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 §101
1. 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.
2. Claims 2, 4, 6-8, 10-12, 15, 17-20, and 22-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 15 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “monitoring a current geographical location of a mobile device of a user; accessing historical information associated with the user; predicting, based at least in part on the on the historical information, one or more merchant locations that the user will visit at a future point in time; retrieving one or more offers associated with one or more merchants at the one or more merchant locations; causing a user interface of the mobile device of the user to present at least a subset of the retrieved one or more offers; and performing…one or more electronic check-ins of the mobile device at the one or more merchant locations” are steps that are directed to commercial activities. Commercial activities fall into the category of a certain method of organizing human activity. Similarly, the claim language “accessing historical information associated with the user; predicting, based at least in part on the on the historical information, one or more merchant locations that the user will visit at a future point in time; retrieving one or more offers associated with one or more merchants at the one or more merchant locations; causing a user interface of the mobile device of the user to present at least a subset of the retrieved one or more offers; associating…a unique identifier with the mobile device of the user; ” are steps that can be performed in the human mind. Any actions that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “receiving…an indication from the user to ignore a first wireless device of the one or more wireless devices; and preventing, based on the received indication, a specified type of data from the first wireless device from being presented on the user interface of the mobile device of the user; and one or more processors.” These additional elements, considered in the context of claim 15 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of gathering and processing data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the processors and mobile device are caused to perform these steps. The processors and mobile device, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting patent-ineligible insignificant extra-solution activities. For instance, the step of “receiving…an indication from the user to ignore a first wireless device of the one or more wireless devices,” when considered as a whole, is a mere data gathering step considered to be insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Similarly, the limitation “preventing, based on the received indication, a specified type of data from the first wireless device from being presented on the user interface of the mobile device of the user” is directed to data processing, which is an insignificant extra solution step of filtering data. Further, the additional limitation, as recited in claim 20, “determining…that the user has selected an option…to ignore a further offer or a further promotion from a further wireless device deployed at a further merchant venue,” is nothing but an automation of a mental task. Lastly, the limitations, as recited in the independent claims 2, “wherein the one or more messages comprises a prompt, based on a determination that the mobile device is within a predetermined distance from a subsequent geographic location corresponding to a first commercial entity of the one or more commercial entities, asking the user whether the user would like to pre-check into the first commercial entity; wherein the assigning is performed based on a user response to the prompt” are merely recited to further narrow the scope of the abstract idea. Similarly, the limitation, as recited in claim 20, “and a prompt with respect to a pre-check-in at the merchant venue, wherein the prompt is displayed on a determination that the mobile device of the user is within a predetermined distance from the second geographical location” is merely recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 15 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 15 are the generically recited “processor and mobile/wireless device.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0021-0023. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add 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 a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that 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.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 15 and are rejected using the same rationale as in claim 15 above. Independent claims 2 and 20 further discloses “presenting….one or more messages via a user interface of the mobile device of the user and facilitating…an electronic check-in of the mobile device of the user with one or more wireless devices located at the first commercial entity,” which are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Further, dependent claims 4, 6, 8, 10-12, 17, 19, 22, and 25-26 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 7, 9, 18, 23 and 24 recite additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”).
Double Patenting
5.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.
6. Claims 2, 4, 6-8, 10-12, 15, 17-20, and 22-26 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.11,917,510. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims recite substantially the same limitations as the claims of U.S. Patent No. 11,917,510. For instance, independent claims 2, 15 and 20 of the pending application recite substantially the same limitations as independent claims 1, 8 and 15 of U.S. Patent No.11,917,510 with minor variations that are not patentably distinct from each other. Similarly, claims 2, 4, 6-8, 10-12, 15, 17-20, and 22-26 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.11,228,888. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims recite substantially the same limitations as the claims of U.S. Patent No. 11,228,888. For instance, independent claims 2, 15 and 20 of the pending application recite substantially the same limitations as independent claims 1, 8 and 15 of U.S. Patent No. 11,228,888 with minor variations that are not patentably distinct from each other. Lastly, claims 2, 4, 6-8, 10-12, 15, 17-20, and 22-26 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,499,224. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims recite substantially the same limitations as the claims of U.S. Patent No. 10,499,224. For instance, independent claims 2, 15 and 20 of the pending application recite substantially the same limitations as independent claims 1, 10 and 17 of U.S. Patent No. 10,499,224 with minor variations that are not patentably distinct from each other.
Response to Arguments
Applicant's arguments filed on 11/25/25 have been fully considered but they are not persuasive. In response to applicant’s arguments that the claim as currently amended integrate the exception into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “receiving…an indication from the user to ignore a first wireless device of the one or more wireless devices; and preventing, based on the received indication, a specified type of data from the first wireless device from being presented on the user interface of the mobile device of the user; and one or more processors.” These additional elements, considered in the context of claim 15 as a whole, do not integrate the abstract idea into a practical application because they merely recite the steps of gathering and processing data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the processors and mobile device are caused to perform these steps. The processors and mobile device, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting patent-ineligible insignificant extra-solution activities. For instance, the step of “receiving…an indication from the user to ignore a first wireless device of the one or more wireless devices,” when considered as a whole, is a mere data gathering step considered to be insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Similarly, the limitation “preventing, based on the received indication, a specified type of data from the first wireless device from being presented on the user interface of the mobile device of the user” is directed to data processing, which is an insignificant extra solution step of filtering data. Further, the additional limitation, as recited in claim 20, “determining…that the user has selected an option…to ignore a further offer or a further promotion from a further wireless device deployed at a further merchant venue,” is nothing but an automation of a mental task. Lastly, the limitations, as recited in the independent claims 2, “wherein the one or more messages comprises a prompt, based on a determination that the mobile device is within a predetermined distance from a subsequent geographic location corresponding to a first commercial entity of the one or more commercial entities, asking the user whether the user would like to pre-check into the first commercial entity; wherein the assigning is performed based on a user response to the prompt” are merely recited to further narrow the scope of the abstract idea. Similarly, the limitation, as recited in claim 20, “a prompt with respect to a pre-check-in at the merchant venue, wherein the prompt is displayed on a determination that the mobile device of the user is within a predetermined distance from the second geographical location” is merely recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 15 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Applicant's citation of claim 1 example 42 of PEG is unpersuasive because the it is readily distinguishable over the instant claims. Claim 1 example 42 of PEG is held to be patent-eligible because the claim is directed to the transformation of data from non-standardized format to standardized format. No such transformation is recited in the pending claims.
Applicant’s argument that the amended claims recite specific improvements over conventional checkins is unpersuasive, because the improvement is not a technical/technological improvement. Rather it is an application of a conventional computer system/processor to provide a business solution.
In response to applicant’s argument that the additional elements in the claim are significantly more than the alleged judicial exception, the examiner disagrees. It is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 15 are the generically recited “processor and mobile/wireless device.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0021-0023. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add 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 a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Regarding the argument that the final office action violates Berkheimer, the examiner did not rely upon 2106.05(d) considerations. Instead the examiner stated the additional elements of the claim were mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on "the draftsman’s art").
Conclusion
THIS ACTION IS MADE FINAL. 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 OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695