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 .
Status of Claims
This action is in reply to the claims filed on 11/03/2025.
Claims 1, 7, 9-11, and 18-20 are amended.
Claims 2-5, 8, 12-17 are cancelled.
Claims 1, 7, 9-11, and 18-21 are currently pending and have been examined.
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/03/2025 has been entered.
Allowable Subject Matter
Claims 1, 7, 9-11, and 18-21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office Action.
A statement of reasons for the indication of allowable subject matter is included in the Office Action on 09/30/2024.
Claim Objections
Claims 1 and 11 are objected to because of the following informalities:
Line 18 of claim 1 and line 16 of claim 11 recite “wherein the second product is different form the first product”. This appears to be a typographical error, and lines 18 and 16 will be treated as reciting “wherein the second product is different from the first product”.
Appropriate correction is required.
Claim Rejections- 35 U.S.C. § 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, 7, 9-11, and 18-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Under Step 1 of the subject matter eligibility (SME) analysis described in MPEP 2106.03, the instant claims fall within the four statutory categories of invention identified by 35 U.S.C. 101. In the instant case, claims 1, 6-7, 9-10, and 18-21 are directed to a machine, and claim 11 is directed to a method. Claims 1 and 11 are parallel in nature, therefore, the analysis will use claim 1 as the representative claim.
In Step 2A Prong One, it must be considered whether the claims recite a judicial exception. In the instant case, representative claim 1 recites abstract concepts including: storing … at least one target keyword related to a product and at least one purpose keyword related to an action corresponding to the product; ... receive user input data to search for purchasing a product, wherein the user input data comprises at least one of text data, image data, or voice data; obtain a target keyword including a name of food and a purpose keyword including an ingredient from the user input data based on the at least one target keyword and the at least one purpose keyword, obtain a first product list including a plurality of pieces of identification information on each of ingredients necessary for cooking the food based on the target keyword and the purpose keyword, identify a first product among the ingredients related to cooking the food based on the plurality of pieces of identification information, change the first product to a second product corresponding to information related to a user, wherein the second product is different from the first product, obtain a second product list by replacing the first product to the second product in the first product list, and … display the second product list, wherein the information related to the user comprises at least one of nationality, age, gender, purchase history, or preferred seller information of the user, and ... convert the user input data into text data by analyzing the user input data, determine whether a result value is obtained based on the converted text data, based on the result value being obtained, determine that the converted text is normally recognized;, based on the result value being not obtained, determine that the converted text is not normally recognized and change the converted text data into a predetermined word corresponding to the converted text data, wherein the predetermined word corresponding to the converted text data is stored ..., and obtain the target keyword and the purpose keyword based on the changed predetermined word.
When considering the subject matter groupings articulated in MPEP 2106.04, the claims recite an abstract idea of “generating a product list based on user search input”. These concepts are considered to be certain methods of organizing human activity. Certain methods of organizing human activity are defined by MPEP 2106.04 as including “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”. In this case, generating a product list using user input is a certain method of organizing human activity because it describes sales activities and behaviors. Therefore, claims 1 and 11 recite an abstract idea.
If it is determined that the claims recite a judicial exception, then in Step 2A, Prong 2 of the SME analysis, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception. This is the question of whether a claim is “directed to” a judicial exception. As explained in MPEP 2106.05, the evaluation of Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.) identified by the Supreme Court and the Federal Circuit, to ensure that the claim as a whole “integrates [the] judicial exception into a practical application [that] will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
In this instant case, claims 1 and 11 recite the additional elements including: an electronic device comprising: a display; a memory storing at least one instruction; a processor to execute the at least one instruction; control the display to display; and data stored in memory. These additional elements amount to no more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". 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., 573 U.S. at 223, 110 USPQ2d at 1983. MPEP 2106.05(f). Invoking computers or other machinery merely as a tool for economic or other tasks (e.g. to receive, store, or transmit data) does not integrate a judicial exception into a practical application. Therefore, considered both individually and as an ordered combination, the additional elements fail to integrate the abstract idea of “generating a product list based on user search input” into a practical application. Accordingly, the Examiner concludes that claims 1 and 11 are directed to an abstract idea.
Under Step 2B of the SME analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) individually and in combination are merely being used to apply the abstract idea to a general computer components. The invention as claimed merely automates “generating a product list based on user search input” (i.e., the abstract idea) and does not add meaningful limitations to the abstract ideas beyond generally linking the abstract process to implementation via computers/software. Therefore, the additional elements, alone or in ordered combination, do not render the claim as being significantly more than the underlying abstract idea, and the claims 1 and 11 are ineligible.
Dependent claim(s) 9, 10, and 18-19 do not aid in the eligibility of the independent claims. These claims merely further define the abstract idea without reciting any further additional elements. Thus dependent claims 9, 10, and 18-19 are also ineligible.
Dependent claim 6 recites additional elements including: an artificial intelligence model. These additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than a general link of the use of the abstract idea to a particular technological environment or field of use (i.e. a computer environment). Employing generic computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more. MPEP 2106.05(h). Accordingly, the additional elements do not act to integrate the abstract idea into a practical application, neither do they amount to significantly more than the abstract idea itself. Thus claim 6 is also ineligible.
Dependent claims 20-21 recite additional elements including: display, on the display, a user interface (UI) for changing the at least one piece of identification information. The display, user interface, and method of displaying (i.e. “display”) are recited at a high level of generality and invoked merely as tools to perform the abstract idea. As explained in Alice, 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., 573 U.S. at 223, 110 USPQ2d at 1983). Accordingly, the requirement to “display, on the display, a user interface (UI)” does not integrate the abstract idea into a practical application, neither does this limitation amount to significantly more than the abstract idea itself. Thus claims 20-21 are also ineligible.
Response to Arguments
Applicant's arguments filed 11/03/2025 with respect to the 35 U.S.C. § 101 rejections have been fully considered but they are not persuasive.
On page 13 of the Remarks, Applicant argues “the claims are not directed to a mental process or a method of organizing human activity”. Specifically, Applicant argues, “the financial transaction must be recited in the claims or must be reflected in the claims” in order for a claim to be directed a method of organizing human activity related to sales activity.
The Examiner respectfully disagrees. The established guidance does not support Applicant’s assertion that a financial transaction must be recited/reflected in the claims for the claims to be directed to sales activities. For example, MPEP 2106.04 states:
Other examples of subject matter where the commercial or legal interaction is advertising, marketing or sales activities or behaviors include:
i. structuring a sales force or marketing company, which pertains to marketing or sales activities or behaviors, In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1038 (Fed. Cir. 2009);
ii. using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps, 609 F.2d 481, 485, 203 USPQ 812, 816 (CCPA 1979); and
iii. offer-based price optimization, which pertains to marketing, OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63, 115 USPQ2d 1090, 1092 (Fed. Cir. 2015).
None of these examples recite a financial transaction, nonetheless they are classified as commercial interactions. In the instant case, generating a product list based on a user search input is considered a sales activity because the method identifies and presents products matching a customer’s intent. This process influences a customer’s purchase decision, and could also be considered a fundamental economic practice (i.e. product recommendation).
In response to Applicant’s argument that the claims should not be interpreted as a human mental judgment, Examiner notes that claims can recite a mental process even if they are claimed as being performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’)
In this case, although the steps of “obtaining a first product list”, “identify a first product among the ingredients related to cooking the food”, “change the first product to a second product”, etc. are recited as being performed by a processor, each of these steps can be performed by a human mentally or with pen & paper. You do not need a computer to create and edit a grocery list according to received user input.
On page 15 of the Remarks, Applicant argues the claims “integrate the abstract idea into a practical application and/or provide inventive concept”. Specifically, Applicant argues “by using the specific conversion process recited in the claims, along with the result value determination and the predetermined words that are already stored in the memory, the analysis time of the text is reduced, and the recognition rate is increased, improving the performance of the electronic device in generating the product lists”.
The Examiner respectfully disagrees. MPEP 2106.04(a)(2)(III) explains “claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions”, and Examples of claims that recite mental processes include: a claim to ‘collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016)”.
The instant method of obtaining a target keyword, converting user input data into text data, determining whether a result value is obtained based on the converted text data, based on the result, determining if the converted text is recognized, and obtaining a target keyword and purpose word can all be performed mentally without a computer, as in Electric Power Group. Accordingly, these features do not provide integration into a practical application or significantly more than the abstract idea because eligibility cannot be furnished by the abstract idea itself. The alleged improvements of reduced analysis time and increased recognition rate are improvements in abstract observations and evaluations that can be performed in the human mind. Rather than reciting a particular means of achieving these results with a computer (which would include steps that cannot be performed mentally), the claims invoke a computer merely as a tool to improve an abstract process. For example, Applicant’s arguments are directed to “improving the performance of the electronic device in generating the product lists” (Remarks, pg. 16), which is an improvement in commercial activities but not an improvement to the existing functionality of the electronic device itself.
Applicant further argues “a mental process of converting information would not be performed in the human mind in such a manner” (Remarks, pg. 17) and “the location of the predetermined word (i.e., stored in the memory) also provides additional processing benefits because further processing would not be required to obtain the predetermined word”.
The Examiner respectfully disagrees. Applicant has not claimed a specific manner of converting information, but a broad manner “convert the user input data into text data by analyzing user input data” which can be performed by a human. A human can hear a user say “I need bananas”, process that speech, and write down “bananas”. This is converting user input data into text data by analyzing user input data, as claimed. A human can also hear a user say “I need gruair cheese”, write down “gruair”, determine that result does not correspond to any predetermined word stored in their mind, and correct the word to “gruyére”. This is based on the result value being not obtained, determine that the converted text is not normally recognized and change the converted text data into a predetermined word corresponding to the converted text data, wherein the predetermined word corresponding to the converted text data is stored in the memory, and obtain the target keyword and the purpose keyword based on the changed predetermined word, as claimed. Contrary to Applicant’s assertion, granting exclusive rights to any such conversion of user input into text would preempt any future innovation in this field because Applicant has not recited a particular manner of performing conversion.
Additionally, Examiner is not persuaded that storing the predetermined word in memory provides a technical improvement. Per MPEP 2106.05(a), it is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. As explained in the example above, the broadest reasonable interpretation of the claimed conversion process includes mental analysis and is therefore not limited to computer implementation. Storing a predetermined word in memory does not improve the computer or other technology, but simply copies how a human would remember and recall information mentally.
For at least these reasons, the Examiner is maintaining the 101 rejections of claims 1, 7, 9-11, and 18-20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
S. Bhattacharya et al (NPL Reference U) presents an intelligent mobile grocery assistant that provides support for the customer during the entire shopping process.
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/K.G.W./Examiner, Art Unit 3688 /Jeffrey A. Smith/Supervisory Patent Examiner, Art Unit 3688
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