DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to JP2022-209201, filed 12/27/2022. The certified copy has been retrieved in the filed as of 2/1/2024.
Claims Status
Claims 1-3 and 5-10 are pending.
Claim 4 is cancelled.
Claim 11 is newly added.
Claim 2 stands withdrawn without traverse as set forth previously.
Claims 1, 3, and 5-11 stand rejected.
Response to Amendment
Applicant’s amendment to the specification (title) is acknowledged and accepted.
Response to Arguments
I. Applicant’s arguments regarding the rejections under 35 USC 112(b) have been considered in view of the accompanying amendment and are persuasive.
II. Applicant’s arguments regarding the rejections under 35 USC 101 have been fully considered in view of the accompanying amendment but are not persuasive.
Applicant argues that the amended claims cause the claimed invention to fall outside of the ‘certain methods of organizing human activity’ grouping of abstract ideas. The Examiner disagrees. Applicant is reminded that in Step 2A (Prong One) examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Presence of additional elements in the claim does not negate the recitation of an abstract idea.
Furthermore, while new additional elements are recited, the amended claims also add further limitations that set forth or describe the abstract idea (e.g., cut out portions featuring each of the product candidates from the catalog, and, display a list of the cut out portions for allowing the user to select the product from the plurality of extracted product candidates).
The Examiner’s finding under Step 2A (Prongs One and Two) is mainlined (i.e., the claims are “directed to” an abstract idea that is not integrated into a practical application). Further, the claims – despite the amended features – do not provide “significantly more” under Step 2B.
II. Applicant’s arguments regarding the rejections under 35 USC 103 have been considered but are moot in view of new grounds of rejection. Applicant’s amendment necessitated the new grounds of rejection.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3 and 5-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, claim 1 has been amended to recite the following subject matter:
cut out portions featuring each of the product candidates from the digital catalog: and
display, on the user terminal, a list of the cut out portions for allowing the user to select the product from the plurality of extracted product candidates.
The subject matter of the claim (recited above) does not conform to the disclosure in such a manner in which one of ordinary skill in the art would recognize that applicant actually had possession of at the time of the invention. The most pertinent portion of the disclosure is as follows (Specification, p. 7 line 29-p. 8 line 5):
As illustrated in Fig. 5, for example, the display unit 103 cuts out portions where information regarding the ordered product candidates on the digital catalog is posted and displays a list of the cut out portions on the user terminal 200. The example of the
screen of Fig. 5 is a screen for allowing one of the extracted ordered product candidates to be selected when a user inputs "milk" as product information, and the portions where
"milk" is posted are cut out from the digital catalog and displayed in the list.
While the specification may literally support the claimed limitation, merely reproducing the claim limitation in the specification or pointing to an original claim does not satisfy the written description requirement where the claim itself does not convey enough information to show that the inventor had possession of the claimed invention. Elements that are essentially a "black box" are not be sufficient.
Moreover, whether one of ordinary skill in the art could devise a way to accomplish these functions is not relevant to the issue of whether the inventor(s) has shown possession of the claimed invention. This is because the ability to make and use the invention does not satisfy the written description requirement if details of how a function (such as the claimed updating) is performed are not disclosed.
It is noted that this is not an enablement rejection. Applicant’s failure to sufficiently describe any algorithm, steps, or procedures taken to perform the claimed operation of cutting out a portion of a digital catalog is performed so that a list of the cut out portions is displayed represents a black box. raises questions as to whether Applicant truly had possession of this feature at the time of filing.
Dependent claims 3, 5-8 and 11 depend either directly or indirectly from independent claim 1. These claims are thereby rejected along with claim 1 by virtue of their dependency of claim 1.
Regarding claims 9 (method) and claim 10 (non-transitory medium), claims 9-10 recite at least substantially similar concepts and elements as recited in claim 1 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 9-10 are rejected under at least similar rationale.
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, and 5-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Regarding claims 1, 3, and 5-10, under Step 2A claims 1, 3, and 5-10 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claim 1 as representative, claim 1 recites
acquire search information for specifying a product to be ordered by a user from products on a catalog;
extract a plurality of product candidates by searching with the search information from the products on the catalog;
cut out portions featuring each of the product candidates from the catalog: and
display a list of the cut out portions for allowing the user to select the product from the plurality of extracted product candidates.
These limitations recite ‘certain methods of organizing human activity’, such as by performing commercial interactions (see: MPEP 2106.04(a)(2)(II)). This is because claim 1 sets forth and/or describes allowing users to search for and select products for ordering. This represents the performance of sales activities or behaviors, which is a commercial interaction and falls under organizing human activity.
Accordingly, under step 2A (prong 1) claim 1 recites an abstract idea because claim 1 recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. The Examiner acknowledges that representative claim 1 does recite additional elements, including a display device comprising a memory storing instructions, and at least one processor configured to execute the instructions. Claim 1 also recites a user terminal and digital catalog.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 1 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks). This is most notably true with respect to the recitation of a digital catalog.
Secondly, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claim 1, taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Furthermore, the additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the additional elements of claim 1 utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data over a network,
storing or retrieving information from memory,
presenting offers
Even considered as an ordered combination (as a whole), the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 3 and 5-8, dependent claims 3 and 5-8 recite more complexities descriptive of the abstract idea itself, and at least inherit the abstract idea of claim 1. As such, claims 3 and 5-8 are understood to recite an abstract idea under step 2A (prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 3 and 5-8 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, claims 3 and 5-8 utilize at least similar additional elements as discussed above regarding claim 1. Further additional elements such as a (arguably) a page on the digital catalog (claim 3) or a display screen (claim 8) are also recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Lastly, under step 2B, claims 3 and 5-8 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims merely apply the exception on generic computing hardware, generally link the exception to a technological environment, and append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
In view of the above, claims 3 and 5-8 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Regarding claims 9 (method) and claim 10 (non-transitory medium), claims 9-10 recite at least substantially similar concepts and elements as recited in claim 1 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 9-10 are rejected under at least similar rationale. The Examiner further notes that claim 9 and claim 10 provide limited additional elements in the body of the claim (e.g., a digital catalog) and broader implementation by a computer in the preamble (e.g., “by a computer (claim 9), “causing a computer to execute” (claim 10)).
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.
Claim(s) 1, 5-7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bhagat (US 2019/0244245) in view of Imamura (US 20150235279).
Regarding claim 1, Bhagat discloses a display device comprising:
a memory storing instructions (see: 0093-0096, Fig. 9 (909)); and
at least one processor configured to execute the instructions (see: 0095, Fig. 9 (906)) to:
acquire, from a user terminal, search information for specifying a product to be ordered by a user from products on a digital catalog (see: 0026, 0028, 0078, 0086, Fig. 4A-Fig. 4B (406), Fig. 8 (803));;
extract a plurality of product candidates by searching with the search information from the products on the digital catalog (see: 0087-0088, Fig. 8 (806, 809));
display, on the user terminal, a list of results including item images for allowing the user to select the product from the plurality of extracted product candidates (see: 0091, Fig. 8 (818, 821), 0084, Fig. 7 (709(N), 721))
Though disclosing the above, Bhagat does not disclose:
cut out portions featuring each of the product candidates from the digital catalog, or where the displayed images were the cut out portions.
To this accord, Imamura teaches a catalog device that extracts product candidates from the digital catalog, including an image extraction portion for extracting (cutting) images associated with some products from original catalog data (see: 0073, 0051, Fig. 2 (22)). This includes transmitting the catalog digest data as well as original electronic catalog data from which each of the image data items is extracted based on a user request (see: 0036). Accordingly, Imamura teaches cut out portions featuring each of the product candidates from the digital catalog, or where the displayed images were the cut out portions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the invention of Bhagat to have utilized the known technique for cutting/extracting product images as taught by Imamura in order to have enabled effects (such as sound data or the like) to be applied to images, thereby enhancing the product images of Bhagat and improving user experience (see: Imamura: 0045-0046).
5.The display device according to claim 1, wherein the at least one processor is further configured to execute the instructions to: output information regarding an order content of at least one of the plurality of product candidates by display or voice (see: 0057, Fig. 4A (409), Fig. 4C).
6. The display device according to claim 1, wherein the at least one processor is further configured to execute the instructions to: accept information regarding a selected product and an ordered quantity, wherein the selected product is a product selected by the user to order; and output an accepted order content (0057, 0061, Fig. 4A-B (403), Fig. 4C (shopping cart, quantity (1)).
7.The display device according to claim 1, wherein the at least one processor is further configured to execute the instructions to: extract a recommended product among the plurality of product candidates in a case where there are equal to or more than a predetermined number of types of the plurality of product candidates (see: 0025 (recommendation), 0045 (rank subset), 0048, 0090, Fig. 8 (812, 815)).
11. The display device according to claim 1, wherein the cut out portions includes at least an image of the product candidates (see: Imamura: 0073, 0051, 0036).
Regarding claim 9 (method) and claim 10 (non-transitory medium), these claims recite substantially parallel limitations to claim 1 and are rejected under at least similar rationale as discussed above.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bhagat in view Imamura as applied to claim 1 above, and further in view of Westphal (US 2010/0262514 – herein West ‘514) and Westphal (US 2013/0120440 – herein West ‘440).
Regarding claim 3, Bhagat in view of Imamura discloses all of the above as noted including display the plurality of ordered product candidates in such a way that each of the ordered product candidates is…selectable (see: Fig. 4A (403), Fig. 4B (403, 418), 0057, 0059).
Bhagat, however, does not disclose wherein the at least one processor is further configured to execute the instructions to: in a case where the plurality of ordered product candidates is posted on the same page on the digital catalog, display the page on the screen;
To this accord, West ‘514 teaches a catalog system executing instructions to: in a case where the plurality of ordered product candidates is posted on the same page on the digital catalog, display the page on the screen (see: 0024, Fig. 10 (1002)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the invention of Bhagat in view of Imamura to have utilized the known technique for presenting catalog pages as taught by West ‘514 in order to have helped users create mental maps to thereby improve the product searching experience, such as by helping users narrow their search results quickly and providing for easier and more natural navigation for less technology savvy users customers (see: West ‘514: 0005).
Lastly, Bhagat does not teach display the plurality of ordered product candidates in such a way that each of the ordered product candidates is highlighted and selectable.
To this accord, West ‘440 teaches a product catalog and search system to display the plurality of ordered product candidates in such a way that each of the ordered product candidates is highlighted and selectable (see: 0043-0044 (objects previously purchased from the vendor could be highlighted or otherwise provided with some emphasizing indicia), 0046, Fig. 11 (1106)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the invention of Bhagat in view of Imamura to have utilized the known technique for highlighting/emphasizing past purchases as taught by West ‘440 in order to have more readily called out to the customer those objects within the search results that the user has previously purchased. (see: West ‘514: 0005).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bhagat in view of Imamura as applied to claim 1 above, and further in view of Price (US 2020/0287856).
Regarding claim 8, though Bhagat in view of Imamura discloses all of the above including wherein the at least one processor is further configured to execute the instructions to:
display a screen that accepts input of desired product information (see: 0028, 0078, 0078, 086, Fig. 4B (406), Fig. 8 (803));
extract a product by searching with the input search query on the digital catalog (see: 0087-0088, Fig. 8 (806, 809));
and display information regarding the extracted product (see: 0091, Fig. 8 (818, 821), 0084, Fig. 7 (709(N), 721)).
Though disclosing the above, Bhagat does not disclose a display that accepts limited product information for limiting the plurality of product candidates in a case where there are equal to or more than a predetermined number of types of the plurality of product candidates;
acquire the limited product information;
extract a product associated with the limited product information; and,
display information regarding the extracted product [associated with the limited product information].
To this accord, Price teaches a search system including display a screen that accepts limited product information for limiting the plurality of product candidates in a case where there are equal to or more than a predetermined number of types of the plurality of product candidates (see: 0039 (filter condition can narrow scope), 0040 (number of search results exceeds threshold, seek filter condition), 0042, Fig. 1);
acquire the limited product information (see: 0040, 0042-0043, 0046);
extract a product associated with the limited product information on the digital catalog (see: 0040 (chatbot conducts a search and receives results), 0046 (chatbot implements filtering condition), 0048 (chatbot can search for the specified product));
and display information regarding the extracted product [associated with the limited product information]. (see: 0048 (display some or all of the search results), 0052, Fig. 1 (123)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the invention of Bhagat in view of Imamura to have utilized the known technique for narrowing a search as taught by Price in order to have provided recommended filter conditions when a number of results exceeds a threshold so as to enable users to effectively narrow their searches (see: Price: 0040, 0044).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Pearson (US 20050131764) discloses an attribute processor that identifies and extracts the price of the item and an image associated with the item from documents located by the document locator that are relevant to the search query. This includes using the extracted image in a compilation of summary relating to items for the document (see: 0019, 0039-0041).
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 WILLIAM J ALLEN whose telephone number is (571)272-1443. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached at 571-270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM J. ALLEN
Primary Examiner
Art Unit 3625
/WILLIAM J ALLEN/ Primary Examiner, Art Unit 3619
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