DETAILED ACTION
Status of the Application
The present application is being examined under the pre-AIA first to invent provisions.
This communication is a non-final action in response to application filed on 5/12/2023. Claims 21-40 are currently pending and have been considered below.
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 21-40 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.
Claims 21 and 31 recite the limitation “the customer's ability…”. There is no antecedent basis for this limitation in the claims.
Claims 22-30 and 32-40 are also rejected by virtue of their dependency from claim 21 or 31 without remedying the issue identified 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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claims 21-40 are determined to be directed to an abstract idea.
The claims 21-40 are directed to a judicial exception (i.e., law of nature, natural phenomenon, or abstract idea), without providing a practical application integration and without providing significantly more.
As per Step 1 of the subject matter eligibility analysis, Claims 21-40 are directed to an system (i.e., machine), a method (i.e., process), and/or a non-transitory computer readable medium (i.e., product); which are statutory categories of invention.
As per Step 2A-Prong 1 of the subject matter eligibility analysis, Claims 21 and 31 are directed specifically to the abstract idea of tracking potential activity of a customer based on location by: receiving a request for a service for a customer from a customer; at a first time, receiving a first geographical location of the customer, and accepting an appointment for the service on behalf of a service provider based at least in part on a location of the service provider and the first geographical location of the customer at the first time; identifying a requirement associated with the service, wherein the requirement comprises a requirement to which the customer should adhere prior to a scheduled time of the appointment for the service; at a second time, later than the first time, receiving a second, different geographical location of the customer; identifying, based at least in part on the second, different geographical location of the customer at the second time, a type of location where the customer is present; determining that (i) a relationship exists between the type of location and the requirement associated with the service and (ii) the type of location may affect the customer's ability to adhere to the requirement; and in response to the determination of (i) and (ii), providing a notification to the customer of the requirement; which include mental processes (observing and evaluating customer and provider location and service request data to make a judgement and opinion on service requirements and notifications), and certain methods of organizing human activities, specifically managing personal behavior and interactions between people (social activities and following rules and instructions to manage service scheduling and service requirements), and commercial and legal interactions (sales activities and business relations regarding service requests).
Claims 22-30 and 32-40 are further directed to the abstract idea of performing functions provided above for claims 1 and 31 with further details/embellishments of the abstract idea. After considering all claim elements, both individually and in combination and in ordered combination, it has been determined that the claims do not amount to significantly more than the abstract idea itself.
As per Step 2A-Prong 2 of the subject matter eligibility analysis, while the claims 21-40 recite additional limitations which are hardware or software elements, such as a customer device comprising a location tracking sensor, a device of the customer or a device of a third party, a smart phone, a smart watch, smart glasses, a portable computer, and a tablet computer, a marketplace server, a device of the service provider, at least one memory for storing computer-readable instructions; and at least one processor for executing the computer-readable instructions, wherein execution of the computer-readable instructions programs the at least one processor to perform operations, these limitations are not enough to qualify as a practical application being recited in the claims along with the abstract idea since these elements are merely invoked as a tool to apply instructions of an abstract idea in a particular technological environment, and mere application of an abstract idea in a particular technological environment and merely limiting the use of an abstract idea to a particular technological field do not integrate an abstract idea into a practical application (MPEP 2106.05(f)&(h)). The claims do not amount to "practical application" for the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Alternatively, as per claims 21-40, receiving or transmitting data over a network (among devices), e.g., using the Internet to gather data, and storing/adding and retrieving data from a memory, data being output for display on a user interface are mere data gathering and/or insignificant extra-solution activity (See MPEP 2106.05(d) & (g)), which do not provide significantly more to an abstract idea.
As per Step 2B of the subject matter eligibility analysis, while the claims 21-40 recite additional limitations which are hardware or software elements, such as a customer device comprising a location tracking sensor, a device of the customer or a device of a third party, a smart phone, a smart watch, smart glasses, a portable computer, and a tablet computer, a marketplace server, a device of the service provider, at least one memory for storing computer-readable instructions; and at least one processor for executing the computer-readable instructions, wherein execution of the computer-readable instructions programs the at least one processor to perform operations, these limitations are not enough to qualify as “significantly more” being recited in the claims along with the abstract idea since these elements are merely invoked as a tool to apply instructions of an abstract idea in a particular technological environment, and mere application of an abstract idea in a particular technological environment and merely limiting the use of an abstract idea to a particular technological field do provide significantly more to an abstract idea (MPEP 2106.05 (f) & (h)). The claims do not amount to "significantly more" than the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) add a specific limitation other than what is well-understood, routine and conventional in the field; (6) add unconventional steps that confine the claim to a particular useful application; nor (7) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Alternatively, as per claims 21-40, receiving or transmitting data over a network (among devices), e.g., using the Internet to gather data, and adding/storing/retrieving data in a memory, data being output for display on a user interface are insignificant extra-solution activity and well-known, routine and conventional (See MPEP 2106.05(d) & (g)), which do not provide significantly more to an abstract idea.
Therefore, since there are no limitations in the claims 21-40 that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself, and looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, the claims are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 10402760. Although the claims at issue are not identical, they are not patentably distinct from each other because the currently pending claims are either anticipated or are obvious variants of the parent patent claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10824975. Although the claims at issue are not identical, they are not patentably distinct from each other because the currently pending claims are either anticipated or are obvious variants of the parent patent claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11694132. Although the claims at issue are not identical, they are not patentably distinct from each other because the currently pending claims are either anticipated or are obvious variants of the parent patent claims.
Conclusion
Closest prior art to the invention includes:
Gustafson et al (US 2012/0173280);
Yaseen et al (US 2012/0278091);
Kharraz Tavakol et al (US 2010/0070295);
Tam et al (US 8015049 B1);
Doss et al (US 2004/0064585);
Kharraz Tavakol et al (US 2011/0191122); and
Fabius et al (US 2008/0103814).
Please see the rejections in the record of parent application 14081692 for relevancy of these references to the inventions of this application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEHMET YESILDAG whose telephone number is (571)272-3257. The examiner can normally be reached M-F 8:30 am - 5:00 pm.
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/MEHMET YESILDAG/Primary Examiner, Art Unit 3624