DETAILED ACTION
Status of Claims
Claims 1-3, 10-12, and 19-23 submitted on 07/09/2025 are pending and have been examined. Claims 1-3, 10-12, and 20-22 have been amended. Claims 4-9 and 13-18 have been cancelled.
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
Acknowledgement is made of applicant’s claim for foreign priority under 35 U.S.C. 119(a)-(d). The certified copy has been filed in parent application No. JP2021-165555, filed on 10/07/2021.
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 1-3, 10-12, and 19-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 1
Claims 1-3, 20, 21, and 23 are directed to a machine, claims 10-12, and 22 are directed to a process, and claim 19 is directed to an article of manufacture (see MPEP 2106.03).
Step 2A, Prong 1
Claim 1, taken as representative, recites at least the following limitations that recite an abstract idea:
an order placement system comprising:
a user who orders a product including a vehicle part; and
for accepting an order for the product,
the comprising:
storing a part list and an order record storing a record of order for a product of the past, the part list including at least an identifier, product number and order restriction information, the identifier identifying each of a plurality of vehicles, the product number being associated with each identifier and identifying each of a plurality of products that is compatible with each of the plurality of vehicles, the order restriction information being associated with each product number and indicating at least whether there is an order restriction regarding each of the plurality of products, the order record including at least an identifier, product number and an owner identifier, the identifier identifying a vehicle in which a product that was ordered is used, the product number being associated with each identifier of the order record and identifying the product that was ordered, the owner identifier being associated with each identifier of the order record and identifying an owner of a vehicle; and
transmitting an identifier of a target vehicle, the identifier of the target vehicle being specified by the user,
receiving the identifier of the target vehicle, the identifier of the target vehicle being transmitted;
acquiring an owner identifier identifying a current owner of the target vehicle, the current owner being the user;
acquiring a list of products from the part list, the list of products including at least the part number of the part list corresponding to the identifier of the part list that is the same as the identifier of the target vehicle;
determining whether or not an order restriction is imposed on each of a plurality of products that is included in the list of products based on the order restriction information, each of the plurality of products that is included in the list of products being identified by the product number of the part list corresponding to the identifier of the part list that is the same as the identifier of the target vehicle;
in a case where the order restriction is imposed on at least one of the plurality of products included in the list of products, determining, for each product on which the order restriction is imposed, whether or not the order record includes an identifier that is the same as the identifier of the target vehicle and whether or not the order record includes product number that is the same as the product number of a product on which the order restriction is imposed;
in a case where the order record includes the identifier that is the same as the identifier of the target vehicle and the order record includes the product number that is the same as the product number of the product on which the order restriction is imposed, determining whether or not the order record includes an owner identifier that is the same as the owner identifier of the current owner;
in a case where the order record includes the owner identifier that is the same as the owner identifier of the current owner, determining not to accept an order for a first product at least including a sticker displaying that a predetermined vehicle part is upgraded, the first product being one of products on which the order restriction is imposed;
in at least one of the following cases: the order record does not include the identifier that is the same as the identifier of the target vehicle; the order record does not include the product number that is the same as the product number of the product on which the order restriction is imposed; and the order record includes the identifier that is the same as the identifier of the target vehicle, the order record includes the product number that is the same as the product number of the product on which the order restriction is imposed, and the order record does not include the owner identifier that is the same as the owner identifier of the current owner, determining to accept the order for the first product;
creating a list of one or more of products being compatible with the target vehicle based on the list of products, the list of one or more of products including the first product for which placement of the order is determined not to be accepted, and a text message indicating a reason why the placement of the order for the first product is determined not to be accepted, the text message stating that there is a past record of order by the current owner for a product with a product number that is the same as a product number of the first product; and
transmitting the list of one or more of products and the text message,
receiving the list of one or more of products and the text message, the list of one or more of products and the reason being transmitted from the; and
making the display the list of one or more of products in which the first product for which the placement of the order is determined not to be accepted is displayed while the first product for which the placement of the order is determined not to be accepted is made unselectable, and the text message indicating the reason why the placement of the order for the first product is determined not to be accepted as a reason why the first product is made unselectable.
The above limitation, under its broadest reasonable interpretation, falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in MPEP 2106.04(a)(2)(II), in that it recites a commercial interaction. Claims 10 and 20 recites similar limitations as claim 1.
Thus, under Prong 1 of Step 2A, claims 1, 10, and 20 recite an abstract idea.
Step 2A, Prong 2
Claim 1 includes the following additional elements that are bolded:
an order placement system comprising:
a terminal associated with a user who orders a product including a vehicle part; and
an information processing apparatus for accepting an order for the product,
the terminal comprising:
a first communication interface;
a touch panel display; and
a first controller circuitry,
the information processing apparatus comprising:
a second communication interface;
a memory storing a part list and an order record storing a record of order for a product of the past, the part list including at least an identifier, product number and order restriction information, the identifier identifying each of a plurality of vehicles, the product number being associated with each identifier and identifying each of a plurality of products that is compatible with each of the plurality of vehicles, the order restriction information being associated with each product number and indicating at least whether there is an order restriction regarding each of the plurality of products, the order record including at least an identifier, product number and an owner identifier, the identifier identifying a vehicle in which a product that was ordered is used, the product number being associated with each identifier of the order record and identifying the product that was ordered, the owner identifier being associated with each identifier of the order record and identifying an owner of a vehicle; and
a second controller circuitry,
the first controller circuitry executing:
transmitting an identifier of a target vehicle to the information processing apparatus via the first communication interface, the identifier of the target vehicle being specified by the user via the touch panel display,
the second controller circuitry executing:
receiving the identifier of the target vehicle via the second communication interface, the identifier of the target vehicle being transmitted from the terminal;
acquiring an owner identifier identifying a current owner of the target vehicle, the current owner being the user;
acquiring a list of products from the part list, the list of products including at least the part number of the part list corresponding to the identifier of the part list that is the same as the identifier of the target vehicle;
determining whether or not an order restriction is imposed on each of a plurality of products that is included in the list of products based on the order restriction information, each of the plurality of products that is included in the list of products being identified by the product number of the part list corresponding to the identifier of the part list that is the same as the identifier of the target vehicle;
in a case where the order restriction is imposed on at least one of the plurality of products included in the list of products, determining, for each product on which the order restriction is imposed, whether or not the order record includes an identifier that is the same as the identifier of the target vehicle and whether or not the order record includes product number that is the same as the product number of a product on which the order restriction is imposed;
in a case where the order record includes the identifier that is the same as the identifier of the target vehicle and the order record includes the product number that is the same as the product number of the product on which the order restriction is imposed, determining whether or not the order record includes an owner identifier that is the same as the owner identifier of the current owner;
in a case where the order record includes the owner identifier that is the same as the owner identifier of the current owner, determining not to accept an order for a first product at least including a sticker displaying that a predetermined vehicle part is upgraded, the first product being one of products on which the order restriction is imposed;
in at least one of the following cases: the order record does not include the identifier that is the same as the identifier of the target vehicle; the order record does not include the product number that is the same as the product number of the product on which the order restriction is imposed; and the order record includes the identifier that is the same as the identifier of the target vehicle, the order record includes the product number that is the same as the product number of the product on which the order restriction is imposed, and the order record does not include the owner identifier that is the same as the owner identifier of the current owner, determining to accept the order for the first product;
creating a list of one or more of products being compatible with the target vehicle based on the list of products, the list of one or more of products including the first product for which placement of the order is determined not to be accepted, and a text message indicating a reason why the placement of the order for the first product is determined not to be accepted, the text message stating that there is a past record of order by the current owner for a product with a product number that is the same as a product number of the first product; and
transmitting the list of one or more of products and the text message to the terminal via the second communication interface,
the first controller circuitry further executing:
receiving the list of one or more of products and the text message via the first communication interface, the list of one or more of products and the reason being transmitted from the information processing apparatus; and
making the touch panel display display the list of one or more of products in which the first product for which the placement of the order is determined not to be accepted is displayed while the first product for which the placement of the order is determined not to be accepted is made unselectable, and the text message indicating the reason why the placement of the order for the first product is determined not to be accepted as a reason why the first product is made unselectable.
Claims 10 and 20 include the same additional elements as claim 1. Additionally, claim 10 includes additional elements such as, an information processing method performed by an order placement system comprising a first computer associated with a user who orders a product including a vehicle part, and a second computer configured to accept an order for the product.
The additional elements recited in claims 1, 10, and 20 merely invoke such elements as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment of terminals and computers (see MPEP 2106.05(f) and MPEP 2106.05(h). These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration (see ¶0018, ¶¶0032-0048, and ¶0053).
As such, under Prong 2 of Step 2A, when considered both individually and as a whole, the additional elements do not integrate the judicial exception into a practical application and, thus, claims 1, 10, and 20 are directed to an abstract idea.
Step 2B
As noted above, while the recitation of the additional elements in independent claims 1, 10, and 20 are acknowledged, claims 1, 10, and 20 merely invoke such additional elements as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment (see MPEP 2106.05(f) and MPEP 2106.05(h)).
Even when considered as an ordered combination, the additional elements of claim 1, 10, and 20 do not add anything that is not already present when they are considered individually. Therefore, under Step 2B, there are no meaningful limitations in claims 1, 10, and 20 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (see MPEP 2106.05).
As such, independent claims 1, 10, and 20 are ineligible.
Dependent claims 2, 3, 11, and 12 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. More specifically, dependent claims 2, 3, 11, and 12 merely further define the abstract limitations of claims 1, 10, and 20 or provide further embellishments of the limitations recited in independent claims 1, 10, and 20. Claims 2, 3, 11, and 12 do not introduce any further additional elements. Thus, dependent claims 2, 3, 11, and 12 are ineligible.
Furthermore, it is noted that certain dependent claims recite additional elements supplemental to those recited in independent claims 1, 10, and 20: a non-transitory storage medium (claim 19), generating order data for placing an order (claims 21-23). However, these elements do not integrate the abstract idea into a practical application because they merely amount to using a computer to apply the abstract idea to a particular technological environment or field of use and thus do not act to integrate the abstract idea into a practical application of the abstract idea. Additionally, the additional elements do not amount to significantly more because they merely amount to using a computer to apply the abstract idea and amount to no more than a general link of the use of the abstract idea to a particular technological environment.
Thus, dependent claims 19 and 21-23 are ineligible.
Subject Matter Free of Prior Art
Claims 1-3, 10-12, and 19-23 are determined to have overcome the prior art of rejection and are free of prior art, however the claims 1-3, 10-12, and 19-23 remain rejected under 35 USC 101, as set forth above.
Taking amended claim 1 as a representative independent claim, the claims as amended are found to overcome the prior art rejection for the reasons set forth below.
Claim 1 now recites the additional claimed features of an owner identifier, the owner identifier being associated with each identifier of the order record and identifying an owner of a vehicle, acquiring an owner identifier identifying a current owner of the target vehicle, the current owner being the user, determining whether or not the order record includes an owner identifier that is the same as the owner identifier of the current owner; in a case where the order record includes the owner identifier that is the same as the owner identifier of the current owner, and the order record includes the identifier that is the same as the identifier of the target vehicle, the order record includes the product number that is the same as the product number of the product on which the order restriction is imposed, and the order record does not include the owner identifier that is the same as the owner identifier of the current owner, and a text message indicating a reason why the placement of the order for the first product is determined not to be accepted, the text message stating that there is a past record of order by the current owner for a product with a product number that is the same as a product number of the first product; transmitting the text message to the terminal, receiving the list of one or more of products and the text message via the first communication interface, the text message indicating the reason why the placement of the order for the first product is determined not be accepted.
The closest prior art was found to be as follows:
Lakshmanan et al., hereinafter, Lakshmanan (US 2009/0125323 A1 [previously cited]) recites (Figs. 8, 9, 14C, 15, ¶¶0063-0071[the indication that a valid card was swiped is received by the non-financial transaction processor. In addition, the non-financial transaction processor may receive, from the financial transaction processor, additional information about the transaction and/or the swiped card, such as card number, card holder name, expiration date, security code, product code (e.g., specifying the item and/or quantity ordered), etc.… In step 803, the non-financial transaction processor determines whether the card credentials are valid. Determining whether the card credentials are valid may include looking up the expiration date and/or security code in a card data repository. If the card credentials are determined to be valid, the routine proceeds to step 804, else it transmits a transaction rejection code to the point-of-sale terminal and returns to step 800…], ¶0089-0114[FIG. 14C illustrates a reporting screen 1420 that is similar to reporting screen 1410 described with reference to FIG. 14B. Reporting screen 1420 includes a transaction report 1422 that describes multiple transactions related to multiple different cards… The physician data may be displayed, for example, in response to a user selection of an appropriate link in navigation area 1423 of FIG. 14C.]).
Sethi et al., hereinafter, Sethi (US 2016/0078403 A1 [previously cited]) recites (Fig. 2; ¶¶0035-0043[recommend a list of parts required to repair a malfunctioning vehicle, find the recommended parts available for purchase via the Internet, retrieve information on such recommended parts, arrange the information in a format most useable to a technician 110, and allow the technician 110 to purchase or otherwise procure such recommended parts to facilitate repair of a vehicle…Recommendation and procurement application 102 also includes parts recommendation logic 206 to generate a parts catalog of all parts compatible with a specific vehicle 106 based on the vehicle VIN… the parts recommendation logic 206 can use one or more recommendation rules defined in recommendation rules database 212 to filter the identified parts and to recommend to a technician 110 one or more parts that can be used for the specific automobile having a given year, make, model, condition, and so on.] in view of ¶¶0061-0072).
Tone et al., hereinafter, Tone (US 2016/0321725 A1 [previously cited]) recites (¶¶0043-0046 teaches a vehicle addendum indicating that a vehicle part is upgraded; examiner notes that an addendum is comparable to a sticker).
Gallen et al., hereinafter, Gallen (US 2013/0073430 A1 [previously cited]) recites (¶0027[GGS (Gift Giving System) may track the gifts that have been sent to a particular recipient. GGS may prevent the same gift from being sent to the same recipient by multiple consumers. For example, GGS may identify a list of popular items for a recipient in a particular age range and location. However, GGS may gray out or otherwise visually indicate that certain items have already been sent to the recipient]).
Masuko et al., hereinafter, Masuko (US 2015/0019346 A1) recites (¶¶0055-0089[The purchase-history storage unit 12 stores therein purchase history information indicating product purchase histories of a user. The purchase history information includes information indicating products that the user purchased in the past. As depicted in FIG. 4, the purchase history information includes a purchase history ID that is an identifier for identifying a purchase history, information (product ID, product name) on a purchased product, and a user ID that is an identifier for identifying a user who purchased the product. The information included in the purchase history information is not limited to the example in FIG. 4, and may include a product category, for example… The transmission unit 17 transmits the "image A" to the user terminal Tu. Thus, the image that is posted by a model user and in which the product requested by the user and the product that the user purchased in the past are coordinated is displayed on the user terminal Tu.]).
Therefore, none of the cited references disclose or render obvious each and every feature of the claimed invention and the claimed invention is determined to be free of the prior art. Although individually the claimed features could be taught, any combination of references would teach the claimed limitations using a piecemeal analysis, since references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The examiner emphasizes that it is the interrelationship of the limitations that renders these claims free of the prior art/additional art.
Therefore, it is hereby asserted by the Examiner that, in light of the above, that the claims 1-20 are free of prior art as the references do not anticipate the claims and do not render obvious any further modification of the references to a person of ordinary skill in art.
Response to Arguments
Applicant’s arguments on page 17 of the remarks filed 07/09/2025, with respect to the previous 35 USC § 112b rejections have been fully considered and are found to be persuasive in light of the claim amendments.
Accordingly, the previous 112b rejections have been withdrawn.
Applicant’s arguments on pages 17-21 of the remarks filed 07/09/2025, with respect to the previous 35 USC § 101 rejections have been fully considered but are not persuasive.
Applicant argues on pages 17-21 of the remarks that the amended claim is not directed to an abstract idea. Examiner respectfully disagrees. According to the MPEP 2106.04, the question of whether a claim is “directed to” a judicial exception in Step 2A is now evaluated using a two-prong inquiry. Prong One asks if the claim “recites” an abstract idea, law of nature, or natural phenomenon. Under that prong, the mere inclusion of a judicial exception such as a method of organizing human activity in a claim means that the claim “recites” a judicial exception (see MPEP 2106.04 [“The mere inclusion of a judicial exception such as a mathematical formula (which is one of the mathematical concepts identified as an abstract idea in MPEP § 2106.04(a)) in a claim means that the claim "recites" a judicial exception under Step 2A Prong One.”]). Additionally, MPEP 2106.04 instructs examiners to refer to the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2) (i.e., mathematical concepts, certain methods of organizing human activities, and mental processes) in order to identify abstract ideas. As noted above and in the previous office action, the claims recite ordering vehicle parts. This is an abstract idea because it is a concept of business relations which makes it a method of organizing human activity (i.e., one of the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2)).
Receiving the identifier of the target vehicle, acquiring an owner identifier identifying a current owner of the target vehicle, acquiring a list of products from the part list, determining whether or not an order restriction is imposed on each of a plurality of products that is included in the list of products, in a case where the order restriction is imposed on at least one of the plurality of products included in the list of products, in a case where the order record includes the identifier that is the same as the identifier of the target vehicle, in a case where the order record includes the owner identifier that is the same as the owner identifier of the current owner, in at least one of the following cases: the order record does not include the identifier that is the same as the identifier of the target vehicle, creating a list of one or more of products being compatible with the target vehicle based on the list of products, transmitting the list of one or more of products and the text message, receiving the list of one or more of products and the text message, making the display the list of one or more of products in which the first product for which the placement of the order is determined not to be accepted is displayed as recited in amended claim 1 are all part of the abstract idea and mere execution of these steps on generic components such as an information processing apparatus, communication interfaces, touch panel displays, controller circuitries, and terminals does not overcome the rejection. Refer to the applicant’s specification ¶0018, ¶¶0032-0048, and ¶0053 and Fig. 10 which describes these components at a high level and as generic.
Applicant argues on pages 19-21 that the amended claim 1 represents an improvement to a technological field and integrates the judicial exception into a practical application. Examiner respectfully disagrees. Determining whether or not an order record includes an owner identifier, determining to accept an order for a product including a sticker, determining not to accept an order for a product, creating a list of products being compatible with a target vehicle and transmitting the list to a user who orders the product is directed to the argued business task and is not a technical improvement. Merely applying the above limitations on generic computers does not overcome the 101 rejections. These components are described at a high level and as generic in ¶0018, ¶¶0032-0048, and ¶0053 and Fig. 10 of the instant specification.
Furthermore, the additional elements of Applicant’s claims do not pertain to an improvement to the functioning of a computer or to another technology (see MPEP 2106.04(a) and 2106.05(a)). The argued additional components of the “information processing apparatus”, “communication interfaces”, “touch panel displays”, “controller circuitries”, and “terminals” are generic components, see also applicant’s specification ¶0018, ¶¶0032-0048, and ¶0053 and Fig. 10 where these additional elements are described at a high level and as being generic. The mere execution of the abstract idea on the generic computing components is not directed to improving the existing technological process requiring the generic components to operate in an unconventional manner to achieve an improvement in computer functionality or requiring the non-conventional and non-generic arrangement of known, conventional pieces to improve a technical process, see MPEP 2106. The additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond linking the use of the judicial exception to a particular technological environment, see MPEP 2106.04(d)(I). As currently recited, the instant claims are directed to improving the argued business task of receiving the identifier of the target vehicle, acquiring an owner identifier identifying a current owner of the target vehicle, acquiring a list of products from the part list, determining whether or not an order restriction is imposed on each of a plurality of products that is included in the list of products, in a case where the order restriction is imposed on at least one of the plurality of products included in the list of products, in a case where the order record includes the identifier that is the same as the identifier of the target vehicle, in a case where the order record includes the owner identifier that is the same as the owner identifier of the current owner, in at least one of the following cases: the order record does not include the identifier that is the same as the identifier of the target vehicle, creating a list of one or more of products being compatible with the target vehicle based on the list of products, transmitting the list of one or more of products and the text message, receiving the list of one or more of products and the text message, making the display the list of one or more of products in which the first product for which the placement of the order is determined not to be accepted is displayed
Accordingly, Examiner maintains that the invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. This judicial exception is not integrated into a practical application. The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus the 35 USC §101 rejections are 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHOORA LADONI whose email is Ahoora.Ladoni@uspto.gov and telephone number is (703) 756-5617. The examiner can normally be reached M-F 0900–1700 ET.
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/AHOORA LADONI/ Examiner, Art Unit 3688
/VICTORIA E. FRUNZI/ Primary Examiner, Art Unit 3689 9/24/2025