DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/20/2026 has been entered.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Applicant claims priority to provisional U.S. Patent Application No. 63/342,555, filed 5/16/2022.
Information Disclosure Statement
The IDSs submitted on 8/2/2023 has been considered.
Status of Claims
Applicant’s amended claims, filed 2/20/2026, have been entered. Claims 1, 4, and 9 have been amended. Claim 17 was previously canceled. Claims 1-16 and 18-20 are currently pending in this application and have been examined.
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 1-16 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) an abstract idea. This judicial exception is not integrated into a practical application. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 1 of the Alice/Mayo test the claims are directed to statutory categories. Specifically, the methods, as claimed in claims 1-16 and 18-20, are directed to a process (see MPEP 2106.03).
Under Step 2A (prong 1), claim 1, taken as representative, recites at least the following limitations (emphasis added) that recite an abstract idea:
providing choices of photofinishing services, retailers, retail locations, delivery methods, and payment options:
provide to the user the ability to send one or more images to a selected retailer and retail location;
receive from the user a remote order comprising: a type and amount of photo products to be made from the one or more images, a plurality of additional non-photo retail products, a delivery means, and a payment option;
coordinate communications for: production of the photo products, billing, and the plurality of additional non-photo retail products selected by the user;
communicate the plurality of additional non-photo retail products to a retail staff and/or personal shopper;
estimate a production queue time of the remote order;
compare the production queue time with a maximum ambient time for at least one additional non-photo retail product of the plurality of additional non-photo retail products;
adjust positioning of the photo products in a print queue based at least in part on the comparison of the production queue time with the maximum ambient time;
coordinate delivery, and payment of the photo products and the plurality of additional non-photo retail products; and
determine availability of photofinishing materials required for production of the photo products and, if the photofinishing materials are unavailable, offering to the user alternative fulfillment options comprising alternative delivery methods or alternative pickup locations.
These limitations recite certain methods of organizing human activity, such as performing commercial interactions (see MPEP 2106.04(a)(2)(II)). Certain methods of organizing human activity are defined by MPEP 2106.04 as including “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” In this case, the abstract ideas recited in representative claim 1 are certain methods of organizing human activity because providing services to a user including ordering a product and coordinating delivery and payment of the order is a commercial or legal interaction because it is a advertising, marketing or sales activity, or business relations.
Thus, claim 1 recites an abstract idea.
Under Step 2A (prong 2), if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception (see MPEP 2106.04). As stated in the MPEP, when “an additional element merely recites the words ‘apply it (or an equivalent) with the judicial exception, or merely uses a computer as a tool to perform an abstract idea,” the judicial exception has not been integrated into a practical application. In this case, representative claim 1 includes additional elements such as (emphasis added):
providing, by a processor, via a communications network and user interface, choices of photofinishing services, retailers, retail locations, delivery methods, and payment options, wherein the processor is configured to:
provide to the user, via the user interface, the ability to send one or more digital images to a selected retailer and retail location via the communications network;
receive from the user a remote order comprising: a type and amount of photo products to be made from the one or more digital images, a plurality of additional non-photo retail products, a delivery means, and a payment option;
coordinate communications for: production of the photo products, billing, and the plurality of additional non-photo retail products selected by the user;
communicate the plurality of additional non-photo retail products to a retail staff and/or personal shopper;
estimate a production queue time of the remote order;
compare the production queue time with a maximum ambient time for at least one additional non-photo retail product of the plurality of additional non-photo retail products;
adjust positioning of the photo products in a print queue based at least in part on the comparison of the production queue time with the maximum ambient time;
coordinate delivery, and payment of the photo products and the plurality of additional non-photo retail products; and
determine availability of photofinishing materials required for production of the photo products and, if the photofinishing materials are unavailable, offering to the user alternative fulfillment options comprising alternative delivery methods or alternative pickup locations.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. These additional elements merely amount to the general application of the abstract idea to a technical environment (“by a processor, via a communications network and user interface”, “via the user interface”, “via the communications network”) and insignificant pre-and-post solution activity (providing/transmitting/communicating/coordinate communications for information and receiving information). The specification makes clear the general-purpose nature of the technological environment. This is because the additional elements of claim 1 are recited 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 the abstract idea) (see page 4 of the Specification [The order can be placed on a smartphone, computer, or any other networked computational device. Additionally, the kiosk may include a processor and display for placing orders locally.] and pages 7-9 of the Specification [“The ordering system can use a "chatbot" graphical user interface for configuring orders. The chatbot can provide for the selection of a retail location and checklist of common items available for purchase. The chatbot can be configured with a search function for items not presented. The chatbot can be further configured to provide digital photo upload, editing, and order processing… The kiosk can comprise a processor and communications device for sending and receiving instructions from the customer. The communication device can communicate by a wired connection, wireless cellular, or Wi-Fi modem. The kiosk can be configured to connect to the internet through the retailer's network connection.”]). The specification indicates that while exemplary general-purpose systems may be specific for descriptive purposes, any elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim. The description demonstrates that these additional elements are merely generic devices such as a generic computer. Further, the additional elements do no more than generally link the use of a judicial exception to a particular environment or field of use (such as the Internet or computing networks).
Therefore, considered both individually and as an ordered pair, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional elements are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not transform or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technology environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
In addition to the above, the recited receiving and providing/transmitting/coordinating/communicating steps (even assuming arguendo they do not form part of the abstract idea, which the Examiner does not acquiesce), are at best little more than extra-solution activity (e.g., data gathering, presentation of data) that contributes nominally or insignificantly to the execution of the claimed system (see MPEP 2106.05(g)).
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to claim 1, taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). 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 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.
Furthermore, the additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the additional elements of claim 1 utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data over a network,
storing or retrieving information from memory,
presenting offers
Even considered as an ordered combination (as a whole), the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding claims 2, 4, and 8-12
Dependent claim(s) 2, 4, and 8-12, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. More specifically, dependent claim(s) 2, 4, and 8-12 merely further define the abstract limitations of claim(s) 1 or provide further embellishments of the limitations recited in independent claim claim(s) 1.
Claims 2, 4, and 8-12 set forth:
wherein the delivery means include: pickup at store, inside the store pickup, curbside delivery, via a drive through pickup window, home delivery, or to a selected recipient.
wherein at least one additional non-photo retail product comprises a perishable retail product.
wherein the processor is portable and configured to operate in harsh environments including warehouses, loading docks, or product marshalling areas.
wherein a photofinishing billing is charged separately from the plurality of additional non-photo retail products.
wherein the remote order is packaged to prevent unauthorized viewing of the printed images or photo products using obscuring envelopes, packages, boxes with an external surface of the package and include printed human and machine-readable order identification information.
further comprising: packaging a stack of prints with an obscuring top print that includes the human and machine-readable order identification information that is secured with a paper, plastic, or elastic band.
wherein the remote order that is sent by the user to the designated retailer and retail location is forwarded to another associated retailer or local photofinishing hub for production.
Such recitations merely embellish the abstract idea of providing services to a user including ordering a product and coordinating delivery and payment of the order. The claims do not set forth any further additional limitations, and therefore such abstract embellishments are applied to the additional limitations recited in claim(s) 1, which do no more than generally link the use of the abstract idea to a particular technological environment, do not integrate the abstract idea into a practical application, and do not provide an inventive concept. Accordingly, the claims do not confer eligibility on the claimed invention and is ineligible for similar reasons to claim(s) 1.
Thus, dependent 2, 4, and 8-12 are ineligible.
Regarding claims 3, 5-7, 13-16, and 18-20
Dependent claim(s) 3, 5-7, 13-16, and 18-20 sets forth:
further comprising notifying the user via a text, email, or phone call with an estimated delivery time and location
wherein a retail staff, personal shopper, photo kiosk provider, or third-party service provider performs one or more actions selected from the group consisting of: media resupply, routine service, error correction, software updates, product updates, and promotional updates for a photo kiosk system.
wherein the choices of photofinishing services comprise: production of photo prints, photo products, framed photographs, photo albums, photo mugs, photo apparel, or virtual photo products stored on portable memory device or delivered via a network.
wherein the processor is configurable to accommodate multiple output device and printer types.
wherein the communications network comprises an integrated internet connection such as cellular network access and accesses the internet by connecting to a retailer's network connection.
wherein a packaging means is integrated into a photo kiosk.
forwarding the remote order if the remote order requires additional photofinishing steps to the local photofinishing hub for production.
wherein the user interface is provided as a chatbot.
wherein an autonomous photo order dispensing device is used for pickup at store, inside the store, curbside delivery, or via a drive through pickup window.
further comprising using a user's phone to provide order and payment confirmation.
further comprising providing home delivery via an autonomous or remotely piloted delivery drone.
Such recitations merely embellish the abstract idea of providing services to a user including ordering a product and coordinating delivery and payment of the order. While the claim(s) do set forth the additional elements of “email”, “phone call”, “software” updates, stored on “portable memory device” or delivered “via a network”, “output device and printer types”, “an integrated internet connection such as cellular network access”, “a retailer's network connection”, “a packaging means”, “a chatbot”, “an autonomous photo order dispensing device”, “a user’s phone”, and “an autonomous or remotely piloted delivery drone,” these recitations are similar to the additional limitations in claim 1, as they do no more than generally link the use of the abstract idea to a particular technological environment. That is these additional elements merely amount to the general application of the abstract idea to a technical environment. The specification makes clear the general-purpose nature of the technological environment. Pages 7-9 of the Specification indicates that while exemplary general-purpose systems may be specific for descriptive purposes, any elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim. Therefore, these additional elements do not integrate the abstract idea into a practical application because they merely amount to using a computer to apply the abstract idea and no more than a general link of the use of the abstract idea to a particular technological environment or field of use and thus do not act to integrate the abstract idea into a practical application of the abstract idea. Further, the “an autonomous or remotely piloted delivery drone” is recited at a high level and amounts to merely applying the abstract idea (see page 5 of the Specification reciting autonomous and/or remotely piloted terrestrial or arial delivery drones 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 the abstract idea)).
Additionally, the additional elements do not amount to significantly more because they merely amount to using a computer to apply the abstract idea and amount to no more than a general link of the use of the abstract idea to a particular technological environment.
Thus, dependent claims 3, 5-7, 13-16, and 18-20 are also ineligible.
Examiner’s Comment
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Reference A of the Notice of References Cited Sainfort et al. (US 2016/0086255 A1) discloses an order fulfillment system that adjusts the positioning of the ordered products within a pick list based on perishability rankings.
Response to Arguments
Applicant’s arguments, on pages 6-11 of the Remarks filed 2/20/2026, with respect to the previous 35 USC §101 rejections have been fully considered but they are not persuasive.
Specifically, on pages 8-9 of the Remarks Applicant argues claim 1 is improperly categorized as an abstract idea. Examiner respectfully disagrees. MPEP 2106.04 instructs examiners to refer to the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2) (i.e., mathematical concepts, certain methods of organizing human activities, and mental processes) in order to identify abstract ideas. As noted above and in the previous office action, the claims recite providing services to a user including ordering a product and coordinating delivery and payment of the order. This is an abstract idea because it is a concept of business relations between a user and a retailer, which makes it a method of organizing human activity (i.e., one of the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2)). Further, while applicant argues the invention provides an improvement for remote ordering and fulfillment of photofinishing services and non-photo retail products integrated with retail systems such as “Buy Online, Pickup In Store” (“BOPIS”) and personal shopper delivery, Examiner notes claims directed to the argued “remote ordering and fulfillment of photofinishing services and non-photo retail products integrated with retail systems such as “Buy, Pickup In Store” (“BPIS”) and personal shopper delivery” recites an abstract idea and is encompassed within “providing services to a user including ordering a product and coordinating delivery and payment of the order” and is considered a commercial or legal interaction because it is a advertising, marketing or sales activity, or business relations. The additional argued element of buying “online” is considered under Alice/Mayo Step 2A, prong 2 and is only generally linked to a particular technological environment of field of use (e.g., computer networks of the Internet).
Applicant argues on page 9 that the Office is improperly equating the improvements provided by the claims as merely high level concepts that may be performed in the human mind. Examiner respectfully disagrees. The test for whether a concept is relating to “certain methods of organizing human activity” is not whether they may be performed in the human mind. Certain methods of organizing human activity “encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping” (see MPEP 2106.04(a)(2)). Further, the claims in Ex parte Desjardins, from which Applicant cites, were found to recite an abstract idea (Step 2A, prong one: Yes).
Accordingly, Examiner maintains the claims clearly recite an abstract idea.
On pages 9-11 of the Remarks Applicant argues claim 1 is integrated into a practical application. Examiner respectfully disagrees. Specifically, on pages 9-10, Applicant argues the practical application of claim 1 is directed towards “comparing the maximum time amount of time that a non-photo retail product can exist in an ambient environment, to how long it will take for the print production of the photo products to complete, and prioritizing a remote order containing non-photo retail products if the production queue time is longer than the maximum ambient time.” Examiner notes these arguments are directed to an improved abstract idea and are encompassed within the stated abstract idea of “providing services to a user including ordering a product and coordinating delivery and payment of the order” and argued “practical application” does not contain any additional elements, such as hardware, beyond the abstract idea itself. Abstract ideas are not patent eligible, therefore this limitation cannot provide integration.
On pages 10-11 of the Remarks Applicant argues claim 1 improves a technical field because the present technology includes “drawbacks associated with coordinating order processing and pickup with other items during shopping, such as when customers wish to obtain photo print products while shopping for perishable goods such as groceries. See, e.g., Specification, page 1, lines 19-25. Embodiments of the present technology overcome the drawbacks with traditional in-store photo service models that can often result in long queue times…and lack integration with broader retail systems.” Once again, these arguments are directed to an improved abstract idea and are encompassed within the stated abstract idea of “providing services to a user including ordering a product and coordinating delivery and payment of the order.” MPEP 2106.04(d) uses the term additional elements to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception. Abstract ideas are not patent eligible, therefore these argued limitations cannot provide integration. Additionally, Applicant’s specification provides no explanation of an improvement to the functioning of the computer or other technology. Rather, the claims focus “on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id citing Enfish at 1327, 1336. As such, the claims do not recite specific technological improvements.
Accordingly, Examiner maintains the additional elements do not integrate the abstract idea into a practical application and the 35 USC §101 rejections are maintained for claims 1-16 and 18-20.
Applicant’s arguments, on pages 12-16 of the Remarks filed 2/20/2026, with respect to the 35 USC §103 rejections have been fully considered but are persuasive in view of the amended claims. Accordingly, the previous 35 USC §103 rejections have been withdrawn.
Conclusion
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LINDSEY B. SMITH
Examiner
Art Unit 3688
/LINDSEY B SMITH/ Examiner, Art Unit 3688
/Jeffrey A. Smith/ Supervisory Patent Examiner, Art Unit 3688