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 12/22/2025.
Claims 1-20 are currently pending, and claims 1-13 have been examined.
Claims 1 and 7 are amended.
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: a plurality of items available for purchase at the retailer;... 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 of the plurality of items 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; 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 12/22/2025 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 11 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. Whether or not the claims recite additional elements (i.e. non-abstract limitations) is considered in Prong Two and Step 2B.
On page 12 of the Remarks, Applicant argues “Present claims 1-13 are eligible under Step 2A Prong Two because the present claims as a whole integrate the abstract idea into a practical application”. Specifically, Applicant argues “claim 1 is patent-eligible because the improved graphical user interface as recited in claim 1 provides a technological solution to a technological problem and integrate the abstract idea into a practical application”.
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).
Applicant’s specification does not identify technical problems in existing graphical user interfaces, nor does it provide sufficient details that one of ordinary skill in the art would recognize the claimed graphical user interface as providing a technical improvement. The problems identified on page 12 of the Remarks, “inefficient navigation, missed purchases, and diminished user experience”, are business/shopping problems unrelated to any specific technology. Instead of improving computer/technology capabilities, the claim invokes generic devices as tools to perform the abstract idea which does not render an abstract idea eligible. For example, paragraph [0024] of the Specification establishes that the claimed display is generic technology by representing the electronic device (comprising a display) as an iPad or smartphone. Similarly, paragraph [0042] establishes that the claimed wireless access point can include any known wireless interfacing device. Examiner notes that while Applicant argues that the claims integrate “real-time” item positioning, the claim language does not require that the positioning or recommendation occur in real-time. Accordingly, the additional elements amount to no more than generic tools, or generally linking the abstract idea to a generic computer environment.
On page 13 of the Remarks, Applicant further argues the claims are eligible for reasons similar to Core Wireless. The Examiner respectfully disagrees.
Unlike Core Wireless, the instant specification does not confirm that the claims disclose improved user interfaces by teaching deficits in prior art interfaces relating to efficient functioning of the computer. As explained above, the instant specification is silent as to the state of the art or problems of existing graphical user interfaces. Dynamically generating a visual map providing instructions to a most frequently bought item, as presently recited, is not comparable to “sav[ing] the user from navigating to the required application, opening it up, and then navigating within that application to enable the data of interest to be seen or function of interest to be activated”. The instant claims are not tied to the specific technology of navigating applications to find the right data/functionality but to the sales activity of navigating a store to locate a product. Accordingly, this argument is not persuasive.
On page 13 of the Remarks, Applicant further argues “amended claim 1 is a patent-eligible because amended claim 1 recites a specific manner of automatically displaying a GUI element” similar to Example 37. 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”. The only technical limits placed on the displaying is that is occurs on an electronic device, when the user selects the most frequently bought item. This description is not equivalent to the “specific manner” of displaying in Claim 1 of Example 37 which recites “determining, by the processer, an amount of use of each icon over a predetermined period of time” and “automatically moving the most used icons to a position on the GUI closest to the start icon of the computer system based on the determined amount of use”. For example, the instant claims do not recite any elements of the visual map (such as an icon), any criteria for organizing the elements of the visual map, or any steps of organizing the map based on the determined criteria. Instead, the broadest reasonable interpretation of Applicant’s displaying step is to generate a visual map providing directions to the item on an electronic device at runtime in response (i.e., “dynamically”) to the user selecting the most frequently bought item. This limitation amounts to no more than instruction to implement the abstract idea (generating a visual map providing directions to an item) on a computer. Accordingly, the Examiner maintains the additional elements do not integrate the recited abstract idea into a practical application.
On page 14 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).
As discussed above, the additional elements amount to mere instruction to apply the abstract idea on a generic computer. 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 wifi. The combination of an electronic device and a wireless access point (WAP) is a generic environment. See MPEP 2106.5(d) “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 (utilizing an intermediary computer to forward information); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); 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. 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:
J. Villegas and S. Saito (NPL Reference U) presents a system prototype aimed at lowering the burden of grocery shopping by recommending products according to those currently in a shopping basket, and supporting users in finding their way from their current position to the location of a determined item within the store
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 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