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 .
Status of Claims
This action is in reply to the claims filed on 04/08/2026.
Claims 1, 11, and 20 are amended.
Claims 1-20 are currently pending and have been examined.
Subject Matter Free of Prior Art
Claims 1-20 are determined to have overcome the prior art of rejection and are free of prior art, however the claims remain rejected under 35 USC 101, as set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. A statement of reasons for the indication of allowable subject matter can be found in the Office Action on 01/08/2026.
Claim Rejections- 35 U.S.C. § 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 of the subject matter eligibility (SME) analysis described in MPEP 2106.03, the instant claims fall within the four statutory categories of invention identified by 35 U.S.C. 101. In the instant case, claims 1-19 are directed to methods and claim 20 is directed to a device. Claims 1, 11, and 20 are parallel in nature, therefore, the analysis will use claim 11 as the representative claim.
In Step 2A Prong One, it must be considered whether the claims recite a judicial exception. Claim 11, as exemplary, recites abstract concepts including: accessing one or more of location data; identifying an entity associated with the one or more of the location data; ... observe an item identified of a physical item to be added to a collection of physical items; extracting ... the item identifier from imaging data; determining ... a value of the physical item based on the extracted item identifier ... the identifying the value of the physical item based on the extracted item identifier; determining ... a total value of the collection of physical items based on the determined value of the physical item; generating ... at least one status assessment of the user based on the total value of the collection of physical items; and executing ... at least one action based on the at least one status assessment of the user.
These identified limitations recite the abstract idea of “determining item values based on item identifiers and executing corresponding actions ”, which falls within the “Certain Methods of Organizing Human Activities” grouping of abstract ideas as it sets forth and describes managing personal behavior of using the determined value of collected items to execute actions such as recommending removal or exchange of items in the collection. Each of the identified steps above also recite mental processes capable of being performed in the human mind including observations (e.g. identifying an entity associated with location data) and evaluations (e.g. determining values and generating a status assessment of the user). Accordingly, claims 1, 11, and 20 recite an abstract idea. See MPEP 2106.04.
In Step 2A Prong Two, examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.
Instant claims 1, 11, and 20 recite additional elements including: a computer; a camera; a positioning sensor on a user device or a network connection data of the user device; a first electronic application operating on a device; a second electronic application operating on a device; detecting, via a first electronic application operating on a device, that a second electronic application operating on the user device to observe image data ... wherein the image data is stored in a database associated with the camera; wherein the first application detects that the second electronic application is accessing the camera of the device by accessing the image data stored in the database associated with the camera; and accessing a database of values of items at the identified entity.
The computer, camera, positioning sensor on a user device, first and second electronic applications, and database are recited at a high-level of generality in combination with the identified abstract limitations such that they amount to no more than “apply it” or mere instruction to implement the abstract idea on a computer. As explained in MPEP 2106.05(f), implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. The step of “accessing one or more of location data of a positioning sensor on a user device or network connection data of the user device” merely indicates a field of use or technological environment in which to apply the abstract idea (in this case, execution on a generic computer), which cannot integrate a judicial exception into a practical application. MPEP 2106.05(h). Additionally, step of “detecting, via a first electronic application operating on the user device, that a second electronic application operating on the user device ... is accessing the camera” contains no restriction on how the detecting is performed by the first electronic application and no mechanism for accomplishing the result. Accordingly, this step also amounts to no more than mere instruction to apply the abstract idea on a generic computer because claiming only the idea of a solution or outcome is equivalent to “apply it”. See MPEP 2106.05(f). In combination, the additional elements amount to no more than a generic smartphone being applied to perform the abstract idea. Consequently, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05. Claims 1, 11, and 20 are thus directed to an abstract idea.
Under Step 2B of the SME analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the 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).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) individually and in combination are merely being used to apply the abstract idea to a general computer components. For the same reason, the elements are not sufficient to provide an inventive concept. As explained in MPEP 2106.05(f), implementing an abstract idea with a generic computer does not add significantly more in Step 2B. Therefore, the additional elements, alone or in ordered combination, there is no inventive concept in the claim, and thus claims 1, 11, and 20 are not patent eligible.
Dependent claims 2 and 12 recite additional elements including: wherein the extracting of the item identifier from imaging data captured by the camera is performed so as to be opaque to the second electronic application. Similar to the additional elements identified above, the “extracting” described in ordinary terms, contains no restriction/mechanism for “extracting ... so as to be opaque to the second electronic application”, and therefore amounts to no more than “apply it”. Accordingly, claim(s) 2 and 12 are ineligible.
Dependent claim(s) 3-10 and 13-19 do not aid in the eligibility of the independent claims. These claims merely further define the abstract idea without reciting any further additional elements, not already addressed above. Thus dependent claims 3-10 and 13-19 are also ineligible.
Response to Arguments
Applicants arguments filed 04/08/2026 with respect to the 35 U.S.C. § 101 rejection of claims 1-20 has been fully considered but is not persuasive.
On pages 10-11 of the Remarks, Applicant argues the claims as amended “do not describe managing personal behavior nor can they be performed mentally either”.
The Examiner respectfully disagrees. In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim (MPEP 2106.04.II.A.1). Claim 1 sets forth and describes an example of managing personal behavior by way of executing actions based on a status assessment of a user; as well as mental activities including identifying entities associated with location data, observing item image data and extracting identifiers, and determining status assessment of a user based on a total value of the collection of physical items. Accordingly, the claims recite an abstract idea in prong one. The recited additional technical features do not change the conclusion that abstract ideas are recited (i.e. set forth or described) in the claim. The additional elements, and whether or not they provide integration into a practical application or significantly more, are considered in Prong Two and Step 2B.
On page 11 of the Remarks, Applicant argues “the subject matter recited in the amended claims improves the near real time image analysis capability of mobile devices, as well as the technology for integrating conventional camera operation of a mobile device with secondary functionality with another electronic application separate from an application controlling the camera”.
The Examiner respectfully disagrees. In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). If it is asserted that the invention improves upon conventional technology, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. That is, the claim must include the components or steps of the invention that provide the improvement described in the specification. MPEP 2106.05(a).
The instant specification does not set forth that conventional tools for shopping and budgeting “are separate un-integrated tools” in ¶ [0002] or ¶ [0025] as argued on page 11. The stated problem of the invention is that many savings tools “not available when making purchases in person” (Background ¶ [0002]). There is no mention of integrating applications, real-time analyses, or another technical problem. Instead, the Specification discusses the sales problem of users having limited access to budgeting tools while shopping in physical stores. To this end, the claims recite a method for analyzing images of physical items and performing an analysis of item value, using a general purpose computer comprising a camera, electronic applications, and database operating in their ordinary capacity. The claims do not recite a “near real time” or “real time” analysis, and therefore cannot recite improvements thereof. Neither do the claims recite improved or unique mechanisms for integrating camera operation with a secondary application distinct from an application controlling the camera. The claims recite using an electronic application in its ordinary capacity to access stored data image that was captured by another application. These additional elements amount to mere instruction to apply the abstract idea on a computer.
On page 12 of the Remarks, Applicant further argues “such features, which the Office Action acknowledges are “novel and non-obvious features,” and thus far beyond any well-known or customary use of such elements”.
The Examiner respectfully disagrees. Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. 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. 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).
The analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification. See Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1377, 118 USPQ2d 1541, 1546 ( Fed. Cir. 2016) (supporting the position that amplification was well-understood, routine, conventional for purposes of subject matter eligibility by observing that the patentee expressly argued during prosecution of the application that amplification was a technique readily practiced by those skilled in the art to overcome the rejection of the claim under 35 U.S.C. 112, first paragraph)(MPEP 2106.05).
By Applicant’s own admission, the features of “detecting, via first application operating on a device, that a second electronic application operating on the device, separate from the first application, is accessing the camera of the device” and “wherein the extracting of the item identifier from imaging data captured by the camera is performed so as to be opaque to the second electronic application” are well-known in art and need not be described in detail in the specification (Remarks, pg. 14). Accordingly, the Examiner maintains that the additional elements are no more then well-understood, routine, conventional activities previously known in the art and claims 1-20 are thus ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Aliev, Mikhail A., et al (NPL Reference U) discusses the task of search, localization and recognition of price zone within a photograph of the price tag.
Applicant's amendment necessitated the new ground(s) of rejection 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.
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/K.G.W./Examiner, Art Unit 3688
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 8/7/2026
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