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 .
DETAILED ACTION
Status of Claims
Claim(s) 8-18 have been examined.
Claim(1) 1-7 have been canceled.
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 8-18 are rejected under 35 U.S.C. 101 because the claims recite a judicial exception which is not integrated into a practical application and the claims lack an inventive concept.
Step 1 is the first inquiry into eligibility analysis and asks whether the claims are directed to a statutory category. In this instance, the answer must be in the affirmative because they recite a method, medium, and system.
Step 2A prong 1 is the next step in the eligibility analyses and asks whether the claimed invention recites a judicial exception. In this instance, the claims recite the following limitations which comprise the abstract idea:
receiving a request for a purchase support module which supports overseas purchase of a product of an electronic commerce (EC) site from a user terminal;
discerning a country of a location from which the user terminal made access to send the country of the location to the user terminal, and send purchase information input for purchasing a certain product to a proxy server of an operator performing substitute purchase of a product of the EC site, different from the server providing the EC site, when (a) the country of the location is included in the deliverable countries of the operator performing substitute purchase and (b) an intention to purchase the certain product is indicated.
This is an abstract idea because it is a certain method of organizing human activity because it involves commercial or legal interactions such as marketing and sales activities and/or behaviors.
Step 2A prong 2 is the next step in the eligibility analyses and 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:
sending the purchase support module which is adapted to the EC site to the user terminal;
wherein the module is configured to…
a first and second server (claim 17)
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 of the module, its configuration, and the servers 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.
The dependent claims 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, claim 9-10 does 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.
In Step 2A, several additional elements were identified as additional limitations:
sending the purchase support module which is adapted to the EC site to the user terminal;
wherein the module is configured to…
a first and second server (claim 17)
These additional limitations, including the limitations in the dependent claims, do not amount to an inventive concept because they 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.
In addition, they were already analyzed under Step 2A and did not amount to a practical application of the abstract idea.
Therefore, the claims lack one or more limitations which amount to an inventive concept in the claims.
For these reasons, the claims are rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 8-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 2014/0122203) in view of Miltonberger (US 2006/0010252).
Referring to Claim 8, Johnson teaches a method for supporting product purchase from overseas, comprising:
receiving a request for a purchase support module which supports overseas purchase of a product of an electronic commerce EC site from a user terminal (see Johnson ¶0025, a shopping cart object which is a bookmarklet in the user’s browser and receives a user click for activation);
sending the purchase support module which is adapted to the EC site to the user terminal (see Johnson ¶¶0017-18, the shopping cart object is displayed (sent) in a new window, pop-up, or overlay, on the user’s computer; in addition, and the alternative, since the shopping cart object is software, it was inherently “sent” to the user’s terminal in order to arrive on the computer’s memory or storage);
wherein the purchase support module is configured to send purchase information input for purchasing a certain product to a proxy server of an operator performing substitute purchase of a product of the EC site, different from the server providing the EC site (see Johnson ¶0036, the shopping cart object sends the purchase request to the shopping cart server, which acts as a proxy server which completes the purchase with the ecommerce site on behalf of the customer), when (a) the country of the location is included in the deliverable countries of the operator performing substitute purchase and (b) an intention to purchase the certain product is indicated (see Johnson ¶0030 and Fig. 4-5).
Johnson does not teach discerning a country of a location from which the user terminal made access to send the country of the location to the user terminal. However, Miltonberger teaches this (see Miltonberger ¶¶0061,66,70, the system checks the user’s IP address and confirms they are from an allowed country, otherwise the request is rejected). It would have been obvious to one of ordinary skill in the art before the effective filing date of invention to combine these references because it would reduce fraud and the results would be predictable. Specifically, fraud would be reduced because users from countries with a lot of fraud could be blocked. In addition, the results would be predictable because Johnson would continue to teach a system supporting product purchase, except that now there would be added security by the country discernment check as taught by Miltonberger. This is a predictable result of the combination.
Referring to Claim 9, the combination teaches the method according to claim 8, wherein the purchase support module is further configured to send the purchase information when (c) the country of the location is not included in the prohibited countries of the EC site (see Johnson Fig. 4, the order data is sent and nowhere does Johnson teaches that a country is included in a prohibited countries list).
Referring to Claim 10, the combination teaches the method according to claim 8, wherein the purchase support module is further configured to send the purchase information when (c) the country of the location is not included in the prohibited countries of the certain product (see Johnson Fig. 4, the order data is sent and nowhere does Johnson teaches that a country is included in a prohibited countries list).
Referring to Claims 11-17, these claims are similar to claims 8-10 and are therefore rejected under the same reasons and rationale. As for claim 17 which recites multiple servers, these are taught in Johnson Fig. 5.
Referring to Claim 18, the combination teaches a system for supporting product purchases from overseas, comprising: a user terminal and the apparatus according to claim 14 (see claim 14).
Response to Arguments
In regards to the rejections under 35 U.S.C. 112, the applicant’s amendments have overcome those rejections.
In regards to the rejections under 35 U.S.C. 101, the applicant respectfully argues on pages 7-9 of the remarks that the claims recite significantly more than the abstract idea because they now recite that the server is a “proxy” server. The examiner respectfully disagree as “sending” information to a server, even if it’s a proxy server, does 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 regards to the rejections under 35 U.S.C. 103, the applicant respectfully argues on pages 11-12 that the prior art does not teach “sending a purchase support module adapted to a specific EC site”. The examiner respectfully disagrees, as the shopping cart object is displayed to a new browser window in the user’s terminal which constitutes “sending” and is described in paragraph [0036]. In addition, since the shopping cart object is software, it was inherently sent to the hard drive of the user’s computer (regardless of whether it was downloaded from the internet or preinstalled with the browser which had to be sent to the user’s computer somehow).
For these reasons, the applicant’s arguments are not persuasive.
Conclusion
Additional prior art relevant to the application but not relied upon include:
Perrochon (US 2007/0299736) teaches distributed commerce with virtual shopping carts.
Soto (US 2011/0004533) teaches creating viral store applications which are essentially widgets to purchase products from third parties.
Reference U (see PTO-892) teaches cross border e-commerce.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E ZIMMERMAN whose telephone number is (571)270-5278. The examiner can normally be reached 8-4pm M-T, 8-12pm W.
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, Jeff Smith can be reached at (571)272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW E ZIMMERMAN/Primary Examiner, Art Unit 3688