DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 6, 2025, has been entered.
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 . 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.
Response to Amendment
Applicant’s amendment and remarks filed on August 6, 2025, are responsive to the office action mailed May 8, 2025. Claims 1-14 were previously pending. Claims 4, 5, and 11-13, have been amended, claims 1-3, 6-10, and 14, have been cancelled, and claims 15-17 are new. Claims 4-5, 11-13, and 15-17, are therefore currently pending and considered in this office action.
Pertaining to rejection under 35 USC 103 in the previous office action
Claims 1-3 and 6-8 were rejected under 35 U.S.C. 103 as being unpatentable over Hlavacek et al. (Paper No. 20240723; US 9,339,084 B2) in view of Agostino (Paper No. 20240723; US 2007/0011173 A1), claims 9 and 10 were rejected under 35 U.S.C. 103 as being unpatentable over Hlavacek et al. (Paper No. 20240723; US 9,339,084 B2) in view of Agostino (Paper No. 20240723; US 2007/0011173 A1) and further in view of Yon et al. (Paper No. 20240723; US 6,507,824 B1), and claim 14 was rejected under 35 U.S.C. 103 as being unpatentable over Hlavacek et al. (Paper No. 20240723; US 9,339,084 B2) in view of Agostino (Paper No. 20240723; US 2007/0011173 A1) and further in view of Dibenedetto et al. (Paper No. 20240723; US 11,562,417 B2). Claims 1-3, 6-10, and 14, have been cancelled, rendering moot all outstanding prior art rejections.
Response to Arguments
Pertaining to rejection under 35 USC 101 in the previous office action
Applicant's arguments filed August 6, 2025, have been fully considered but they are not persuasive. Claims 4, 5, 11-13, and 15-17, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Applicant argues
“Paragraph 7 of the Specification of the present application discloses that an object of the present application is "allowing a user to utilize information on a foot size of another person as a criterion to decide as to whether or not to purchase shoes." Paragraph 25 of the Specification discloses how the object is obtained by "utilizing information on the foot size based on the statistical data or the data of the foot size of the parent or brother, as a criterion to decide," and as a result, "the first embodiment can urge the purchase of shoes at an appropriate timing when the foot size of the user rises to the foot size fitting range of the shoes.” Remarks p.9.
Applicant’s argument refers to the specification for what is merely a description of the abstract idea itself. Applicant argues that the abstract results of the abstract process is a practical application but applicant does not identify any additional element and does not offer any explanation how any such additional element integrates the abstract idea into a practical application. The argument is not persuasive because there is no substantive rationale presented to support a different conclusion.
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 4-5, 11-13, and 15-17, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter) (step 1). If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (step 2A), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception (step 2B). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 189 L. Ed. 2d 296, 2014 U.S. LEXIS 4303, 110 U.S.P.Q.2D (BNA) 1976, 82 U.S.L.W. 4508, 24 Fla. L. Weekly Fed. S 870, 2014 WL 2765283 (U.S. 2014); MPEP 2106.
Step 1:
In the instant case claims 4-5, 11-13, and 15-17, are directed to a machine. All claims are therefore within a statutory category. See MPEP 2106.03, Eligibility Step 1.
Step 2A, Prong 1:
These claims also recite, inter alia,
“at least an age and a foot size measurement value of a user; … calculate a change prediction value of a foot size of the user on a basis of the user data and second user data of a second user that is a family member of the user who is older than the user, the second user data including an age of the second user in the past or present and a foot size measurement value of the second user at the age of the second user in the past or present; and determine a purchase recommendation interval on a basis of the age of the user; … product information including a shoe size; a … unit that determines a purchase-recommended date and a purchase-recommended product of shoes on a basis of the change prediction value and the product information, the purchase-recommended date indicating the age of the user at which the foot size of the user is predicted to reach a foot size fitting range of the shoes; and … displaying, … a screen including: a foot size change diagram based on the foot size measurement value or the change prediction value, the foot size change diagram illustrating the foot size measurement value of the user from a past time point to a present time point and the change prediction value in a period from the present time point to a future time point, a comparison value diagram indicating a comparative value of the age of the second user in the past and present and the foot size measurement value of the second user at the age of the second user in the past and present from the past time point to the future time point, and the purchase-recommended date and the purchase-recommended product, wherein when the purchase-recommended date based on the change prediction value and the product information has not been set until the purchase recommendation interval has elapsed from a previous purchase-recommended date, the purchase recommendation processing unit sets a day on which the purchase recommendation interval elapses, as the purchase-recommended date.” Claim 4.
“user data including at least an age and a foot size measurement value of a user; … calculate a change prediction value of a foot size of the user on a basis of the user data and second user data of a second user that is a family member of the user who is older than the user, the second user data including an age of the second user in the past or present and a foot size measurement value of the second user at the age of the second user in the past or present; a … unit that stores product information including a shoe size; a … unit that determines a purchase-recommended date and a purchase-recommended product of shoes on a basis of the change prediction value and the product information, the purchase-recommended date indicating the age of the user at which the foot size of the user is predicted to reach a foot size fitting range of the shoes; and a … unit that performs processing of displaying, …, a screen including: a foot size change diagram based on the foot size measurement value or the change prediction value, the foot size change diagram illustrating the foot size measurement value of the user from a past time point to a present time point and the change prediction value in a period from the present time point to a future time point, a comparison value diagram indicating a comparative value of the age of the second user in the past and present and the foot size measurement value of the second user at the age of the second user in the past and present from the past time point to the future time point, and the purchase-recommended date and the purchase-recommended product on the display … together with the foot size change diagram and the comparison value diagram, wherein when the foot size was not measured on a measurement-recommended date set at a predetermined interval, on which measurement of the foot size is recommended, the screen display … unit creates the foot size change diagram by replacing the foot size measurement value on the measurement-recommended date on which the foot size was not measured, with the change prediction value.” Claim 5.
“user data including at least an age and a foot size measurement value of a user; … calculate a change prediction value of a foot size of the user on a basis of the user data and second user data of a second user that is a family member of the user who is older than the user, the second user data including an age of the second user in the past or present and a foot size measurement value of the second user at the age of the second user in the past or present; a …unit that stores product information including a shoe size; a … unit that determines a purchase-recommended date and a purchase-recommended product of shoes on a basis of the change prediction value and the product information, the purchase-recommended date indicating the age of the user at which the foot size of the user is predicted to reach a foot size fitting range of the shoes; and a … unit that performs … displaying, … a screen including: a foot size change diagram based on the foot size measurement value or the change prediction value, the foot size change diagram illustrating the foot size measurement value of the user from a past time point to a present time point and the change prediction value in a period from the present time point to a future time point, a comparison value diagram indicating a comparative value of the age of the second user in the past and present and the foot size measurement value of the second user at the age of the second user in the past and present from the past time point to the future time point, and the purchase-recommended date and the purchase-recommended product, wherein the user data includes a designated genre, which is a sports genre designated by the user, the product information includes an application genre, which is a sports genre in which the shoes are used, the purchase recommendation … unit determines the purchase-recommended product by prioritizing the shoes of which the application genre matches the designated genre, from among the shoes fitting to the change prediction value, wherein, when there are no shoes for the application genre that matches the designated genre, the purchase recommendation … unit determines the purchase-recommended product by prioritizing the shoes for a predetermined similar genre, which is a sports genre similar to the designated genre.” Claim 11.
“user data including at least an age and a foot size measurement value of a user; … calculate a change prediction value of a foot size of the user on a basis of the user data and second user data of a second user that is a family member of the user who is older than the user, the second user data including an age of the second user in the past or present and a foot size measurement value of the second user at the age of the second user in the past or present; a … unit that stores product information including a shoe size; a … unit that determines a purchase-recommended date and a purchase-recommended product of shoes on a basis of the change prediction value and the product information, the purchase-recommended date indicating the age of the user at which the foot size of the user is predicted to reach a foot size fitting range of the shoes; and a … unit that performs … displaying, … a screen including: a foot size change diagram based on the foot size measurement value or the change prediction value, the foot size change diagram illustrating the foot size measurement value of the user from a past time point to a present time point and the change prediction value in a period from the present time point to a future time point, a comparison value diagram indicating a comparative value of the age of the second user in the past and present and the foot size measurement value of the second user at the age of the second user in the past and present from the past time point to the future time point, and the purchase-recommended date and the purchase-recommended product on the display unit together with the foot size change diagram and the comparison value diagram, wherein the user data includes a designated genre, which is a sports genre designated by the user, and a designated color designated by the user, the product information includes an application genre, which is a sports genre in which the shoes are used, and a shoe color, … selects a purchase-recommended candidate collection by prioritizing the shoes of which the application genre matches the designated genre, from among the shoes fitting to the change prediction value, and determines the purchase recommended product by prioritizing the shoes of the shoe color matching the designated color from the purchase-recommended candidate collection, and when there are no shoes for the application genre that matches the designated genre, … determines the purchase-recommended product by prioritizing the shoes for a predetermined similar genre, which is a sports genre similar to the designated genre.” Claim 12.
“user data including at least an age and a foot size measurement value of a user; … calculate a change prediction value of a foot size of the user on a basis of the user data and second user data of a second user that is a family member of the user who is older than the user, the second user data including an age of the second user in the past or present and a foot size measurement value of the second user at the age of the second user in the past or present; … product information including a shoe size; … determines a purchase-recommended date and a purchase-recommended product of shoes on a basis of the change prediction value and the product information, the purchase-recommended date indicating the age of the user at which the foot size of the user is predicted to reach a foot size fitting range of the shoes; and … displaying, … a screen including: a foot size change diagram based on the foot size measurement value or the change prediction value, the foot size change diagram illustrating the foot size measurement value of the user from a past time point to a present time point and the change prediction value in a period from the present time point to a future time point, a comparison value diagram indicating a comparative value of the age of the second user in the past and present and the foot size measurement value of the second user at the age of the second user in the past and present from the past time point to the future time point, and the purchase-recommended date and the purchase-recommended product, wherein the user data includes a sporting ability measurement value, which is a measurement result for sporting ability of the user, the product information includes information on a desired sporting ability value indicating the sporting ability coupled with each pair of shoes, and … determines the purchase-recommended product by prioritizing the shoes of which the desired sporting ability value is equal to or less than the sporting ability measurement value, from among the shoes fitting to the change prediction value.” Claim 13.
A careful analysis of the above limitations, each on its own and all together combined, results in the conclusion that each on its own recites an abstract idea and in combination they altogether simply recite a more detailed abstract idea. The recited abstract ideas fall within the groupings of abstract ideas described as mathematical concepts, such as mathematical relationships, mathematical formulas or equations, and mathematical calculations, and certain methods of organizing human activity, for example commercial interactions (including advertising, marketing or sales activities or behaviors). See MPEP 2106.04(a); Eligibility Step 2A1. The claims must therefore be analyzed under the second prong of Eligibility Step 2 (Step 2A2; MPEP 2106.04(d)).
Step 2A, Prong 2:
In order to address prong 2 (MPEP 2106.04(d), Eligibility Step2A2) we must identify whether there are any additional elements beyond the abstract ideas and determine whether those additional elements (if there are any) integrate the abstract idea into a practical application. MPEP 2106.04(d), Eligibility Step 2A2. The additional elements in the present claims are a user data storage unit that stores user data, one or more processors, a product information storage unit, a purchase recommendation processing unit, and a screen display processing unit that performs processing of displaying, and a display unit. These additional elements have been considered individually, in combination, and altogether as a whole together with the functions they perform, e.g., user data storage unit stores user data, the product information storage unit stores product information, and the one or more processors perform all of the substantive functions including calculations of change prediction value of foot size and recommendation of shoes and purchase intervals based on the data by implementation of the a purchase recommendation processing unit, and the screen display processing unit and display unit that displays the results on a screen including a diagram of the measurements and changes. These additional elements do not integrate the judicial exception into a practical application because they amount to no more than mere instructions to apply the exception (diagramming mathematical calculations and displaying the results, and recommending purchase activities) using generic computer components. The claim is almost entirely a recitation of abstract ideas, i.e., mathematical processing of stored data using one or more processors and displaying the results with purchase related recommendations. The substantive process is recited only by descriptions of abstract results of steps without indicating any specific functional acts required to be performed by any particular device. The additional elements do not improve the functioning of any computer or other technology or technical field, they do not apply the judicial exception with or by use of a particular machine, they do not transform or reduce a particular article to a different state or thing, and they fail to apply or use the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP 2106.05.
If the disclosure describes any improvements to the functioning of a computer or to any other technology or technical field this improvement would need to be identifiable as the subject matter appearing in the claims. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies technical improvements realized by the claim over the prior art. The disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. MPEP 2106.05(a). Merely performing an abstract process and outputting results does not improve a computer or other technology.
Claim limitations can integrate a judicial exception into a practical application by implementing the judicial exception with or using it in conjunction with a particular machine or manufacture that is integral to the claim. A general purpose computer that applies a judicial exception by use of generic computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, (Fed. Cir. 2014); MPEP 2106.05(b),(f). There are no particular machines or manufactures identified in the present claims. Claimed elements that are not abstract are identified broadly and generally as applying a method, and the method itself is described only by way of the intended functional results of unidentified activities, without reference to any particular acts or specific functions performed by any particularly identified machine, and without reference to its use in conjunction with any particular item of manufacture.
The claims do not affect the transformation or reduction of a particular article to a different state or thing. Changing to a different state or thing means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Purely mental processes in which data, thoughts, impressions, or human based actions are "changed" are not considered a transformation. MPEP 2106.05(c).
The claims do not apply or use the judicial exception in any other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. As a result the claim as a whole appears to be a drafting effort designed to monopolize the exception. MPEP 2106.05(e),(h).
The additional elements have not been found to integrate the abstract idea into a practical application.
Step 2B:
Although the additional elements have not been found to integrate the abstract idea into a practical application the claims could still be eligible if they recite additional elements that amount to an inventive concept (“significantly more” than the judicial exception). MPEP 2106.05, Eligibility Step 2B.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the sparse additional elements of the claim are mere props supporting instructions to implement an abstract idea or other exception on a computer. MPEP 2106.05(f). The claims invoke computers or other machinery merely as tools to perform an abstract process. Simply adding a general purpose computer or computer components after the fact to an abstract idea does not provide significantly more. MPEP 2106.05(f)(2); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 2015 U.S. App. LEXIS 9721, 115 U.S.P.Q.2D (BNA) 1090 (Fed. Cir. 2015) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”). The elements are recited at a high level of generality, merely implement abstract ideas using generic computers, and fail to present a technical solution to a technical problem created by the use of the surrounding technology. Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself. See Ret. Capital Access Mgmt. Co. v. U.S. Bancorp, 611 Fed. Appx. 1007, 2015 U.S. App. LEXIS 14351 (Fed. Cir. 2015) (“It may be very clever; it may be very useful in a commercial context, but they are still abstract ideas,” said Circuit Judge Alan Lourie.). MPEP 2106.05(h). No technical problem is indicated and the claims are not directed to a technical solution to such a problem. The claims merely recite an abstract process and identify generic computer components to “apply it”.
Finally, it is reiterated that the remaining dependent claims (claim 15-17) do not contribute any additional elements other than those already discussed and do not add "significantly more" to establish eligibility because they merely recite additional abstract ideas that further identify data comprising the abstract idea. A more detailed abstract idea is still abstract. PricePlay.com, Inc. v. AOL Adver., Inc., 627 Fed. Appx. 925, 2016 U.S. App. LEXIS 611, 2016 WL 80002 (Fed. Cir. Jan. 7, 2016) (in addressing a bundle of abstract ideas stacked together during oral argument, U.S. Circuit Judge Kimberly Moore said, "All of these ideas are abstract…. It’s like you want a patent because you combined two abstract ideas and say two is better than one.").
All of the above leads to the conclusion that additional claim elements do not provide meaningful limitations to transform the claimed subject matter into significantly more than an abstract idea. MPEP 2106.05; Eligibility Step 2B. As a result the claims are rejected under 35 USC 101 as being directed to non-statutory subject matter because they recite an abstract idea without being directed to a practical application, and they do not amount to significantly more than the abstract idea. MPEP 2106.05, supra..
The preceding analysis applies to all statutory categories of invention. Accordingly, claims 4-5, 11-13, and 15-17, are rejected as ineligible for patenting under 35 USC 101 based upon the same analysis.
Potentially Allowable Subject Matter
Claims 4-5, 11-13, and 15-17, would be allowable if rewritten to overcome the rejection under 35 U.S.C. 101 set forth in this Office action.
Claim 4 recites a combination of elements not found in the prior art. Specifically, this claim recites:
“…when the purchase-recommended date based on the change prediction value and the product information has not been set until the purchase recommendation interval has elapsed from a previous purchase-recommended date, the purchase recommendation processing unit sets a day on which the purchase recommendation interval elapses, as the purchase-recommended date.”
Claim 5 recites a combination of elements not found in the prior art. Specifically, this claim recites:
“…when the foot size was not measured on a measurement-recommended date set at a predetermined interval, on which measurement of the foot size is recommended, the screen display processing unit creates the foot size change diagram by replacing the foot size measurement value on the measurement-recommended date on which the foot size was not measured, with the change prediction value...”
Claims 11 and 12 recite a combination of elements not found in the prior art. Specifically, these claims recite:
“…when there are no shoes for the application genre that matches the designated genre, the purchase recommendation processing unit determines the purchase-recommended product by prioritizing the shoes for a predetermined similar genre, which is a sports genre similar to the designated genre.”
Claim 13 recites a combination of elements not found in the prior art. Specifically, this claim recites:
“…the user data includes a sporting ability measurement value, which is a measurement result for sporting ability of the user, the product information includes information on a desired sporting ability value indicating the sporting ability coupled with each pair of shoes, and the purchase recommendation processing unit determines the purchase-recommended product by prioritizing the shoes of which the desired sporting ability value is equal to or less than the sporting ability measurement value, from among the shoes fitting to the change prediction value.”
The most closely applicable prior art has been previously introduced and distinguished from claims 4-5 and 11-13 as noted. The most closely applicable prior art references not previously introduced are Carbajo et al. (Pub. No. US 2024/0362698 A1), Sweitzer et al. (Pub. No. US 2009/0094138 A1), Xia et al. (CN111626818A), and Kagami et al. (Patent No. US 11,419,390 B2).
Carbajo teaches using scanned images of user's foot to generate a 3D foot profile used with user profile to predict growth pattern and recommend footwear size but does not disclose, anticipate or fairly and reasonably render obvious the limitations identified above. Sweitzer teaches anticipating children's clothing and footwear size extended into the future based on measurements of the subject over time but does not disclose, anticipate or fairly and reasonably render obvious the limitations identified above, Xia teaches using information about the child, foot, and shoe, measurements, and age, over time to match child's next shoe size with the time the child will need the shoe for notification to parents but does not disclose, anticipate or fairly and reasonably render obvious the limitations identified above, and Kagami teaches suggesting time for replacement of shoes for a user and predicts based on growth curve of the individual but does not disclose, anticipate or fairly and reasonably render obvious the limitations identified above.
The closest non-patent literature document is the previously discussed reference Linden et al. (Paper No. 20240723; non-patent literature titled “Amazon.com Recommendations Item-to-Item Collaborative Filtering”). Linden discloses how Amazon uses Item-to-Item Collaborative Filtering to make product recommendations, but does not teach, suggest, disclose, anticipate or fairly and reasonably render obvious the limitations identified above.
In light of the above and examiner’s overall review of the prior art it is examiner’s conclusion that the body of prior art currently known to the examiner does not alone or in combination disclose, anticipate, or otherwise fairly and reasonably render obvious the above noted features of the present method. It should be noted that this conclusion is based on the presence of all claimed features as they operate in conjunction rather than solely on any one feature or isolated group of features.
The most relevant applicable and nonduplicative prior art having been introduced, addressed, and distinguished, during the course of prosecution, it is examiner’s position that together with the above the record is clear with regard to the reasons for allowability of the claimed invention over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM LEVINE whose telephone number is (571)272-8122. The examiner can normally be reached Monday - Thursday 9am-7:30pm.
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/ADAM L LEVINE/Primary Examiner, Art Unit 3689 October 29, 2025
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