DETAILED ACTION
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 .
Claims Status
Claim 6 has been cancelled.
Claim 20 is newly added.
Claims 1-5, 7-18 and 20 remain pending and stand rejected.
Response to Arguments
I. Applicant’s arguments made with respect to the rejection under 35 USC 101 have been fully considered but are not persuasive.
Applicant initially emphasizes the following features in an attempt to justify that the claims provide “an improvement to computer functionality” (e.g., p. 12):
(i) "a checkbox at a position corresponding to each product information
indicated in the shopping list";
(ii) "the checkbox in a checked state";
(iii) "at the position corresponding to a product that has been registered in the
POS system";
(iv) "update the shopping list by controlling, as output by the display of the
terminal, the product to be crossed-out on the shopping list"; and
(v) "a purchase frequency at the store," "that the product is registered for regular
delivery," and "the delivery schedule of the product."
With the exception of “controlling”, these aspects are readily accomplished using physical aids such as pen and paper with the computer serving only to automate this process. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017). Here, the computer is used to automate management of the shopping list in conjunction with scheduled deliveries and represent nothing more than the tool by which the abstract idea is accomplished.
Concerning the recited “controlling”, the claims fail to recite any restriction on the manner in which this is accomplished, and the specification provides no further detail other than describing (i) what information is presented and (ii) how the displayed information is used in facilitating the abstract idea. In addition to Credit Acceptance Corp (supra), other examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality include Ameranth, 842 F.3d at 1245, 120 USPQ2d at 1857 (Generating restaurant menus with functionally claimed features) and Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019) (Arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly).
With respect to the comparison to the decision in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc. the Examiner disagrees. The claims in Core Wireless recited a menu screen that provided an application summary that can be reached directly from the menu. More importantly, the application summary displayed a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state.
The court was careful to distinguish the claims as an improvement to the user interface of a computing device (particularly those with small screens), rather than the abstract idea of an index, and drew from the specification by emphasizing teachings therein that discussed many deficits relating to the efficient functioning of the computer. The court emphasized the limitations above, stating that they provided “a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer”.
The rationale applied by the courts is not applicable to the claimed invention, and any comparison of the claims and/or concepts at issue to those of in Core Wireless is inapposite. Unlike the claims of Core Wireless, the interface (and other additional elements of the claim) are used in their routine and ordinary capacity. The claims at issue do not improve the functioning of the interface itself, but instead leverage broadly recited elements in facilitation of the abstract idea itself. The claims at issue address an abstract, commercial problem using generic computing components, rather than a problem in the interface itself.
Moreover, the court in Core Wireless emphasized the disclosure of the patents in question, citing to specific sections of the disclosure that discussed improved display interfaces, particularly for electronic devices with small screens like mobile telephones. The reliance on the disclosure follows a similar pattern of reasoning applied by the courts in a number of decisions, including decisions such as McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., Enfish LLC v. Microsoft Corp., and Bascom Global Internet Services, Inc. v. AT&T Mobility LLC – each of which emphasized portions of the disclosure that discussed improvements to the computer, another technology, or a technical field. Such disclosure is not purported by the record of the current application, nor does the Examiner agree that the claims improve the interface or another technology (instead, improving only the abstract procedure executed using generic computing technology).
Similar logic applies to Data Engine Techs, where the court emphasized a specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers. Both the claims and specification fail to provide a “specific” interface that is navigable “using techniques unique to computers”. A more appropriate comparison would be to Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described “the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’” 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of “collecting, displaying, and manipulating data.” 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words “apply it”. 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”)).
Turning to Example 42, Example 42 does provide a combination of additional elements that confer eligibility under Prong 2 of step 2A; however, the claims of the instant application lack in a key area: The analysis of claim 42 emphasized the underlying conversion of information to a standardized format:
“Specifically, the additional elements recite a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user. Thus, the claim is eligible because it is not directed to the recited judicial exception (abstract idea).”
No such conversion and no such improvement are present in the claims. There is nothing in the instant claims or specification that parallels or otherwise analogizes to the conversion to a standard format as discussed in Example 42. Any comparison to Example 42 relies on the broader principal that improvements to computer functioning or another technology or technical field are eligible. Although this broader principal is true, the claims do not provide such an improvement as discussed above.
On page 16, Applicant alleges that a “technical explanation is present”. Even in light of Fig. 8 and its description all that is provided is high-level generic use of interface elements such as checkboxes or buttons, not the functioning of the interface itself. As noted above, the claims recite only the information presented and how the interface is used to facilitate the abstract idea. There is no improvement to the interface itself, how communications are mediated amongst devices (e.g., the POS and terminal) or any other technology or technical field. The “outputting” of certain information (e.g., shopping display crossing out a product” are not specific technical operations but instead the instructions to implement the abstract idea on the computer.
With respect to Steo 2B, the Examiner reiterates that appropriate citations to the MPEP for support of what the courts have held to be well-understood, routine and conventional have been provided. Features such as controlling output as claimed, or displaying generic checkboxes at certain positions, do not provide an “inventive concept” beyond the abstract idea. Drawing attention to Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344-45, 127 USPQ2d 1553, 1559-60 (Fed. Cir. 2018), here the court held that instructions to display two sets of information on a computer display in a non-interfering manner, without any limitations specifying how to achieve the desired result, was insufficient to confer eligibility. Similarly, arranging transactional information on a graphical user interface in a manner that assisted traders in processing information more quickly was insufficient to confer eligibility (Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019)).
With respect to Ex parte Hanmun, this is a non-precedential decision. Analysis is not governed by non-precedential decisions, but instead by the body of precedential case law and guidance provided in the MPEP. Additionally, the Examiner again refers back to the citations provided from MPEP 2106.05(d).
The Examiner further reiterates that the “controlling” is considered is nothing more than “apply it” – i.e., the mere instructions to implement an abstract idea on a computer. Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)).
Here again, the Examiner emphasizes the critical point: “controlling” is not defined by the claims nor by the speciation. The only specificity provided is in what is being presented, not how the controlling occurs. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. That also assumes that “problem” is one arising with the functioning of the computer itself or another technology or technical field, which the Examiner has demonstrated above is not the case with the claimed or disclosed invention.
Secondly, simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d));
Acquiring, receiving or outputting information, even assuming they are not abstract (which the Examiner does not acquiesce), are receiving and transmitting data, such as between the POS and the terminal (MPEP 2106.05(d)(II)(i), and presenting suggestions is akin to presenting offers (MPEP 2106.05(d)(II)(iv – under the second set of types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner). Further, registering a change, postponement, and the like – again, assuming arguendo this is not expressly abstract – is either storing and retrieving information in memory or electronic recordkeeping (MPEP 2106.05(d)(II)(iii and iv).
With respect to previously pending claim 19 (now incorporated in claim 1), Applicant is reminded that, as made clear by the courts, the “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”).
In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (“The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.
Ultimately, there is nothing of record that demonstrates that the additional elements, considered alone or even in combination, are more than using generic computing components to receive, transmit, store and present information in facilitation of the abstract idea.
Accordingly, the claims as amended remain ineligible for patenting under 35 USC 101.
II. Applicant’s arguments made with respect to the rejection under 35 USC 103 have been fully considered and are persuasive.
Applicant’s amendment has incorporated subject matter from claim 19, which was previously indicated as allowable. Accordingly, all rejections over prior art have been overcome.
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 1-5, 7-18 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Regarding claims 1-5, 7-18 and 20, under Step 2A claims 1-5, 7-18 and 20 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites
acquire in real-time during a purchase transaction, product information about a product to be purchased by a customer at a store;
output a suggestion for regular purchase related to the product about which the product information was acquired;
receive an instruction to regularly purchase the product related to the suggestion;
register regular delivery of the product for which the instruction has been received;
output:
a shopping list indicating a plurality of products to be purchased,
among the plurality of products, a checkbox checked at a position corresponding to the product for which the product information was acquired from the POS system,
a purchase frequency for purchasing the product at the store,
an indication that the product is registered for regular delivery, and
the delivery schedule of the product;
receive a skip input that the product is to be skipped from being purchased by the customer at the store;
based on receiving the skip input:
update the shopping list by [displaying] the product to be crossed out on the shopping list; and
output the suggestion for changing the purchase frequency of the product,
register a change in the purchase frequency based on the suggestion;
in a case where the product information is subsequently acquired from the POS system, determine whether the product in which the product information is acquired is registered in a regular purchase product list for regular delivery to the customer;
in a case where the product is registered in the regular purchase product list, output a notification indicating that the product is registered for regular delivery and a suggestion for changing a delivery schedule of the product;
receive an instruction to postpone the delivery schedule; and
register postponement of the delivery schedule.
These limitations recite ‘certain methods of organizing human activity’, such as by performing commercial interactions (see: MPEP 2106.04(a)(2)(II)). This is because claim 1 sets forth or describes registering a regular delivery of a product and postponing delivery of a regular purchase product. This represents the performance of sales activities or behaviors, which is a commercial interaction and falls under organizing human activity. Moreover, the limitations could also be taken as a fundamental economic practice because they clearly set forth or describe concepts relating to the economy and commerce. Notably, each of these falls under the enumerated category of ‘certain methods of organizing human activity’. Accordingly, under step 2A (prong 1) claim 1 recites an abstract idea because claim 1 recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. The Examiner acknowledges that representative claim 1 does recite additional elements, including an information processing system, at least one memory configured to store instructions, at least one processor configured to execute the instructions, a point-of-sale (POS) system, and a terminal (used by the customer in the store).
Additionally, claim 1 also recites control a display of the terminal and controlling, as output by the display of the terminal, the product to be crossed out on the shopping list.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 1 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). This remains true even in view of the controlling of the display, which the claims recite only a high level of generality without any restriction on the manner that this is performed. These limitations are set forth only at a high level of generality as instructions to implement the abstract idea on the terminal, and represent nothing more than “apply it” on a computer. Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Furthermore, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claim 1, taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Furthermore, the additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the additional elements of claim 1 utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data over a network,
storing or retrieving information from memory,
electronic recordkeeping.
Even considered as an ordered combination (as a whole), the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 2-5, 7-14, 17-18 and 20, dependent claims 2-5, 7-14 17-18 and 20 recite more complexities descriptive of the abstract idea itself, and at least inherit the abstract idea of claim 1. As such, claims 2-5, 7-14, 17-18 and 20 are understood to recite an abstract idea under step 2A (prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 2-5, 7-14, 17-18 and 20 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. This is because claims 2-5, 7-14, 17-18 and 20 rely upon at least similar additional elements recited only at a high level of generality. Further additional elements such as a smartphone or terminal provided on a shopping basket (e.g., claims 13-14), product database (e.g., claim 17), and a terminal comprising a display, speaker, touch panel and microphone (claim 20) are also recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea).
Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Lastly, under step 2B, claims 2-5, 7-14, 17-18 and 20 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims merely apply the exception on generic computing hardware, generally link the exception to a technological environment, and append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
In view of the above, claims 2-5, 7-14, 17-18 and 20 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Regarding claims 15 (method) and 16 (non-transitory medium), claims 15-16 recite at least substantially similar concepts and elements as recited in claim 1 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 15-16 are rejected under at least similar rationale.
Subject Matter Allowable Over the Prior Art
Claims 1-5, 7-18 and 20 are rejected on other grounds but are allowable over the prior art. Applicant’s amendment has incorporated subject matter from claim 19, which was previously indicated as allowable. The Examiner now holds that that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for combining or otherwise modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art because any combination of the evidence at hand to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
Conclusion
Applicant's amendment necessitated any changes to the content of rejections 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 WILLIAM J ALLEN whose telephone number is (571)272-1443. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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WILLIAM J. ALLEN
Primary Examiner
Art Unit 3625
/WILLIAM J ALLEN/Primary Examiner, Art Unit 3619
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