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
1. This Final Office action is in reply to the Applicant amendment filed on 02 March 2026.
2. Claims 19, 26, 33 have been amended.
3. Claims 19-38 are currently pending and have been examined.
Response to Amendment
In the previous office action, Claims 19-38 were rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea). Applicants have not amended Claims 19-38 to provide statutory support and the rejection is maintained.
Response to Arguments
Applicant’s arguments filed 02 March 2026 have been fully considered but they are not persuasive. In the remarks regarding the 35 USC § 101 rejection for Claims 19-38, Applicant argues that: (1) the claims are not directed to an abstract idea, and even if they were, they would amount to significantly more than the abstract idea. Examiner respectfully disagrees. Still commensurate to the two-part subject matter eligibility framework decision in the Federal court decision in Alice Corp. Pty. Ltd. V. CLS Bank International et al., (Alice), 2019 revised patent subject matter eligibility guidance (2019 PEG) and the October 2019 Update: Subject Matter Eligibility (“October 2019 Update), and the new “July 2024 Guidance Update on Patent Subject Matter Eligibility Examples, including on Artificial Intelligence”, and the Examiner details the maintained rejection under 35 U.S.C. 101 in the below rejection with further explanation. Applicant argues that as amended, Applicant states: “…the disclosed systems and methods improve at least the functioning of the computing system and user device…; …the claims do not recite a judicial exception…” (see Remarks/Arguments pages 11-15). However the Examiner respectfully disagrees. As seen in the below maintained rejection in further detail, the claims still recite Certain methods of organizing human activity –marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). In summary as indicated below through Steps 1-2B, the recitation of a computer (computing system and user device connected via an electronic network; one or more processors; system; non-transitory computer-readable medium storing instructions”, etc.) to perform the claim limitations amount to no more than mere instruction to apply the exception using generic computer components. Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. For at least these reasons, 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 19-38 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) without significantly more. The claims as a whole recite certain grouping of an abstract idea and are analyzed in the following step process:
Step 1: Claims 19-38 are each focused to a statutory category of invention namely “method; system; non-transitory computer-readable medium” sets.
Step 2A: Prong One: Claims 19-38 recite limitations that set forth the abstract idea(s), namely, the claims as a whole encompass processing information by receiving product identifiers, identifying a user's tracking identifier, matching products, appending a characterization, and updating a profile as recited in representative independent Claim 19. The claim describes the process of identifying a product in an online shopping cart, cross-referencing it with a user's purchase history, matching products, and updating a user profile. As seen below:
“receiving, by one or more processors of the computing system, a first product identifier associated with a first product being placed in an online shopping cart of a first merchant by a purchaser in real-time using a user device associated with the purchaser over an electronic network and via a unique tracking identifier of the user device, wherein the computing system and the user device are connected via the electronic network, and wherein the first product identifier is associated with an incomplete purchase transaction associated with the purchaser;
identifying, by the one or more processors, the unique tracking identifier of the user device being used to place the first product in the online shopping cart by the purchaser in real-time, wherein the unique tracking identifier of the user device is a device identifier;
receiving, by the one or more processors, a second product identifier associated with a completed purchase transaction associated with the purchaser, wherein the second product identifier is associated with a second product at forum of a second merchant;
determining, by the one or more processors, that the first product identifier and the second product identifier identify matching products;
determining, by the one or more processors, a characterization of the first product indicating that the first product is associated with the completed purchase transaction associated with the purchaser based on determining that the first product identifier and the second product identifier identify matching products;
appending, by the one or more processors, the characterization of the first product and transaction data of the completed purchase transaction to the unique tracking identifier of the user device; and
updating, by the one or more processors and in a data store connected to the computing system via the electronic network, a unique tracking profile with the appended unique tracking identifier; and
transmitting, by the one or more processors, the unique tracking profile to a receiving entity user device”
The claims as a whole recite certain groupings under the categories:
Certain methods of organizing human activity –marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). This falls under the recognized category of "fundamental economic practices or concepts" and "commercial transactions." It essentially automates the well-known business concepts of customer tracking, loyalty rewards, and targeted marketing by storing and matching purchasing profiles. Courts look at what the claim is actually "focused on." Here, the claim is focused on the collection, analysis, and manipulation of data (who bought what and when). The recitation of generic computer components (e.g., "one or more processors," "data store," "user device") does not change the fact that the actual invention claimed is the informational process itself, rather than a specific, new technology.
Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). The claims can also be classified as a method of organizing human activity, as the steps closely resemble the mental act of evaluating what a customer bought previously to determine what they might be considering buying again, which can be performed in the human mind or with a pen and paper. Courts look at what the claim is actually "focused on." Here, the claim is focused on the collection, analysis, and manipulation of data (who bought what and when). The recitation of generic computer components (e.g., "one or more processors," "data store," "user device") does not change the fact that the actual invention claimed is the informational process itself, rather than a specific, new technology.
See MPEP § 2106.04(a) II C. Hence, the claims are ineligible under Step 2A Prong one. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception.
Prong Two: Claims 19-38: With regard to this step of the analysis (as explained in MPEP § 2106.04(d)), the judicial exception is not integrated into a practical application. Therefore, the claims contain computer components (“computing system and user device connected via an electronic network; one or more processors; system; non-transitory computer-readable medium storing instructions”, etc.) (e.g., see Applicants’ published Specification ¶'s 3-5, 30-39) that are cited at a high level of generality and are merely invoked as a tool to perform the abstract idea. In this claim, the processors, electronic network, and data store are described in purely functional and generic terms. Simply implementing an abstract idea on a computer is not a practical application of the abstract idea. It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) (“The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point”). See also Genetic Technologies Ltd. v. Merial LLC, 818 F.3d 1369, 1377, 118 USPQ2d 1541, 1547 (Fed. Cir. 2016) (steps of DNA amplification and analysis are not “sufficient” to render claim 1 patent eligible merely because they are physical steps). Conversely, the presence of a non-physical or intangible additional element does not doom the claims, because tangibility is not necessary for eligibility under the Alice/Mayo test. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016) (“that the improvement is not defined by reference to ‘physical’ components does not doom the claims”). See also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016), (holding that a process producing an intangible result (a sequence of synchronized, animated characters) was eligible because it improved an existing technological process). Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible. See MPEP § 2106.05(f) (h).
Step 2B: As explained in MPEP § 2106.05, Claims 19-38 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea nor recites additional elements that integrate the judicial exception into a practical application. The additional elements of “computing system and user device connected via an electronic network; one or more processors; system; non-transitory computer-readable medium storing instructions”, etc. are generically-recited computer-related elements that amount to a mere instruction to “apply it” (the abstract idea) on the computer-related elements (see MPEP § 2106.05 (f) – Mere Instructions to Apply an Exception). These additional elements in the claims are recited at a high level of generality and are merely limiting the field of use of the judicial exception (see MPEP §2106.05 (h) – Field of Use and Technological Environment). There is no indication that the combination of elements improves the function of a computer or improves any other technology. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible.
Examiner interprets that the steps of the claimed invention both individually and as an ordered combination result in Mere Instructions to Apply a Judicial Exception (see MPEP §2106.05 (f)). These claims recite only the idea of a solution or outcome with no restriction on how the result is accomplished and no description of the mechanism used for accomplishing the result. Here, the claims utilize a computer or other machinery (e.g., see Applicants’ published Specification ¶'s 3-5, 30-39) regarding using existing computer processors as well as program products comprising machine-readable media for carrying or having machine-executable instructions or data structures stored. “computer 102” in its ordinary capacity for performing tasks (e.g., to receive, analyze, transmit and display data) and/or use computer components after the fact to an abstract idea (e.g., a fundamental economic practice and certain methods of organization human activities) and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)). Software implementations are accomplished with standard programming techniques with logic to perform connection steps, processing steps, comparison steps and decisions steps. These claims are directed to being a commonplace business method being applied on a general-purpose computer (see Alice Corp. Pty, Ltd. V. CLS Bank Int' l, 134 S. Ct. 2347, 1357, 110 USPQ2d 1976, 1983 (2014)); Versata Dev. Group, Inc., v. SAP Am., Inc., 793 D.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015)) and require the use of software such as via a server to tailor information and provide it to the user on a generic computer. Based on all these, Examiner finds that when viewed either individually or in combination, these additional claim element(s) do not provide meaningful limitation(s) that raise to the high standards of eligibility to transform the abstract idea(s) into a patent eligible application of the abstract idea(s) such that the claim(s) amounts to significantly more than the abstract idea(s) itself. Accordingly, Claims 19-38 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e. abstract idea exception) without significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Wen et al. (US 2014/0164057)
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS L MANSFIELD whose telephone number is (571)270-1904. The examiner can normally be reached M-Thurs, alt. Fri. (9-6).
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THOMAS L. MANSFIELD
Examiner
Art Unit 3623
/THOMAS L MANSFIELD/Primary Examiner, Art Unit 3624
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