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 .
Disposition of Claims
Claims 1-21 are pending in the instant application. No claims have been added. Claims 2-3, 5, 11, 14-19, and 21 have been cancelled. Claims 1, 4, 6-9, 12, 13, and 20 have been amended. The rejection of the pending claims is hereby made final.
Response to Remarks
35 USC 103
The examiner has considered Applicant’s arguments and amendments regarding the rejection of the pending claims under 35 USC 103 in view of the applied prior art of record and finds them to be persuasive. The rejection of the pending claims under 35 USC 103 in view of the applied prior art of record is hereby withdrawn.
35 USC 101
The examiner has considered Applicant’s arguments and amendments
regarding the rejection of the pending claims under 35 USC 101, but does not find said arguments and amendments to be persuasive. The claims must qualify as patent eligible subject matter. i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013). See MPEP § 2106.04 for detailed information on the judicial exceptions. Because abstract ideas, laws of nature, and natural phenomenon "are the basic tools of scientific and technological work", the Supreme Court has expressed concern that monopolizing these tools by granting patent rights may impede innovation rather than promote it. See Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980; Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012). However, the Court has also emphasized that an invention is not considered to be ineligible for patenting simply because it involves a judicial exception. Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1980-81 (citing Diamond v. Diehr, 450 U.S. 175, 187, 209 USPQ 1, 8 (1981)). See also Thales Visionix Inc. v. United States, 850 F.3d. 1343, 1349, 121 USPQ2d 1898, 1902 (Fed. Cir. 2017) ("That a mathematical equation is required to complete the claimed method and system does not doom the claims to abstraction."). Accordingly, the Court has said that integration of an abstract idea, law of nature or natural phenomenon into a practical application may be eligible for patent protection. See, e.g., Alice, 573 U.S. at 217, 110 USPQ2d at 1981 (explaining that "in applying the §101 exception, we must distinguish between patents that claim the ‘buildin[g] block[s]’ of human ingenuity and those that integrate the building blocks into something more" (quoting Mayo, 566 U.S. at 89, 110 USPQ2d at 1971) and stating that Mayo "set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts"); Mayo, 566 U.S. at 80, 84, 101 USPQ2d at 1969, 1971. The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself, or a patent-eligible application of the judicial exception. See Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is referred to as the Mayo test or the Alice/Mayo test, is discussed in further detail in subsection III, below. The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). Id. If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. Id. citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966). The Supreme Court has described the second part of the test as the "search for an 'inventive concept'". Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966). The examiner submits that the broadest reasonable interpretation of the claim must be established and considered in the determination of patent eligibility under 35 USC 101.
In considering the pending claims, the examiner submits the following: in considering the claims, the examiner has taken into consideration the state of the art at the time of filing, consistent with Applicant’s specification, as originally filed. Given its broadest reasonable interpretation, consistent with Applicant’s specification, claim 1 recites a method for processing order information. The examiner further submits that the language of the system as recited in independent claims 12 and 13, respectively, recite language that is similar to that recited in the method of claim 1, so that the 101 analysis as applied to claim 1 similarly applies to claims 12 and 13 at least based on their resemblance to claim 1. Based on the broadest reasonable interpretation of claim 1, it is clear that the pending claim 1 and similarly recited independent claims 12 and 13 fall into the judicial exception category of certain methods of organizing human activity, which includes fundamental economic principles or practices including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II). The aforementioned categorization is evidenced at least in the steps of: “process order information…and deliver at least one designated item from the at least one delivery warehouse to the designated address” (claim 1 of the pending application) which constitutes a commercial interaction, and therefore places the pending claim into the category of certain methods of organizing human activity. If the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One. The claim then requires further analysis in Step 2A Prong Two, to determine whether any additional elements in the claim integrate the abstract idea into a practical application, see MPEP § 2106.04(d). The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982.
The Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible). See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 80, 84, 101 USPQ2d 1961, 1968-69, 1970 (2012). The Federal Circuit has distinguished between claims that are ‘‘directed to’’ a judicial exception (which require further analysis to determine their eligibility) and those that are not (which are therefore patent eligible), e.g., claims that improve the functioning of a computer or other technology or technological field. See Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972), MPEP 2106.06(b) (summarizing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 120 USPQ2d 1091 (Fed. Cir. 2016), and other cases that were eligible as improvements to technology or computer functionality instead of being directed to abstract ideas). Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One, examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
The Supreme Court and Federal Circuit have identified a number of considerations as relevant to the evaluation of whether the claimed additional elements demonstrate that a claim is directed to patent-eligible subject matter. The list of considerations here is not intended to be exclusive or limiting. Additional elements can often be analyzed based on more than one type of consideration and the type of consideration is of no import to the eligibility analysis. Additional discussion of these considerations, and how they were applied in particular judicial decisions, is provided in MPEP § 2106.05(a) through (c) and MPEP § 2106.05(e) through (h).
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
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• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).
A claim reciting a judicial exception is not directed to the judicial exception if it also recites additional elements demonstrating that the claim as a whole integrates the exception into a practical application. One way to demonstrate such integration is when the claimed invention improves the functioning of a computer or improves another technology or technical field. The application or use of the judicial exception in this manner meaningfully limits the claim by going beyond generally linking the use of the judicial exception to a particular technological environment, and thus transforms a claim into patent-eligible subject matter. Such claims are eligible at Step 2A because they are not "directed to" the recited judicial exception.
The courts have not provided an explicit test for this consideration, but have instead illustrated how it is evaluated in numerous decisions. These decisions, and a detailed explanation of how examiners should evaluate this consideration are provided in MPEP § 2106.05(a). In short, first 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. 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. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel").
The examiner notes that the disclosure as originally filed does not disclose any specialized hardware or computing device, but a plurality of generic hardware components, all of which were well known and understood within the art at the time of filing. One of ordinary skill in the art would recognize that Applicant’s specification fails to identify or explicitly disclose any improvement in the function of a computer or any other technology or technological field, as evidenced by the aforementioned citations from Applicant’s specification. Applicant’s specification merely combines generic, well understood computing elements in the performance of the well understood, routine, and conventional steps (see at least the language of claim 1 and similarly recited independent claims 12 and 13). Claims 6-10, and 20 fail to cure the deficiencies under 35 USC 101 of the claims from which they depend, and are similarly rejected for the same reasoning as applied to independent claim 1, and similarly recited claims 12 and 13.
For the aforementioned reasoning, the claims are found to be ineligible, and the rejection of the pending claims in view of 35 USC 101 is hereby maintained and made final.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 4, 6-10, 12, 13, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more.
Under 2106.03 Eligibility step 1, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claims 1-10 and 14-17 are directed to a method, claims 12 and 18-21 are directed to a computer device, and claim 12 is directed towards a computer storage medium, each of which falls within one of the four statutory categories of inventions (process/apparatus). Accordingly, the claims will be further analyzed under 2106.04 Eligibility step 2A:
Under 2106.04 Eligibility step 2A, it must be considered whether the claims are “directed to” a judicial exception by referring to the groupings of subject matter. 2106.04, certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Regarding representative independent claim 1, the claim sets forth a method of processing order information, in the following limitations:
A computer-implemented method of processing an order information, comprising: acquiring the order information, wherein the order information comprises: an information of a designated address and an information of at least one designated item; acquiring a warehouse information, wherein the warehouse information comprises: an inventory information of a plurality of warehouses and a delivery information of the plurality of warehouses; and processing the order information and the warehouse information by using a pre- built optimization model, so as to determine at least one warehouse from the plurality of warehouses as at least one delivery warehouse according to an output result of the optimization model, so that a sum of a first numerical value and a second numerical value is less than or equal to a predetermined value; and delivering at least one designated item from the at least one delivery warehouse to the designated address, wherein the first numerical value is used to characterize a delivery duration taken to deliver the at least one designated item from the at least one delivery warehouse to the designated address, and the second numerical value is used to characterize a delivery fee for delivering the at least one designated item from the at least one delivery warehouse to the designated address, wherein the information of each designated item in the at least one designated item comprises: an identification information of each designated item and a demand number for each designated item; the inventory information of each warehouse in the plurality of warehouses comprises: an identification information of items stored in each warehouse and a storage number of each item in each warehouse; and the delivery information of each warehouse in the plurality of warehouses comprises: a desired delivery duration of each warehouse for a plurality of addresses and a desired delivery fee of each warehouse, wherein the optimization model comprises a first sub-model; the processing the order information and the warehouse information by using a pre- built optimization model comprises: by using the first sub-model, when at least one first-category item exists in the at least one designated item, for each first-category item, determining, from the plurality of warehouses, first candidate warehouses storing the first-category item and having a storage number of the first-category item greater than or equal to the demand number for the first-category item according to the identification information of the first-category item and the demand number for the first-category item, and determining, from the first candidate warehouses, a first candidate warehouse having a shortest desired delivery duration to the designated address, as a pending warehouse for the first- category item; and determining the pending warehouse for each of the at least one first-category item as an output result of the first sub-model, wherein the optimization model further comprises a second sub-model, the second sub-model is an integer programming model, an objective function of the integer programming model characterizes the sum of the first numerical value and the second numerical value, and the integer programming model comprises at least one constraint condition; and the processing the order information and the warehouse information by using a pre- built optimization model further comprises: when the pending warehouse for each of the at least one first-category item is not the same warehouse, determining at least one warehouse allocation method based on the at least one constraint condition, the order information and the warehouse information, wherein each warehouse allocation method comprises: a delivery relationship between the at least one first- category item and at least one of the plurality of warehouses; determining a value range of the first numerical value and the second numerical value based on the at least one warehouse allocation method; calculating a value of the objective function based on the value range of the first numerical value and the second numerical value; and determining a warehouse allocation method minimizing the value of the objective function as an output result of the second sub-model.
The above-recited limitations set forth an arrangement to optimize warehouse usage to deliver packages to delivery destinations. This arrangement amounts to certain methods of organizing human activity associated with sales activities and commercial interactions. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts.
In Step 2A, several additional elements were identified as additional limitations:
Computer device (Claim 12-21);
These additional limitations, including the limitations in the independent claims and dependent claims, do not amount to an inventive concept because they were already analyzed under Step 2A and did not amount to a practical application of the abstract idea.
Under 2106.04 Eligibility step 2A (prong 2), the next step in the eligibility analysis looks at whether the abstract idea is integrated into a practical application. This requires an additional element or combination of additional elements in the claims to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
In this instance, the claims recite the additional elements such as:
Computer device (Claim 12-21);
However, these elements do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
In addition, the recitations above are recited at a high level of generality and also do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Independent claims 12, and 13 and dependent claims 4, 6-10, and 20 also fail to recite elements which amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. For example, independent claims and dependent claims are directed to the abstract idea itself and do not amount to an integration according to any one of the considerations above.
Step 2B is the next step in the eligibility analyses and evaluates whether the claims recite additional elements that amount to an inventive concept (i.e., “significantly more”) than the recited judicial exception. According to Office procedure, revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be re-evaluated in Step 2B because the answer will be the same.
For these reasons, the claims are rejected under 35 U.S.C. 101.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TALIA F CRAWLEY/Primary Examiner, Art Unit 3627
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