DETAILED ACTION
This rejection is in response to Amendments filed 09/19/2025.
Claims 1-2, 4, and 7-20 are currently pending and have been examined.
Claims 3 and 5-6 are cancelled.
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
This application is a 371 of PCT/US2021/063237 filed on 12/14/2021.
Response to Arguments
Applicant’s arguments, see pages 5-7, filed 09/19/2025, with respect to 35 U.S.C. 112(b) rejection to claims 1-18 have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejection to claims 1-18 has been withdrawn.
Applicant's arguments filed 09/19/2025 have been fully considered but they are not persuasive.
With respect to applicant’s arguments on pages 7-9 of remarks filed 09/19/2025 that independent claims are integrated into a practical application because the claims provide substantial efficiencies including savings on packaging materials and shipping costs which improves the technology area of delivery services, 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. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. See MPEP 2106.05(a).
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP 2106.05(a)(II).
It is not apparent to one of ordinary skill in the art how savings on packaging materials and shipping costs provides an improvement to technology. Savings on packaging materials and shipping costs may help solve a commercial problem regarding cost of packaging but this does not solve a problem rooted in technology. Merely using a computing device as a tool to perform the method is not sufficient. Therefore, the claims are not integrated into a practical application by solving a commercial problem rather than a problem rooted in technology.
With respect to applicant’s arguments on pages 9 of remarks filed 09/19/2025 that the office action errs in failing to consider every claim under Step 2A Prong Two analysis, Examiner respectfully disagrees.
The non-final rejection on page 6 filed 03/19/2025 considered all claims under Step 2A Prong Two by clearly stating that “the claims do not recite any additional elements.” If the claims do not recite any additional elements than there are no additional elements to be analyzed and the entire claim is directed to an abstract idea. Therefore, the office did not err in failing to consider additional elements under Step 2A Prong Two.
With respect to applicant’s arguments on pages 9-11 of remarks filed 09/19/2025 that Ganesh and Neumann do not teach an equine barn and the multiple members each has a horse in independent claims 1 and 2 and new claims 19-20 are allowable due to dependency on independent claims, Examiner respectfully disagrees.
Applicant’s arguments with respect to claim amendments to independent claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant’s arguments are unpersuasive because applicant fails to specifically point out how the language of claims 19-20 patentably distinguishes from the references.
Claim Rejections - 35 USC § 112(b)
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 1, 4, and 7-19 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 1 recites, “2) has a single delivery address at an equine barn; …; shipping the one or more items to the single delivery address at an equine barn,” rendering said claims indefinite because it is unclear whether an equine barn is the same or different from an equine barn. Appropriate correction or clarification is required.
There is insufficient antecedent basis for the following limitations in claim:
Claim 1: … for receipt at the single address;
Claims 15 and 16 recite: … the purchaser group's scheduled delivery date;
Appropriate correction or clarification is required.
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 1-2, 4, and 7-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more.
Under Step 1 of the Subject Matter Eligibility Test, it must be considered whether the claims are directed to one of the four statutory classes of invention. See MPEP § 2106. In the instant case, claims 1 and 4-19 are directed to a method and claims 2 and 20 are directed to a method which falls within one of the four statutory categories of invention(process/apparatus). Accordingly, the claims will be further analyzed under revised step 2:
Under step 2A (prong 1) of the Subject Matter Eligibility Test, it must be considered whether the claims recite a judicial exception if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. If the claim recites a judicial exception (i.e., an abstract idea), the claim requires further analysis in Prong Two. One of the enumerated groupings of abstract ideas is defined as certain methods of organizing human activity that includes 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). See MPEP § 2106.04(a)(2).
Regarding representative independent claim 1, recites the abstract idea of:
determining,…, a purchaser group that 1) comprises multiple members that each has a horse and 2) has a single delivery address at an equine barn;
receiving a purchase order of one or more items for one or more horses from one or more members of the purchaser group;
shipping the one or more items to the single delivery address at an equine barn for receipt at the single address by the one or more members of the purchaser group.
The above-recited limitations amounts to certain methods of organizing human activity associated with sales activities and commercial interactions related to determining a purchaser group of multiple members that each has a horse and a single delivery address at an equine barn, receiving purchase orders of items for horses from the members, and shipping the items to the single address. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts. See MPEP § 2106.
The Step 2A (prong 2) of the Subject Matter Eligibility Test, is the next step in the eligibility analyses and looks at whether the abstract idea is integrated into a practical application. This requires an additional element or combination of additional elements in the claims 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. See MPEP § 2106.
In this instance, the claims recite additional elements such as:
…by a computing device…(Claims 1 and 2);
..the computing device…(Claims 19 and 20).
The claims do not recite any elements that amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Independent claims and dependent claims also fail to recite any elements which amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. For example, independent claims and dependent claims are directed to the abstract idea itself and do not amount to an integration according to any one of the considerations above.
Step 2B is the next step in the eligibility analyses and evaluates whether the claims recite additional elements that amount to an inventive concept (i.e., “significantly more”) than the recited judicial exception. According to Office procedure, revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be re-evaluated in Step 2B because the answer will be the same. See MPEP § 2106.
In Step 2A, the claim limitations that were identified as additional limitations include:
…by a computing device…(Claims 1 and 2);
..the computing device…(Claims 19 and 20).
The limitations in the independent claims and dependent claims, do not amount to an inventive concept because the recitations above do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. In addition, they were already analyzed under Step 2A and did not amount to a practical application of the abstract idea.
For these reasons, the claims are rejected under 35 U.S.C. 101.
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.
Claim(s) 1-2, 4, 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ganesh et al. (US Pub. No. 20140278875 A1, hereinafter “Ganesh”) in view of Bennetto (US Pub. No. 20160379155 A1, hereinafter “Bennetto”).
Regarding claim 1
Ganesh discloses a method comprising:
determining, by a computing device, a purchaser group that 1) comprises multiple members… and 2) has a single delivery address…; receiving a purchase order of one or more items… from one or more members of the purchaser group (Ganesh, [0031]: the system forms the buying group that includes the particular user and at least one other user; [0003]: aggregating orders for a group of users for delivery to designated delivery location and receiving order from one or more group members for combined shipment; [0042]: receive purchase order; [0019]: system includes computing device; [0035]: the system may suggest or automatically establish a designated delivery/pickup location based on information associated with the buying group's various members; [0036]: the designated delivery/pickup location may be populated from or to a group member's online address book; [0048]: a single delivery/pickup location);
shipping the one or more items to the single delivery address… for receipt at the single address by the one or more members of the purchaser group (Ganesh, [0011]: ships the combined order to the buying group's designated delivery location; [0036]: the designated delivery/pickup location is an address; [0048]: shipping to a single delivery/pickup location).
Ganesh does not teach:
…members that each has a horse…and…at an equine barn;…one or more items for one or more horses (emphasis added);…at an equine barn.
However, Bennetto teaches:
…members that each has a horse…and…at an equine barn;…one or more items for one or more horses (emphasis added);…at an equine barn (Bennetto, [0051]: manages inventory of the stable and purchase goods for the horse stable; [0054]: horses the owner owns; [0007]: one or more horses; [0040]: purchase necessary goods related to the horse; [0033]: one or more stakeholders (e.g. owner); [0036]: stakeholder information (e.g. stable name, address, location).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the single delivery address, items, and members of Ganesh with an equine barn, items for horses, and a member that has horses as taught by Bennetto because the results of such a modification would be predictable. Specifically, Ganesh would continue to teach the single delivery address, items, and members except that now an equine barn, items for horses, and a member that has horses is taught according to the teachings of Bennetto in order to efficiently manage horses. This is a predictable result of the combination. (Bennetto, [0003-0004]).
Regarding claim 2
Ganesh discloses a method comprising: determining, by a computing device, a purchaser group that comprises multiple members…providing items… purchased by the purchaser group; and shipping the items to a single address… for receipt by the multiple members of the purchaser group (Ganesh, [0031]: the system forms the buying group that includes the particular user and at least one other user; [0003]: aggregating orders for a group of users for delivery to designated delivery location and receiving order from one or more group members for combined shipment; [0035]: the system may suggest or automatically establish a designated delivery/pickup location based on information associated with the buying group's various members; [0036]: the designated delivery/pickup location may be populated from or to a group member's online address book; [0048]: a single delivery/pickup location; [0011]: ships the combined order to the buying group's designated delivery location; [0036]: group member’s address; [0019]: system includes computing device;).
Ganesh does not teach:
…members that each has a horse;…items for one or more horses…;…at an equine barn (emphasis added).
However, Bennetto teaches:
…members that each has a horse;…items for one or more horses…;…at an equine barn (emphasis added) (Bennetto, [0051]: manages inventory of the stable and purchase goods for the horse stable; [0054]: horses the owner owns; [0033]: one or more stakeholders (e.g. owner); [0036]: stakeholder information (e.g. stable name, address, location).
The motivation to combine Ganesh and Bennetto is the same as set forth above in claim 1.
Regarding claim 4
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein the one or more members of the purchaser group reside in a same neighborhood or building (Ganesh, [0010]: designate one of the neighbor’s homes as delivery destination; [0058]: a plurality of users live in the same neighborhood; [0048]: a single delivery/pickup location; [0011]: ships the combined order to the buying group's designated delivery location; [0036]: group member’s address).
Regarding claim 7
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein the one or more items are shipped on a same date (Ganesh, [0055]: aggregating the first order and the at least one additional order into a combined order and shipping orders at same time).
Regarding claim 8
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein the one or more items are shipped on a …date (Ganesh, [0055]: scheduling the shipment of the orders to be at same time; [0062]: deliver at end of day; [0063]: coordinating delivery of the orders to a common location at substantially the same time).
Ganesh does not teach:
…a periodic date.
However, Bennetto teaches:
…a periodic date (Bennetto, [0057]: month, week, or day; [0064]: eight days).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the date of Ganesh with a periodic date as taught by Bennetto because the results of such a modification would be predictable. Specifically, Ganesh would continue to teach the date except that now the date is a periodic date as taught according to the teachings of Bennetto in order to efficiently manage data based on dates associated with the horses. This is a predictable result of the combination. (Bennetto, [0003-0004] and [0076]).
Regarding claim 9
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein the one or more items ordered by the one or more members of the purchaser group are collected and stored at a designated location until a selected shipping date (Ganesh, [0055]: aggregating the orders at distribution facility; [0056]: orders include one or more items shipped at substantially the same time; [0061]: distribution facility used to distribute item and ship single shipment to office location; [0062]: items delivered to office and then shipped to other users).
Regarding claim 10
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein the one or more items are moved to a shipping area on a same date (Ganesh, [0063]: coordinating delivery of the orders to a common location at substantially the same time).
Regarding claim 11
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein a purchaser group member is associated with the single address at a time of purchasing an item (Ganesh, [0059]: buying group includes three users; [0060]: one of the user’s office address is designated as delivery location; [0036]: group member’s address).
Regarding claim 12
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein a member of the purchaser group associates an item with the single address at a time of purchasing the item (Ganesh, [0061]: group order of items as part of single shipment to delivery location; [0036]: delivery location includes group member’s address).
Regarding claim 13
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein a member of the purchaser group is linked with the single address prior to purchasing an item (Ganesh, [0036]: online address book of user address used to pick delivery location when choosing shipping options for purchase; [0043]: submits shipping information and then completes the order).
Regarding claim 14
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein a member of the purchaser group may schedule delivery of a purchased item for any future date (Ganesh, [0055]: scheduling the shipment of the orders; [0011]: users distribute shipment on following day).
Regarding claim 15
The combination of Ganesh and Bennetto teaches the method of claim 14 wherein an item delivery date is selected for the member of the purchaser group's scheduled delivery date (Ganesh, [0055]: scheduling the shipment of the orders to be at same time; [0063]: coordinating delivery of the orders to a common location at substantially the same time).
Regarding claim 16
The combination of Ganesh and Bennetto teaches the method of claim 14 wherein an item delivery date is selected for a date different than the member of the purchaser group's scheduled delivery date (Ganesh, [0055]: scheduling the shipment of the orders; [0011]: users distribute shipment on following day after delivery date).
Regarding claim 17
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein the one or more of the members purchases the one or more items by differing methods (Ganesh, [0045]: multiple payment methods; [0061]: each user separately placing and paying for their separate order; [0056]: one or more items).
Regarding claim 18
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein the one or more of the members makes payment for the one or more items by differing methods (Ganesh, [0011]: any other members who wish to make the same or similar purchases complete an order online, submit payment, and indicate that the purchase is associated with a particular group; [0061]: each user separately placing and paying for their separate order; [0045]: multiple payment methods; [0056]: one or more items).
Regarding claim 19
The combination of Ganesh and Bennetto teaches the method of claim 1 wherein the computing device is configured to receive the purchase order of the one or more items …from the one or more members of the purchaser group (Ganesh, [0031]: the system forms the buying group that includes the particular user and at least one other user; [0003]: aggregating orders for a group of users for delivery to designated delivery location and receiving order from one or more group members for combined shipment; [0042]: receive purchase order; [0019]: system includes computing device;[0056]: one or more items).
Bennetto teaches:
…for the one or more horses…(Bennetto, [0007]: one or more horses; [0051]: manages inventory of the stable and purchase goods for the horse stable; [0054]: horses the owner owns; [0040]: purchase necessary goods related to the horse).
The motivation to combine Ganesh and Bennetto is the same as set forth above in claim 1.
Regarding claim 20
The combination of Ganesh and Bennetto teaches the method of claim 2 wherein the computing device is configured to receive a purchase order for the items …purchased by the purchaser group (Ganesh, [0031]: the system forms the buying group that includes the particular user and at least one other user; [0003]: aggregating orders for a group of users for delivery to designated delivery location and receiving order from one or more group members for combined shipment; [0042]: receive purchase order; [0019]: system includes computing device;[0056]: one or more items).
Bennetto teaches:
…for the one or more horses…(Bennetto, [0007]: one or more horses; [0051]: manages inventory of the stable and purchase goods for the horse stable; [0054]: horses the owner owns; [0040]: purchase necessary goods related to the horse).
The motivation to combine Ganesh and Bennetto is the same as set forth above in claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is cited as Gibson et al. (US Pub. No. 20110246342 A1) related to billing community members and consolidating payments, Henderson, II (US Pub. No. 20190205832 A1) related to personalized parcel or package delivery, and non-patent literature, "Logistics and Service Opportunities and Issues," related to e-commerce depending on efficient logistics to deliver good to consumers.
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 LATASHA DEVI RAMPHAL whose telephone number is (571)272-2644. The examiner can normally be reached 11 AM - 7:30 PM (EST).
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, Jeffrey A. Smith can be reached on 5712726763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LATASHA D RAMPHAL/ Examiner, Art Unit 3688
/Jeffrey A. Smith/ Supervisory Patent Examiner, Art Unit 3688
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