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 .
DETAILED ACTION
Status of Claims
The following is a Final Office Action in response to Applicant’s amendment received 10/17/2025.
In accordance with Applicant’s amendment, claims 1, 3, 7, and 10-12 are amended and claims 2 and 5-6 are canceled. Claims 1, 3-4, and 7-12 are currently pending.
Response to Amendment
The proposed amendment to the Specification (Title of the invention) filed on 10/17/2025 has been reviewed, but has not been entered because it is not descriptive. The proposed new Title of “PROVIDING USERS WITH USEFUL INFORMATION ON AN ONLINE SHOP” is not descriptive because the claimed and disclosed invention does not merely provide “useful information,” but provides target product information. Similarly, the claimed and disclosed invention does not provide the information to generically recited “users,” but instead to customers. The previous title and proposed new title are not descriptive because they are not indicative of the invention to which the claims are directed.
Applicant’s amendment necessitated the new ground(s) of rejection set forth in this Office Action.
The 35 U.S.C. §112(b) rejection of claims 5 and 10 are withdrawn in response to applicant’s amendment.
The 35 U.S.C. §102/§103 rejection of claims 1, 3-4, and 7-12 are withdrawn in response to applicant’s amendment.
Response to Arguments
Response to §101 arguments: Applicant’s arguments (Remarks at pgs. 9-11) with respect to the §101 rejection of claims 1-12 have been considered but are not persuasive.
Applicant first argues that “claim 1 is not directed to an abstract idea such as certain methods of organizing human activity and/or mental processes” (Remarks at pg. 10).
In response, the Examiner maintains that the Step 2A Prong One eligibility analysis strictly adheres to the step-by-step guidance set forth in MPEP 2106, including MPEP 2106.04(a), which under Step 2A Prong One first requires Examiners to “Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites and abstract idea.” The analysis provided under Step 2A Prong One of the §101 rejection in this instance plainly identifies the specific limitations (via bold text) reciting the abstract idea. Applicant’s remarks fail to acknowledge, discuss, or point out any supposed errors in the analysis or findings set forth in the Step 2A Prong One analysis, which plainly articulates the reasons why certain limitations are interpreted as setting forth or describing activity falling under one or more of the abstract idea groupings.
Next, in response to applicant’s suggestion that “the present claims incorporate the alleged abstract idea into a practical application,” arguing that the “acquiring” and “selecting” steps cannot be practically performed in the human mind (Remarks at pg. 10), the Examainer maintains that there is no reason why the “acquiring” and “selecting” steps, but for the generic computer implementaton, would preclude these steps form being practically performed in the human mind. Accordingly, the Examiner maintains that, but for the computer implementation, these claims steps fall within a scope and level of complexity that are well within the realm of human mental capability with or without the aid of pen and paper.
Applicant’s remaining arguments concerning the §101 rejection are primarily raised in support of new limitations added to independent claims 1/11/12 and are therefore believed to be fully addressed in the updated §101 rejection set forth below.
Response to §102/§103 arguments: Applicant’s arguments (Remarks at pgs. 12-14) with respect to the §101 rejection of claims 1-12 have been considered, but are moot in view of withdrawal of these rejections. In particular, the cited prior art of record does not teach or render obvious the claimed information providing apparatus comprising: at least one memory configured to store instructions; and at least one processor configured to execute the instructions to perform operations, the operations comprising: acquiring first customer information including at least one of a first purchase history being a purchase history of a customer at a real shop and an action history of the customer in the real shop, the action history of a customer in the real shop comprising information on customer position in the real shop based on the customer pausing at a location for a predetermined time captured by an image capture system; generating online shop information being information to be provided to the customer in relation to an online shop by using the first customer information; and transmitting the online shop information to a customer terminal operated by the customer, wherein the first customer information includes the first purchase history and the action history, and the operations further comprise: selecting, as a first target product, a product whose size or weight meets a criterion or a product requiring refrigerated storage out of one or more products included in the first purchase history and one or more products in a line-of-sight of the customer when the customer is paused at the location, and including information about the first target product at the online shop into the online shop information, as recited by independent claim 1 and as similarly encompassed by the method and non-transitory computer-readable medium of claims 11/12, respectively.
Specification
The Title of the invention is objected to for the following reason: The title of the invention, which is currently recited as “INFORMATION PROVIDING APPARATUS, INFORMATION PROVIDING METHOD, AND NON-TRANSITORY COMPUTER-READABLE MEDIUM,” is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-4, and 7-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The first paragraph of 35 U.S.C. 112 requires that the “specification shall contain a written description of the invention.” This requirement is separate and distinct from the enablement requirement. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991). See also Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004) (discussing history and purpose of the written description requirement).
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116.
Claims 1, 11, and 12 each recite the limitations of “the action history…based on the customer pausing at a location for a predetermined time captured by an image capture system” and “one or more products in the line-of-sight of the customer when the customer is paused at the location.” However, the written description fails describe or even mention the claimed customer pausing at a location for a predetermined time, or when the customer is paused at the location. The Specification is silent regarding a customer pausing or any discernible equivalents thereto, and is silent regarding pausing for a predetermined time. Notably, the only mention of anything predetermined in the Specification is in par. 41 and relates to a “predetermined period” in relation to a customer purchase history, such as one month, which has not relationship to a customer pausing at a location. Moreover, although the Specification refers to “an image capture apparatus” at par. 26 and refers to “the line of sight” in pars. 27-28, these features are not recited in the conjunction with the claimed customer pause and pausing for a predetermined time.
Dependent claim 7 similarly recites “a product among the one or more products in the line of sight of the customer when the customer is paused at the location,” however similar to the rationale discussed above, claim 7 lacks descriptive support because the Specification does not describe the customer pausing at a location, nor doing so among one or more products in the line of sight of the customer.
Accordingly, claims 1, 7, 11, and 12 fail to satisfy the written description requirement of §112(a) because there is no evidence of a complete specific application or embodiment to satisfy the requirement that the description is set forth “in such full, clear, concise, and exact terms” to show possession of the claimed invention. See Fields v. Conover, 443 F.2d 1386, 1392, 170 USPQ 276, 280 (CCPA 1971).
Claims 3-4 and 7-10 depend from claim 1 and inherit the §112(a) deficiency noted above.
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, 3-4, and 7-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Claims 1, 3-4, and 7-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the subject matter eligibility guidance set forth in MPEP 2106.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106.03), it is first noted that the claimed apparatus (claims 1, 3-4, and 7-10), method (claim 11), and non-transitory computer-readable medium (claim 12) are each directed to a potentially eligible category of subject matter (i.e., machine, process, and article of manufacture). Accordingly, claims 1, 3-4, and 7-12 satisfy Step 1 of the eligibility inquiry.
With respect to Step 2A Prong One of the eligibility inquiry (as explained in MPEP 2106.04), it is next noted that the claims recite an abstract idea that falls under the “Certain methods of organizing human activity” abstract idea grouping by reciting limitations that set forth activities for managing commercial interactions (marketing or sales activities or behaviors; business relations) or managing personal behavior or interactions (e.g., interactions of a user such as a shopper/customer, following rules/instructions) and steps that, but for the generic computer implementation, may be implemented as “Mental Processes” (e.g., observation, evaluation, judgment, or opinion). The limitations reciting the abstract idea, as set forth in independent claim 1 are identified in bold text below, whereas the additional elements are presented in plain text and are separately evaluated under Step 2A Prong Two and Step 2B:
at least one memory configured to store instructions; and at least one processor configured to execute the instructions to perform operations (These are additional elements evaluated below under Step 2A Prong Two and Step 2B), the operations comprising:
acquiring first customer information including at least one of a first purchase history being a purchase history of a customer at a real shop and an action history of the customer in the real shop, the action history of a customer in the real shop comprising information on customer position in the real shop based on the customer pausing at a location for a predetermined time captured by an image capture system (This step is considered marketing/sales activity because the acquired customer information related to customer purchases or actions in a shop is considered sales activity as well as information about customer behavior/interactions, and furthermore this step, but for the generic computer implementation, could be implemented as mental activity such as by human observation, evaluation, judgment, or opinion. It is further noted that the “acquiring” step may be considered insignificant extra-solution data gathering activity that can be accomplished via receiving/ transmitting data, which is not enough to amount to a practical application (MPEP 2106.05(g)), and which has also been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(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); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); 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));
generating online shop information being information to be provided to the customer in relation to an online shop by using the first customer information (The “generating” step is considered sales/marketing activity as well activity for managing customer behavior/interaction, and furthermore this step, but for the generic computer implementation, could be implemented as mental activity such as by human observation, evaluation, judgment, or opinion); and
transmitting the online shop information to a customer terminal operated by the customer (The “transmitting” is considered insignificant extra-solution activity that can be accomplished via receiving/transmitting data, which is not enough to amount to a practical application (MPEP 2106.05(g)), and which has also been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(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); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); 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));
wherein the first customer information includes the first purchase history and the action history, and the operations further comprise: selecting, as a first target product, a product whose size or weight meets a criterion or a product requiring refrigerated storage out of one or more products included in the first purchase history and one or more products in a line-of-sight of the customer when the customer is paused at the location, and including information about the first target product at the online shop into the online shop information (The details about the purchase history information along with both the “selecting” and “including” steps are considered sales/marketing activity as well activity for managing customer behavior/ interaction for target marketing activity, and furthermore these steps, but for the generic computer implementation, could be implemented as mental activity such as by human observation, evaluation, judgment, or opinion).
Independent claims 11-12 recite similar limitations as those set forth in claim 1 as discussed above, and have therefore been determined to recite the same abstract idea as claim 1.
With respect to Step 2A Prong Two of the eligibility inquiry (as explained in MPEP 2106.04(d)), the judicial exception is not integrated into a practical application. Independent claims 1, 11, and 12 include additional elements of at least one memory configured to store instructions; at least one processor configured to execute the instructions to perform operations; a computer; a non-transitory computer-readable medium storing a program; transmitting the online shop information to a customer terminal operated by the customer, and captured by an image capture system. The additional elements have been evaluated, but fail to integrate the abstract idea into a practical application. The computing elements (at least one memory configured to store instructions; at least one processor configured to execute the instructions to perform operations; a computer; a non-transitory computer-readable medium storing a program) amount to using generic computing elements or instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment (network computing environment). See MPEP 2106.05(f) and 2106.05(h). With respect to transmitting the online shop information to a customer terminal operated by the customer and acquiring first customer information and captured by an image capture system, these activities are considered insignificant extra-solution activity, which is not enough to amount to a practical application (MPEP 2106.05(g). In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry (as explained in MPEP 2106.05), it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Independent claims 1, 11, and 12 include additional elements of at least one memory configured to store instructions; at least one processor configured to execute the instructions to perform operations; a computer; a non-transitory computer-readable medium storing a program; transmitting the online shop information to a customer terminal operated by the customer; and captured by an image capture system. These additional elements have been evaluated, but fail to add significantly more to the claims. The computing elements (at least one memory configured to store instructions; at least one processor configured to execute the instructions to perform operations; a computer; a non-transitory computer-readable medium storing a program) amount to using generic computing elements or instructions/ software to perform the abstract idea, which merely serves to tie the abstract idea to a particular technological environment (network computing environment), similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment (generic computing environment) and does not amount to significantly more than the abstract idea itself. See, e.g., Alice Corp., 134 S. Ct. 2347, 110 USPQ2d 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
Furthermore, the steps for transmitting the online shop information to a customer terminal operated by the customer and acquiring first customer information and captured by an image capture system, at most, describe insignificant extra-solution activity, which has been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(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); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); 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). Moreover, Official Notice is taken that image capturing systems (e.g., cameras) are well-understood, routine, and conventional in the art, which does not add significantly more to the claims.
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrate the abstract idea into a practical application. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
Dependent claims 3-4 and 7-10 recite the same abstract idea(s) as recited in the independent claims, and have been determined to recite further details/steps falling under the “Certain methods of organizing human activity” and/or “Mental Processes” abstract idea groupings discussed above. For example, dependent claim 4 recites “determining, as the first target product among the one or more products in the line-of-sight of the customer when the customer is paused at the location but not being purchased by the customer at the real shop,” which describes activity directly in support of sales/marketing purposes tied to customer behavior, and furthermore this activity, but for the generic computer implementation, could be implemented as mental activity such as by human observation, evaluation, judgment, or opinion with respect to a region/time. The other dependent claims have been evaluated as well, but similarly recite details/steps falling under the abstract idea itself. The additional “transmitting” step in claim 8 is considered insignificant extra-solution activity that can be accomplished via receiving/transmitting data, which is not enough to amount to a practical application (MPEP 2106.05(g)), and which has also been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(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); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); 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).
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation. Accordingly, the subject matter encompassed by the dependent claims fails to amount to a practical application or significantly more than the abstract idea itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Sundaresan (US 2015/0278859): discloses a system/method for supporting recurring online buying, including providing users with personalized offers based on, e.g., purchase history or recent physical or online behaviors (at least par. 15).
Blackhurst et al. (US 2011/0191162): discloses features for providing targeted offers to users based on browsing behavior and customer profile data related to offline and online transactions (at least par. 73).
Craft (US 2021/0133160): discloses a multi-trigger personalized virtual repository, including pushing recommended products to a customer matching current and past transactions (at least par. 192).
C. Buaklee and S. Sinthupinyo, "Similar Cluster recommendation of Product Purchases by Pages liked Analysis," 2018 10th International Conference on Electronics, Computers and Artificial Intelligence (ECAI), Iasi, Romania, 2018, pp. 1-5: discloses features for providing customers with product/service recommendations based on analysis of purchasing history and customer interests.
Retailer tech creeps into consumers' private lives. Associated Press. Daily Herald (Arlington Heights, IL) 29 Nov 2013: 8: discloses consumer behavior tracking, including combining offline and online data to create profiles of shoppers.
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 extension fee 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 date of this final action.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Timothy A. Padot whose telephone number is 571.270.1252. The Examiner can normally be reached on Monday-Friday, 8:30 - 5:30. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Brian Epstein can be reached at 571.270.5389. The fax phone number for the organization where this application or proceeding is assigned is 571- 273-8300.
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/TIMOTHY PADOT/
Primary Examiner, Art Unit 3625
10/31/2025