DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statement filed 7/3/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 112
3. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claims 1-4, 7-14, 16-19, 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Specification ¶[0071] recites, “For instance, the system 200, the system 100, the user application programing interface 132, and/or the enterprise application programing interface 232 may include one or more drivers suitable or capable of interfacing with the applications and/or storage format of the item storehouse and/or the digital location(s) on the server(s) where the instructions associate with the viewed item are stored.”
Claims 1 and 3 were amended to recite: “receiving, at the computing device, interface instructions stored on the server and enabling interaction with the content presented by the viewing instructions, wherein a first format of the interface instructions and the viewing instructions is compatible with the computing device.” The Specification at [0071] recites interfacing with application and/or storage format. There is a lack of written description for “wherein a first format of the interface instructions and the viewing instructions is compatible with the computing device.”
For purposes of examination, the limitation will be interpreted as “receiving, at the computing device, interface instructions stored on the server.”
The Specification ¶[0046] recites, “According to certain embodiments of the invention described herein, as a webpage loads, one or more variables in any combination (i.e. model code, term, amount, credit score, etc.) are transmitted to a third-party server and one or more variables related to subsidized financing (i.e. rate, payment, total cost, terms etc.) are returned and rendered on the webpage in real time. These variable can be returned in any combination and the retuned variables may or may not be limited to just one promotion.”
The Spec. [0071] recites a “storage format.”
Claims 1 and 3 recite, “modifying, by the second server, second instructions of the executable element from a second format to the first format to generate modified instructions of the executable element.” There is a lack of written description for modifying second instructions of the executable element from a second format to a first format to generate modified instructions.
For examination purposes, this limitation will be interpreted as “modifying, by the second server, instructions of the executable element to generate modified instructions of the executable element.”
Claim 23 recites, “wherein first format is different than second format, wherein the second format is not compatible with the computing device.” There is a lack of written description for this limitation in the Specification. For examination purposes, the limitation will be interpreted as “wherein the second server modifies the instructions of the executable element based on the input.”
The remaining claims are rejected due to the dependency to claims 1 and 3.
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.
5. Claims 1-4, 7-14, 16-19, 21-23 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more.
Using the limitations in claim 1 to illustrate, the claim recite(s) the limitations of: enabling interaction with the content presented by the viewing instructions, wherein a first format of the interface instructions and the viewing instructions is compatible; executing the interface instructions and the viewing instructions such that the viewed item is presented in a web browser on a display; determining that the viewed item is currently presented on the display; comparing the ID of the viewed item with the plurality of IDs of the plurality of items, wherein each item is associated with a respective interactive element; identifying a concurrent item of the plurality of items that is associated with the ID of the viewed item and the interactive element that is associated with the concurrent item, the interactive element indicative of an executable element and at least one of a total amount, a term, or a term amount, wherein the interactive element associated with the concurrent item is stored at a second storage location…; wherein representation of the interactive element that is associated with the concurrent item is configured such that executing instructions of the interactive element to present the viewed item may selectively visit the second storage location or execute instructions of the executable element stored at the second storage location;
executing, by the web browser first instructions of the interactive element and the executable element to present on the display … at least one of the total amount, the term, or the term amount utilizing the representation of the interactive element; modifying second instructions of the executable element from second to first format to generate modified instructions of the executable element; and executing the modified instructions of the executable element to present, in the web browser on the display in real-time, the GUI comprising, the modified at least one of the total amount, the term, or the term amount as a customized offer.
The limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, commercial or legal interactions, but for the recitation of generic computer components.
The claimed invention allows for identifying, promoting, and displaying financing opportunities to a consumer when purchasing items which is a certain method of organizing human activity.
The mere nominal recitation of a server, a computing device, a second server, GUI and an API do not take the claims out of the methods of organizing human activity grouping. Thus, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. The claim recites the additional elements: receiving, viewing instructions stored at a first storage location on a server and configured to present a viewed item…; receiving… interface instructions… associated with the viewing instructions…; automatically communicating, by the viewing instructions in the web browser, …using an application programming interface (API) and based on the determination that the viewed item is currently presented on the display… an indication of the ID of the viewed item; receiving…the representation of the interactive element that is associated with the concurrent item; receiving, via the interactive element of the GUI, input modifying at least one of the total amount, the term, or the term amount; transmitting the modified at least one of the total amount, the term, or the term amount; receiving the modified instructions of the executable element. The receiving and communicating steps/functions are recited at a high level of generality (i.e., as a general means of receiving and transmitting data). Receiving and communicating data are forms of insignificant extra-solution activity –see MPEP 2106.05(g).
The server, computing device, API, GUI, and second server are also recited at a high level of generality and merely automates the claimed steps and functions. Each of the additional limitations is no more than mere instructions to apply the exception using generic computer components (server, a computing device, API, GUI and a second server).
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
Under Step 2B of the 2019 Patent Eligibility Guidelines (PEG), the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, under Step 2B of the 2019 PEG, the additional elements found to be insignificant extra-solution activities under step 2A prong two, are re-evaluated to determine if the elements are more than what is well-understood, routine and conventional activity in the field.
Here, the Specification does not provide any indication that the server, computing device, API, GUI and second server, are anything other than generic computer components and the Symantec, TLI Communications, OIP Techs, buySafe court decisions cited in MPEP 2106.05[d][ii] indicate that the mere receiving, communicating, and transmitting data over a network are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (as they are here). Accordingly, a conclusion that the receiving and communicating limitations are well understood, routine, and conventional activities is supported under Berkheimer Option 2. For these reasons, there is no inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2, 4, 7-14, 16-19, 21-23 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-4, 7-14, 16-19, 21-23 is/are ineligible.
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.
6. Claim(s) 1-4, 7-14, 16-19, 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US 2022/0261869) in view of Fang et al. (US 2023/0027379) in view of Nagla (US 2016/0189260).
* In view of the 35 USC 112(a) rejection above, and for purposes of examination, the limitation, “receiving, at the computing device, interface instructions stored on the server and enabling interaction with the content presented by the viewing instructions, wherein a first format of the interface instructions and the viewing instructions is compatible with the computing device,” will be interpreted as “receiving, at the computing device, interface instructions stored on the server.”
** In view of the 35 USC 112(a) rejection above, and for purposes of examination, the limitation, “modifying, by the second server, second instructions of the executable element from a second format to the first format to generate modified instructions of the executable element,” will be interpreted as “modifying, by the second server, instructions of the executable element to generate modified instructions of the executable element.”
Re-claim 1: Hong disclose:
receiving, at a computing device, viewing instructions stored at a first storage location on the server and configured to present a viewed item, the viewing instructions configured to present content and including an indication of an identifier (ID) associated with the viewed item, wherein the ID is one or a plurality of IDs, wherein each ID of the plurality of IDs uniquely identifies a respective item of a plurality of items including the viewed item (Product listings are generated and maintained by the website, product listing may be listed or stored by systems or data structures…the product listing may include several elements associated with the products including price, pictures, selectable options, model number or any other information associated with one or more products in the product listing.-[0066]. Fig. 1C shows an identifier associated with the viewed item-“item number.” Product identifier-[0092]; server may be one or more computing devices configured to execute instructions stored in memory to generate accurate identifications of a plurality of products-[0067]);
receiving, at the computing device, interface instructions stored on the server and enabling interaction with the content presented by the viewing instructions, wherein a first format of the interface instructions and the viewing instructions is compatible with the computing device (analyze the data and execute the software instructions to perform server-based functions and operations -[0067]-[0069]; [0081]) and
executing the interface instructions and the viewing instructions such that the viewed item is presented in a web browser on a display of the computing device (Product listings are generated and maintained by the website and includes an indication of a viewed item. The product listing includes several elements associated with one or more products such as a title, price, pictures, model number, etc.-see [0066], product ID [0092]; server may be one or more computing devices configured to execute instructions stored in memory to generate accurate identifications of a plurality of products-[0067]-[0070], server communicatively coupled to user interface configured to display data-[0075]; product listing on web page-[0066]);
determining that the viewed item is currently presented on the display associated with the computing device-(user enters a search for an item, computer system determines which items to display -see [0026] and Figs. 1B, 1C, 1D, 1E);
automatically communicating, by the viewing instructions in the web browser to a second server, and based on the determination that the viewed item is currently presented on the display, an indication of the ID of the viewed item (front end system may include server to server communication, and may provide one or more web pages including search result page Fig. 1B and single detail page Fig. 1C showing item ID “item number”-see also web pages[0025]-[0026] and product identifiers in [0092]; server 400 may be standalone or part of a subsystem which may be part of a larger system. For example, server may represent distributed servers that are remotely located from one another and communicate over a network.-[0068]; product identifiers [0066]);
comparing, by the second server, the ID of the viewed item with the plurality of IDs of the plurality of items, wherein each item is associated with a respective interactive element (Fig. 1A shows a system comprising computerized systems for communications. System 100 may include a variety of systems each of which is connected to one another via one or more networks- [0022]; external front end system may prepare an SRP (search result page) based on search information, …includes pictures of products that satisfy search request, - Fig. 1B, [0027]); (user device may then select product from the SRP, e.g., by clicking or tapping a user interface –[0028] [interactive elements]; The server-based functions and operations may include, for example, intelligently evaluating text contained in product listings in order to generate accurate and automatic identifications, understandings, and comparisons of a plurality of products.-[0067]; server 400 may be standalone or part of a subsystem which may be part of a larger system. For example, server may represent distributed servers that are remotely located from one another and communicate over a network.-[0068]);
identifying, by the second server, a concurrent item of the plurality of items that is associated with the ID of the viewed item and the interactive element that is associated with the concurrent item, the interactive element indicative of an executable element and at least one of a total amount, a term, or a term amount; wherein the interactive element associated with the concurrent item is stored at a second storage location, wherein the second storage location is on the second server, wherein the representation of the interactive element that is associated with the concurrent item is configured such that the computing device executing the instructions of the interactive element to present the viewed item may selectively visit the second storage location or execute instructions of the executable element stored at the second storage location (interactive elements –[0011]; Search result page (SRP) will display products with information as to price (20,000 Korean won), pictures, etc.-[0027]; the user may select product by clicking on user interface (interactive element) including executable element such as “Add to cart,” quantity, and “Buy Now” buttons and total amount of product)-see Figs. 1B and 1C and paragraph [0028]; Server 400 may include one or more memory devices for storing data and software instructions and one or more hardware processors to analyze the data and execute the software instructions to perform server-based functions and operations…include, for example, intelligently evaluating text contained in product listings in order to generate accurate and automatic identifications, understandings, and comparisons of a plurality of products-[0067]; multiple servers within the system-[0068], Fig. 1A and Fig. 4);
receiving, at the computing device from the second storage location, the representation of the interactive element that is associated with the concurrent item (interactive elements -see [0010], [0011], [0013]-Fig. 1B, 1C, 1E; Server 400 may include one or more memory devices for storing data and software instructions and one or more hardware processors to analyze the data and execute the software instructions to perform server-based functions and operations…include, for example, intelligently evaluating text contained in product listings in order to generate accurate and automatic identifications, understandings, and comparisons of a plurality of products-[0067]);
executing, by the web browser of the computing device, first instructions of the interactive element and the executable element to present, on the display and in association with the viewed item in a graphical user interface (GUI), at least one of the total amount, the term, or the term amount utilizing the representation of the interactive element, wherein the first instructions are in a first format compatible with the computing device (Fig. 1C discloses executable element of Buy Now in association with the viewed item and further displays the total amount; [0081]).
Fang, not Hong, disclose:
receiving, via the interactive element of the GUI, input modifying at least one of the total amount, the term, or the term amount ([0052] As shown in FIG. 3, a first user (User 1) interacts with financing elements displayed on a GUI. The user interactions, for example, may include a customer modifying an initial offer of term for the financing from a lender. The modifying may subsequently provide a series of term options higher/lower in a standardized range (e.g., 12 month increments). A user interacting with this graphic can choose a specific term and see a resulting recalculation of other terms associated with this transaction at the new term. Fig. 7 shows initial offer terms, and modified input);
transmitting, by the web browser to the second server, the modified at least one of the total amount, the term, or the term amount; modifying, by the second server, second instructions of the executable element from a second format to the first format to generate modified instructions of the executable element ([0059] As a non-limiting example with regards to FIGS. 1-7 one or more processes described with respect to FIG. 6 may be performed by a mobile device (e.g., client device 102 of FIG. 1) or a server (e.g., part of cloud processing systems 106 of FIG. 1) for analyzing financial purchase information associated with user interaction with graphically displayed financing elements. In embodiment 600, client device 102 and/or the server may execute code in memory to perform certain steps associated with FIGS. 1-7. The GUI application determines whether the requested data is stored locally (e.g., mobile device memory) or remotely (e.g., cloud-based financial platform);
receiving, by the computing device from the second server, the modified instructions of the executable element (modifying the initial transaction criteria see [0062-0063]);
and executing the modified instructions of the executable element to present, in a web browser on the display in real-time, the GUI comprising the modified at least one of the total amount, the term, or the term amount as a customized offer (executing modified instructions and customized options are shown in a graphical format to the user-[0070-0077]).
It would have been obvious to one having ordinary skill in the art to include in the purchasing method of Hong the ability to modify financing terms to create a customized offer as taught by Fang since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Although Hong disclose interfaces as in [0025], Hong does not specifically disclose using an application programming interface API. Nagla however, teaches a system and method that presents financing options to users for the purchase of a vehicle via user interfaces configured for interaction with users include APIs-see [0070].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hong to include that the item to be purchased is a vehicle and presenting to the user an executable element such as an executable button on the webpage requesting financing options and specifically using an API as taught by Nagla in order to provide a user with purchase options as well as financing options on one website.
Re-claim 2: Nagla, not Hong discloses wherein a product of a multiplication of the term and the term amount is equal to or greater than the total amount. (¶ [0218] [0225] purchase prices versus dealership financing purchase price, fig. 20 shows multiplying term of financing and interest rate resulting in an amount greater than total amount of purchase price of vehicle, i.e., $40.000.).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hong to include a product of multiplication of the term and term amount is equal to or greater than the total amount as taught by Nagla in order to display financing costs to the potential borrower.
Claim 3 has similar limitations found in claim 1 above, and therefore is rejected by the same art and rationale. Furthermore, Hong disclose server 400 communicating over a network with other servers- [0068].
Claim 4 has similar limitations found in claim 2 above, and therefore is rejected by the same art and rationale.
Re-claim 7. Hong disclose wherein at least one potential item of the plurality of potential items is associated with a plurality of interactive elements (interactive elements -see [0010], [0011], [0013] -Figs. 1B, 1C, 1E).
Re-claim 8. Hong disclose wherein, when the concurrent item is associated with a plurality of interactive elements, receiving the representation of the interactive element that is associated with the concurrent item includes: receiving, at the computing device, a representation of each interactive element that is associated with the concurrent item (interactive elements -see [0010], [0011], [0013] -Figs. 1B, 1C, 1E).
Re-claim 9. Hong disclose wherein, when the concurrent item is associated with a plurality of interactive elements, receiving the representation of the interactive element that is associated with the concurrent item includes: receiving, at the computing device, a representation of the interactive element indicative of the lowest total amount. Fig. 1B shows interactive elements displayed to the user showing a plurality of items based on search parameters and an interactive elements showing prices including lowest priced.
Re-claim 10. Nagla, not Hong, discloses wherein the concurrent item is associated with an evaluated amount, the evaluated amount greater than the total amount indicated by the interactive element that is associated with the concurrent item. ¶ [0218] [0225] purchase prices versus dealership financing purchase price, fig. 20 shows multiplying term of financing and interest rate resulting in an amount greater than total amount of purchase price of vehicle, i.e., $40.000). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hong to include an evaluated amount associated with an item is greater than the total amount as taught by Nagla in order to display financing costs to the potential borrower.
Re-claim 11. Hong fail to disclose wherein a difference between the evaluated amount and the total amount associated with the concurrent item is associated, at least in part, with a subsidy. Nagla however, teaches the difference of an evaluated amount and total amount is equal to a cash bonus and cash incentives-see [0220]. It would have been obvious to one having ordinary skill in the art to include in the online shopping platform of Hong the ability to calculate a financing option which takes into consideration cash incentives or cash bonuses when calculating the amount to be financed as taught by Nagla since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re-claim 12. Hong fail to specifically disclose wherein the total amount indicated by the interactive element that is associated with the concurrent item is determined, at least in part, from the evaluated amount associated with the concurrent amount, the subsidy, and an interest rate associated with the interactive element. Nagla however, teaches the difference of an evaluated amount and total amount is equal to a cash bonus and cash incentives-see [0220]. It would have been obvious to one having ordinary skill in the art to include in the online shopping platform of Hong the ability to calculate a financing option which takes into consideration cash incentives or cash bonuses when calculating the amount to be financed as taught by Nagla since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re-claim 13. Hong disclose wherein the first storage location is different than the second storage location. (Server 400 may include one or more memory devices for storing data and software instructions and one or more hardware processors to analyze the data and execute the software instructions to perform server-based functions and operations…include, for example, intelligently evaluating text contained in product listings in order to generate accurate and automatic identifications, understandings, and comparisons of a plurality of products-[0067]; Server 400 may represent distributed servers that are remotely located from one another and communicate over a network-[0068]. Hong discloses that servers include one or more memory devices for storing product data and other product information. Hong discloses that the invention may use distributed servers that are remotely located and therefore have different storage locations as well as individual servers including one or more memories, i.e., string information in a first storage location different from a second storage location).
Re-claim 14. Hong fail to disclose communicating the modified at least one of the total amount, the term, or the term amount to an offer generating program indicated by the instructions stored at the different digital location. Nagla however, teaches purchase prices versus dealership financing purchase price and fig. 10 shows financing options-¶ [0081], and financial institution servers at different digital locations-see Fig. 1 A items 180, 170, and 105a-105n. ). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Hong to include an communicating user financing information to an offer generating program stored at a different digital location by Nagla in order to display financing proposals from different lenders.
Re-claim 16. Hong fail to explicitly disclose receiving, at the computing device, a representation of the customized offer; and presenting, on the display of the computing device and in association with the viewed item, the customized offer indicative of at least one of a modified annual percentage rate, a modified payment amount, a modified total cost, a modified interest cost, or associated terms. Fang however, teach presenting a customized offer and displaying modified terms such as modified annual percentage rate, modified payment amount, modified cost, and modified term.-see Fig. 7.
It would have been obvious to one having ordinary skill in the art to include in the purchasing method of Hong the ability to modify financing terms to create a customized offer as taught by Fang since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re-claim 17. Hong disclose wherein the user customized promotional offer is presented in proximity to the viewed item. Fig. 1D shows a display of shipping offer in proximity of item; Fig. 1E shows display of 2% off, if payment method of Rocket Transfer is utilized in proximity of the item.
Re-claim 18. Hong disclose presenting, on the display of the computing device, the interactive element in proximity to the viewed item. Fig. 1C-1E.
Re-claim 19. Hong disclose wherein communicating the indication of the viewed item ID further includes: communicating, to the second server, an output file including an indication of the viewed item ID utilizing the application programing interface-Figs. 1B-1D.
Re-claim 21. Hong disclose wherein presenting the executable element comprises: executing, by the computing device, the instructions of the executable element to generate the interactive element and present the interactive element on the display. (interactive element “Buy Now”-see [0029], [0066]).
Re-claim 22. Fang, not Hong, disclose wherein the input modifies each of the total amount, the term, and the term amount, wherein the modified instructions of the executable element present, on the display, the modified total amount, the modified term, and the modified term amount as the customized offer.
([0052] As shown in FIG. 3, a first user (User 1) interacts with financing elements displayed on a GUI. The user interactions, for example, may include a customer modifying an initial offer of term for the financing from a lender. The modifying may subsequently provide a series of term options higher/lower in a standardized range (e.g., 12 month increments). A user interacting with this graphic can choose a specific term and see a resulting recalculation of other terms associated with this transaction at the new term. Fig. 7 shows initial offer terms, and modified input).
It would have been obvious to one having ordinary skill in the art to include in the purchasing method of Hong the ability to modify financing terms to create a customized offer as taught by Fang since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re-claim 23: In view of the 35 USC 112(a) rejection above, purposes of examination, the limitation, “wherein the second server modifies the instructions of the executable element based on the input, wherein first format is different than second format, wherein the second format is not compatible with the computing device” will be interpreted as “wherein the second server modifies the instructions of the executable element based on the input.”
Fang, not Hong, disclose wherein the second server modifies the instructions of the executable element based on the input; wherein first format is different than second format, wherein the second format is not compatible with the computing device. [0013] This technology allows a system to capture a series of customer interactions with graphical representations of financing options contained within an offer to purchase a product. A server receives, via a client application on a client device, a user request for initial transaction criteria. The server provides, to the client device, a first interactive template including the initial transaction criteria. Subsequently, one or more user interactions with the first interactive template are returned to the server. A customized range of initial transaction criteria is selected based on an historical analysis of the one or more user interactions. A second interactive template is then generated based on the customized range of the initial transaction criteria and transmitted back to the client device where it can be displayed; [0081].
It would have been obvious to one having ordinary skill in the art to include in the purchasing method of Hong the ability for a second server to modify financing terms based on user input to create a customized offer as taught by Fang since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Response to Arguments
7. Applicant's arguments have been fully considered but they are not persuasive.
On paged 2-3 of the Remarks, Applicants argue that under step 2A, prong 1 of the Guidance, the claims are not directed to a judicial exception because the claims do not recite “certain methods of organizing human activity” and under established precedent of the CAFC and pursuant to the Subject Matter Eligibility Guidelines, the claims are well integrated into a practical and technological application. These arguments are not convincing.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., server, computing device, API, GUI and second server, claim 1 recites abstract ideas in the category of “methods of organizing human activity.” In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 1—i.e., the “receiving,” “executing,” “determining,” “automatically communicating,” “comparing,” “identifying,” “executing,” “transmitting,” and “modifying”—and explains that they describe the concept of identifying, promoting and displaying financing opportunities to a consumer when purchasing items on a website which is a commercial interaction falling into the category of certain methods of organizing human activity. The Examiner' s approach here is consistent with USPTO guidance. -see MPEP §2106.04(a).
On pages 5-6 of the Remarks, Applicants argue that the claimed invention is a well-integrated and practical application of the alleged abstract idea because “the claims, as a whole, are directed to a server modifying ‘second instructions of the executable element from a second format to the first format to generate modified instructions of the executable element’ of an executable program that is at a ‘second storage location’, such that the modified second instructions are in a ‘first format’ that is compatible with the specific computing device to ‘present a customized offer.’ By modifying the second instructions, the server allows the instructions to be accessed by any type of computing device, regardless of the ‘storage format of the item storehouse and/or the digital location(s) on the server(s) where the instructions associate with the viewed item are stored. Specification, paragraph [0071].”
The argument is not persuasive because the claimed invention is directed to solving a need for a system that identifies and promotes financing opportunities available to a potential consumer while viewing an item of interest. -see Specification [0004]. The Specification describes that each interactive element associated with a concurrent item may be communicated, once identified, or the interactive element indicative of the lowest total amount or financed amount may be communicated [0005]. The argued standardization of formats and storing of data in different digital locations are functions customarily performed by any computer system. Here, the focus of claimed invention is on providing consumers with financing options on a GUI using generic computer implementation. In other words, the claimed computer components implement the claimed steps in their ordinary capacity and do not amount to an improvement in the functioning of the computer itself or an improvement to any other technology or technical field.
-See Spec.¶[0024], (“Embodiments of the present invention described herein, with reference to flowchart illustrations and/or block diagrams of methods or apparatuses (the term ‘apparatus’ includes systems and computer program products), will be understood such that each block of the flowchart illustrations and/or block diagrams, and combinations of blocks in the flowchart illustrations and/or block diagrams, can be implemented by computer program instructions. These computer program instructions may be provided to a processor of a general purpose computer, special purpose computer, or other programmable data processing apparatus to produce a particular machine, such that the instructions, which execute via the processor of the computer or other programmable data processing apparatus, create mechanisms for implementing the functions/acts specified in the flowchart and/or block diagram block or blocks.); see also Spec. ¶¶ [0026]-[0027].
On page 7 of the Remarks, Applicants argue that “unlike the claims at issue in Alice in which a computer was merely used as a tool to implement an abstract idea that could be performed without the use of computers, the alleged abstract ideas are tied to computer technology and cannot be performed by a human mentally or using a pen and paper. In addition, regardless of whether the alleged abstract idea is abstract, the fundamental idea underlying the present claims (e.g., reducing latency of web browser-server communications, facilitating local execution of server-modified instructions, dynamic, in-place rendering of interactive elements, efficient item matching using pre-associated IDs, and elimination of manual steps or full page reloads in the web browser) are ideas explicitly tied to computer technology.” The argument is not convincing. Limitations which describe only procedure or structure common to every means of accomplishing a given result, cannot provide an inventive concept. In other words, limitations that simply “comprise the abstract concept” are not inventive. See Ultramercial Inc v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). For example, a claim cannot become eligible by reciting that physical automation is accomplished by a “machine” or that logical automation is accomplished by a “computer,” see OIP Technologies, Inc. v. Amazon.com, Inc., 778 F.3d 1359, 1363 (Fed. Cir. 2015), because physical automation requires a machine and logical automation requires a computer. Because such elements cannot restrict a claim to a particular way of automating, recitation of a machine or computer “to lend speed and efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” CLS Bank Int' l v. Alice Corp., 717 F.3d 11269, 1286 (Fed. Cir. 2013).
The focus of the claims is not on an improvement to the identified additional elements as tools, but on the abstract ideas that use the additional elements as tools. The use of generic computer components to carry out the abstract idea does not impose any meaningful limit on the computer implementation of the abstract idea.
On page 10, Applicants argue that under Step 2A, prong two, the amended claims recite additional elements that integrate the judicial exception into a practical application. In particular, on page 12, applicants suggest that the claims integrate the judicial exception into a practical application because they reflect an improvement in the functioning of technology by “’modifying, by the second server, the instructions of the executable element to generate modified instructions of the executable element,” such that the web browser may execute the modified instructions present, in web browser on the display in real-time, the GUI comprising the modified at least one of the total amount, the term, or the term amount as a customized offer and in doing so reduces system and network latency and thus reflect an improvement in the functioning of a technology or technical field, specifically computing systems that exchange information using disparate formats and/or instruction types.”
As an initial matter, it is noted that the features upon which applicant relies (i.e., computing systems that exchange information using disparate formats and/or instruction types) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Nevertheless, under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim 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. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f) as is the case here with the instant application.
Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., server, computing device, API, GUI, and second server. The server, computing device, API, GUI, and second server are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications.
Furthermore, the argument that the claimed invention reduces system and network latency is not persuasive because the argued increase in speed and capability comes from the capabilities of a general-purpose computer that includes a computing device and servers, rather than the claimed method itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)(“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”).
On page 11 of the Remarks, Applicants argue that the claims amount to significantly more than the abstract idea under step 2B of the Guidance and are patent eligible similar to the claims in Bascom. The Examiner respectfully disagrees. In Bascom, the court found that the claims were directed to an abstract idea under step one. Id. at 1347-49. Under step two, the court found that the limitation of the claims, taken individually, recited a generic computer, network, and Internet components which were not inventive themselves. Id. at 1349-52. However, the court found that the ordered combination of these limitations provided the requisite inventive concept. Id. The claimed and described inventive concept was the “installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” Id. at 1350. The design permitted the filtering tool to have “both the benefits of a filter on a local computer and the benefits of a filter on the [Internet Service Provider] server.” Id. This was not customary or generic, and the claims did not preempt all ways of filtering content on the Internet—instead, the patent claimed and explained how a particular arrangement of elements was a “technical improvement over prior art ways of filtering such content.” Id.
The court thus distinguished ineligible “abstract-idea-based solutions[s] implemented with generic technical components in a conventional way” from the eligible “technology-based solution” and software based invention[] that improve[s] the performance of the computer system itself.”” Id. at 1351 (citation omitted). The claims in the instant application do not require an arguably inventive distribution of functionality within a network. The claims in this application specify receiving instructions, executing instructions, determining that an item is currently being viewed, automatically communicating, comparing data, identifying data, receiving input via an interactive element of a GUI, transmitting data, modifying instructions, receiving modified instructions, and executing modified instructions but they do not include any requirement for performing the claimed functions of gathering, analyzing and transmitting data by use of anything but entirely common, generic technology.
Applicant further argues that the claimed invention specify a particular arrangement of components that interact in a non-generic manner to achieve the desired result such as the ability to modify and execute instructions in real-time based on customizable parameters resulting in a technical solution. The argument is not persuasive. The focus of the claims is not on an improvement to the identified additional elements as tools, but on the abstract ideas that use the additional elements as tools. The use of generic computer components to carry out the abstract idea does not impose any meaningful limit on the computer implementation of the abstract idea. Thus, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
On page 13 of the Remarks, Applicants submit that the claims at issue are similar to those in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). The arguments are not convincing.
In DDR, the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet. In particular, the court said that “these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The court concluded that “instead of the computer network operating in its normal, expected manner by sending the website visitor to the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to t[a] hybrid web page that presents product information from the third-party and visual ‘look and feel' elements from the host website. When the limitations of the … patent' s asserted claims are taken together as an ordered combination, the claims recite an invention that is not merely the routine or conventional ‘use of the Internet.' ” The DDR claims “do not broadly and generically claim ‘use of the Internet' to achieve the desired result, but instead “specify how interactions with the Internet are manipulated to yield a desired result.” Id. at 1258. Claims that specify how to overcome a technological challenge are eligible. The claims here do not solve a technological problem with a technological solution. The claims here executing instructions on a server, using a computing device in its ordinary capacity, communication with a second server using an application programming interface (API).
Considering the claim language in light of the problem and solutions described in the applicant’s Specification, the heart of the invention lies in identifying, promoting and displaying financing opportunities to a consumer when viewing an item of interest to be purchased. The claims here do not recite an improvement to a particular computer technology. Instead, the applicant’s claims address a business problem in which financing options are displayed to a consumer when deciding to purchase an item on a webpage. The solution applicants describe relates to an improvement to the business practice.
Mere instructions to apply an exception using generic computer components cannot provide an inventive concept under Step 2B. The rejection of the claims under 35 USC 101 is maintained.
On page 13 of the Remarks, regarding the rejection under 35 USC 103, Applicants contend that the cited references fail to teach at least the following limitations of amended independent claims 1 and 3. The Examiner respectfully disagrees and has indicated how the prior art teaches each of the limitations argued below (it is noted that there is a new 35 USC 112(a) rejection on some of the claim limitations) :
"receiving, at the computing device, interface instructions stored on the server and enabling interaction with the content presented by the viewing instructions, wherein a first format of the interface instructions and the viewing instructions is compatible with the computing device" -- Hong disclose analyzing the data and executing the software instructions to perform server-based functions and operations -[0067]-[0069]; [0081];
"executing, by the web browser of the computing device, first instructions of the interactive element and the executable element to present, on the display and in association with the viewed item in a graphical user interface (GUI), at least one of the total amount, the term, or the term amount utilizing the representation of the interactive element, wherein the first instructions are in the first format compatible with the computing device," Hong discloses in Fig. 1C an executable element of Buy Now in association with the viewed item and further displays the total amount; see also [0081];
"receiving, via the interactive element of the GUI, input modifying at least one of the total amount, the term, or the term amount," Fang, not Hong, disclose [0052] As shown in FIG. 3, a first user (User 1) interacts with financing elements displayed on a GUI. The user interactions, for example, may include a customer modifying an initial offer of term for the financing from a lender. The modifying may subsequently provide a series of term options higher/lower in a standardized range (e.g., 12 month increments). A user interacting with this graphic can choose a specific term and see a resulting recalculation of other terms associated with this transaction at the new term. Fig. 7 shows initial offer terms, and modified input;
"transmitting, by the web browser to the second server via the API, the modified at least one of the total amount, the term, or the term amount;" and "modifying, by the second server, second instructions of the executable element from a second format to the first format to generate modified instructions of the executable element." Fang, not Hong, disclose [0059] As a non-limiting example with regards to FIGS. 1-7 one or more processes described with respect to FIG. 6 may be performed by a mobile device (e.g., client device 102 of FIG. 1) or a server (e.g., part of cloud processing systems 106 of FIG. 1) for analyzing financial purchase information associated with user interaction with graphically displayed financing elements. In embodiment 600, client device 102 and/or the server may execute code in memory to perform certain steps associated with FIGS. 1-7. The GUI application determines whether the requested data is stored locally (e.g., mobile device memory) or remotely (e.g., cloud-based financial platform).
Conclusion
8. 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 ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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, Bennett Sigmond can be reached at (303)297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694
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