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 .
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 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Status of Claims
Claims 1 and 4-7 remain pending, and are rejected.
Claims 2-3 have been cancelled.
Response to Arguments
Applicant’s arguments filed on 9/19/2025 with respect to the rejection under 35 U.S.C. 101 have been fully considered, but are not persuasive for at least the following rationale:
Applicant’s arguments filed on 9/19/2025 with respect to the rejection under 35 U.S.C. 101 for claims directed to a judicial exception without significantly more.
Notably, on pages 8-10 of the Applicant’s Remarks, arguments are made that the claims are not directed to certain methods of organizing human activity, and are not directed to any sales and marketing activities. The Applicant cites the memorandum from august 4, 2025 in that the claims are “more than likely than not” appropriate and should not be rejected. Comparisons are also drawn to example 1 of the Subject Matter Eligibility Examples (DDR Holdings). On pages 11-12, arguments are made that specification paragraphs [0002-0015] describe a problem in the related technology and technical field about providing purchase histories when the user is in the store.
Examiner respectfully disagrees. The steps of the claims are directed to identifying a customer, acquiring a purchase history of an associated product associated with the intended purchase product, and displaying the purchase history to a customer when one of three conditions are satisfied, the conditions being related to a price difference, a time of purchase, or the timing of the purchase history. These are all part of an abstract idea to display purchase histories relevant to a current purchase to a user, and are commercial activities, and are not inherent computer activities. While there are additional elements, such as the terminal of a portable type operated by a customer, and displaying the purchase history on the terminal, these only leverage generic computing devices and their abilities in performing the abstract idea on a computing device, such as to provide a general link to a computing environment. The claims are wholly directed to abstract ideas of determining and displaying the relevant product histories, and do not change or improve any kind of technology or technical field. As such, it is not “more than likely than not” that the claims are eligible. Furthermore, the comparisons to DDR Holdings are inapposite. In DDR Holdings, the claims specified how interactions with the computer and internet were manipulated to create a composite/hybrid page that prevented the user from being directed to the outside merchant, therein overriding the routine functionality of a link. While the claims were part of a commercial process, the claims addressed changes to how specific additional elements functioned. As discussed above, there are no such changes or improvements to any technical elements in the present claims, and are directed to the abstract idea.
In view of the above, the rejection under 35 U.S.C. 101 has been maintained below.
Applicant’s arguments filed on 9/19/2025 with respect to the rejection under 35 U.S.C. 102 and 103 have been fully considered, but are not persuasive for at least the following rationale:
On pages 16-17 of the Applicant’s Remarks, arguments are made that the Sharma reference discloses the difference being less than a threshold distance, while the claims recite equal to or more than. Further arguments are made that Sharma does not disclose any condition for that situation.
Examiner respectfully disagrees. While the Sharma reference does not disclose the difference being more than a reference value, being within a threshold amount can still be interpreted as equal to the threshold value, and as recited, discloses the limitation of the claim. Sharma also discloses how the recommendation system can identify related items that result in a user interface that displays the related items (Sharma: col. 4, ln. 39-47), and the related items are determined/selected by the criteria as discussed above. As such, the difference being within (or equal) to the threshold value is a display condition for the item to be displayed on the interface as a related item.
In view of the above, the rejection under 35 U.S.C. 103 has been maintained below.
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 1-7 are rejected under 35 U.S.C. 101 because the claims are directed to a judicial exception without significantly more.
Step 1:
Claims 1 is directed to an apparatus. Claims 4-6 are directed to a terminal, which is an apparatus. Claim 7 is directed to a method, which is a processor. Therefore, claims 1 and 4-7 are directed to one of the four statutory categories of invention.
Step 2A (Prong 1):
Taking claim 1 as representative, claim 1 sets forth the following limitations (emphasized in bold) reciting the abstract idea of displaying relevant purchase histories to an intended purchase product:
acquiring, from a terminal of a portable type being operated by a customer in a store, customer identification information for identifying the customer and product identification information about an intended purchase product of the customer;
acquiring, based on purchase history information indicating a purchase history of a product by the customer and from among purchase histories of the customer, an associated purchase history of an associated product associated with the intended purchase product;
transmitting the associated purchase history of the associated product to the terminal, wherein:
transmitting the purchase history includes:
determining whether the associated purchase history of the associated product satisfies a predetermined display condition; and
transmitting, to the terminal and based on determining that the purchase history of the associated product satisfies the predetermined display condition, the associated purchase history of the associated product;
the predetermined display condition includes at least one of:
a first condition that a price difference between a purchase price of the associated product and a current price of the intended purchase product is equal to or more than a reference value;
a second condition that the associated product is purchased within a predetermined display target period; and
a third condition that the associated purchase history of the associated product is a latest purchase history of the associated product.
The recited limitations above set forth the process for displaying relevant purchase histories to an intended purchase product. These limitations amount to certain methods of organizing human activity, including commercial or legal interactions (e.g. advertising, marketing or sales activities or behaviors, etc.). The claims recite acquiring customer information and an intended purchase product to acquire a purchase history of an associated product, which is a process of recommending items to a user, and is a sales and marketing activity.
Such concepts have been identified by the courts as abstract ideas (see: MPEP 2106.04(a)(2)).
Step 2A (Prong 2):
Examiner acknowledges that representative Claim 1 does recite additional elements, such as:
at least one memory configured to store instructions;
at least one processor configured to execute the instructions to perform operations;
a terminal of a portable type being operated by a customer in a store;
Taken individually and as a whole, representative claim 1 does not integrate the recited judicial exception into a practical application of the exception as the additional elements merely serve to implement the abstract idea in a computing environment.
Furthermore, this is also 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 a judicial exception with a particular machine, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
While there is recitation of a memory and processor, these elements are recited with a very high level of generality. As disclosed in paragraph [0106] of the specification and Fig. 12, the processor is “a central processing unit (CPU), a graphics processing unite (GPU), or the like”. The memory is disclosed in paragraph [0107] as “a main storage apparatus achieved by a random access memory (RAM) and the like”. As such, it is clear that these elements are generic computing elements that only serve to provide the abstract idea a general link to a computing environment. The terminal is also disclosed very generically in the specification. Specification paragraph [0111] and Fig. 13 disclose the device as including a processor, a memory, a storage device, a network interface, an input interface, etc. Paragraph [0110] discloses where the terminal is “a smartphone, a tablet terminal, and the like”. The terminal is any generic computing device, and also only serves to generally link the abstract idea to a computing environment.
In view of the above, under Step 2A (Prong 2), claim 1 does not integrate the recited exception into a practical application (see: MPEP 2106.04(d)).
Step 2B:
Returning to claim 1, taken individually or as a whole, the additional elements of claim 1 do not provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). As noted above, the additional elements recited in representative claim 1 are recited in a generic manner with a high level of generality and only serve to implement the abstract idea on a generic computing device. The claims result only in an improved abstract idea itself and do not reflect improvements to the functioning of a computer or another technology or technical field. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process ultimately amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Even when considered as an ordered combination, the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, claim 1 does not provide an inventive concept under step 2B, and is ineligible for patenting.
Regarding Claim 4 (terminal): Claim 4 recites at least substantially similar concepts and elements as recited in claim 1 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 4 is rejected under at least similar rationale as provided above regarding claim 1.
Regarding Claim 7 (method): Claim 7 recites at least substantially similar concepts and elements as recited in claim 1 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 7 is rejected under at least similar rationale as provided above regarding claim 1.
Dependent claims 5-6 recite further complexity to the judicial exception (abstract idea) of claim 1, such as by further defining the algorithm for determining displaying relevant purchase histories to an intended purchase product. Thus, each of claims 5-6 are held to recite a judicial exception under Step 2A (Prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 5-6 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, dependent claims 5-6 rely on at least similar elements as recited in claim 1. Further additional elements are also acknowledged; however, the additional elements of claims 5-6 are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, this is also because the claims 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 generally linking the use of the judicial exception to a particular technological environment.
Taken individually and as a whole, dependent claims 5-6 do not integrate the recited judicial exception into a practical application of the exception under step 2A (prong 2).
Lastly, under step 2B, claims 5-6 also fail to result in “significantly more” than the abstract idea under step 2B. The dependent claims recite additional functions that describe the abstract idea and use the computing device to implement the abstract idea, while failing to provide an improvement to the functioning of a computer, another technology, or technical field. The dependent claims fail to confer eligibility under step 2B because the claims merely apply the exception on generic computing hardware and generally link the exception to a technological environment.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
Taken individually or as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2B for at least similar rationale as discussed above regarding claim 1. Thus, dependent claims 5-6 do not add “significantly more” to the abstract idea.
Claim Rejections - 35 USC § 103
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.
Claims 1, 4, and 7 are rejected under 35 U.S.C. 103 as being unpatentable by Yeh (US 20190187864 A1) in view of Sharma (US 11,435,873 B1).
Regarding Claim 1: Yeh discloses an apparatus comprising:
at least one memory configured to store instructions; Yeh discloses memory storing instructions (Yeh: [0096]; see also: [0093]).
at least one processor configured to execute the instructions to perform operations; Yeh discloses a processor to execute instructions (Yeh: [0095]; see also: [0093]).
acquiring, from a terminal of a portable type being operated by a customer in a store, customer identification information for identifying the customer and product identification information about an intended purchase product of the customer; Yeh discloses the user requesting product recommendations from their device, and sending the user account identifier and shopping list identifying desired products to the system (Yeh: [0070]; see also: [0017]; [0030]; [0035]; [0049]; [0058]; [0093]).
Acquiring, based on purchase history information indicating a purchase history of a product by the customer and from among purchase histories of the customer, an associated purchase history of an associated product associated with the intended purchase product; Yeh discloses retrieving the user product history to determine products to recommend to the user, such as products the user has preferred in the past (Yeh: [0071]; see also: [0018]; [0079]).
transmitting the associated purchase history of the associated product to the terminal. Yeh discloses generating an optimized display of the recommended product listings on the user interface (Yeh: [0072]; see also: [0019]; [0081]).
Yeh does not explicitly teach transmitting the purchase history includes:
determining whether the purchase history of the associated product satisfies a predetermined display condition;
transmitting, to the terminal and based on determining that the purchase history of the associated product satisfies the predetermined display condition, the associated purchase history of the associated product;
the predetermined display condition includes at least one of:
a first condition that a price difference between a purchase price of the associated product and a current price of the intended purchase product is equal to or more than a reference value;
a second condition that the associated product is purchased within a predetermined display target period; and
a third condition that the associated purchase history of the associated product is a latest purchase history of the associated product.
Notably, however, Yeh does disclose displaying the products from the retrieved product history on the user interface (Yeh: [0071-0072]).
To that accord, Sharma does teach wherein transmitting the purchase history includes:
determining whether the purchase history of the associated product satisfies a predetermined display condition; Sharma teaches querying the user purchase history and determining whether items are identified as a substitute item when the prices of each item are within a threshold value of each other (Sharma: col. 6, ln. 20-47; see also: col. 7, ln. 35-46).
transmitting, to the terminal and based on determining that the purchase history of the associated product satisfies the predetermined display condition, the associated purchase history of the associated product; Sharma teaches forwarding the identification of the selected items to the user interface (Sharma: col. 8, ln. 22-34).
the predetermined display condition includes at least one of:
a first condition that a price difference between a purchase price of the associated product and a current price of the intended purchase product is equal to or more than a reference value;
a second condition that the associated product is purchased within a predetermined display target period; and
a third condition that the associated purchase history of the associated product is a latest purchase history of the associated product.
Examiner notes that Applicant recites at least one of in the claim. Sharma teaches determining whether items are identified as a substitute item when the prices of each item are within a threshold value of each other, which would include the difference being equal to the threshold value (Sharma: col. 6, ln. 20-47).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the invention of Yeh disclosing a system for determining product recommendations for an intended purchase item from the user purchase history with the determining of whether the product satisfies a predetermined display condition as taught by Sharma. One of ordinary skill in the art would have been motivated to do so in order to determine whether the item corresponds to the same financial categorization as the intended item (Sharma: col. 6, ln. 21-23).
Regarding Claims 4 and 7: Claims 4 and 7 recite substantially similar limitations as claim 1. Therefore, claims 4 and 7 are rejected under the same rationale as claim 1 above.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable by the combination of Yeh (US 20190187864) and Sharma (US 11,435,873 B1), in view of Argue (US 20140089133 A1).
Regarding Claim 5: The combination of Yeh and Sharma discloses the limitations of claim 4 above.
The combination does not explicitly teach displaying the associated purchase history includes simultaneously displaying, on the display, the associated purchase history of the associated product and product information about the intended purchase product. Notably, however, Yeh does disclose generating an optimized display of recommended products (Yeh: [0072]).
To that accord, Argue does teach displaying the associated purchase history includes simultaneously displaying, on the display, the associated purchase history of the associated product and product information about the intended purchase product. Argue teaches displaying the recommended substitute within the electronic shopping list with the items from the purchase history (Argue: [0028-0029]; see also: Fig. 1B).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the invention of the combination of Yeh and Sharma disclosing a system for determining product recommendations for an intended purchase item from the user purchase history with the displaying of the purchase history recommended items within the shopping list of items as taught by Argue. One of ordinary skill in the art would have been motivated to do so in order to display properties that are associated with the substitute product in relation to the list (Argue: [0029]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable by the combination of Yeh (US 20190187864) and Sharma (US 11,435,873 B1), in view of Singh (US 20200342516 A1).
Regarding Claim 6: Yeh discloses the limitations of claim 4 above.
Yeh further discloses accepting a selection of the associated product included in the associated purchase history; Yeh discloses selecting products from the product recommendations (determined from the user purchase history) to add them to the cart (Yeh: [0085]).
Yeh does not explicitly teach further comprising:
receiving, from the management apparatus, a simultaneous purchase history of a simultaneous purchase product being a simultaneous product purchased together with the associated product;
displaying the received simultaneous purchase history of the simultaneous purchase product on the display.
Notably, however, Yeh does disclose displaying the products from the retrieved product history on the user interface (Yeh: [0071-0072]).
To that accord, Singh does teach further comprising:
receiving, from the management apparatus, a simultaneous purchase history of a simultaneous purchase product being a simultaneous product purchased together with the associated product; Singh teaches accessing the buyer’s purchase history to determine items that are frequently bought together (Singh: [0051]; see also: [0030]).
displaying the received simultaneous purchase history of the simultaneous purchase product on the display. Singh teaches presenting the recommended items to the buyer on the user interface with (Singh: [0052]; see also: [0055]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the invention of Yeh disclosing a system for determining product recommendations for an intended purchase item from the user purchase history with the receiving of a purchase history for products being purchased together as taught by Singh. One of ordinary skill in the art would have been motivated to do so in order to generate combinations of related items together for the buyer (Singh: [0050]).
Conclusion
THIS ACTION IS MADE FINAL. 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 TIMOTHY J KANG whose telephone number is (571)272-8069. The examiner can normally be reached Monday - Friday: 7:30 - 5:00.
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/T.J.K./Examiner, Art Unit 3688
/KELLY S. CAMPEN/Supervisory Patent Examiner, Art Unit 3688
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