea based on findings that each element merely performs the same function (s) in combination as each element performs separately. The claim is not patent eligible. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified exception (the abstract idea). Looking at the limitation as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Dependent claims 2-4, 7-8, 11 further narrow the abstract idea of independent claim 1. Dependent claims 13 – 15, 18-19 further narrow the abstract idea of independent claim 12. The claims 1-4, 7-8, 11-15, and 18-20 are not patent eligible.
Moreover, aside from the aforementioned additional elements, the remaining elements of dependent claims 1-4, 7-8, 11-15, and 18-20 do not transform the recited abstract idea into a patent eligible invention because these claims merely recite further limitations that provide no more than simply narrowing the recited abstract idea.
Since there are no limitations in these claims that transform the exception into a patent eligible application such that these claims amount to significantly more than the exception itself, claims 1-4, 7-8, 11-15, and 18-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
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/THEA LABOGIN/Examiner, Art Unit 3624
