DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This action is in reply to the remarks/arguments for Application 18/545,755 filed on 11 September 2025.
Claims 1 and 9-10 have been amended.
Claims 1-20 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed 2 July 2025 has been considered. An initialed copy of the Form 1449 are enclosed herewith.
Response to Arguments
A. Claim Rejections – 35 U.S.C. § 101:
1. Applicant disagrees because even if the pending claims could be interpreted as being directed to an abstract idea, at a minimum, the claims are integrated into a practical application as the claims integrate disparate fields of technology (e.g., synchronization between disparate computer systems).
Examiner respectfully disagrees. The judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a “server”, “processor”, “messaging application”, “communication network”, “interactive display”, “first computer system”, “second computer system”, represent the use of a computer as a tool (intermediary) to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) implement the acts of using rules and/or instructions to implement a commercial-related interaction comprising the steps of merely transmitting (e.g., receiving, displaying retrieving, storing) data/information in an automatic manner.
Regarding the argument that the claims integrate disparate fields of technology (e.g., synchronization between disparate computer systems), Examiner asserts that the Applicant is reading a limitation into the claims not found in the claim language. Claimed subject matter, not the specification, is the measure of the invention. Disclosure contained in the specification cannot be read into the claims for the purpose of avoiding the prior art (In re Sporck, 55 CCPA 743, 386 F.2d 924, 155 USPQ 687 (1986)). Applicant’s argument is therefore unpersuasive.
The rejection is therefore maintained.
B. Claim Rejections – 35 U.S.C. § 103:
Claims 1-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Nihalani et al., US 8,244,592 B2 (“Nihalani”), in view of Weskamp et al., US 2022/0365831 A1 (“Weskamp”).
With regard to pending claims 1-20, Applicant’s remarks and/or arguments have been considered by Examiner and found to be persuasive over the prior art(s) of record. Accordingly, the rejection of the claims under 35 U.S.C. 103, is withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claim 1 is rejected under 35 U.S.C. § 112, 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(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent Claim 1, the limitation recites “receiving, via a first computer system and in a message thread of a messaging application associated with a communication network, a request from a user of the messaging application, wherein the message thread includes at least the user and a supplier”, and “retrieving, based on the confirmation from a second computer system, a transaction workflow associated with the supplier”.
However, there is no discussion or disclosure in the Specification of disparate computer systems (as argued by Applicant) comprising a “first computer system” and a “second computer system”, that are argued as disparate . Therefore, the Specification does not demonstrate possession by indicating and/or describing where the above subject matter may be found.
Because the Specification could not convey to one of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date, the claim is rejected as failing to comply with the written description requirement.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, representative method claim 1 is directed towards facilitating a messaging based application task workflow associated with the performance of a transaction. Claim 1 is directed to the abstract idea of using rules and/or instructions to implement a commercial-related interaction comprising the steps of merely transmitting (e.g., receiving, displaying retrieving, storing) data/information in an automatic manner grouped under the certain methods of organizing human activity – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial or legal interactions (agreements in the form of contracts; business relations); managing interactions between people (including social activities, teachings, following rules or instructions) grouping, in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance).
Claim 1 recites: “receiving, in a message thread …, a request from a user …, wherein the message thread includes at least the user and a supplier; displaying to the user, based on the request, a message prompting the user for a confirmation to initiate a transaction with the supplier for an item offered by the supplier; retrieving, based on the confirmation, a transaction workflow associated with the supplier; and displaying, …, the transaction workflow”. Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a “server”, “processor”, “messaging application”, “communication network”, “interactive display”, “first computer system”, “second computer system”, represent the use of a computer as a tool (intermediary) to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) implement the acts of using rules and/or instructions to implement a commercial-related interaction comprising the steps of merely transmitting (e.g., receiving, displaying retrieving, storing) data/information in an automatic manner.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of using rules and/or instructions to implement a commercial-related interaction comprising the steps of merely transmitting (e.g., receiving, displaying retrieving, storing) data/information in an automatic manner using computer technology. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Hence, claim 1 is not patent eligible.
Independent claim 10 recites substantially the same limitations as claim 1 above and is ineligible for the same reasons. The subject matter of claim 10 corresponds to the subject matter of claim 1 in terms of a system (e.g., machine). Therefore the reasoning provided for claim 1 applies to claim 10 accordingly.
Independent claim 19 recites substantially the same limitations as claim 1 above and is ineligible for the same reasons. The subject matter of claim 19 corresponds to the subject matter of claim 1 in terms of a computer-readable storage medium (e.g., manufacture). Therefore the reasoning provided for claim 1 applies to claim 19 accordingly.
Dependent claims 2-9, 11-18, and 20 add further details and contain limitations that narrow the scope of the invention. However, these details do not result in significantly more than the abstract idea itself. As explained in the December 16, 2014 Interim Eligibility Guidance from the USPTO (in reference to the BuySAFE, Inc. v. Google, Inc. decision), further narrowing the details of an abstract idea does not change the § 101 analysis since a more narrow abstract idea does not make it any less abstract.
Viewed individually and in combination, these additional elements do not provide meaningful limitations to transform the abstract idea such that the claims amount to significantly more than the abstraction itself.
Accordingly, the present pending claims are not patent eligible and are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
The prior art(s) made of record and not relied upon is/are considered pertinent to applicant's disclosure.
Umapathy et al. (US US 2016/0380915 A1) discloses rules-based workflow messaging. Techniques for rules-based workflow messaging are described herein. In one or more implementations, user activity with different existing workflows for features of an application is tracked and communicated to a tracking service. Based on analysis of user activity, rules are derived regarding messages to show users with respect to new features that relate to user interaction. For example, activity data indicating heavy usage of a particular legacy workflow is used to recognize that users are not discovering/using a corresponding new feature. Based on such usage patterns, workflow messages and rules for exposing the messages for the new feature are created and distributed to clients. The rules are applied to detect workflow patterns and trigger messages regarding corresponding new features. In response to an indication of interest in a new feature, interactive instructions to guide users step-by-step through the workflow for a new feature are provided.
Claims 1-20 are rejected.
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 Clifford Madamba whose telephone number is 571-270-1239. The examiner can normally be reached on Mon-Thu 7:30-5:00 EST Alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon, can be reached at 571-272-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CLIFFORD B MADAMBA/Primary Examiner, Art Unit 3692
Prosecution Insights