The present application is being examined under the pre-AIA first to invent provisions.
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 1-3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 8386380 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim would anticipate claim 1-3 of the current application.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Under Step 1, claims are directed to at least one statutory category, a method.
Under Step 2A, Prong 1, claim 1 is directed to an abstract idea of receiving a request for a delivery of at least one product; receiving an indication of a value of the at least one product; transmitting a request for a bonding of a delivery agent, a bonding value of the delivery agent based, at least in part, on the value of the at least one product; receiving an indication that a sum of money at least as great as the value of the request for the bonding is available to bond the delivery agent, wherein the indication includes receiving an indication that the sum of money is reserved by a trusted entity or receiving an indication that the sum of money has been received; transmitting, to the delivery agent, a request to deliver the at least one product; and upon successful delivery of the at least one product, returning at least some of the bonding value. This concept of revenue sharing and delivery fall under the abstract idea category of certain methods of organizing human activity, specifically commercial or legal interactions as it is directed to sales activities or behaviors.
Under Step 2A, Prong Two, the additional elements recited in claim 1 include: the applicant does not explicitly state the additional element. These additional limitations do not integrate the judicial exception into a practical application. In particular, the claimed computer components, receiving and transmitting data are amount to no more than mere instructions to apply the exception using a generic computer system, which is not indicative of integration into a practical application; see MPEP 2106.05(f). The additional elements amount to no more than merely linking the general technology to the judicial exception without significantly more and, in the alternative, mere insignificant extra-solution activity to gather data used in the claimed method. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 2B, the claimed invention is considered as a whole whether the additional elements individually or as an ordered combination amount to an inventive concept. Upon further determination, the claims do not integration of the abstract idea into a practical application, the additional element of the applicant does not explicitly recite additional element is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system, and recites the steps of data manipulation. Mere instructions to apply an exception using a generic computer system and/or adding insignificant extra-solution activity to the judicial exception is not indicative of an inventive concept. The sending and receiving data over a network have been determined by the courts to be well-known, conventional and routine functions, see MPEP 2106.05(d)(II)(i). Therefore, claim 1 is not patent eligible.
As for dependent claims 2-20, these claims recite limitation that further define the same abstract idea noted in claim 1. Therefore, they are considered patent ineligible for the reasons given above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sesek (US 2003/0050850 A1) in view of Ourega (US 2008/0162304 A1).
As per claim 1, Sesek discloses: a method comprising (abstract: a method): receiving a request for a delivery of at least one product (see at least ¶ 0023); receiving an indication of a value of the at least one product (see at least ¶ 0017); a bonding value of the request for the bonding of a delivery agent, a bonding value of the delivery agent based, at least in part, on the value of the at least one product (see at least ¶ 0017, 0023 and 0027; claim 11); receiving an indication that a sum of money at least as great as the value of the request for the bonding is available to bond the delivery agent, wherein the indication includes receiving an indication that the sum of money is reserved by a trusted entity or receiving an indication that the sum of money has been received (see at least ¶ 0017, 0023 and 0027; claim 11); transmitting, to the delivery agent, a request to deliver the at least one product (see at least ¶ 0027); and upon successful delivery of the at least one product, returning at least some of the bonding value (see at least abstract; ¶ 0002-0005, 0012, 0017 and 0023-0028).
Sesek does not disclose the following, however Ourega discloses transmitting a request for a bonding of a delivery agent (see at least ¶ 0018).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Sesek with transmitting a request for a bonding of a delivery agent feature of Ourega to help to facilitate transactions (abstract of Ourega) or facilitate transaction (¶ 0026 of Ourega).
As per claim 2, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches wherein transmitting the request for the bonding includes transmitting a request to lock a charge on at least one credit card (¶ 0003 and 0012-0018).
As per claim 3, Sesek and Ourega teach the method of claim 2 described above. Sesek teaches wherein receiving the indication that the sum of money at least as great as the bonding value is available includes receiving an indication that the charge has been successfully locked on the at least one credit card (¶ 0003 and 0012-0018).
As per claim 4, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches wherein the request to deliver the at least one product includes a request to act as a principal when delivering the at least one product (¶ 0003 and 0012-0018).
As per claim 5, Sesek and Ourega teach the method of claim 4 described above. Sesek teaches wherein the request to act as a principal includes a request to: pay at least one merchant for the at least one product in order to take ownership of the at least one product during the delivery of the at least one product (¶ 0003-0005 and 0011-0018); and transfer ownership of the at least one product to at least one customer upon delivery of the at least one product (¶ 0003-0005 and 0011-0018).
As per claim 6, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches wherein the request to deliver the at least one product includes a request to act as an agent when delivering the at least one product (¶ 0003-0005 and 0011-0018).
As per claim 7, Sesek and Ourega teach the method of claim 6 described above. Sesek teaches wherein the request to act as an agent includes a request to: take possession of the at least one product from at least one merchant without paying the at least one merchant to take ownership of the at least one product during the delivery of the at least one product (¶ 0003-0005 and 0011-0018); and transfer possession of the at least one product to at least one customer upon delivery of the at least one product (¶ 0003-0005 and 0011-0018).
As per claim 8, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches wherein the bonding value includes at least a percentage of the value of the at least one product (¶ 0003-0005 and 0011-0018).
As per claim 9, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches further comprising: selecting the delivery agent based on a plurality of reviews, in which each of the plurality of reviews includes a respective review of at least one of the delivery agent and at least one other respective delivery agent (¶ 0003-0005 and 0011-0018).
As per claim 10, Sesek and Ourega teach the method of claim 9 described above. Sesek teaches in which selecting the delivery agent includes selecting the delivery agent based on a comparison of at least one review of the delivery agent and at least one review of at least one other delivery agent (¶ 0003-0005 and 0011-0018).
As per claim 11, Sesek and Ourega teach the method of claim 9 described above. Sesek teaches wherein selecting delivery agent includes selecting a most positively reviewed delivery agent of a plurality of delivery agents (¶ 0003-0005 and 0011-0018).
As per claim 12, Sesek and Ourega teach the method of claim 9 described above. Sesek teaches further comprising determining the plurality of reviews based on a social network of a merchant associated with the product, in which each review of the plurality of reviews is from a member of the social network (¶ 0003-0005 and 0011-0018).
As per claim 13, Sesek and Ourega teach the method of claim 9 described above. Sesek teaches further comprising determining the plurality of reviews based on a social network of a customer who purchased the product, in which each review of the plurality of reviews is from a member of the social network (¶ 0003-0005 and 0011-0018).
As per claim 14, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches further comprising: selecting the delivery agent from a plurality of delivery agents based on an availability of the delivery agent in a desired timeframe compared to an availability of at least one other delivery agent in the desired timeframe. (¶ 0003-0005 and 0011-0018)
As per claim 15, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches further comprising determining an allocation of a payment to each of the delivery agent, a merchant associated with the product, and a referrer of the request to deliver (¶ 0003-0005 and 0011-0018).
As per claim 16, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches in which the bonding value includes an amount of money based on a distance of the delivery (¶ 0003-0005 and 0011-0018).
As per claim 17, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches in which the bonding value includes an amount of money based on a fragility of the at least one product (¶ 0003-0005 and 0011-0018).
As per claim 18, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches n which the bonding value includes an amount of money based on a risk adversity of a destination of the delivery (¶ 0003-0005 and 0011-0018).
As per claim 19, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches in which receiving the indication that the sum of money is available to bond the delivery agent includes receiving an indication that, on behalf of the delivery agent, the sum of money is available to be forfeit in response to a failed delivery of the at least one product (¶ 0003-0005 and 0011-0018).
As per claim 20, Sesek and Ourega teach the method of claim 1 described above. Sesek teaches wherein receiving the indication of the value occurs substantially simultaneously with receiving the request for delivery, including receiving the indication of the value in a same electronic message as the request for delivery (¶ 0003-0005 and 0011-0018).
Response to Arguments
Applicant's arguments filed 2/19/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument/remark to double patenting rejection, the applicant hasn’t filed the terminal disclaimer. Therefore, the double patenting rejections are maintained.
The applicant amended the claim, the examiner has updated the 35 U.S.C. §101 base on applicant’s amendment.
In response to applicant’s argument to 101 rejections that the claims are directed to an abstract idea and the limitations in the claims amount to significantly more than the alleged abstract idea, the examiner respectfully disagrees. The claims are not eligible under the two-pronged analysis set forth in Alice Corp as shown in the office action rejections described above. The claimed invention does not recite improvement to another technology or another technical field or the computing device. The claimed invention does not recite any improvement to the functioning of the computer system itself. Therefore, applicant’s argument is not persuasive.
In response to applicant’s argument regards to Bascom, the Examiner respectfully disagrees. In Bascom, they use the unconventional step of filtering Internet content using ISP. The filtering was performing remote server rather than local server. In Bascom, they provided technical basis and provided non-conventional and non-routine way of changing the filtering of Internet content using ISP. Unlike Bascom, the current case is all of the elements in the current case are doing merely communicating or sending data back and forth and courts have recognized the computer function: receiving or transmitting data over a network, e.g., using the Internet to gather data to be routine and conventional, therefore the current case is conventional. The current claims do not recite anything non-conventional and non-routine. The claim is merely gathered information. Therefore, applicant’s argument with respect Bascom is not persuasive.
In response to applicant’s argument in regard to McRO, the examiner respectfully disagrees. Unlike McRO, applicant’s specification and claims do not describe technological improvements, or a specific improvement to the way computers store and retrieve data. Rather, applicant’s specification and claims described [0041] general purpose computers. The claims do not to improve the performance of computers or any underlying technology; instead, the focus is to use generic device(s), computer and/or machine. Therefore, the applicant’s argument is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to I JUNG LIU whose telephone number is (571)270-1370. The examiner can normally be reached Monday-Friday.
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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.
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I JUNG LIU
Examiner
Art Unit 3695
/I JUNG LIU/Primary Examiner, Art Unit 3695