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 .
Response to Arguments
In view of the Notice of Panel Decision from Pre-Appeal Brief Review filed on March 19, 2026, in response to the Pre-Appeal Brief Request for Review filed October 28, 2025, PROSECUTION IS HEREBY REOPENED. The prior art rejection of claims 1, 3-7, 9, 11-15 and 17-22 under 35 U.S.C. 103 set forth in the Final Office action mailed May 13, 2025 is withdrawn. New grounds of rejection under 35 U.S.C. 112 and new objections are set forth below. This Office action is non-final.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 234 (“Image Capturing Device” Fig. 2). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because the rectangular and rounded boxes shown in FIG. 1 that are designated by reference characters 120 (server), 135 (processor), 140 (memory), 145 (display), and 150 (RF transceiver) are unlabeled and should be provided with descriptive text labels. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: (1) in ¶[0012], “The centrally computing system” should read “The central computing system”; (2) in ¶[0028], “substituted for the first available physical object” should read “substituted for the first unavailable physical object”; (3) in ¶[0032], reference character 110, which designates the central computing system, is misapplied to the physical object in the phrase “deliver the physical object 110 from the second facility”; (4) in ¶[0037], “users data source 125” should read “users data source 130”; (5) in ¶[0039], “central computing system 1100” should read “central computing system 110”; (6) in ¶[0052], “similar physically objects” should read “similar physical objects”; (7) in ¶[0053], the phrase “the central computing system” is duplicated (“In operation 408, the central computing system the central computing system can generate…”); (8) in ¶[0059], the sentence ending “…dynamically learn similar physical objects to the unavailable” is incomplete; (9) in ¶[0038], “Selection of a substitute product by the user indicate” should read “…indicates”; (10) in ¶[0011], the parenthetical beginning “(e.g., other geographic locations that are within a specified distance of the geographic location associated with the request” is not closed with a parenthesis; (11) the specification and drawings use inconsistent terminology for the same elements — element 214 is the “visual display device” in ¶[0044] but “Virtual Display Device” in FIG. 2, element 212 is the “virtual machine” in ¶[0042] but “Virtual System” in FIG. 2, and element 220 is the “multi touch interface” in ¶[0044] but “Multi-point touch interface” in FIG. 2; and (12) in ¶[0041], element 110 is referred to as a “distributed computing system” and as “computing device 110,” whereas it is the “central computing system” elsewhere.
Appropriate correction is required.
Claim Objections
Claims 9, 13, 17, and 22 are objected to because of the following informalities: in claim 9, “within a second list of one more physical objects” should read “one or more physical objects,” and “to prompting a selection of a replacement physical object” should read “to prompt a selection of a replacement physical object”; in claim 13, “replacing the identifier of first physical object” should read “replacing the identifier of the first physical object”; in claim 17, “to replace, within list of one or more physical objects” should read “within a list of one or more physical objects,” and “to prompting a selection of a replacement physical object” should read “to prompt a selection of a replacement physical object”; and in claim 22, the limitation “wherein the instructions when executed of the identifying the first substitute physical object to be substituted for the unavailable first physical object comprises triggering a machine learning model” is grammatically incomplete and should be rewritten (for example, “wherein the instructions, when executed, cause the at least one processor to trigger a machine learning model based on the first physical object being unavailable and to identify the first substitute physical object based on dynamically learned matching behavior”).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 15, 18, 19, and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites that the central computing system is to “find the one of the available physical objects as a suitable replacement of the first physical object.” The term “suitable” is a subjective -term of degree which renders the claim indefinite. Neither the claim nor the specification provides an objective standard for ascertaining when a replacement is “suitable”; the specification uses the phrase “suitable replacement” (¶[0056]) without quantifying or otherwise bounding it. One of ordinary skill in the art would not be reasonably apprised of the scope of the claim.
For purposes of examination, “a suitable replacement” is interpreted under BRI to encompass any one of the available physical objects identified as matching the first physical object based on the data associated with the available physical objects and the data associated with the multiple users (¶[0056]), the specification supplying no objective “suitability” threshold.
Claim 15 recites “finding the one of the available physical objects as a suitable replacement of the first physical object.” For the same reasons set forth with respect to claim 7, the subjective term “suitable” renders claim 15 indefinite, the specification providing no objective standard for ascertaining the requisite degree of suitability.
For purposes of examination, “a suitable replacement” is interpreted under BRI to encompass any one of the available physical objects identified as matching the first physical object based on the recited data (¶[0056]).
Claim 18 recites that the application is configured to communicate the identifier “in response to the determination that the first physical object is unavailable.” There is insufficient antecedent basis for this limitation in the claim. Parent claim 1 does not recite “a determination” or any act of determining that the first physical object is unavailable.
Claim 18 further recites “the application executed on the hand-held electronic device.” This limitation is indefinite because claim 1 introduces multiple distinct devices — “a plurality of hand-held electronic devices,” “a first hand-held electronic device,” and “a second hand-held electronic device” — and it is unclear which of these is referenced by the unqualified “the hand-held electronic device.”
For purposes of examination, “the determination that the first physical object is unavailable” is interpreted under BRI as a determination, by the hand-held electronic device or the central computing system, that the first physical object is unavailable (¶[0011]; ¶[0048], operation 302), and “the hand-held electronic device” is interpreted as the “first hand-held electronic device” of claim 1.
Claim 19 recites receiving “a selection … of a second physical object to be added to the list of one or more physical objects” and determining “that the second physical object has become unavailable.” Parent claim 1 already recites “a second physical object that is unavailable” associated with a second list and a second user. It is unclear whether the “second physical object” of claim 19 is the same as, or different from, the “second physical object” of claim 1; the two recitations cannot be reconciled because they are associated with different lists and different users. The claim is therefore indefinite.
Claim 19 further recites “in response to input from the user.” There is insufficient antecedent basis for “the user,” because claim 1 introduces only “a second user”; it is therefore unclear which user is intended.
For purposes of examination, the “second physical object” of claim 19 is interpreted under BRI as a physical object distinct from the first physical object that the user selects to add to the (first) list during the first time period (¶¶[0059]–[0061]), distinct from the “second physical object” of claim 1; and “the user” is interpreted as a user of the first hand-held electronic device who generates the list (¶[0059], operation 600).
Claim 22 recites “The non-transitory computer readable memory of claim 17, wherein the instructions when executed of the identifying the first substitute physical object to be substituted for the unavailable first physical object comprises triggering a machine learning model based on the first physical object being unavailable and identifying the first substitute physical object based on dynamically learned matching behavior.” The amended limitation is indefinite. The clause does not parse: the plural subject “the instructions” is paired with the singular verb “comprises,” and the intervening phrase “when executed of the identifying the first substitute physical object” has no coherent grammatical role. In addition, “the identifying” lacks antecedent basis — claim 17 recites the act as “identify … a first substitute physical object,” not “identifying.” As a result, the relationship between the recited instructions and the machine-learning function cannot be determined, and the claim fails to particularly point out and distinctly claim the subject matter.
For purposes of examination, claim 22 is interpreted under BRI to require that the instructions of claim 17, when executed, identify the first substitute physical object by triggering a machine learning model based on the first physical object being unavailable and identifying the first substitute physical object based on dynamically learned matching behavior (paralleling claims 20–21).
Appropriate correction is required.
Allowable Subject Matter
Claims 1, 3-6, 9, 11-14, 17, 20 and 21 are allowed.
The following is an Examiner’s statement of reasons for allowance:
In addition to Applicant’s Remarks, closest prior art(s) found when taken individually or in combination do not expressly teach or render obvious the limitations recited in independent claims 1, 9, and 17 when taken in the context of the claims as a whole.
The most pertinent prior art(s) of record uncovered, specifically, US 2015/0142620 A1 to Dudziak et al. discloses: This disclosure includes various methods and systems for automatically identifying product substitutes based on correlating product attributes to attributes of products in a subset of possible product pairs that are identified as substitute pairs (Abstract); and US 8,090,626 B1 to Wijaya et al. discloses: A technique is disclosed for automatically implementing item substitutions for unavailable items in a customer order. According to one embodiment, line item orders from selected customer orders may be aggregated and processed for substitution analysis. Substitutions for unavailable items of selected customer orders may then be automatically implemented based upon substitution instructions, business rules, and/or other predefined criteria (Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN CHEN whose telephone number is (571)272-4143. The examiner can normally be reached M-F 10-7.
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, Kamran Afshar can be reached at (571) 272-7796. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAN CHEN/Primary Examiner, Art Unit 2125
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