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 .
Response to Arguments
Applicant’s amendments overcome the rejection made under § 103. The rejection is withdrawn.
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive.
Applicant argues that the claim does not recite, set forth or otherwise describe marketing or sales activities or behaviors; the claim does not recite, set forth or otherwise describe a business relationship; the claim does not recite, set forth or otherwise describe advertising activity.
Examiner notes that while the claims don’t explicitly recite that the recommendations are for items (print products) for sale or that a purchase is made, the Broadest Reasonable Interpretation of the claims in light of the specification is that the recommendations are for commercial items. The spec talks about recommendations for things like “photographic print, photo book, calendar, mug, poster, T-shirt, sweatshirt, gift card, canvas print” (see [0049]). It’s hard to make the case that those sorts of item recommendations are not commercial in nature. The spec also mentions “selection of a print product group from the plurality of print product groups to be based on the print products that the particular user previously purchased so that the same or similar print products can be displayed to the user again, assuming that user will once again be interested in purchasing the same or similar print products” (see [0058]). That strengthens the argument that the recommendations are commercial in nature. Even if we were to say the claims didn’t fall under advertising, marketing, or sales activities/behaviors because the claims don’t explicitly recite the commercial nature of the recommendations, those activities aren’t the only types of methods of organizing human activities we can use. Advising someone of content they might like would fall under the sub-grouping "managing personal behavior or relationships or interactions between people". The MPEP notes that this sub-grouping “include social activities, teaching, and following rules or instructions.”
Applicant argues that claim 1 as a whole integrates the abstract idea into a practical application, because the claim recites that the products are selected using the processor of the computing device and a photofinishing device is used to fulfill print product orders.
The problem highlighted in the Arguments is at the abstract layer of organizing human activities, not one borne out of technology. The problems noted in Specification do not highlight any failures of modern computers. These are business implementation problems and do not set forth any deficiencies that are particular to computer capabilities or any other technology. "In sum, 'software can make non-abstract improvements to computer technology just as hardware improvements can.' Enfish, 822 F.3d at 1335. But to be directed to a patent-eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself." Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (emphasis added).
The additional elements (processor, photofinishing device) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)).
"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…" MPEP 2106.04(d) II. (emphasis added).
Accordingly, the rejection is maintained.
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 1-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (a judicial exception without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-24, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1, 10, 22, 23 and 24 recite a system.
Step 2A, prong 1: Claims 1, 10, 22, 23 and 24 recite the abstract idea of displaying representation of recommended products. This idea is described by the following steps:
Claim 1. A system configured to:
a) provide a representation of each of a plurality of print products wherein the plurality of print products are categorized into at least one of a plurality of print product groups, wherein the plurality of print product groups includes a first print product group;
b) select the first print product group from the plurality of print product groups;
c) provide a print product group recommendation including representations corresponding to at least one of the plurality of print products included within the first print product group; and
d) provide at least one image, wherein the at least one image includes associated information, wherein automatically selecting the first print product group from the plurality of print product groups is based on at least one of an identified geographic location, an identified time of year;
e) display the representations corresponding to at least one of the plurality of print products included within the first print product group; and
f) display the at least one image in association with each of the representations corresponding to the at least one of the plurality of print products included within the first print product group that are displayed, including the associated information related to at least one of:
i) a source of the at least one image;
ii) a size of a file associated with the at least one image;
iii) an identification of the representations that the at least one image was associated with;
iv) a date that the file associated with the at least one image was created;
or vi) an identification of at least one item of interest included in the at least one image; and
fulfilling a print product order.
Claim 10 recites equivalent limitations.
Claim 22. A system configured to:
a) provide a representation of each of a plurality of print products, wherein the plurality of print products are categorized into at least one of a plurality of print product groups, wherein the plurality of print product groups includes a first print product group;
b) select the first print product group from the plurality of print product groups;
c) provide a print product group recommendation by displaying the representations corresponding to a first subset of the plurality of print products included within the first print product group;
d) determine an amount of time the first subset of the plurality of print products included within the first print product group is displayed; and
e) in response to the amount of time the first subset of the plurality of print products included within the first print product group is displayed exceeds a threshold value, providing a second subset of the plurality of print products included within the first print product group for display; and
fulfilling a print product order.
Claim 23. A system configured to:
a) provide a representation of each of a plurality of print products, wherein the plurality of print products are categorized into at least one of a plurality of print product groups, wherein the plurality of print product groups includes a first print product group;
b) select the first print product group from the plurality of print product groups;
c) provide a print product group recommendation by displaying the representations corresponding to at least one of the plurality of print products included within the first print product group for display;
d) receive a selection of at least one representation of the displayed print products;
e) determine a number of times each of the displayed print products are selected; and
f) in response to the number of times a first representation corresponding to a first print product being selected exceeds a threshold value, providing a second print product group for display, the second print product group including print products that are similar to or related to the first print product group; and
fulfilling a print product order.
Claim 24. A system configured to:
a) provide a representation of each of a plurality of print products, wherein the plurality of print products are categorized into at least one of a plurality of print product groups, wherein the plurality of print product groups includes a first print product group;
b) select the first print product group from the plurality of print product groups;
c) provide a print product group recommendation by displaying the representations corresponding to at least one of the plurality of print products included within the first print product group for display;
d) selecting one or more other print product groups within the plurality of print product groups for presenting to the user;
e) determine a number of different print product groups that are selected; and
f) in response to the number of different print product groups that are selected exceeding a threshold value, providing a second print product group for display, the second print product group including at least one print product that is different than the print products previously presented in the first print product group and the selected one or more other print product groups; and
fulfilling a print product order.
This idea falls into the certain methods of organizing human activity grouping of abstract ideas as it is directed towards commercial interactions including advertising, marketing or sales activities or behaviors (i.e., providing print products for display based on user selections).
Step 2A, prong 2: Claims 1, 10, 22, 23 and 24 recite additional elements that fail to integrate the abstract idea into practical application.
Claims 1, 10, 22, 23 and 24 recite a computing device in communication with a memory; a processor and a photofinishing device. However, these elements are generic computing components (see at least paragraphs 147-166) that are simply used to perform operations that would otherwise be abstract (see MPEP2106.05(f)).
Step 2B: Claims 1, 10, 22, 23 and 24 fail to recite additional elements that amount to an inventive concept.
For the reasons identified with respect to Step 2A, prong 2, claims 1, 10, 22, 23 and 24 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)).
Dependent Claims Step 2A:
The limitations of the dependent claims merely set forth further refinements of the abstract idea identified at step 2A—Prong One, without changing the analysis already presented. Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims identified at step 2A—Prong Two.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. These do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above.
Thus, when considering the combination of elements and the claimed invention as a whole, the claims are not patent eligible.
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.
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/MILA AIRAPETIAN/Primary Examiner, Art Unit 3688
