DETAILED ACTION
This Office action is in reply to correspondence filed 5 January 2025 and a grant of a petition to revive dated 7 February 2025 in regard to application no. 17/859,254. Claims 1-19 are pending and are considered below.
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 .
Election/Restrictions
Applicant’s election without traverse of inventive group II, claims 16-19, in the reply filed on 5 January 2025 is acknowledged.
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.
Claims 16-19 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 term “similar attributes” in claim 16 is a relative term which renders the claims indefinite. The term “similar attributes” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Reasonable people would reasonably disagree as to which attributes are similar to which other attributes and which are not.
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 16-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because they are directed to software per se. Claim 16 is directed to a “software application” and its instructions, and nothing more. That the application resides “on a mobile device” is merely descriptive of the location of the software; the mobile device is not positively claimed. Software per se is a list of instructions which is neither a process, machine, composition of matter nor a manufacture.
To remedy this the Examiner suggests redrafting the preamble of the claim in “Beauregard form”, such as “a non-transitory computer readable medium including instructions which, when executed by a processor, perform a process comprising”.
Claims 16-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) receiving data including an image, identifying something based on the image (e.g. a product), determining one or more promotions or plans based on a location and various other data, ranking them (assuming there are a plurality), displaying this information and allowing a user to make a selection, and displaying information (that it is “machine readable” is insignificant; text is machine readable) about the selection.
All of this recites providing a promotion selected from (possibly) a plurality of applicable promotions, an advertising behavior, commercial interaction and fundamental business practice, each of which is among the “certain methods of organizing human activity” deemed abstract. Further, in the absence of computers, these are mental steps which can be practically performed in the human mind or with pen and paper.
A customer in a retail store can look at images (items on shelves or pictures thereof), can identify them mentally, would be aware of her location, can select promotional offers or plans on paper, sort them according to (e.g.) the amount of the promotion, arrange them on a table, select one of them and write something on it. None of this would present any practical difficulty and none requires anything beyond a pen and paper.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer, discussed below, nothing is done beyond what was set forth above, which does not go beyond using a generic computer as a tool to implement the abstract idea. See MPEP § 2106.05(f).
As the claims only manipulate data related to promotions, locations and the like, they do not improve the “functioning of a computer” or of “any other technology or technical field”. See See MPEP § 2106.05(a). They do not apply the abstract idea “with, or by use of a particular machine”, See MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a “transformation or reduction of a particular article to a different state or thing”, See MPEP § 2106.05(c). First, such data, being intangible, are not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea “in some other meaningful way beyond generally linking [it] to a particular technological environment”, See MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claims is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, do not amount to significantly more than the abstract idea.
The claim includes that a “software application” is “on a mobile device” and has a “camera functionality” and the ability to somehow “determine a location” of the device. These elements are recited at a high degree of generality and the specification and drawings do not meaningfully limit them, such that a generic computer will suffice. It only performs generic computer functions of manipulating data nondescriptly and sharing data with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The type of information being manipulated does not impose meaningful limitations or render the invention less abstract. The claim elements when considered as an ordered combination – a generic computer performing a possibly chronological sequence of abstract steps – do nothing more than when they are analyzed individually.
The dependent claims further do not amount to significantly more than the abstract idea: claims 17 and 18 are simply further descriptive of the type of information being manipulated; claim 19 simply requires nondescript communication with another, unclaimed device.
The claims are not patent eligible. For further guidance please see MPEP § 2106.03 – 2106.07(c) (formerly referred to as the “2019 Revised Patent Subject Matter Eligibility Guidance”, 84 Fed. Reg. 50, 55 (7 January 2019)).
Conclusion
As no rejection is made herein under 35 U.S.C. § 102 or 103, a brief review of the state of the art at the relevant time is in order. Lee (U.S. Publication No. 2015/0269599) discloses a cash reward system [title] in which a user may use a “smart phone camera” to scan a “QR” code. [0004] This may be linked to “promotional materials”. [0005]
Misra et al. (U.S. Patent No. 10,040,628) discloses a method of assisting in replacement of an item. [title] It may “capture images of items” stored in “inventory areas”. [Col. 4, lines 37-38] It may then “process images of items to identify items” and “determine a location of items”. [Col. 6, lines 49-50] It may then present an award such as a “discount” or “coupon”. [Col. 10, line 9]
Talluri et al. (U.S. Publication No. 2014/0372218) disclose a system for placing promotional elements in a particular layout. [title] The information displayed may be based on “display ranks” of “promotional elements” which may be based on an “amount or percentage of users that chose to interact with” the element. [0004]
However, none of these, alone or if combined (assuming it would be obvious to combine them) teach or suggest every limitation of the present invention, in particular the promotional-size based dialogue of the present claims, combined with the other claimed limitations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached on (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
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