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 .
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 11/12/2025.
Claims 1,5-9,13-17,21-23 have been amended.
Claims 2,10,18 have been canceled.
Claims 1,3-9,13-17,19-23 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 11/12/2025 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
With regard to claims 1,3-9,13-17,19-23 rejection under 35 USC § 101:
Applicant argues that “Applicant disagrees with the Office that the claims are directed to an abstract idea. Instead, Applicant respectfully submits that the claims are directed to a novel process of generating a chatbot response based on cards that are stored within a software application. That is, the chatbot response is generated based on content stored within a software application, such as a mobile wallet, or the like. The end-to-end process creates a chatbot response that is highly personalized to preferences of the person who is holding the mobile wallet (page 2/7)”.
Examiner disagrees. the use of chatbot within a software application does not comprise improvement of the computer .
That is generating a chatbot response based on cards that are stored within a software application and/ or end-to-end process that creates a chatbot response that is highly personalized to preferences of the person who is holding the mobile wallet is indeed directed to an abstract idea, because it is related to a process of merely gather data, analyze the data, such as creates a chatbot response that is highly personalized to preferences of the person who is holding the mobile wallet and /or generating a chatbot response based on cards that are stored within a software application.
Analyzing data is part of the abstract idea itself, any improvement obtained by automating the analyzing of the data in an improvement to the abstract idea which is an improvement in ineligible subject matters (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.
As such, the claims as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. MPEP Revised Step 2A Prong One=Yes).
Also, the chatbot architecture including an Al model and a software application, such as a mobile wallet is an additional elements that does no more than apply or link the use of the recited judicial exception to a particular technological environment/field of use.
Furthermore, this judicial exception is not integrated into a practical application. [The claim as a whole merely describes how to generally “apply” the concept of storing and updating generating a chatbot response message during a chat session within a software application in a computer environment. The claimed computer components as evidenced from paragraphs 95-101, are recited at a high level of generality and are merely invoked as tools to perform generating a chatbot response message during a chat session within a software application such as a mobile wallet records update process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. As thus, alone and/ or in combination, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
Additionally, the recitation of: generating a chatbot response message during a chat session within a software application fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself.
Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g., improvements made in the underlying business method (generating a chatbot response message during a chat session within a software application) and not in the operations of any additional elements or technology. As thus, Applicant's claimed solution is NOT technological and does not addresses a technological problem. As thus, the Office Action and the rejection analysis below showed the claims are directed to an abstract idea.
Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g., improvements made in the underlying business method (generating and displaying discount information based on iteratively updated inventory information)) and not in the operations of any additional elements or technology.
Therefore, the claim rejection of claims 1,3-9,13-17,19-23 rejection under 35 USC § 101 is maintained
Applicant argues that “when Claim 1 is "viewed as a whole", Claim 1 is not directed to an abstract concept, but rather a specific technological environment and improves the way users interact with computing systems. In particular, the claim recites a software application operating with a camera and an Al model to capture an image of a code, identify resources stored in the application, and correlate those resources with digital documents. This integration is not a mental process or a disembodied concept, but rather a concrete technological implementation tied to a particular machine such as a mobile device executing the software application and a trained neural network model. By requiring these components to work together in a defined sequence, the claim meaningfully limits any underlying abstract idea to a real-world, computer-based application. Further, the system improves human-computer interaction by transforming captured image data into a contextually relevant portion of a digital document that is automatically surfaced within an ongoing chat session. Such a process is not possible in conventional chat sessions where a user must manually input text content or speak the text content to cause the system to retrieve documents or resources, which can be inefficient and error-prone. In contrast, in Claim 1, an Al model can correlate captured codes with digital resources and dynamically generate a message that includes the identified portion of a document, thereby streamlining communication and enhancing the usability of digital content during live interactions. This is not an abstract idea on a generic computer and instead reflects a specific implementation that improves the functionality of a chatbot (page 2-3/7)”.
Examiner disagrees. Applicant's argument that the claims overcome the 35 USC 101 rejection under Step 2a, Prong 1 because the steps of (a software application operating with a camera and an Al model to capture an image of a code, identify resources stored in the application, and correlate those resources with digital documents) cannot be performed by a human being is not convincing. The only abstract idea bucket in which performance by a human is required is the "Mental Process" bucket which requires that the steps be capable of being performed in the human mind. The claims of the instant invention have not been identified as a "Mental Process". Instead, the claims of the instant invention have been identified as "Certain Methods of Organizing Human Activities". The Subject Matter Eligibility Guidelines indicate that "advertising, marketing or sales related activities" is a subcategory of "Certain Methods of Organizing Human Activities". There is no requirement that these "advertising, marketing, or sales related activities" be performed by a human being. Therefore, all steps involved in the performance of advertising, marketing or sales related activities are part of the abstract idea itself irrespective of whether they are performed by a computer or performed by a human being. Thus, the applicant's arguments are moot.
Further more, as evident by applicant’s specification “computer system/server 802 in the example system 800, is a general-purpose computing device. The components of computer system/server 802 may include, but are not limited to, one or more processors or processing units (processor 804), a system memory 806, and a bus that couples various system components, including the system memory 806 to the processor 804 (paragraph 97)”; and “the AI engine 222 may control access to models stored within the model repository 223. For example, the models may include GenAI models, AI models, machine learning models, LLMs, neural networks, and/or the like (paragprh 35)”. These additional elements do not improve computer functionality or another technology or a technical field. They do not implement the abstract idea on a machine that is integral to the claim. The do not transform or reduce a particular article to a different state or thing. Nor do not transform tor reduce a particular articular to a different state or thing. Nor do they apply he abstract idea in a meaningful way beyond linking its use to a particular technological environment. See Revised Guidance ar 55: MPEP 2106.04 (d) (I) Final Act. A generic computer implementation does not render an abstract idea patent eligible. See Alice, 573 U.S at 223 (“ [ T] he mere recitation of a generic computer cannot transform a patent -ineligible abstract idea into a patent -eligible invention. As thus, there is no transforming of “captured image data into a contextually relevant portion of a digital document that is automatically surfaced within an ongoing chat session”.
Additionally, correlate captured codes with digital resources and dynamically generate a message that includes the identified portion of a document, thereby streamlining communication and enhancing the usability of digital content during live interactions, which is a specific implementation that improves the functionality of a chatbot is directed to analyzing data.
Since, analyzing data is part of the abstract idea itself, any improvement obtained by automating the analyzing of the data in an improvement to the abstract idea which is an improvement in ineligible subject matters (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.
As such, the claims as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. MPEP Revised Step 2A Prong One=Yes).
Also, as stated above, the use of chatbot fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself. Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g., improvements made in the underlying business method (correlate captured codes with digital resources and dynamically generate a message that includes the identified portion of a document, thereby streamlining communication and enhancing the usability of digital content during live interactions, which is a specific implementation that improves the functionality of a chatbot is directed to analyzing data) and not in the operations of any additional elements or technology. Therefore, the claim rejection of claims 1,3-9,13-17,19-23 rejection under 35 USC § 101 is maintained.
Applicant argues that “ the claims recite additional elements that amount to significantly more than well- understood, routine, and conventional computer functions. The claim requires executing a trained Al model on multiple distinct inputs including a scanned code, identified resources within the application, and a database of digital documents to generate a correlated portion of a digital document. This is not a generic application of image capture or data retrieval. Instead, it reflects a non-conventional use of artificial intelligence to integrate real-world object identifiers (such as scanned codes) with digital resources in real time, an operation not performed by traditional scanning or chat applications (page 3/7)”.
Examiner disagrees. as evident by applicant’s specification “computer system/server 802 in the example system 800, is a general-purpose computing device. The components of computer system/server 802 may include, but are not limited to, one or more processors or processing units (processor 804), a system memory 806, and a bus that couples various system components, including the system memory 806 to the processor 804 (paragraph 97)”; and “the AI engine 222 may control access to models stored within the model repository 223. For example, the models may include GenAI models, AI models, machine learning models, LLMs, neural networks, and/or the like (paragprh 35)”.
These additional elements do not amount to no more than mere instructions to apply the exception using a generic computer component. These additional elements of: “AI model” and “ database”, do not improve computer functionality or another technology or a technical field. They do not implement the abstract idea on a machine that is integral to the claim. The do not transform or reduce a particular article to a different state or thing. Nor do not transform tor reduce a particular articular to a different state or thing. Nor do they apply he abstract idea in a meaningful way beyond linking its use to a particular technological environment. See Revised Guidance ar 55: MPEP 2106.04 (d) (I) Final Act. A generic computer implementation does not render an abstract idea patent eligible. See Alice, 573 U.S at 223 (“ [ T] he mere recitation of a generic computer cannot transform a patent -ineligible abstract idea into a patent -eligible invention. Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g.,( improvements made in the underlying business method ( multiple distinct inputs including a scanned code, identified resources within the application, and a database of digital documents to generate a correlated portion of a digital document and / or the use of artificial intelligence to integrate real-world object identifiers (such as scanned codes) with digital resources in real time)) and not in the operations of any additional elements or technology. As such Applicant's claimed solution is NOT technological and does not addresses a technological problem.
Therefore, the claim rejection of claims 1,3-9,13-17,19-23 rejection under 35 USC § 101 is maintained.
Applicant argues that “the ordered combination of elements demonstrates an inventive concept. The process begins with capturing a code during an ongoing chat session, proceeds with the identification of application resources, and then employs the trained Al model to unify the scanned code with document content into a contextually relevant message output within the same chat interface. While cameras, databases, and messaging functions may be known individually, their specific arrangement and cooperative operation in Claim 1 is a capability that is not routine or conventional in the art. Thus, Applicant's numerous claim limitations would clearly integrate an alleged abstract idea into a practical application directed to chat services that does not monopolize a judicial exception and are thereby patent eligible because the practical application of Applicant's claims allow for a real-world benefit through computing systems. While applicant submits that the claimed invention is not directed to an abstract idea as discussed above, should the Office nonetheless maintain its position that the claims are directed to an abstract idea, Applicant respectfully submits that under the second step (2B) of Alice the ordered combination of elements in the independent claims are sufficient to ensure that the claim amounts to significantly more than the judicial exception. Therefore, the claims recite elements which integrate the claims into a practical application and thus the claims recite eligible subject matter under Section 101 (page 4/7)”.
Examiner disagrees. Applicant’s arguments here are similar to the one addressed above in the proceeding section. Furthermore, Applicant’s arguments that the claims are not directed to an abstract idea because the claims do not threaten to monopolize or preempt an abstract idea in a computer environment is not part of Alice’s analysis. Applicant should note that even a very specific calculations and formulas have been identified as an abstract ideas; even though they could not be said to be monopolizing all calculations for example. Specificity or details of the claimed limitations do not cure an abstract idea from its identity as such. Applicant's arguments focused on monopolization are misplaced and are not persuasive. The two part test analysis, which was properly applied in the rejection, requires only the observation of a judicial exception within the claims - however general or specific. The Applicant's claims are unmistakably directed to a judicial exception, which is a fundamental economic practice of targeted advertising.
Therefore, the claim rejection of claims 1,3-9,13-17,19-23 rejection under 35 USC § 101 is maintained.
With regard to claims 1,3-9,13-17,19-23 rejection under 35 USC § 103:
Applicant argues that “ Beck fails to render obvious the features of Claim 1, because Beck fails to describe or suggest, "capture, with a software application and a camera, a scanned code located on an exterior of an object during a chat session through the software application, identify resources stored in the software application, execute the trained Al model on the scanned code, the identified resources, and a database of digital documents to identify a portion of a digital document that correlates a resource stored in the software application to the object." Beck fails to describe a scanned code being captured by a software application and a camera. Instead, Beck describes a SKU-level profile for a user (101) may include an identification of the goods and services historically purchased by the user (101). In addition, the SKU-level profile for the user (101) may identify goods and services that the user (101) may purchase in the future. The identification may be based on historical purchases reflected in SKU-level profiles of other individuals. See, paragraph [0194]. However, the SKU in Beck is not captured by a camera with a software application, but instead, stored in an existing profile. Moreover, Beck fails to describe an AI model, let alone an AI model that receives a scanned code as input, along with resources identified from within a software application, and a database of digital documents. Therefore, it also necessarily follows that Beck fails to describe identify a portion of a digital document that correlates a resource stored in the software application to the object. As such, Beck has numerous significant deficiencies with respect to Claim 1. Furthermore, Park fails to cure any of the deficiencies of Beck with respect to Claim 1. For at least these reasons, Claim 1 is believed to be in condition for allowance. Claims 9 and 17 recite similar features as Claim 1 and are believed to be allowable for at least the same reasons as Claim 1. Claims 3-5, 7, 9, 11-13, 15, 17, and 19-23 depend from one of Claims 1, 9, and 17, and are believed to be allowable for at least the same reasons. Accordingly, reconsideration of the rejection and allowance of the pending claims are respectfully requested (page 6/7)”.
Examiner disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller , 642 F.2d 413,208 USPQ871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ375 (Fed. Cir. 1986).
Beck in at least paragraph 313 discloses an artificial intelligence (AI) engine is configured to use the transaction data (109) and analytics along with historical product barcode scan data of the user (101) to generate an attractive offer (186) for the user (101). For example, the offer (186) may indicate that “We know that you found this product online $10 cheaper but here is a 20% coupon on a minimum purchase of $100 which will give you a much better deal.” The deal would also fluctuate based on the number and type of similar products the customer has scanned, which are used to calculate the degree of interest of the user (101) in the product, likelihood of the user (101) buying the products, etc.
Beck also in at least paragraph 330 discloses In-Person One-Tap purchasing apparatuses (hereinafter “IPOT”) transform product code snapshots, via IPOT components, into real-time offer-driven electronic purchase transaction notifications. Berk in at least paragraph 338 discloses the app may provide the user with an option to display the product identification information captured by the client device (e.g., in order to show the product information to a customer service representative at the exit of a store) (e.g., 554). In one embodiment, the user, app, client device and or IPOT may encounter an error in the processing. In such scenarios, the user may be able to chat with a customer service representative (e.g., via VerifyChat 553) to resolve the difficulties in the purchase transaction procedure.
Furthermore, Beck in at least paragraph 304 discloses the mobile device (411) is configured to capture or scan an identification of an item disposed in a retail location, such as the barcode representing the item. The identification of the item can be used to determine the price of the item at the retail location and search for the prices from competitors of the retail location. Offers from competitors can be presented with the offer from the retail location to provide the user (101) with a comparison shopping experience. Based on the disposal of the offers by the user (101), the offers may be adjusted to help the retail location merchant to retain the business of the user (101).
Park in at least paragraph 1 ( an artificial intelligence payment system for recommending an optimum card capable of providing the maximum benefit from among a plurality of cards issued to a user, and a payment apparatus and a combination card payment terminal for the artificial intelligence payment system);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to have combined the teaching of Beck’s AI mechanism of formulation offers for scanned UPC product code with the teaching of Park’s AI payment system for recommending an optimum card in order to provide consumers with maximum benefits among plurality of cards and hence increase product/ service marketability. Therefore, the claim rejection of claims 1,3-9,13-17,19-23 under 35 USC § 103 over the cited prior art 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 1,3-9,11-17,19-23 are rejected under 35 U.S.C.101 because the claimed invention is directed to a judicial exception subject matter, specifically an abstract idea. The analysis for this determination is explained below:
Step 1, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
In this case, claim(s) 1,3-8, 21-23 are directed to a machine (i.e. an apparatus); claim (s) 9, 11-16 are directed to a method (i.e. a process);); and claim (s) 17, 19- 20 are directed to a manufacturer (i.e. a non transitory computer medium).
The claimed invention is directed to at least one judicial exception (i.e a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The analysis is as follows:
Claim 1, as exemplary, recites the following abstract idea of: train an artificial intelligence (Al) model with a neural network capability to identify document content corresponding to codes; capture, with a software application and a camera, a scanned code located on an exterior of an object during a chat session through the software application, identify resources stored in the software application, execute the trained Al model on the scanned code, the identified resources, and a database of digital documents to identify a portion of a digital document that correlates a resource stored in the software application to the object, generate a message that includes the portion of the digital document, and output a chat response that includes the message during the chat session.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. MPEP Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of “apparatus, a memory; a processor, an artificial intelligence (Al) model, neural network, software application”. The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. MPEP Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using the additional elements of “apparatus, a memory; a processor, an artificial intelligence (Al) model, neural network, software application”; to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component. “Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds 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 the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computers communicating over a general purpose network (as evidenced from paragraphs 95-101); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations are considered insignificant extra solution activity as they are directed to merely receiving, storing and/or transmitting data:
Output a chat response tat includes the message during the chat session;
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e.MPEP Step 2B=No).
For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claims 9 and 17.
The dependent claims 3-8,11-16 and 19-23 appears to merely further limit the abstract idea of “Certain methods of organizing Human Activity” as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations), by adding the additional steps of “generate a prompt based on execution of the scanned code, and output the prompt through a chatbot within a chat window during the chat session ( claims 3, 11, 19); generate additional message content, and output an additional chat message with the additional message content during the chat session ( claims 4, 12, 20); receive an incoming chat message during the chat session and receive the scanned code from text content included in the incoming chat message (claims 5,13); rank advantages provided by the plurality of cards based of the plurality of cards based on execution of the AI model on the scanned code, and display rankings of the plurality of cards during the chat session (claims 6,14); detect that an object has been obtained via the software application, and in response, identify tat least one card and execute the trained AI model ( claims 7, 15); identify a card from among the plurality of cards that does not have descriptive content related to the scanned code and exclude a description of the card from the chat response ( claims 8, 16 ), which is considered part of the abstract idea and therefore only further limit the abstract idea (i.e. MPEP Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. MPEP Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. MPEP Step 2B=No). Thus, the dependent claim (s), further narrows the abstract idea and/or recite additional elements previously rejected in the independent claims 1,9 and 17.
Accordingly, the claim (s) fails to recite any improvements to another technology or technical field, improvements to the functioning of the computer itself, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine the claim to a particular useful application, and/or meaningful limitations beyond generally linking the use of an abstract idea to a particular environment. See 84 Fed. Reg. 55. Viewed individually or as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1,3-5,7-9,11-13, 15-17,19-23 are rejected under 35 U.S.C. §103 as being unpatentable over Beck et al, US Pub No: 2013/019,1213 A1 in view of Park et al, US Pub No: 2010/026, 2537 A1.
Claims 1,9 and 17:
Beck discloses:
train an artificial intelligence (Al) model with a neural network capability to identify document content corresponding to codes (see at least Paragraph 313( an artificial intelligence (AI) engine is configured to use the transaction data (109) and analytics along with historical product barcode scan data of the user (101) to generate an attractive offer (186) for the user (101). For example, the offer (186) may indicate that “We know that you found this product online $10 cheaper but here is a 20% coupon on a minimum purchase of $100 which will give you a much better deal.” The deal would also fluctuate based on the number and type of similar products the customer has scanned, which are used to calculate the degree of interest of the user (101) in the product, likelihood of the user (101) buying the products, etc);;
capture, with a software application and a camera, a scanned code located on an exterior of an object during a chat session through the software application, identify resources stored in the software application, execute the trained Al model on the scanned code, the identified resources, and a database of digital documents to identify a portion of a digital document that correlates a resource stored in the software application to the object, generate a message that includes the portion of the digital document, and output a chat response that includes the message during the chat session;
Paragraph 338 ( the app may provide the user with an option to display the product identification information captured by the client device (e.g., in order to show the product information to a customer service representative at the exit of a store) (e.g., 554). In one embodiment, the user, app, client device and or IPOT may encounter an error in the processing. In such scenarios, the user may be able to chat with a customer service representative (e.g., via VerifyChat 553) to resolve the difficulties in the purchase transaction procedure); Paragraph 304 (the mobile device (411) is configured to capture or scan an identification of an item disposed in a retail location, such as the barcode representing the item. The identification of the item can be used to determine the price of the item at the retail location and search for the prices from competitors of the retail location. Offers from competitors can be presented with the offer from the retail location to provide the user (101) with a comparison shopping experience. Based on the disposal of the offers by the user (101), the offers may be adjusted to help the retail location merchant to retain the business of the user (101)); Paragraph 330 ( In-Person One-Tap purchasing apparatuses (hereinafter “IPOT”) transform product code snapshots, via IPOT components, into real-time offer-driven electronic purchase transaction notifications)
Beck does not specifically disclose, but Park however discloses:
train an artificial intelligence (Al) model with a neural network capability to identify advantages of using cards based on codes (see at least the abstract, paragraphs 1 , 21, 67, 82, 88; abstract (paragprh 1 ( an artificial intelligence payment system for recommending an optimum card capable of providing the maximum benefit from among a plurality of cards issued to a user, and a payment apparatus and a combination card payment terminal for the artificial intelligence payment system);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to have combined the teaching of Beck’s AI mechanism of formulation offers for scanned UPC product code with the teaching of Park’s AI payment system for recommending an optimum card in order to provide consumers with maximum benefits among plurality of cards and hence increase product/ service marketability.
Claims 3, 11, 19:
The combination of Beck/ Park discloses the limitations as shown above.
Beck further discloses:
generate a prompt based on execution of the scanned code, and output the prompt through a chatbot within a chat window during the chat session (see at least paragraphs 319-321; paragraph 319 (a control panel to allow the merchant to specify the offer rules (203) that can be used by the AI engine to generate automated offers (186) based on the user-driven triggering events, such as scanning a product, shopping online based on scanning results, walking out of the store perimeter, abandoning the shopping process, etc); paragraph 321 (e AI engine is configured to optionally store the click-through history at the request of the user (101) (e.g., "do you want me to save this item for the future?");
Claims 4, 12, 20:
The combination of Beck/ Park discloses the limitations as shown above.
Beck further discloses:
generate additional message content, and output an additional chat message with the additional message content during the chat session ( see at least paragraphs 319-321; paragraph 321 (the AI engine is configured to optionally store the click-through history at the request of the user (101) (e.g., "do you want me to save this item for the future?"). The AI engine is configured in one embodiment to correlate the user scan activities with purchase activities to formulate offers (186). For example, after the AI engine determines that the user (101) bought a new TV and is now scanning for DVD players, the AI engine is configured to generate an offer of 20% off purchasing a DVD player with a sound system);
Claims 5,13:
The combination of Beck/ Park discloses the limitations as shown above.
Beck further discloses:
identify the portion of the digital document based on contextual data of a source device (see at least 319-321, 358; paragraph 321 (see at least paragraphs 319-321; paragraph 321 (the AI engine is configured to optionally store the click-through history at the request of the user (101) (e.g., "do you want me to save this item for the future?"); paragraph 358 (an offer message generated by SHOPPING PROXIMITY REVISALS is shown in (1113). Some embodiments may comprise the name and address of the merchant making the offer, the name of the target user and if the offer may be transferred, shared or negotiated, a description of the offer, details about the terms of the offer such as, for example, expiration time, minimum quantities, restrictions to a particular product, group of products, brands, or makers. Some embodiment may show if the product(s) is in stock or when it will be, if the offer is only for in-store pick up or it is valid also for delivery, and more. Some embodiments may also include features for user to interact with SHOPPING PROXIMITY REVISALS by accepting, rejecting or negotiating the offer);
Claims 7, 15:
The combination of Beck/ Park discloses the limitations as shown above.
Beck further discloses:
detect that the object has been obtained via the software application and in response and execute the trained AI model (see at least paragraphs 319-321; paragraph 321 (the AI engine is configured to optionally store the click-through history at the request of the user (101) (e.g., "do you want me to save this item for the future?"). The AI engine is configured in one embodiment to correlate the user scan activities with purchase activities to formulate offers (186). For example, after the AI engine determines that the user (101) bought a new TV and is now scanning for DVD players, the AI engine is configured to generate an offer of 20% off purchasing );
Claims 8, 16:
The combination of Beck/ Park discloses the limitations as shown above.
Beck further discloses:
identify different resource from among the resources which does not have descriptive content related to the scanned code and exclude a description of the different resource from the chat response (see at least paragraphs 319-321; paragraph 321 (the AI engine is configured to optionally store the click-through history at the request of the user (101) (e.g., "do you want me to save this item for the future?"). The AI engine is configured in one embodiment to correlate the user scan activities with purchase activities to formulate offers (186). For example, after the AI engine determines that the user (101) bought a new TV and is now scanning for DVD players, the AI engine is configured to generate an offer of 20% off purchasing ); paragraph 139 ( the transaction terminal (105) is a POS terminal at the checkout station in a retail store (e.g., a self-service checkout register). When the user (101) pays for a purchase via a payment card (e.g., a credit card or a debit card), the transaction handler (103) provides a targeted advertisement having a coupon obtained from an advertisement network. The user (101) may load the coupon into the account of the payment card and/or obtain a hardcopy of the coupon from the receipt. When the coupon is used in a transaction, the advertisement is linked to the transaction);
Claim 21:
The combination of Beck/ Park discloses the limitations as shown above.
Beck further discloses:
scanned code comprises at least one of a serial number, barcode and stock -keeping unit (SKU) located on the exterior of the object t (see at least paragraph 47 ( an analytics platform is configured to use the transaction data and real-time shopping behavior to more efficiently target consumers, providing the consumers with more relevant offers, and providing merchants with incremental transactions. For example, information obtained via barcode scanning using a mobile payment device to check prices in a retail location can be combined with the transaction data to identify relevant offers; and the offers can be formulated and/or adjusted based on the real-time actions performed by the user of the mobile payment device);
Claim 22:
The combination of Beck/ Park discloses the limitations as shown above.
Beck further discloses:
wherein the at least one processor is further configured to receive a geographic location of a source device associated with the software application, and identify document content that includes a location-based advantage of using the at least one card based on the scanned code and the geographic location (see at least paragraph 304 (the mobile device (411) is configured to capture or scan an identification of an item disposed in a retail location, such as the barcode representing the item. The identification of the item can be used to determine the price of the item at the retail location and search for the prices from competitors of the retail location. Offers from competitors can be presented with the offer from the retail location to provide the user (101) with a comparison shopping experience. Based on the disposal of the offers by the user (101), the offers may be adjusted to help the retail location merchant to retain the business of the user (101) and fig 21 with the associated text) ;
Claim 23:
The combination of Beck/ Park discloses the limitations as shown above.
Beck further discloses:
wherein the at least one processor is further configured to output the chat response to a user interface and at least one of darken and reduce focus of an area around the user interface (see at least paragraph 341 (The app may provide a user input interface element(s) (e.g., virtual keyboard 563) to answer the challenge question posed by the IPOT. In one embodiment, the challenge question may be randomly selected by the IPOT automatically; in one embodiment, a customer service representative may manually communicate with the user. In one embodiment, the user may not have initiated the transaction, e.g., the transaction is fraudulent. In such embodiments, the user may cancel (e.g., 561) the text challenge. The IPOT may then cancel the transaction, and/or initiate fraud investigation procedures on behalf of the user) and fig 21 with the associated text);
Claims 6,14 are rejected under 35 U.S.C. §103 as being unpatentable over Beck et al, US Pub No: 2013/019,1213 A1 in view of Park et al, US Pub No: 2010/026, 2537 A1 in view of Melzer et al, US Pub No: 2022/0172246 A1.
Claims 6,14:
The combination of Berk/ Park discloses the limitations as shown above.
Berk further discloses :
execution of the AI model on the scanned code and display the plurality of cards during the chat session (see at least paragraph 333 ( see at least paragraph 333 (the IPOT server may provide the results obtained from the database to the client device (e.g., 504b). For example, the client device may be executing an application module (app), via which the client device may communicate with the IPOT server. The client device may display the obtained results from the IPOT server to the user via the app. In one embodiment, the app may provide the user with an option to buy the product on the spot by performing a single action (e.g., tap, swipe touch screen of a mobile device, press a key on a keyboard, perform a single mouse click, etc.). In one embodiment, the app may provide the user with various alternate options. For example, the app may provide the user with alternate merchants where the user may obtain the product and/or similar products, alternate products that may be comparable to the product, competitive pricing information between merchants, discounts, coupons, and/or other offers for the user, etc.
The combination of Berk/ Park does not specifically disclose, but Melzer however discloses
rank plurality of resources , and display rankings of the plurality of resources during the chat session (see at least paragraph 121 (a priority of which payment method to use and in which order. For example, a user may select to pay using any of the following: a specific wallet API (Citi, Amex), a network wallet API (Visa, MasterCard), a generic wallet API (Google Wallet, Amazon Checkout, Apple Pay), and/or any other wallet (PayPal, gift card, points, miles, bank account). Optionally, the participant indicates with which currency to pay and/or whether to pay with points, Bitcoin or with real money. Exemplary payment method selection instructions include ‘pay with Amex’, ‘pay with United Miles’, ‘pay with Citi Visa’, ‘pay with Amex Membership Rewards points’ and/or the like; see at least claim 6 (wherein establishing an order comprises identifying, the at least one item for purchase from a selection of an icon ); claim 9 ( using the instant messaging application for receiving a unique identifier and sending the unique identifier to the digital wallet to allow the payment of the order value using the digital wallet); paragraph 122 ( the agent promotes selection of payment method by posting messages which are personalized based on data from the participant profiles, for example as the following: ‘how would you like to pay? Amex card members receive x2 points for travel purchases’, ‘how would you like to pay? You have 24,500 miles with United that can be used for this purchase’, ‘how would you like to pay? Use your Master Card and get free Travel Insurance and ‘how would you like to pay? Pay 3 times with your Citi Card, and receive an upgrade free);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to have combined the teaching of Beck’s / Park’s AI mechanism for optimum payment card of scanned UPC product code for with the teaching of Melzer’s NLP engine for ranking of payment card ana in order to automatically activate monetization when a user is about to purchase an item, and that also select and apply a payment method and enter payment information automatically to enable a purchase
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant' s disclosure.
Hays, US Pat No: 11301916 B, teaches promotion processing system including chatbot product recommendation and related methods.
Walker, US Pat No: 11282110 B1 teaches system for processing a digital promotion through a messenger bot and related methods.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 files within TWO MONTHS from 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [ Mon-Thursday 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AFAF OSMAN BILAL AHMED/ Primary Examiner, Art Unit 3622