DETAILED ACTION
Status of Claims
• The following is an office action in response to the communication filed 08/15/2025.
• Claims 1 and 20 have been amended.
• Claims 7 and 11-19 have been canceled.
• Claims 1-6, 8-10 and 20 are currently pending and have been examined.
Priority
The examiner acknowledges that the instant application is a continuation of US Patent No. 11783406, filed 96/24/2020.
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 Objections
Claim 20 is objected to because of the following informalities:
With regards to claim 20, this claim is amended yet has a status identifier of “(Previously Presented).” This claim should be marked with the status identifier of “(Currently Amended).”
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 1-6, 8-10 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1-6 and 8-10 are directed to a process, and claim 20 is directed to a manufacture. Therefore, claims 1-6, 8-10 and 20 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
generating a group account at a concierge, the group account associated with a plurality of user profiles, each user profile corresponding to a different user of the concierge;
receiving, from a first user associated with the group account, a request to create a group order including one or more items;
generating a presentation presenting the group order;
receiving a request to modify an item in the group order from the second user having a user profile associated with the group account, and receiving the request comprises:
displaying information identifying the one or more items in the group order in a first region,
displaying information identifying one or more of the identified items included in previous orders received from the one or more users having user profiles associated with the account in a second region,
displaying information identifying one or more items included in prior orders received from the user from whom the request was received in a third region,
receiving an interaction from the second user, the interaction indicating the request to modify the item in the group order;
accessing a set of user permissions for the group account;
determining, based on the set of user permissions, whether the second user is permitted to modify the order;
in response to determining the second user being permitted to modify the group order, identifying a warehouse associated with the group order;
generating an item-warehouse pair comprising the item and the identified warehouse;
providing the generated item-warehouse pair to a model to predict an availability of the item at the identified warehouse, wherein the model:
access[es] a dataset including plurality of examples, wherein each example comprises outcome information associated with an outcome of a previous delivery order and a set of input features comprising:
a time and a warehouse associated with a previous order;
applying the model to the example; and
updating the model based on an error between the outcome information and output of the model from the applying;
receiving the predicted availability of the item at the identified warehouse; and
modifying the group order based on the predicted availability of the item, comprising: modifying by adding the interacted item from one region to another region to reflect the modification to the group order.
The above limitations recite the concept of modifying a group order, predicting availability of the item at a warehouse, and indicating the modifications to users in the group order. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Specifically, modifying an order and predicting availability is a sales activity. This is illustrated in paragraph [0024] of the Specification, describing the that orders pertain to items for purchase. Independent claim 20 recites similar limitations as claim 1 and as such, claim 20 falls within the same identified grouping of abstract ideas. Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claims 1 and 20 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claims 1 and 20 recite additional elements, such as an online concierge system, an interface, a client device associated with a second user associated with a group account, one or more user interface elements in the interface, a machine learned model, wherein the machine learning model is trained, a training dataset, training examples, and a computer program product comprising a non-transitory computer-readable storage medium having instructions encoded thereon that, when executed by a processor, cause a processor to perform. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 1 and 20 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 1 and 20 merely recite a commonplace business method (i.e., modifying a group order, predicting availability of the item at a warehouse, and indicating the modifications to users in the group order) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims 1 and 20 generally link the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claims 1 and 20 specifying that the abstract idea of modifying a group order, predicting availability of the item at a warehouse, and indicating the modifications to users in the group order is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 1 and 20 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1 and 20 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1 and 20 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 1 and 20, these claims recite additional elements, such as an online concierge system, an interface, a client device associated with a second user associated with a group account, one or more user interface elements in the interface, a machine learned model, wherein the machine learning model is trained, a training dataset, training examples, and a computer program product comprising a non-transitory computer-readable storage medium having instructions encoded thereon that, when executed by a processor, cause a processor to perform. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 1 and 20 are manual processes, e.g., receiving information, analyzing information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 1 and 20 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims specifying that the abstract idea of modifying a group order, predicting availability of the item at a warehouse, and indicating the modifications to users in the group order is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 1 and 20 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 1 and 20 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 2-6 and 8-10, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they recite an abstract idea, are not integrated into a practical application, and do not add “significantly more” to the abstract idea. More specifically, dependent claims 2-6 and 8-10 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they further recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors and managing personal behavior or relationships or interactions between people. Dependent claims 2-4, 6, and 8-10 fail to identify additional elements and as such, are not indicative of integration into a practical application. Dependent claim 5 further identifies additional elements, such as transmitting information. Similar to discussion above the with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). As such, under Step 2A, dependent claims 2-6 and 8-10 are “directed to” an abstract idea. Similar to the discussion above with respect to claims 1 and 20, dependent claims 2-6 and 8-10 analyzed individually and as an ordered combination, invoke such additional elements as a tool to perform the abstract idea and merely indicate a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, and therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Accordingly, under the Alice/Mayo test, claims 1-6, 8-10 and 20 are ineligible.
Allowable Subject Matter
Claims 1-6, 8-10 and 20 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101, set forth in this Office action.
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant’s invention as the noted features amount to more than a predictable use of elements in the prior art.
The most relevant prior art made of record includes previously cited previously cited Golwalkar (US 10169806 B1), hereinafter Golwalkar, previously cited Chernyak (US 20090254446 A1), hereinafter Chernyak, previously cited Rao et al. (US 20190236740 A1), hereinafter Rao, previously cited Xie (US 20070244758 A1), hereinafter Xie, and previously cited NPL reference U, initially cited in the Office action dated 06/20/2024.
Although individually the references teach concepts such as accounts associated with multiple users and orders edited by multiple users, none of the references teach nor render obvious an online concierge system with multiple users associated with an account, where the users are provided an interface displaying different sections regarding orders by different users, where an item availability is predicted using a machine learning model trained in such a way.
Previously cited Golwalkar discloses a method of aggregating purchases. Multiple users may shop using a single shopping cart shared between them (Golwalkar: Col. 1, Ln. 48-55). A user may create a cart, add items, and then share the cart (Golwalkar: Col. 5, Ln. 22-40 and Figs. 2A-B). A user who receives access to the cart may request to modify an order and remove items, and the system will check the permissions to ensure the user is able to modify the order. A request may be rejected if a user does not have permission to modify. If the account is permitted to modified, then the modification occurs (Golwalkar: Col. 9, Ln. 15-63). Yet Golwalkar does not explicitly disclose all of the limitations pertaining to generation of a group account, predicting availability based on warehouse information, and the specific interface elements.
Previously cited Chernyak teaches a group ordering method (Chernyak: [0043]). Chernyak further teaches the creation of a household account with 4 members, where every user has their own id and password to log into the account (Chernyak: [0043]). Chernyak further teaches that household users may manipulate the account and add items to an order (Chernyak: [0040]). However, Chernyak does not explicitly teach all of the limitations regarding the interface sections, or the predictions based on warehouse information.
Previously cited Rao teaches an ordering method (Rao: [abstract]). Rao further teaches identifying a warehouse to fulfill an item order and using a machine learning availability model that is trained based on previous delivery orders (Rao: [0004]; [0024]). The system inputs the item, warehouse, and timing characteristics for the identified item-warehouse pair into the machine-learned item availability model and determines a confidence score associated with a probability that an item is available at the warehouse (Rao: [0041]). However, Rao does not teach the limitations regarding group ordering, the group account, and the interface sections.
Previously cited Xie teaches a family shopping account (Xie: [0071]). Xie further teaches family member Tom creates an account on website 24 and shares shopping task list 26 of FIG. 2 with other family members. As an option, when Tom is creating the task account, he can also create user accounts for his family members, provide relationship, age, sex, and other information of each member to said website (Xie: [0071]). Xie further teaches members can create, read, update and manage other attributes of a shopping task list (Xie: [0059]). However, Xie does not teach all of the limitations regarding the warehouse, or the specific ordering interface.
Previously cited NPL Reference U teaches a shopping cart sharing application. A user may add items to a cart and share their curated cart with others. Multiple carts can be managed in one single merged cart. The cart sharing may be associated with restrictions. However, U does not explicitly teach all of the limitations the specific interface or the predictions.
While these references arguably teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Accordingly, claims 1 and 20, taken as a whole, are indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims allowable over the prior art/additional art. Claims 2-6 and 8-10 depend from claim 1, and therefore the dependent claims are also indicated as containing allowable subject matter.
The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand 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 as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of the Applicant's claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, filed 08/15/2025, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims do not recite an abstract idea because the “these limitations are not mathematical concepts,” “these limitations are not…methods of organizing human activity,” and “these limitations are not mental processes.” (Remarks pages 10-11). The examiner disagrees. Initially, the examiner notes that the examiner has not commented on whether the limitations recite mental processes or mathematical concepts. Further, the MPEP enumerates groupings of abstract ideas, thereby synthesizing the holdings of various court decisions to facilitate examination. See MPEP 2106.04. Among the enumerated groupings is the Certain Methods of Organizing Human Activity grouping, which includes activity that falls within the enumerated sub-grouping of commercial or legal interactions, including subject matter relating to agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. With respect to the claims, the examiner notes an online concierge system, an interface, a client device associated with a second user associated with a group account, one or more user interface elements in the interface, a machine learned model, wherein the machine learning model is trained, a training dataset, training examples, and a computer program product comprising a non-transitory computer-readable storage medium having instructions encoded thereon that, when executed by a processor, cause a processor to perform have been analyzed as additional elements and accordingly are not analyzed under Step 2A, Prong 1. The claims further recite limitations such as generating an account, receiving requests, and displaying product information. These limitations represent certain methods of organizing human activity. Specifically, modifying an order and predicting availability is a sales activity. This is illustrated in paragraph [0024] of the Specification, describing the that orders pertain to items for purchase. These limitations fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). Specifically, the limitations of claim 1 represent sales activities and behaviors because the limitations recite modifying a group order, predicting availability of the item at a warehouse, and indicating the modifications to users in the group order. These are sales activities because they pertain to ordering of purchases. Accordingly, these claims recite Certain Methods of Organizing Human Activity.
Applicant argues the claims are eligible because “[t]he additional elements relate to a technological improvement to user interface technology” (Remarks pages 11-12). The examiner disagrees. The MPEP provides guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, the MPEP states “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” The MPEP further states that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art,” and that, “conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…the examiner should not determine the claim improves technology” (see MPEP 2106.04). That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
While the examiner acknowledges that improvements to the functioning of a computer or to any other technology or technical field may constitute integration into a practical application (see MPEP 2106.05(a)), the instant claims do not provide a technical improvement. Rather, the claims provide an improvement to the abstract idea of modifying a group order, predicting availability of the item at a warehouse, and indicating the modifications to users in the group order. This is illustrated in specification paragraphs [0002-0003] which discusses that the invention related to shopping. With respect to Applicant’s arguments regarding the interface, the examiner notes that the interface is merely recited at a high level and an improvement to interface technology is not reflected in the claims.
Although the claims include computer technology such as an online concierge system, an interface, a client device associated with a second user associated with a group account, one or more user interface elements in the interface, a machine learned model, wherein the machine learning model is trained, a training dataset, training examples, and a computer program product comprising a non-transitory computer-readable storage medium having instructions encoded thereon that, when executed by a processor, cause a processor to perform, such elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of modifying a group order, predicting availability of the item at a warehouse, and indicating the modifications to users in the group order in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO. Unlike precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to technological improvements but are directed to improving the modifying a group order, predicting availability of the item at a warehouse, and indicating the modifications to users in the group order. The claimed process, while arguably resulting in a more accurate process for predicting item availability and providing information, is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the server and/or computer components that operate the system. Rather, the claimed process is utilizing data sets related to ordering while still employing the same server and/or computer components used in conventional systems to improve modifying a group order, predicting availability of the item at a warehouse, and indicating the modifications to users in the group order, e.g. a business method, and therefore is merely applying the abstract idea using generic computing components. As such, the claims are not eligible.
Applicant argues that the examiner has not provided Berkheimer evidence to support the position that the claims are well-understood, routine and conventional (Remarks pages 12-13). The examiner has not commented on whether the claims are well-understood, routine, and conventional, and as such, Berkheimer evidence is not required.
Applicant argues the claims provide significantly more because “the claim [is] clear of the art.” Remarks pages 12-13. The examiner disagrees. The question of whether a particular claimed invention is novel or obvious is "fully apart" from the question of whether it is eligible. Diamond v. Diehr, 450 U.S. 175, 190, 209 USPQ 1, 9 (1981). As made clear by the courts, 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."). 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. See MPEP 2106.05(I). Accordingly, non-obviousness under 35 U.S.C, 103 has no bearing on the eligibility of the claims over 35 U.S.C. 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Previously cited NPL reference U, initially cited in the Office action dated 06/20/2024, teaches a shopping cart sharing application. A user may add items to a cart and share their curated cart with others. Multiple carts can be managed in one single merged cart. The cart sharing may be associated with restrictions.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA MAE MITROS whose telephone number is (571)272-3969. The examiner can normally be reached Monday-Friday from 9:30-6.
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, Marissa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANNA MAE MITROS/Examiner, Art Unit 3689
/MARISSA THEIN/Supervisory Patent Examiner, Art Unit 3689