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 .
Status of Claims
This action is in reply to the claims filed on 06/08/2025.
Claims 1-20 are currently pending, and claims 1-13 have been examined.
Claims 1 and 7 are amended.
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/08/2026 has been entered.
Allowable Subject Matter
Claims 1-13 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
Claim Rejections- 35 U.S.C. § 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 1-13 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Under Step 1 of the subject matter eligibility (SME) analysis described in MPEP 2106.03, the instant claims fall within the four statutory categories of invention identified by 35 U.S.C. 101. In the instant case, claims 1-13 are directed to methods. Claims 1 and 7 are parallel in nature, therefore, the analysis will use claim 1 as the representative claim.
In Step 2A Prong One, it must be considered whether the claims recite a judicial exception. Claim 1, as exemplary, recites abstract concepts including: obtain identifying data corresponding to a first item collected by the user for purchase while the user is shopping at the retailer; determine a location; determine information associated with the first item selected by the user, the information comprising a location of the first item, wherein determining information comprises estimating that the location of the first item is within a threshold distance from the location ...; identify one or more items previously purchased by the user that are within a threshold proximity to the location of the first item based on a stored user profile, wherein the threshold proximity is dynamically updated based on a historical pattern over a period of time of a failure to cause the user to purchase a suggested item; determine... a most frequently bought item of the identified one or more items previously purchased by the user; cause display ... of a suggestion for the user to collect the most frequently bought item; cause display ... of a visual map providing directions to the most frequently bought item, wherein the visual map is dynamically generated when the user selects the most frequently bought item; update the stored user profile when the user purchases the most frequently bought item, ... bases a subsequent determination of the most frequently bought item to be suggested to the user on the updated stored user profile; and update the threshold proximity used in the subsequent determination of the most frequently bought item suggested to the user based on a failure to cause the user to purchase the most frequently bought item.
These recited limitations recite the abstract idea of “recommending an item and providing directions to an item based on a user’s in-store location”, which falls within the “Certain Methods of Organizing Human Activities” grouping of abstract ideas as it relates to commercial interactions of sales activities or behaviors. Accordingly, claims 1 and 7 recite an abstract idea. See MPEP 2106.04.
In Step 2A, Prong Two Examiners evaluate whether the claim recites additional elements that integrate the judicial exception into a practical application. Instant claims 1 and 7 recite additional elements including: an application associated with the retailer and operable with an electronic device associated with a user that is shopping at the retailer, the electronic device in cooperation with the application configured to obtain data; a control circuit communicatively coupled to the application via a network; determine a location of the electronic device based on the electronic device’s coupling with a wireless access point of the retailer; using a trained machine learning model; cause display on the electronic device.
The portable electronic device, associated application, control circuit, network, wireless access point of the retailer, and trained machine learning model are each recited as generic components used to perform generic functions to implement the abstract idea. The Specification demonstrates the generic nature of the computer in ¶ [0040], “the circuits, circuitry, system, devices, processes, methods, techniques, functionality, services, servers, sources and the like described herein may be utilized, implemented and/or run on many different types of devices and/or systems” and the generic nature of the wireless access point in ¶ [0042] “the I/O interface 834 can provide wireless communication ... and in some instances may include any known wired and/or wireless interfacing device, circuit and/or connecting device”. Rather than confining the abstract idea to a particular practical application, the additional limitations are invoked merely as tools. As explained in MPEP 2106.05(f), limitations that do not amount to more than mere instruction to implement the abstract idea on a computer (“apply it” or equivalent), does not integrate the abstract idea into a practical application. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05. Claims 1 and 7 are then directed to an abstract idea.
Under Step 2B of the SME analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the 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).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) individually and in combination are merely being used to apply the abstract idea to a general computer components. For the same reason, the elements are not sufficient to provide an inventive concept. As the court emphasized in Electric Power:
Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting desired information. ... We have repeatedly held such invocations of computers and networks that are not even arguably inventive are “insufficient to pass the test of an inventive concept in the application” of an abstract idea.
Accordingly, claims 1 and 7 lack an inventive concept and are ineligible subject matter.
Dependent claim(s) 2-3, 5-6, 8-10 and 12-13 do not aid in the eligibility of the independent claims. These claims merely further define the abstract idea without reciting any further additional elements. Thus dependent claims 2-3, 5-6, 8-10 and 12-13 are also ineligible.
Dependent claim 4 and 11 recite additional elements including: receive an initiation signal from the electronic device when the user enters the retailer and in response to the receipt of the initiation signal, provide a store identifier associated with the retailer to the electronic device, wherein the store identifier is stored by the electronic device. Similar to the additional elements identified above, these recitations contain no description of the mechanism for accomplishing the result (receiving the initiation signal and storing by the election device) which is equivalent to the words “apply it”. The ordered combination of storing data in response to receiving a signal provides no more than when the elements are considered individually. Accordingly, claim(s) 4 and 11 are ineligible.
Response to Arguments
Applicant's arguments filed 06/08/2026 with respect to the 35 U.S.C. § 101 rejections of claims 1-13 have been fully considered but they are not persuasive.
On page 10 of the Remarks, Applicant argues “Claim 1, as amended does not recite a judicial exception”.
The Examiner respectfully disagrees. Examiners should determine whether a claim recites (i.e., set forth or describe) an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas. If the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One. See MPEP 2106.04(a).
The Office Action identifies several abstract limitations in independent Claims 1 and 7 including: identify one or more item previously purchased by the user that are within a threshold proximity, determine ... a most frequently bought item of the identified one or more items, cause display ... of a suggestion for the user to collect the most frequently bought item, and cause display ... of visual map providing directions to the most frequently bought item. These limitations describe a process for providing shopping guidance by recommending an item to a user and providing directions to the recommended item. Providing shopping guidance is a “sales activity or behavior”, classified under commercial interactions within the certain method of organizing human activity. See MPEP 2106.04(a). Accordingly, the Examiner maintains that the claims recite an abstract idea in Prong One. Reciting computer functionalities and abstract limitations still leads to the conclusion that the claim recites abstract activity in Prong One.
On page 11 of the Remarks, Applicant argues “The claim as a whole integrates the recited judicial exception into a practical application”. Specifically, Applicant argues “claim 1, as amended, improves the way a machine learning model itself operates, similar to Desjardins and Enfish.
The Examiner respectfully disagrees. If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. See MPEP 2106.05(a). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See MPEP 2106.05(f).
Applicant’s specification does not identify technical problems in existing machine learning techniques, nor does it provide sufficient details that one of ordinary skill in the art would recognize the claimed machine learning applications as providing a technical improvement. Claim 1 recites “determine, using a trained machine learning model, a most frequently bought item of the identified one or more items previously purchased by the user” and “update, using the trained machine, the stored user profile when the user purchases the most frequently bought item”. These limitations are no more than mere instruction to perform abstract sales activity (determine a most frequently bought item) and existing processes (update stored data), “using” a trained machine learning model. Invoking a computer (including a machine learning model) merely as a tool is not sufficient to show a technical improvement. Claim 1 additionally recites “wherein the trained machine learning model bases a subsequent determination of the most frequently bought item to be suggested to the user on the updated stored user profile”. A machine learning model basing subsequent determinations on updated information (i.e. iterative learning) is incident to the very nature of machine learning. Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025). Instead of disclosing “a specific implementation of a solution to a problem in the software arts,” (Enfish) or “an improvement to how the machine learning itself operates” (Desjardins), the only thing the claims disclose about machine learning is that the machine learning is used in the environment of shopping at a retailer and determining most frequently bought items. Accordingly, the Examiner maintains that claims do not reflect an improvement to machine learning technology.
Applicant further argues “the system is thereby iteratively optimized over time to provide more relevant suggestions based on the user’s own purchasing behavior”, and “this iterative, feedback-driven improvement to the system is similar to the invention in Example 39 of the Subject Matter Eligibility Examples (“Examples”), in which a claim drawn to iteratively training and improving a system based on collected data was found to be patent-eligible” (Remarks, pg. 12).
The Examiner respectfully disagrees. It is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.
Improving the relevance of item suggestions based on the user’s purchasing behavior is a business improvement, and not an improvement to the recited “device” or “network” which are used in their ordinary capacity to perform abstract processing, and communicate/display information. Updating a threshold proximity used in an item determination further describes the abstract sales activity and could also be considered a mathematical concept. Regarding Example 39, the Applicant appears to be mischaracterizing the Office’s analysis. The claim in Example 39 was found to be patent-eligible in prong one because the claim does not recite any of the judicial exceptions enumerated in the 2019 PEG. There is no prong two analysis in Example 39 and thus no guidance on whether this claim is a technical improvement. As explained above, the instant claims do recite an abstract idea and therefore cannot be found eligible in prong one as was the case in Example 39.
On page 12 of the Remarks, Applicant further argues “claim 1 recites a specific manner of automatically displaying a GUI element that improves the user interface”. Specifically, Applicant argues “similar to the claim in Example 37, present claim 1 recites a specific manner of displaying a GUI element, a selection-triggered, dynamically generated visual map, that improves the user interface by eliminating the need to navigate through other views to obtain directions”. The Examiner respectfully disagrees.
The instant claims do not recite a “specific manner” of displaying a visual map on GUI. Claim 1 recites “cause display of the electronic device of a visual map providing directions to the most frequently bought item, wherein the visual map is dynamically generated when the user selects the most frequently bought item”, which only links display of a map to an electronic device. Displaying information “triggered” by a user’s selection is the ordinary functionality of existing GUIs. Generally linking this existing technology to a commercial environment where the selection is of an item and the displayed information is a map to the item, is no more than a field of use limitation. Rather than reciting “a GUI” or how a GUI is organized, as in claim 1 of Example 37, the instant claims only limit the abstract idea of displaying a map to an item in response to a user’s item selection to performance “on the electronic device”.
Moreover, the Specification in Example 37 described the technical problem, “traditional software does not automatically organize icons so the most used icons are located near the ‘start’ or ‘home’ icon, where they can be easily accessed”. The claims addressed this issue by reciting “a specific manner of automatically displaying icons to the user based on usage which provides a specific improvement over prior systems, resulting in an improved user interface for electronic devices”(SME examples, pg. 3). In the instant case, the Specification does not identify problems in the organization of the traditional user interfaces nor do the instant claims recite a specific manner of moving icons to certain positions on a GUI. As explained above, if its asserted that the claims improve upon the conventional functioning of computer, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The instant disclosure neither sets forth a technical problem in GUIs nor identifies technical improvements realized by the claim over the prior art. Accordingly, the Examiner maintains the additional elements do not integrate the recited abstract idea into a practical application.
On page 13 of the Remarks, Applicant argues “the present claims have additional elements that provide an inventive concept, individually and in combination”.
The Examiner respectfully disagrees. It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014).
The additional elements recited in claim 1 include: an electronic device coupled to a wireless access point of a retailer; an application associated with the retailer and operable with an electronic device; a control circuit communicatively coupled to the application via a network; a trained machine learning model; and cause display on the electronic device. The steps of “estimating that the location of the first item is within a threshold distance of the device location” and “dynamically generating a visual map providing directions to the most frequently bought item in response to the user’s selection of that item” are an abstract mathematical calculation and sales abstract. The broadest reasonable interpretation of “determine a location of the electronic device based on the electronic device’s coupling with a wireless access point of the retailer” is detecting that the device has connected to the store’s wi-fi. The combination of an electronic device and a wireless access point (WAP) is a generic environment. For example, see MPEP 2106.5(d) “The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity ... i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)” and ¶ [0042] of Applicant’s Specification (“For example, the I/0 interface can provide wired communication and/or wireless communication (e.g., Wi-Fi, Bluetooth, cellular, RF, and/or other such wireless communication), and in some instances may include any known wired and/or wireless interfacing device, circuit and/or connecting device, such as but not limited to one or more transmitters, receivers, transceivers, or combination of two or more of such devices”). Accordingly, the combination of the identified additional elements amounts to no more than, for example, a smartphone connected to a retailer’s wi-fi. This is consistent with Applicant’s Specification at ¶ [0024]. The electronic device is described as a “a smartphone ... among other types of electronic device capable of being carried and/or transported from one location to another with ease”, and the network is described as “Wi-Fi ... among other types of communication networks being capable of coupling one electronic device to another one or more electronic devices”. A device (including a control circuit, and trained machine learning model) and wireless access point that can be among other types is not a particular machine (see MPEP 2106.05(b) “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines)”).
As such, the Examiner maintains that the additional elements do not provide an inventive concept.
For at least these reasons, the Examiner is maintaining the 101 rejections of claims 1-13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
M. Pandey, B. Hazela and V. Singh (NPL Reference U) discusses the progress of a location-aware recommendation systems that allows users to ask for the feedback about the routes from their current geographical location to the destination.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNEDY A GIBSON-WYNN whose telephone number is (571)272-8305. The examiner can normally be reached M-F 8:30-5:30 PM.
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/K.G.W./Examiner, Art Unit 3688
/Jeffrey A. Smith/Supervisory Patent Examiner, Art Unit 3688
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