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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to PCT Patent Application No. FR1098667, filed on 07/30/2019. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Applicant’s communications filed on 12/1/2025 have been considered.
Claims 1 and 5 have been amended.
Claims 1-10 are currently pending and have been examined.
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 1-10 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 1-4 are directed towards a process. Claims 5-8 are directed towards a machine. Claims 9 and 10 are directed towards a manufacture. Therefore, claims 1-10 are directed to one of the four statutory categories (YES).
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:
A method for linking a racket sports player and at least one stringer from a list of stringers registered in a storage, comprising;
entering, by the racket sports player, at least one stringer selection criterion;
retrieving the list of registered stringers;
filtering, using a filtering algorithm, the list of stringers according to the at least one criterion to generate an intermediate filtered list of stringers that satisfy the at least one criterion;
locating a real-time geographic position of the player;
calculating a geographic distance between the real-time geographic position of the player and a stored geographic position of each stringer in the intermediate filtered list;
determining one or more stringers from the intermediate filtered list by selecting only stringers having a geographic distance from the player that satisfies a proximity threshold;
transmitting only the one or more determined stringers; and
displaying only the one or more determined stringers while suppressing display of stringers that do not satisfy both the at least one criterion and the proximity threshold;
wherein the determining step is performed in real-time based on the real-time geographic position of the player, such that the one or more determined stringers changes as the player moves to different geographic locations.
Claim 1, as exemplary, recites the abstract idea of providing recommendations according to a user’s location and preferences. 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.
Additionally, the claim reciting “filtering… the list of stringers… to generate an intermediate filtered list of stringers that satisfy the at least one criterion…; determining one or more stringers from the intermediate filtered list by selecting only stringers having a geographic distance from the player that satisfies a proximity threshold; and transmitting only the one or more stringers” further falls within the “Mental Processes” grouping of abstract ideas, in that they recite observation and evaluation of the list of stringers according to at least one criterion. Accordingly, the claim recites a mental process. See MPEP 2106.04.
The claim further reciting “filtering, using a filtering algorithm…; and calculating a geographic distance between the real-time geographic position of the player and a stored geographic position of each stringer in the intermediate filtered list” falls within the “Mathematical Calculations” grouping of abstract ideas, in that it recites mathematical relationships and mathematical formulas/equations. Accordingly, the claim recites mathematical concepts.
Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claim 1 recites 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 database hosted on a remote server; a man-machine interface; retrieving from a remote server over a communications network; a microprocessor; geolocating, by GPS receiver; configuring the man-machine interface to display; and determining… such that the one or more determined stringers changes dynamically.
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. Claim 1 specifying that the abstract idea of providing recommendations according to a user’s location and preferences 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 claim 1 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claim 1 recites an abstract idea and fail to integrate the abstract idea into a practical application, claim 1 is “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 database hosted on a remote server; a man-machine interface; retrieving from a remote server over a communications network; a microprocessor; geolocating, by GPS receiver; configuring the man-machine interface to display; and determining… such that the one or more determined stringers changes dynamically 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 2-10, 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, 4 and 6, these claims recite limitations that further define the same abstract idea noted in independent claim 1, and do not recite any additional elements other than what is disclosed in independent claim 1. Therefore, claims 2, 4 and 6 are considered patent ineligible for the reasons given above.
As for dependent claims 3, 5 and 7-10, these claims recite limitations that further define the abstract idea noted in independent claim 1. Additionally, they recite the following additional limitations:
in which the service requested by the player comprises the production of at least one element of a racket by digital printing;
a linking interface… the linking interface comprising: an input man-machine interface;
a transceiver;
an online communication means; and
a mobile application.
The additional elements of production by digital printing; a linking interface comprising: an input man-machine interface; a transceiver; an online communication means; and a mobile application 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 1-10 are ineligible.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over newly cited U.S Patent Application No. 2013/0339176 A1 to White et al., hereinafter White, in view of newly cited “Find a USRSA Stringer/Advisor” https://web.archive.org/web/20170610225857/http://www.racquettech.com/stringing/stringer_search.php, www.RacquetTech.com/stringing/stringer_search.php, June 2017, hereinafter RacquetTech (NPL).
Regarding Claim 1, White discloses A method for linking a service user and at least one service provider from a list of service providers registered in a database hosted on a remote server, comprising ([0057] systems and methods for manipulating and utilizing data in a database or databases accessed over wide area networks (WANs) via electronic network terminal devices, enabling consumers with urgent needs (“Seekers”) to locate, evaluate and acquire services and goods using devices, and for vendors (“Providers”) of such urgently required services and goods; [0064] Fulfillment Server 155 utilizes one or more databases 158 containing information about users who utilize the Fulfillment System 150 as either a Seeker or a Provider);
entering, by the service user through a man-machine interface, at least one service provider selection criterion ([0081] Elemental to the operation of the Fulfillment System 150 is User-descriptive data entered into the Database 158 voluntarily by Seekers and Providers themselves; [0086] a User's Profile may specify requirements that User has for transacting commerce with their counterpart User--i.e., a Seeker with a given Provider; and a Provider with a given Seeker; [0097] the Profiles of the Seeker and potential Providers may contain requirements that are mandatory qualifiers as well as other requirements that reflect non-mandatory preferences);
retrieving, from a remote server over a communications network, the list of registered service providers ([0096] In step 230, the Fulfillment system 150 prepares to proffer a set of potential Providers to the Seeker. Substantial amounts of information about the Seeker and about potential Providers may be retrieved from the Database 158 and utilized by the System 150 to either validate or reject potential pairings of the Seeker to proximate Providers… see [0073] client/server connectivity may use a WAN such as the Internet for access between the user’s terminal and the fulfillment server 155);
filtering, by a microprocessor using a filtering algorithm, the list of service providers according to the at least one criterion to generate an intermediate filtered list of service providers that satisfy the at least one criterion ([0096] Substantial amounts of information about the Seeker and about potential Providers may be retrieved from the Database 158 and utilized by the System 150 to either validate or reject potential pairings of the Seeker to proximate Providers; [0097] some embodiments may apply weightings to Profile preferences and instantiate rankings of potential Providers based on the degree of "acceptability" or "goodness" of a given Provider as determined algorithmically based on Seeker and Provider Profiles, third party ratings, and other external data);
geolocating, by GPS receiver, a real-time geographic position of the service user ([0100] as shown in step 320 of Fig. 3, the Fulfillment System 150 determines the Seeker’s locale… the Seeker’s locale may be taken as a geo-location provided by a mobile communication device in the Seeker’s possession; [0147] the fulfillment system 150 determines the seeker’s locale using GPS to geo-locate the seeker);
calculating, by the microprocessor, a geographic distance between the real-time geographic position of the service user and a stored geographic position of each service provider in the intermediate filtered list ([0102] Having ascribed a Locale to the Seeker, in Step 330 the Fulfillment System 150 processes the Database 158 to identify proximate Provider(s) of the URGS sought by the Seeker. Proximity typically involves measuring between locations. As relates to URGS fulfillment, those locations commonly correspond to the Seeker's Locale and to the Provider's Locale… determination of proximity may be affected by preferences in the Seeker's Profile in the Database 158 and/or in a given Provider's Profile in the Database 158… a given Provider's Profile preference may require the Seeker's Locale to lie within a specific region or territory based on the strictures of a License or Certificate or third party permission issued to that Provider… see [0064] Fulfillment Server 155 utilizes one or more databases 158 containing information about users who utilize the Fulfillment System 150 as either a Seeker or a Provider… see [0148] using the dentist office location specified in each Provider’s Profile in the Database 158 as that Provider’s locale);
determining, by the microprocessor, one or more service providers from the intermediate filtered list by selecting only service providers having a geographic distance from the service user that satisfies a proximity threshold ([0102] a given Provider's Profile preference may require the rendezvous location and/or the Seeker's Locale to lie within a specific region or territory based on the strictures of a License or Certificate or third party permission issued to that Provider. If that preference is not met, the Provider is determined by the Fulfillment System 150 to not be proximate to the Seeker; [0180] determination of a set of proximate providers);
transmitting, to the man-machine interface, only the one or more determined service providers ([Fig. 10A][0108] the set of potential Providers is displayed on a map that shows their approximate Locales and their relative proximity to the Seeker--see FIG. 10A for an example, depicting the mobile device of a Seeker); and
configuring the man-machine interface to display only the one or more determined service providers while suppressing display of service providers that do not satisfy both the at least one criterion and the proximity threshold ([0097] there may be more potential Providers than is practical to offer… the Fulfillment System 150 may limit the number of potential Providers proffered to a number lower than the total available. In such instances, the ranking of a given Provider--relative to other potential Providers--may determine whether or not that Provider is proffered; [0102] a given Provider's Profile preference may require the Seeker's Locale to lie within a specific region or territory based on the strictures of a License or Certificate or third party permission issued to that Provider. If that preference is not met, the Provider is determined by the Fulfillment System 150 to not be proximate to the Seeker; [Fig. 10A][0108] the set of potential Providers is displayed on a map that shows their approximate Locales and their relative proximity to the Seeker--see FIG. 10A for an example, depicting the mobile device of a Seeker);
wherein the determining step is performed in real-time based on the real-time geographic position of the service user, such that the one or more determined service providers changes dynamically as the service user moves to different geographic locations ([0100] The Seeker's Locale may be determined around the time that the Seeker utilizes the System 150… the Seeker's Locale may be taken as a geo-location provided by a mobile communication device in the Seeker's possession or by a third party geo-location service, such as a telephone service company or a security surveillance company; [0147] In step 320, the Fulfillment System 150 determines the Seeker's Locale. In this example, the Seeker is imagined to use a "smart phone" mobile communication device, which allows the Fulfillment System 150 to use GPS to geo-locate the Seeker, who at the time is in San Ramon, Calif… see [0145-0159] discussing a first example in which a Seeker located in San Ramon, CA is connected with a provider proximate to San Ramon, CA, and [0160-0175] discussing a second example in which a Seeker located in Alameda, CA is connected with a provider proximate to Alameda, CA);
But does not explicitly disclose wherein a service user is a racket sports player, and wherein a service provider is a stringer.
RacquetTech, on the other hand, teaches a similar method for linking a service user and a service provider (see [Fig. 1] “Find a USRSA Stringer/Advisor” – how to find an expert racquet technician near you), and additionally teaches the following:
wherein a service user is a racket sports player, and wherein a service provider is a stringer ([Fig. 1] “how to find an expert racquet technician near you” – entering just your zip code is the best method of finding your new stringer… if you’re looking for the best racquet and stringing advice for your game, USRSA members can help… USRSA Master Racquet Technicians work to fit you with the racquet, string, and tension that are right for your game).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by White, wherein a service user is a racket sports player, and wherein a service provider is a stringer, as taught by RacquetTech, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. It further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify White, to include the teachings of RacquetTech, in order to allow those users interested in racquet sports to find a certified service provider (stringer) in the user’s area (RacquetTech [Fig. 1]).
Regarding Claim 2, White and RacquetTech teach the limitations of claim 1.
White further discloses wherein the at least one selection criterion comprises a limitation of the search perimeter of the service provider ([0100] the Fulfillment System 150 determines the Seeker's Locale… the Seeker's Locale may be taken to be the Seeker's home or place of work as defined by the Seeker's Profile in the Database 158) and/or
a limitation of the cost of the labor proposed by the stringer and/or a limitation of the cost of at least one product put up for sale by the stringer and/or a time for completion of a service requested by the player and/or relay points available for the withdrawal of the product that the player wishes to buy or withdrawal of the resulting product of the service requested and/or the technique for laying the string of a racquet (In light of the claim reciting “and/or” between limitations, only one of the limitations must be present);
But does not explicitly disclose wherein the service provider is the stringer.
RacquetTech, on the other hand, teaches wherein the service provider is the stringer ([Fig. 1] “Find a USRSA Stringer/Advisor” – how to find an expert racquet technician near you).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by White, wherein the service provider is the stringer, as taught by RacquetTech, for the same reasons discussed above with respect to claim 1.
Regarding Claim 4, White and RacquetTech teach the limitations of claim 1.
White further discloses further comprising transmitting messages sent between the service user and said at least one proposed service provider, in real time or delayed ([0073] Peer-to-peer connectivity, such as a Fulfillment System-facilitated telephone call or text message exchange between a Seeker and a Provider, may typically also use a WAN such as the PSTN or the Internet; [0168] the System 150 prompts the Seeker--Lee--to contact Ms. Kelley, as shown in FIG. 15, by the actuating the virtual button 1510 to phone or the virtual button 1520 to text directly from his mobile communication device);
But does not explicitly disclose wherein the service user is the player and wherein the service provider is the stringer.
RacquetTech, on the other hand, teaches wherein the service user is the player and wherein the service provider is the stringer ([Fig. 1] “how to find an expert racquet technician near you” – entering just your zip code is the best method of finding your new stringer… if you’re looking for the best racquet and stringing advice for your game, USRSA members can help… USRSA Master Racquet Technicians work to fit you with the racquet, string, and tension that are right for your game).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by White, wherein the service user is the player and wherein the service provider is the stringer, as taught by RacquetTech, for the same reasons discussed above with respect to claim 1.
Regarding Claim 5, White and RacquetTech teach the limitations of claim 1.
White further discloses a linking interface configured to execute the method of claim 1, the linking interface comprising ([0059] a request processing and fulfillment agent system which interposes between database(s) and the user interfaces of electronic network terminal devices in such a way as to bring Seekers and Providers of URGS together virtually and/or physically in a timely fashion):
an input man-machine interface configured to allow the service user to input the at least one service provider selection criterion ([0081] Elemental to the operation of the Fulfillment System 150 is User-descriptive data entered into the Database 158 voluntarily by Seekers and Providers themselves… see [0063] a Fulfillment System 150 may be accessed using a mobile communication device or any other electronic network terminal device with a user interface);
a microprocessor configured to execute the filtering algorithm and calculate the geographic distance ([0102] Having ascribed a Locale to the Seeker, in Step 330 the Fulfillment System 150 processes the Database 158 to identify proximate Provider(s) of the URGS sought by the Seeker. Proximity typically involves measuring between locations. As relates to URGS fulfillment, those locations commonly correspond to the Seeker's Locale and to the Provider's Locale… determination of proximity may be affected by preferences in the Seeker's Profile in the Database 158 and/or in a given Provider's Profile in the Database 158… a given Provider's Profile preference may require the Seeker's Locale to lie within a specific region or territory based on the strictures of a License or Certificate or third party permission issued to that Provider;
a GPS receiver configured to acquire the real-time geographic position of the service user ([0100] as shown in step 320 of Fig. 3, the Fulfillment System 150 determines the Seeker’s locale… the Seeker’s locale may be taken as a geo-location provided by a mobile communication device in the Seeker’s possession);
a transceiver configured to retrieve the list of registered service providers from the remote server over the communications network ([0096] In step 230, the Fulfillment system 150 prepares to proffer a set of potential Providers to the Seeker. Substantial amounts of information about the Seeker and about potential Providers may be retrieved from the Database 158 and utilized by the System 150 to either validate or reject potential pairings of the Seeker to proximate Providers… see [0073] client/server connectivity may use a WAN such as the Internet for access between the user’s terminal and the fulfillment server 155); and
a display configured to display only the one or more determined service providers ([Fig. 10A][0108] the set of potential Providers is displayed on a map that shows their approximate Locales and their relative proximity to the Seeker--see FIG. 10A for an example, depicting the mobile device of a Seeker);
But does not explicitly disclose wherein the service user is the player and wherein the service provider is the stringer.
RacquetTech, on the other hand, teaches wherein the service user is the player and wherein the service provider is the stringer ([Fig. 1] “how to find an expert racquet technician near you” – entering just your zip code is the best method of finding your new stringer… if you’re looking for the best racquet and stringing advice for your game, USRSA members can help… USRSA Master Racquet Technicians work to fit you with the racquet, string, and tension that are right for your game).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by White, wherein the service user is the player and wherein the service provider is the stringer, as taught by RacquetTech, for the same reasons discussed above with respect to claim 1.
Claim 6 recites a linking interface comprising substantially similar limitations as claim 2. The claim is rejected under substantially similar grounds as claim 2.
Regarding Claim 8, White and RacquetTech teach the limitations of any one of claims 5 to 7.
White further discloses further comprising an online communication means capable of transmitting messages sent between the service user and said at least one proposed service provider, in real time or delayed ([0073] Peer-to-peer connectivity, such as a Fulfillment System-facilitated telephone call or text message exchange between a Seeker and a Provider, may typically also use a WAN such as the PSTN or the Internet; [0168] the System 150 prompts the Seeker--Lee--to contact Ms. Kelley, as shown in FIG. 15, by the actuating the virtual button 1510 to phone or the virtual button 1520 to text directly from his mobile communication device);
But does not explicitly disclose wherein the service user is the player and wherein the service provider is the stringer.
RacquetTech, on the other hand, teaches wherein the service user is the player and wherein the service provider is the stringer ([Fig. 1] “how to find an expert racquet technician near you” – entering just your zip code is the best method of finding your new stringer… if you’re looking for the best racquet and stringing advice for your game, USRSA members can help… USRSA Master Racquet Technicians work to fit you with the racquet, string, and tension that are right for your game).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by White, wherein the service user is the player and wherein the service provider is the stringer, as taught by RacquetTech, for the same reasons discussed above with respect to claim 1.
Regarding Claim 9, White and RacquetTech teach the limitations of any one of claims 5 to 7.
White further discloses a mobile application comprising the linking interface according to any one of claims 5 to 7 ([Fig. 1]; [0063] a Fulfillment System 150 may be accessed using a mobile communication device or any other electronic network terminal device with a user interface; [0065] Seeker terminal choices, 110 through 119, represent the multiplicity of devices that can support access to the Fulfillment System 150. Often these terminals are mobile communication devices).
Regarding Claim 10, White and RacquetTech teach the limitations of claim 8.
White further discloses a mobile application comprising the linking interface according to claim 8 ([Fig. 1]; [0063] a Fulfillment System 150 may be accessed using a mobile communication device or any other electronic network terminal device with a user interface; [0065] Seeker terminal choices, 110 through 119, represent the multiplicity of devices that can support access to the Fulfillment System 150. Often these terminals are mobile communication devices).
Claims 3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over White in view of RacquetTech, and further in view of previously cited Bricken (US 2017/0303646 A1).
Regarding Claim 3, White and RacquetTech teach the limitations of claim 2.
White does not explicitly disclose in which the service requested by the player comprises the production of at least one element of a racket by digital printing.
RacquetTech, on the other hand, teaches in which the service requested by the player comprises the production of at least one element of a racket ([Fig. 1] USRSA Master Racquet technicians work to fit you with the racquet, string, and tension that are right for your game… whether it’s racquet customization (changing the weight and balance of your frame with strategically applied lead tape), handle build-ups, advice on racquet technology, or the perfect fit for you, your racquet and your string tension).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by White, wherein the service provider is the stringer, as taught by RacquetTech, for the same reasons discussed above with respect to claim 1.
Bricken, on the other hand, teaches production of at least one element of a product by digital printing ([0142] three-dimensional segments may be made using rapid prototyping techniques, like three-dimensional printing).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method, as taught by White and RacquetTech, production of at least one element of a product by digital printing, as taught by Bricken, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. It further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify White and RacquetTech, to include the teachings of Bricken, in order to enable users to custom design 3D-printed products (Bricken, [0009]).
Regarding Claim 7, White and RacquetTech teach the limitations of claim 6.
White does not explicitly disclose wherein the service requested by the player comprises the production and personalization of at least one element of a racket by digital printing.
RacquetTech, on the other hand, discloses wherein the service requested by the player comprises the production and personalization of at least one element of a racket ([Fig. 1] USRSA Master Racquet technicians work to fit you with the racquet, string, and tension that are right for your game… whether it’s racquet customization (changing the weight and balance of your frame with strategically applied lead tape), handle build-ups, advice on racquet technology, or the perfect fit for you, your racquet and your string tension).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by White, wherein the service requested by the player comprises the production and personalization of at least one element of a racket, as taught by RacquetTech, for the same reasons discussed above with respect to claim 1.
Bricken, on the other hand, teaches production of at least one element of a product by digital printing ([0142] three-dimensional segments may be made using rapid prototyping techniques, like three-dimensional printing).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method, as taught by White and RacquetTech, production of at least one element of a product by digital printing, as taught by Bricken, for the same reasons discussed above with respect to claim 3.
Response to Arguments
Applicant’s arguments filed with respect to the rejection of claims under 35 USC 112 have been fully considered and are persuasive.
In light of the amendments made to claim 5, as well as arguments set forth by Applicant (Remarks Pages 7-9), claim 5 is no longer being interpreted under 112(f). Accordingly, the previously filed rejections to claim 5 under 112(a) and 112(b) have been withdrawn.
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 Action’s characterization of the claims is insufficient and impermissibly abstract… The Action’s characterization violates [Enfish] by ignoring the ordered combination of technical steps, omitting the specific hardware requirements (GPS receiver, microprocessor), disregarding the dual-stage filtering architecture with real-time GPS integration, and overlooking the suppressive display limitation” (Remarks Pages 9 and 10). Examiner respectfully disagrees. Step 2A Prong One of 101 analysis includes identifying the specific limitation(s) in the claim that recite an abstract idea, and determining whether the identified limitations fall within at least one of the groupings of abstract ideas, where 2A analysis specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity. See MPEP 2106.04. Examiner notes that none of the limitations, as previously presented, were ignored in the previously filed Non-Final Office Action (7/1/2025). Accordingly, the additional elements of the independent claims are not being ignored, but instead analyzed under Step 2A Prong Two. With regards to the limitations believed to be abstract, including linking a racket sports player and at least one stringer from a list of stringers; entering… at least one stringer selection criterion; retrieving the list of registered stringers; filtering, using a filtering algorithm, the list of stringers according to the at least one criterion to generate an intermediate filtered list of stringers that satisfy the at least one criterion; locating a real-time geographic position of the player; calculating a geographic distance between the real-time geographic position of the player and a stored geographic position of each stringer in the intermediate filtered list; determining one or more stringers from the intermediate filtered list by selecting only stringers having a geographic distance from the player that satisfies a proximity threshold; transmitting only the one or more determined stringers; and displaying only the one or more determined stringers while suppressing display of stringers that do not satisfy both the at least one criterion and the proximity threshold; and wherein the determining step is performed in real-time based on the real-time geographic position of the player, such that the one or more determined stringers changes as the player moves to different geographic locations, these limitations recite a judicial exception, in that they recite sales activities/behaviors, mental processes, and mathematical calculations. This argument is not persuasive, and the rejection has been maintained.
Furthermore, with regards to Enfish, the specification supports the indication that the claims are directed towards the judicial exception. For example the specification discloses that a racket sports player may find professionals closest to his position (see Spec [0005-0007]), and additionally that the player may limit the search scope of stringers by selection criterion including a cost of labor proposed by the stringer ([0017]). These are sales activities because they involve linking a service user and a service provider on the basis of the cost of the service. Accordingly, the rejection has been maintained.
Applicant further argues that the claims do not recite an abstract idea because “the Action improperly focuses on the result rather than the specific technical method claimed,” with reference to Electric Power Group, LLC v. Alstom S.A. (Remarks Page 11). Examiner respectfully disagrees. As discussed above, the additional elements, including the microprocessor and GPS receiver, are not analyzed as a part of Step 2A, Prong One. The “specific method” of the claimed abstract limitations recites linking a service user and a service provider, as discussed above. Furthermore, the additional elements are recited at a high level of generality, such that they amount to simply applying said abstract idea in a computing environment, and are therefore insufficient to integrate the abstract idea into a practical application. Accordingly, this argument is not persuasive, and the rejection has been maintained.
Applicant further argues that the claims reflect an improvement, “specifically, the integration of real-time geolocation data into multi-criteria filtering systems with dynamic result updating and suppressive display” (Remarks Pages 11 and 12). Examiner respectfully disagrees. 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. MPEP 2106.04(d)(1). 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. In the instant case, Applicant’s specification provides no explanation of an improvement to the functioning of a computer or other technology. This is reflected in the cited paragraphs of the specification ([0005-0007]), which discuss problems including the ”long and tedious” search process for service users to find service providers in a general area, including having to compare addresses between providers in order to determine the closest professional, as well as those meeting the player’s expectations. These statements do not provide any detail as to how the claimed invention is providing an improvement to the functioning of the computer or other technology, but rather recite an improvement to the abstract idea through implementation in a computing environment. While Applicant argues technical improvements such as reducing bandwidth, simplifying the user interface, as well as improving: where filtering occurs, when GPS integration occurs, and what data is displayed, these merely represent conclusory statements. Applicant’s specification does not provide any detail as to how the claimed invention is providing these improvements (see at least ([0005-0007]). Furthermore, improvements such as producing only doubly-qualified providers and reducing cognitive load on the user are directed towards improving the abstract idea, rather than providing a technical improvement to the claimed additional elements or other technology. Accordingly, the claims do not amount to a technical improvement, and the rejection has been maintained.
Applicant further argues that the claimed invention is analogous to Bascom because “the particular technical arrangement recited in the amended claims… constitutes a technical improvement over prior filtering approaches” (Remarks Pages 12 and 13). Examiner respectfully disagrees. As discussed above, the instant claims amount to merely implementing the abstract idea in a computing environment, with no improvements to the claimed technology or other technical area. For example, there is no improvement to the interface, microprocessor, or GPS receiver, as they are peripherally incorporated in order to implement the claimed abstract idea, and do not meaningfully limit the abstract idea. Applicant’s claims do not describe how the particular arrangement of elements is a technical improvement and the claims only merely recite the abstract idea along with the requirement to perform it on a set of generic computer components performing generic computing functions. Accordingly, the claimed arrangement of additional elements is not inventive, and the rejection has been maintained.
Applicant further argues “the problem addressed by the amended claims specifically arises in mobile computing… the solution is necessarily rooted in computer technology” (Remarks Page 13). Examiner respectfully disagrees. The claims do not provide a technical solution to a technical problem, as was the case in DDR Holdings. This is supported by the cited portions of Applicant’s specification (see at least [0005-0007]), discussing that the invention addresses problems such as the “long and tedious” search process for racket sports players (service users) in finding stringers (service providers) within a particular area. Addressing the efficiency of a search process does not recite a technical solution to a technical problem. Furthermore, there is no support in the specification that describes the claimed technology such that one of ordinary skill in the art would recognize an improvement to the computer or other technology, as discussed above. Accordingly, the claims do not recite a technical improvement analogous to that set forth in DDR Holdings, since the disclosure amounts to no more than mere implementation of an abstract idea on a computer. This argument is not persuasive, and the rejection has been maintained.
Applicant further argues that the invention is eligible in view of USPTO SME Example 37 because “both [the instant claims and Example 37] solve user interface problems through specific technical implementations” (Remarks Pages 13-15). Examiner respectfully disagrees. The subject matter eligibility examples are hypothetical and only intended to be illustrative of the claim analysis under the MPEP. These examples are to be interpreted based on the fact patterns set forth in each example, as other fact patterns may have different eligibility outcomes. While the claims in Example 37 recite the abstract idea of determining the amount of user of icons over a predetermined amount of time, the claims further include additional elements reciting a specific manner of automatically displaying icons to the user based on usage, resulting in an improved user interface. The instant claims provide no analogous improvement. Rather, the instant claims recite generic computing components implementing the abstract idea of linking a service user and a service provider. While Applicant points to particular limitations as being similar to those of Example 37, including “the user specif[ying] how they want results organized or filtered”, “a processor analyz[ing] data to make determinations”, and “control[ling] how the interface presents information to the user”, these do not amount to technical improvements, and the specification does not provide support for any of these improvements, such that one of ordinary skill in the art would be able to recognize such an improvement upon review of the disclosure. For example, with regards to Claim 37, these cited improvements do not recite automatically displaying icons to a user based on usage. Accordingly, this argument is not persuasive, and the rejection has been maintained.
Applicant further argues that the claims integrate the abstract idea into a practical application because “the arrangement recited in the amended claims is non-conventional” (Remarks Pages 15-16). Examiner respectfully disagrees. As discussed above, the instant claims amount to merely implementing the abstract idea in a computing environment, with no improvements to the claimed technology or other technical area. For example, there is no improvement to the interface, microprocessor, or GPS receiver, as they are peripherally incorporated in order to implement the claimed abstract idea, and do not meaningfully limit the abstract idea. First, it is noted that Applicant’s specification discloses that “the geolocation of the player can be carried out by a GPS receiver, a satellite positioning system, or any other means making it possible to position the player on a map using his geographic coordinates” (see at least spec [0015]), indicating that technology other than a GPS receiver may be used. Second, claiming a number of filtering steps such as “filtering, using a filtering algorithm, the list of stringers… to generate an intermediate filtered list; and determining one or more stringers from the intermediate filtered list by only selecting stringers having a geographic distance from the player that satisfies a proximity threshold” amount to an abstract idea in that they recite filtering content, and therefore are directed to the “Mental Processes” grouping of abstract ideas, as discussed in the Office Action, above. Implementing these steps with generic computing components such as a microprocessor amounts to further implementing the abstract idea in a generic computing environment. Third, while Applicant cites the specification at ([0013-0016][0043]), none of the cited portions of the specification explain an improvement to technology that would be readily apparent to one of ordinary skill in the art. Examiner further notes that “efficiently matching mobile users with nearby service providers in real time” amounts to an improvement of the abstract idea, or a business improvement, rather than providing an improvement to technology. This argument is not persuasive, and the rejection has been maintained.
Applicant argues that the amended claims provide an inventive concept because “the claim recites a specific sequence… this specific sequence is not disclosed in the prior art cited by the Action” (Remarks Pages 16 and 17). Examiner respectfully disagrees. The question of whether a particular claimed invention is novel or obvious is "fully apart" from the question of whether it is eligible. Diamond v. Diehr, 450 U.S. 175, 190, 209 USPQ 1, 9 (1981). 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) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). 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. The rejection has been maintained.
Applicant argues that “if the Action’s reasoning were accepted, it would render large swaths of clearly eligible inventions ineligible” (Remarks Page 17). Examiner respectfully disagrees. Claims are examined on a case-by-case basis, as fact patterns set forth in each case are different, and therefore may have different eligibility outcomes. It has been discussed in the above paragraphs, that the instant claims, as amended, amount to implementation of the abstract idea on a computer, and are therefore insufficient to integrate the abstract idea into a practical application or recite significantly more than the abstract idea. The determination of another invention’s eligibility would require separate analysis of its claims and specification in order to make a separate determination based on the other invention. Accordingly, this argument is not persuasive, and the rejection has been maintained.
Applicant’s arguments filed with respect to the rejection of claims under 35 USC 103 have been fully considered but are rendered moot under new grounds of rejection.
Applicant argues that the claims, as amended, overcome previously cited Catino (Remarks Pages 18-22). Examiner notes that the amendments to the claims have necessitated a new grounds of rejection, and therefore a new combination of prior art has been applied to the amended claims. Claim 1 now stands rejected in view of the combination of White (US 2013/0339176 A1) and RacquetTech (RacquetTech.com). Accordingly, this argument is rendered moot under new grounds of rejection, and the rejection has been maintained.
Applicant further argues that reasoning was not provided for the previously cited combination (Catino/Linden) because “[the previous Office Action’s] statements do not explain why one of ordinary skill in the art, starting from Catino, would have been motivated to incorporate Linden’s specific tennis racket stringing context and to implement the particular dual-stage, proximity-based filtering architecture recited in the amended claims” (see Remarks Pages 22-24). Examiner respectfully disagrees. While the instant claims recite said dual-stage filtering architecture, the instant claims are no longer rejected in view of the combination of Catino and Linden, but in view of the newly cited combination of White/RacquetTech, as discussed above. Nevertheless, the cited portion of Linden was cited in order to show that stringers (a provided service) meeting the needs of players with unique playing styles is a known problem in the art. On the other hand, previously cited Catino discloses on-demand matching of service users and service providers based on service user needs (see at least Catino [0014][0017]). These are both pertinent to problems discussed in the instant application, including linking a player with a stringer that corresponds to the player’s expectations. Linden was not relied upon for its method of racket stringing, but rather because it addresses the general problem of tailoring provided services to individual user needs and preferences. In light of Catino, a person of ordinary skill in the art would look to art describing how services may be adapted to the needs of different users, regardless of the field in which the services are applied. Regardless, this argument is rendered moot in view of the new grounds of rejection.
Applicant further argues that Linden does not bridge the gap because Linden is non-analogous art (Remarks Pages 24-25). Examiner respectfully disagrees. While previously cited Catino and Linden are not necessarily directed to the same field of endeavor, it has been discussed in the above paragraph why one of ordinary skill in the art would look to Linden in light of Catino. Furthermore, this argument is rendered moot under new grounds of rejection, and the rejection has been maintained.
Applicant argues that Catino and Linden do not teach the newly amended limitations of claim 1 (Remarks Pages 25-27). This argument is rendered moot under new grounds of rejection, and the rejection has been maintained.
Applicant argues that Bricken is non-analogous art (Remarks Page 27). Examiner respectfully disagrees. A reference is analogous art to the claimed invention if the reference is reasonably pertinent to the problem faced by the inventor. MPEP 2141.01. Furthermore, a reply limited to arguing what a subset of the applied references teaches or fails to teach, or that does not address the combined teaching of the references, will not be persuasive. MPEP 2145(vii). The specification of the instant application discloses that a player may choose for particular elements of a racket to be manufactured using 3D printing, allowing the player to create and personalize the racket by adding numbers, initials, a logo, or a smiley type design (see at least specification [0015-0031]). Similarly, Bricken discloses that bracelet segments may be made using three-dimensional printing, enabling custom manufacturing such that users can design the segments on their bracelets (see at least Bricken [0142]). One of ordinary skill in the art would recognize that these types of personalization are not necessarily done for optimization purposes, but for customization purposes based on the user’s preferences. Accordingly, both references are pertinent to the problem of adapting service to the needs and preferences of different users, and accordingly Bricken qualifies as analogous art. The rejection has been maintained.
Applicant further argues “the Action has not provided any explanation for why one of ordinary skill in the art would combine three references from three different fields” (Remarks Page 27). Examiner respectfully disagrees. Where more than one prior art reference is used as the basis of an obviousness rejection, it is not required that the references be analogous art to each other. MPEP 2141.01. It has been discussed in the above paragraph that Catino, Linden and Bricken are reasonably pertinent to problems faced by the inventor in the instant application, and therefore qualify as analogous art. Furthermore, a newly cited combination of references (White, RacquetTech, and Bricken) has been relied upon in the current 103 rejection, rendering these arguments moot. The rejection has been maintained.
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.
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/ZACHARY RYAN DONAHUE/Examiner, Art Unit 3689
/MARISSA THEIN/Supervisory Patent Examiner, Art Unit 3689