DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/11/2025 has been entered.
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 .
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 1-7 and 21-33 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 21, and 28, these claims recite the limitation “arranging a display of the plurality interface portions in the user interface based on the location of the user device and the information”. The specification discusses determining data to display in the interface portions based on location (See Paragraphs 0014 and 0028 for example). The specification does not appear to have any disclosure about how the interface portions are arranged once they are chosen, let alone what that arrangement is based on. Therefore, this limitation is considered impermissible new matter and must be removed in the next response. All dependent claims inherit this rejection through dependency from the independent claims.
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 1-7 and 21-33 are rejected under 35 U.S.C. 101 because, while the claims herein are directed to a method and/or system, which could be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes), the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Regarding claims 1, 21, and 28, the claims recite, in part, determining a location of a user; identifying a shopping preference associated with the user for an account of the user, wherein the shopping preference of the user comprises any of a merchant preference, an item preference, or a preference for a particular characteristic associated with at least one item or a merchant; deriving one or more preferences of the user for displaying data relating to the particular characteristic; generating a plurality of portions based on the plurality of items of interest, wherein each of the plurality of portions comprises information associated with an offer for a purchase of a corresponding one of the plurality of items of interest within a distance to the location; arranging a display of the plurality portions based on the location of the user device and the information; determining a plurality of items of interest to the user based on the shopping preference; configuring based on the one or more preferences and the plurality of portions, wherein a placement of the plurality of items is based on the location and the one or more preferences; receiving a selection of one of the plurality of portions corresponding to an item from the plurality of items of interest; determining item data for the item hidden from viewing in the one of the plurality of portions prior to the selection, wherein the item data is determined based on one or more merchants in a proximity to the location; generating display data for the item from the item data based on the one or more preferences; and presenting, in association with the user being at the location, the display data independent of changing additional item display data for other items of the plurality of items of interest, wherein the presenting includes replacing the information associated with the offer with the item data in the one of the plurality of portions.
The limitations, as drafted and detailed above, is directed towards generation and updating of advertising notifications within a display based on a user profile and location data, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and more specifically commercial interactions including advertising, marketing or sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of non-transitory memory (claim 1), one or more hardware processors (claim 1), user device (claims 1, 21, 28), user interface (claims 1, 21, 28, merely software that receives selections and displays data), application (claims 1, 21, 28, merely software), hardware location module (claims 21, 28), non-transitory computer readable medium (claim 28), and machine (claim 28). The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of determining, identifying, deriving, arranging, configuring, receiving, generating, and presenting) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. There are no additional functional limitations to be considered under prong two.
Accordingly, the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using 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 (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the
judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using non-transitory memory (claim 1), one or more hardware processors (claim 1), user device (claims 1, 21, 28), user interface (claims 1, 21, 28, merely software that receives selections and displays data), application (claims 1, 21, 28, merely software), hardware location module (claims 21, 28), non-transitory computer readable medium (claim 28), and machine (claim 28) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent- eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat' l Ass' n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computer (see Applicant specification Paragraph 00077); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
The dependent claims 2-7 and 22-33 appear to merely limit the item data being a price and the interface display data being a change in the price, automatically updating a layout including a change to the price, displaying a first portion independent of a second portion, updating a second portion based on a selection, hiding of a second portion, and determining item data in response to a user selection, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The non-transitory memory (claim 1), one or more hardware processors (claim 1), user device (claims 1, 21, 28), user interface (claims 1, 21, 28, merely software that receives selections and displays data), application (claims 1, 21, 28, merely software), hardware location module (claims 21, 28), non-transitory computer readable medium (claim 28), and machine (claim 28) are each functional generic computer components that perform the generic functions of determining, identifying, deriving, arranging, configuring, receiving, generating, and presenting, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the non-transitory memory (claim 1), one or more hardware processors (claim 1), user device (claims 1, 21, 28), user interface (claims 1, 21, 28, merely software that receives selections and displays data), application (claims 1, 21, 28, merely software), hardware location module (claims 21, 28), non-transitory computer readable medium (claim 28), and machine (claim 28) are anything other than generic, off-the-shelf computer components. Therefore, the claims do not amount to significantly more than the abstract idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-20 are not patent eligible.
Novel/Non-Obvious Subject Matter
Claims 1-7 and 21-33 as currently written are novel and non-obvious over prior art. However, the rejections under 35 U.S.C. 112 as well as the rejection under 35 U.S.C. 101 are currently pending and represent a barrier to allowability. Examiner notes that any amendments made to the claims in an attempt to correct pending rejections could drastically alter the claim scope and could open up the possibility of prior art being applied in a future action.
Ouimet (U.S. Pub No. 2017/0236153) teaches determining a location of a user device of a user; identifying a shopping preference associated with the user for an account of the user, wherein the shopping preference comprises any of a merchant preference, an item preference or a preference for a particular characteristic associated with at least one item or a merchant, deriving one or more interface display preferences of the user; determining a plurality of items of interest to the user based on the shopping preference; and configuring, based on the interface display preferences, a layout of a user interface of an application on the user device that displays at least a portion of the plurality of items of interest in the user interface, wherein a placement of the portion for the layout is based on the location and the interface display preferences. Ouimet, however, does not teach each and every limitation recited in the independent claim language.
Wuersch (U.S. Pub No. 2014/0156410) teaches determining item data for an item from the plurality of items of interest based on the location; generating interface display data for the item based on interface display preferences; and presenting, in the user interface in association with the user device being at the location, the interface display data in the layout independent of changing additional item display data for other items of the plurality of items of interest in the layout. Wuersch, however, does not cure all the deficiencies of Ouimet, and the combination of Ouimet and Wuersch do not teach each and every limitation recited in the independent claim language.
None of the prior art of record, alone or in combination, teaches each and every limitation of the claimed invention. Specifically, none of the applied references teaches “generating a plurality of interface portions for a user interface of an application on the user device based on the plurality of items of interest, wherein each of the plurality of interface portions comprises information associated with an offer for a purchase of a corresponding one of the plurality of items of interest within a distance to the location; arranging a display of the plurality interface portions in the user interface based on the location of the user device and the information; determining item data for the item hidden from viewing in the one of the plurality of interface portions prior to the selection, wherein the item data is determined based on one or more merchants in a proximity to the location; wherein the presenting includes replacing the information associated with the offer with the item data in the one of the plurality of interface portions”. While such features on their own would not normally be an allowable feature, it would simply not be obvious to apply numerous additional prior art references to the other references already applied to arrive at the currently claimed invention and the order of steps currently taken by the currently claimed invention. There is no prior art that teaches each and every limitation of the invention as a whole in combination with one another. Therefore Examiner finds the independent claims to be allowable over the prior art of record.
Response to Arguments
Applicant cites Paragraph 0003 of the specification and argues “conventional systems require users to manually search and identify data for specific locations”. Applicant then cites Paragraphs 00012-00018 of the specification and argues “the present application provides a solution that provides efficiently locating and determining interface data that may be contextually output to users. In particular, the present claims utilize user profiles from online scraped and/or obtained data and location detection components in order to generate specific user interface data that is displaying in a portion of such an interface during mobile application usage. Thus, the limitations of the present claims provide technical solutions to provide more efficient and improved data loading and presentation in users interfaces”. However, the specification never discusses improved data loading. Rather, the only improvements that the specification appear to allude to are with regard to the abstract idea. The additional elements are general purpose, and only appear to implement the type of advertising performed by the claimed invention. The improvements laid out by the specification at paragraph 0003 relate to optimizing purchase prices or item preferences, not to any type of improved data loading and presentation. The improvements in the current system are merely to the abstract idea. In the SAP decision (See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)), the courts found that an improvement made to the abstract idea is not patent eligible. SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because there are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non- abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL BEKERMAN whose telephone number is (571)272-3256. The examiner can normally be reached 9PM-3PM EST M, T, TH, F.
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/MICHAEL BEKERMAN/ Primary Examiner, Art Unit 3621