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
Applicant claims 371 International priority to PCT/JP2021/040860, filed 11/05/2021, which claims foreign priority to JP 2021-035782, filed 3/5/2021.
Information Disclosure Statement
The IDSs submitted on 8/16/2023, 10/13/2023, 3/29/2024, and 3/6/2025 have been considered.
Status of Claims
Applicant’s amended claims, filed 10/1/2025, have been entered. Claims 1, 6, 7 have been amended. Claims 2, 8-10, 13, and 14 has been canceled. Claims 1, 3-7, 11, and 12 are currently pending in this application and have been examined.
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, 3-7, 11, and 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) an abstract idea. This judicial exception is not integrated into a practical application. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 1 of the Alice/Mayo test the claims are directed to statutory categories. Specifically, the method, as claimed in claims 1, 3-5, 11, and 12, are directed to a process, the device, as claimed in claim 6, are directed to a machine, and the system, as claimed in claim 7, are directed to a machine, (see MPEP 2106.03).
Under Step 2A (prong 1), claim 1, taken as representative, recites at least the following limitations (emphasis added) that recite an abstract idea:
executing multiple times a first process of outputting question information to a user and acquiring response information to the question information from the user;
executing a second process at least once while executing the first process multiple times;
executing a third process of estimating a vehicle use and customer value for the user and specifying one or more tire products to recommend to the user based on two or more pieces of the response information acquired by executing the first process multiple times; and
outputting information indicating the vehicle use and the customer value estimated and information regarding the one or more tire products specified,
wherein the second process includes determining a comprehension level of the user regarding a tire product, based on one or more pieces of the response information acquired, and determining the question information to be output next time and thereafter, according to the comprehension level determined,
wherein the method further comprises: transmitting user identification information, identification information of the one or more tire products specified, and information necessary for an payment procedure; and perform a procedure to purchase the one or more tire products specified, and
wherein the question information comprises a question that requires knowledge of specifications of the one or more tire products to answer.
These limitations recite certain methods of organizing human activity, such as performing commercial interactions (see MPEP 2106.04(a)(2)(II)). Certain methods of organizing human activity are defined by MPEP 2106.04 as including “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, 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).” In this case, the abstract ideas recited in representative claim 1 are certain methods of organizing human activity because providing tire recommendations to a user based on a user’s answers to questions and performing a purchase of one or more tire products is a commercial or legal interaction because it is a advertising, marketing or sales activity, or business relations.
Thus, claim 1 recites an abstract idea.
Independent claims 6 and 7 recite the same abstract idea as recited in independent claim 1. As such, the analysis under Step 2A, Prong 1 is the same for independent claims 6 and 7 as described above for independent claim 1.
Under Step 2A (prong 2), if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception (see MPEP 2106.04). As stated in the MPEP, when “an additional element merely recites the words ‘apply it (or an equivalent) with the judicial exception, or merely uses a computer as a tool to perform an abstract idea,” the judicial exception has not been integrated into a practical application. In this case, representative claim 1 includes additional elements such as (additional elements are bolded):
A method executed by a computer, the method comprising:
executing multiple times a first process of outputting question information to a user and acquiring response information to the question information from the user;
executing a second process at least once while executing the first process multiple times;
executing a third process of estimating a vehicle use and customer value for the user and specifying one or more tire products to recommend to the user based on two or more pieces of the response information acquired by executing the first process multiple times; and
outputting information indicating the vehicle use and the customer value estimated and information regarding the one or more tire products specified,
wherein the second process includes determining a comprehension level of the user regarding a tire product, based on one or more pieces of the response information acquired, and determining the question information to be output next time and thereafter, according to the comprehension level determined,
wherein the method further comprises: transmitting user identification information, identification information of the one or more tire products specified, and information necessary for an electronic payment procedure to an external device; and having the external device perform a procedure to purchase the one or more tire products specified, and
wherein the question information comprises a question that requires knowledge of specifications of the one or more tire products to answer.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. These additional elements merely amount to the general application of the abstract idea to a technical environment (“by a computer”, “to an external device”, “having the external device perform…”) and insignificant pre-and-post solution activity (executing, receiving/acquiring, transmitting/ outputting). The specification makes clear the general-purpose nature of the technological environment. 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 the abstract idea) (see Figs. 1, 4, 5; paragraphs [0012]- [0014], [0021]-[0030]). The specification indicates that while exemplary general-purpose systems may be specific for descriptive purposes, any elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim. The description demonstrates that these additional elements are merely generic devices such as a generic computer. Further, the additional elements do no more than generally link the use of a judicial exception to a particular environment or field of use (such as the Internet or computing networks).
Therefore, considered both individually and as an ordered pair, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional elements are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not transform or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technology environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
In addition to the above, the recited executing, receiving/acquiring and transmitting/outputting steps (even assuming arguendo they do not form part of the abstract idea, which the Examiner does not acquiesce), are at best little more than extra-solution activity (e.g., execution on a generic computer, data gathering, presentation of data) that contributes nominally or insignificantly to the execution of the claimed system (see MPEP 2106.05(g)).
In view of the above, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
Independent claims 6 and 7 recite the additional elements of “a computer comprising a controller,” “a terminal device,” and “an information processing device” in addition to the additional elements already addressed in the rejection for independent claim 1. However, these additional elements taken alone or in combination are not sufficient to integrate the abstract idea into a practical application as these additional elements are merely generic devices and do no more than generally link the use of a judicial exception to a particular environment or field of use (such as the Internet or computing networks). Therefore, under Step 2A (prong 2), claims 6 and 7 do 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 claims 1, 6, and 7, taken individually or as a whole the additional elements of claims 1, 6, and 7 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 claims 1, 6, and 7 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 claims 1, 6, and 7 do not add anything further than when they are considered individually.
In view of the above, claims 1, 6, and 7 do not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding claim 5
Dependent claim(s) 5, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. More specifically, dependent claim(s) 5 merely further define the abstract limitations of claim 1 or provide further embellishments of the limitations recited in independent claim 1.
Claim 5 sets forth:
wherein the third process is executed based on the two or more pieces of the response information acquired by executing the first process multiple times and other information that is different from the response information.
Such recitations merely embellish the abstract idea of providing tire recommendations to a user based on a user’s answers to questions and performing a purchase of one or more tire products. The claims do not set forth any further additional limitations, and therefore such abstract embellishments are applied to the additional limitations recited in claim 1, which do no more than generally link the use of the abstract idea to a particular technological environment, do not integrate the abstract idea into a practical application, and do not provide an inventive concept. Accordingly, the claims do not confer eligibility on the claimed invention and is ineligible for similar reasons to claim 1.
Thus, dependent claim 5 are ineligible.
Regarding claims 3, 4, 11, and 12
Claims 3, 4, 11, and 12 set forth:
output information when input information is received,
the input information includes the two or more pieces of the response information acquired by executing the first process multiple times, and
the output information includes information indicating a vehicle use and customer value for a user, and identification information of the one or more tire products to recommend to the user.
wherein the third process is executed based on the two or more pieces of the response information acquired by executing the first process multiple times and other information that is different from the response information.
when the one or more tire products to recommend to the user do not include a tire product that has been purchased by the user.
Such recitations merely embellish the abstract idea of providing tire recommendations to a user based on a user’s answers to questions and performing a purchase of one or more tire products. While the claims do set forth the additional limitation of “wherein the third process is executed using a machine learning model that outputs” and “training the machine learning model using identification information of the tire product that has been purchased by the user as training data,” these recitations are similar to the additional limitations in claim 1, as they do no more than generally link the use of the abstract idea to a particular technological environment. That is these additional elements merely amount to the general application of the abstract to a technological environment (“using a machine learning model” and “training the machine learning model”). The specification makes clear the general-purpose nature of the technological environment. Paragraphs [0054]-[0057] indicate that while exemplary general purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is the technology used to implement the invention is not specific or integral to the claim. Therefore these additional elements do not integrate the abstract idea into a practical application because they merely amount to using a computer to apply the abstract idea and no more than a general link of the use of the abstract idea to a particular technological environment or field of use and thus do not act to integrate the abstract idea into a practical application of the abstract idea. Further, the “machine learning model” is recited at a high level and amounts to merely applying the abstract idea
Additionally, the additional elements do not amount to significantly more because they merely amount to using a computer to apply the abstract idea and amount to no more than a general link of the use of the abstract idea to a particular technological environment.
Thus, dependent claims 3, 4, 11, and 12 are also ineligible.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 3-7, 11, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Linkswiler (US 2008/0154737 A1 [previously recited]) in view of Kolton et al. (US 2017/0132586 A1).
Regarding claim 1, Linkswiler discloses a method executed by a computer (abstract), the method comprising:
executing multiple times a first process of outputting question information to a user and acquiring response information to the question information from the user (Figs. 6-11; ¶¶0073-0078);
executing a second process at least once while executing the first process multiple times (Figs. 6 and 9; ¶¶0041-0043, ¶¶0084-0086);
executing a third process of estimating a vehicle use and customer value for the user and specifying one or more tire products to recommend to the user based on two or more pieces of the response information acquired by executing the first process multiple times (Figs. 6-7; ¶0036 [questions can include “Do you drive more than 24,000 miles per year?”, “Do you plan on keeping your car for more than three years?”, “Do you think that you will eventually trade in your car?”, “Do you have children?”, and so on. Each of these example questions may be followed by on-screen buttons that represent “Yes” and “No.” Furthermore, each of these questions elicit customer preference information because people who provide similar answers to these question are likely to have similar interests.] in view of ¶0037 [may present a variable number of question screens depending on the answers provided by customer 4. Furthermore, kiosk 18 may present differing question screens depending on the answers provided by customer 4. For example, if customer 4 is interested in an SUV, kiosk 18 may present the question, “Do you enjoy driving off-road?”] and ¶¶0083-0086 [tire products]); and
outputting information indicating the vehicle use and the customer value estimated and information regarding the one or more tire products specified (Figs. 4, 6 and 8-11; ¶¶0082-0089 in view of ¶¶0057-0063),
wherein the second process includes determining a comprehension level of the user regarding a tire product, based on one or more pieces of the response information acquired, and determining the question information to be output next time and thereafter, according to the comprehension level determined (Figs. 6 and 9; ¶¶0041-0043 [Examiner notes “express a level of interest” is comparable to a comprehension level] and ¶¶0084-0086 in view of ¶0037 [may present a variable number of question screens depending on the answers provided by customer 4. Furthermore, kiosk 18 may present differing question screens depending on the answers provided by customer 4. For example, if customer 4 is interested in an SUV, kiosk 18 may present the question, “Do you enjoy driving off-road?” However, if customer 4 is interested in a sports car, kiosk 18 might not present this question because drivers do not usually drive sports cars off-road]),
wherein the method further comprises: transmitting user identification information, identification information of the one or more tire products specified to an external device (Fig. 6; ¶0006 [the customer may interact with a computer kiosk that collects one or more pieces of information related to product preferences of the customer. The kiosk may transmit such preference information to a centralized business logic server through a computer network]; Examiner notes centralized business logic server is comparable to an external device, ¶¶0058-0059 [user identification information] and ¶¶0086-0087 [tire product identification information and user identification information] as well as Figs. 11-13 ¶¶0090-0093); and having the external device perform a procedure (Figs. 11-13 ¶¶0090-0093), and
wherein the question information comprises a question to answer (Figs. 6-11; ¶¶0073-0078).
While Linkswiler discloses transmitting information to an external device (Figs. 6, 11-13; ¶0006, ¶¶0058-0059, ¶¶0086-0087, and ¶¶0090-0093), having the external device perform a procedure (Figs. 11-13 ¶¶0090-0093), and wherein the question information comprises a question to answer (Figs. 6-11; ¶¶0073-0078), Linkswiler does not explicitly disclose information necessary for an electronic payment procedure, purchase the one or more tire products specified, and wherein the question information comprises a question that requires knowledge of specifications of the one or more tire products to answer (Figs. 6-11; ¶¶0073-0078).
However, in the field of recommending car tires to a customer (abstract), Kolton et al., hereinafter Kolton, teaches recommending tires to a customer by receiving user inputs from a questionnaire which can include a tire matching algorithm that determines tires of an appropriate size for a customer’s determined vehicle after a user input of the appropriate tire size (Fig. 3; ¶0061 [Examiner notes user input of tire size is comparable to knowledge of specifications of the one or more tire products]) and answers from a customer’s driving style questionnaire (Figs. 1-12; ¶¶0047-0048 [prompting users for desired products and services such as new tires and presenting via the user interface a series of questions for the user to answer, each answer associated with one or more values for driving variables], ¶¶0056-0059, ¶¶0061-0071, ¶¶0090-0093). Kolton further teaches prompting a user for desired products and services such as new tires, enabling a user to select a tire for purchase, and if the one or more services are complete, executing software instructions to enable a customer to pay for the services rendered which can include a computer kiosk communicatively connected to payment processing hardware such as a credit card terminal, a website portal or a mobile application to pay for the services rendered (¶0021 [execute payments], ¶¶0047-0048, ¶¶0053-0054, ¶0076 [a customer may pay for the ticket products and services directly upon the Pod, whereas in other embodiments the payment processing may occur separately from the presentation of the ticket for verification upon the Pod of prices and services performed], ¶0092 [select a tire for purchase by selecting the price button 1206 a-c]). The step of Kolton is applicable to the method of Linkswiler as they share characteristics and capabilities, namely, they are directed to recommending car products and services. It would have been obvious to one of ordinary skill in the art at the time of filing to modify the prompted questions and recommendation as taught by Linkswiler with the payment information, purchase of the tire product, and knowledge of specifications of the one or more tire products as taught by Kolton. One of ordinary skill in the art at the time of filing would have been motivated to expand the method of Linkswiler in order to enable customers to hand-pick tires and services customized to their needs and driving style (¶0008) and execute payment (¶0021).
Regarding claim 3, Linkswiler in view of Kolton teaches the method of claim 1, Linkswiler further discloses wherein
the third process is executed using a machine learning model that outputs output information when input information is received (Fig. 6; ¶0039 in view of ¶¶0037-0038),
the input information includes the two or more pieces of the response information acquired by executing the first process multiple times (Fig. 6; ¶¶0036-0039), and
the output information includes information indicating a vehicle use and customer value for a user, and identification information of the one or more tire products to recommend to the user (Figs. 4, 6 and 8-11; ¶¶0082-0089 in view of ¶¶0057-0063).
Regarding claim 4, Linkswiler in view of Kolton teaches the method of claim 3, Linkswiler discloses further comprising,
when the one or more tire products to recommend to the user do not include a tire product that has been purchased by the user, training the machine learning model using identification information of the tire product that has been purchased by the user as training data (Fig. 13; ¶0093 [customer purchased products] and Fig. 6; ¶¶0065-0066 in view of ¶0039; Examiner notes the broadest reasonable interpretation of this limitation is conditional (i.e., “when”) and does not necessarily need to be performed).
Regarding claim 5, Linkswiler in view of Kolton teaches the method of claim 1, Linkswiler further discloses wherein the third process is executed based on the two or more pieces of the response information acquired by executing the first process multiple times and other information that is different from the response information (Fig. 6; ¶¶0036-0040).
Regarding claim 6, the claim discloses substantially the same limitations, as claim 1, except claim 1 is directed to a process while claim 6 is directed to a machine. The added element of “a computer comprising a controller” is also taught by Linkswiler (Figs. 1, 2, 4; ¶¶0034-0035, ¶0038, ¶¶0045-0046, and ¶0057). Therefore, claim 6 is rejected for the same rational over the prior art.
Regarding claim 7, the claim discloses substantially the same limitations, as claim 1, except claim 1 is directed to a process while claim 7 is directed to a machine. The added elements of “a terminal device” and “an information processing device” is also taught by Linkswiler (Figs. 1, 2, 4; ¶¶0034-0035, ¶0038, ¶¶0045-0046, and ¶0057). Therefore, claim 7 is rejected for the same rational over the prior art.
Regarding claim 11, Linkswiler in view of Kolton teaches the method of claim 3, Linkswiler further discloses wherein the third process is executed based on the two or more pieces of the response information acquired by executing the first process multiple times and other information that is different from the response information (Fig. 6; ¶¶0036-0040).
Regarding claim 12, Linkswiler in view of Kolton teaches the method of claim 4, Linkswiler further discloses wherein the third process is executed based on the two or more pieces of the response information acquired by executing the first process multiple times and other information that is different from the response information (Fig. 6; ¶¶0036-0040).
Response to Arguments
Applicant’s arguments, on pages 7-10 of the Remarks filed 10/1/2025, with respect to the previous 35 USC §101 rejections have been fully considered but they are not persuasive. Applicant argues the amended claims are not directed to an abstract idea (judicial exception), and even if the amended claims are directed to an abstract idea (judicial exception), the claims include additional elements that are sufficient to amount to significantly more than the abstract idea (judicial exception). Examiner respectfully disagrees.
Specifically, on pages 7-8 of the Remarks, Applicant argues the amended claims including the “transmitting” and “having” steps are not merely a certain method of organizing human activity or mental process because a human cannot transmit information to an externa device to cause the external device to actually perform a procedure to purchase one or more tire products in her/his mind. As an initial matter, Examiner notes certain method of organizing activity is used to describe concepts relating to commercial or legal interactions (including advertising, marketing, or sales activities or behaviors, and business relations) and is not limited to being able to perform these concepts “mentally” (see 2106.04(a)(2)(II)). As explained in MPEP 2106.04, the Office has shifted its approach from the case-comparison approach in determining whether a claim recites an abstract idea and instead uses enumerated groupings of abstract ideas. According to the MPEP 2106.04, the question of whether a claim is “directed to” a judicial exception in Step 2A is now evaluated using a two-prong inquiry. Prong One asks if the claim “recites” an abstract idea, law of nature, or natural phenomenon. Under that prong, the mere inclusion of a judicial exception such as a method of organizing human activity in a claim means that the claim “recites” a judicial exception (see MPEP 2106.04 [“The mere inclusion of a judicial exception such as a mathematical formula (which is one of the mathematical concepts identified as an abstract idea in MPEP § 2106.04(a)) in a claim means that the claim "recites" a judicial exception under Step 2A Prong One.”]). Additionally, MPEP 2106.04 instructs examiners to refer to the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2) (i.e., mathematical concepts, certain methods of organizing human activities, and mental processes) in order to identify abstract ideas.
As noted above and in the previous office action, the claims recite providing tire recommendations to a user based on a user’s answers to questions and performing a purchase of one or more tire products. Providing tire recommendations to a user based on a user’s response to questions and enabling the user to purchase tires is considered sales activities or behaviors and business relations and an abstract idea. Sales activities or behaviors and business relations are considered a method of organizing human activity (i.e., one of the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2)). Examiner notes the arguments directed to additional elements such as “an external device” and computer improvements are analyzed under Step 2A, Prong Two and not within Step 2A, Prong One.
Accordingly, with regard to Step 2A, Prong One, Examiner maintains the amended claims recite a judicial exception.
On pages 8-10 of the Remarks, Applicant argues the amended claims tie the technical process recited in the claims to a real-world action by causing an external device to actually perform a procedure to purchase one or more tire products. Applicant explains that the claims set forth specific technical configurations that go beyond mere data manipulation or commercial activity, namely: the “transmitting” and “having” steps, which are newly added to amended claim 1, specify that amended claim 1 causes an external device to actually perform a procedure to purchase one or more tire product and are similar to claim 2 of Example 21 from the USPTO’s subject matter eligibility examples in that the present application utilizes automated data processing and determination to initiate a tangible, real-world transaction, i.e., purchase of a physical product just as the alert in Example 21’s eligible claim causes a computer to take specific action to solve a technical problem, the claimed method here causes an external device to execute an electronic payment and purchase procedure.
Applicant than asserts that the above-purported technical configurations “achieves a technical solution” over prior art systems. Examiner respectfully disagrees.
While the Examiner agrees that the amended limitations “an external device” and “having the external device perform a procedure to” do not fall within the abstract idea, the Examiner disagrees that these elements impose meaningful limits on the judicial exception. As claimed, these elements represent the mere use of generic computing components to facilitate the abstract idea. Notably, the specification provides only a brief description of the external device and the external device performing procedures (Fig. 1; paragraphs [0013]-[0014], [0021]-[0031], [0044]). If it is asserted that the invention improves upon conventional function of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Although the specification need not explicitly set forth the improvement, it must describe the invention such that the improvement would be apparent to one of ordinary sill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology (see MPEP 2106.05(a); MPEP 2106.04(d)(1)).
Applicant’s specification does not provide the requisite detail necessary such that one of ordinary skill in the art could recognize the claimed invention as providing an improvement. Applicant’s specification does not provide sufficient detail with respect to a computer, an external device, an electronic payment, and is specific only in their use in facilitating the abstract idea of providing tire recommendations to a user based on a user’s answers to questions and performing a purchase of one or more tire products.
Examiner disagrees with Applicant that the presently recited claims are similar to claim 2 of Example 21. In claim 2 of Example 21, the additional elements as an ordered combination, as a whole, amounts to significantly more than the abstract idea because the claimed invention addressed the internet-centric challenge of alerting a subscriber with time sensitive information when the subscriber’s computer was offline. Similar to the claims in DDR Holdings, the claims solved an Internet-centric problem which was described within the Specification and the claimed solution is necessarily rooted in computer technology, and provides unconventional steps that confine the abstract idea to a particular useful application. Unlike the circumstances in claim 2 of Example 21, the current claims are merely tied to the electronic (i.e. technical) environment rather than necessarily rooted in the electronic environment. Even assuming the claim to be rooted in technology, they are not necessarily rooted in computer technology in order to address a problem specifically arising in the realm of computers or networks. Providing tire recommendations to a user based on a user’s answers to questions and performing a purchase of one or more tire products addresses a business challenge with pre-excising analog equivalents and therefore is not comparable to claim 2 of Example 21.
The instant claims are not directed to improving “the existing technological process” requiring the generic components to operate in an unconventional manner to achieve an improvement in computer functionality or requiring the non-conventional and non-generic arrangement of known, conventional pieces to improve a technical process. As currently recited, the instant claims are directed to improving the business task of providing “techniques used to recommend automotive tire products to customers” (i.e., the abstract idea). The problem of “techniques used to recommend automotive tire products to customers” (as referenced in the Specification paragraph [0004]) is one that arises squarely in the commercial realm, and does not rise to improving the functioning of the computer or another technology or technical field. As understood from the specification, the intention of Applicant’s invention is to provide “an improved technique for recommending an automotive tire product to a customer”(¶0009). The improvement manifested by the claimed invention is an improvement to the abstract idea itself, rather than the functioning of the computer or another technology or technical field, and is achieved leveraging generic computing hardware and software set forth at a high level of generality.
Even assuming a relationship of the claimed invention to another technology or technical field, if it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological process, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure most provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement (see MPEP 2106.05(a)). Even when a specification explicitly asserts an improvement, examiner should not determine a claim improves technology when only a bare assertion of an improvement is present without the detail necessary to be apparent to a person of ordinary skill in the art (see MPEP 2106.04(d)(1)).
The manner in which the currently pending claims are written is akin to ineligible decisions such as Affinity Labs of Texas v. DirecTV, LLC (Fed. Cir. 2016) (the court relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible), or, Internet Patents Corp. v. Active Network, Inc. (Fed. Cir. 2015) (claims contained no restriction on the manner in which the additional elements perform these claimed functions). The alleged improvement by Applicant is at best a bare assertion of an improvement sans sufficient detail to demonstrate that Applicant has provided the alleged improvement to the technical field.
In review of the claimed invention, and in consideration of the specification as originally filed, the Examiner asserts that:
(i) the claimed invention does not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, but instead improves an abstract, commercial process, and,
(ii) the specification, as originally filed, does not provide sufficient discloser or technical explanation such that one of ordinary skill in the art would have determined that the disclosed invention provided an improvement to the functioning of a computer or another technology or technical field.
Therefore, the Examiner maintains the claims do not recite additional elements that integrate the judicial exception into a practical application of that exception, the additional elements are merely being used to apply the abstract idea to a technological environment, and the additional elements alone or in ordered combination do not render the claim as being significantly more than the underlying abstract idea.
Accordingly, the 35 USC §101 rejection is maintained.
Applicant’s arguments, on pages 10-12 of the Remarks filed 10/1/2025, with respect to the 35 USC §102 rejections have been fully considered but are moot in view of the new 35 USC §103 rejections applied to applicant’s amended claims.
Conclusion
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 LINDSEY B SMITH whose telephone number is (571)272-0519. The examiner can normally be reached Monday - Friday 9-6 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Smith can be reached at 571-272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LINDSEY B. SMITH
Examiner
Art Unit 3688
/LINDSEY B SMITH/ Examiner, Art Unit 3688
/Jeffrey A. Smith/ Supervisory Patent Examiner, Art Unit 3688