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 .
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 1-19 are rejected under 35 U.S.C. 101 because the claims are directed towards an abstract idea without significantly more.
Claim 1 recites a method, thus a process, one of the four statutory categories of patentable subject matter. However, Claim 1 further recites steps of determining, based on a search query, a plurality of search results that are responsive to the search query and that are associated with an entity [specified in the search query] (which falls into the mental process grouping of abstract ideas); determining, based on the search query, an inferred intention of a user of the computing device, the inferred intention being selected from a plurality of defined intentions (which falls into the mental process grouping of abstract ideas); determining, based on one or more stored attributes associated with the entity, whether the inferred intention is advisable with respect to one or more search results, from among the plurality of search results, thar are associated with the entity (which falls into the mental process grouping of abstract ideas); in response to determining that the inferred intention is not advisable with respect to one or more of the search results that are associated with the entity: generating, based on one or more of the stored attributes associated with the entity, a notification that includes at least first notification data, the first notification data indicating that the inferred intention is not advisable with respect to one or more of the search result that are associated with the entity (which falls into the mental process grouping of abstract ideas). Thus, the claim recites an abstract idea of determining an intent from a search query and determining that the intent is inadvisable.
The claim does not recite any additional elements which integrate the abstract idea into a practical application, because the additional elements consist of:
the method being implemented by one or more processors, and performance of an abstract idea on generic computer components cannot do so (MPEP 2106.05(f)(2))
receiving a search query via a search interface of a computing device, which is insignificant extra-solution activity of data gathering necessary for all uses of the abstract idea, which cannot do so (MPEP 2106.05(g))
causing the plurality of search results to be displayed and causing the notification to be provided for display via the search interface, which is insignificant extra-solution activity of data output, which cannot integrate the abstract idea into a practical application (MPEP 2106.05(g)).
Thus, the claim is directed towards the abstract idea of determining an intent from a search query and determining that the intent is inadvisable.
Finally, the additional elements, taken alone and in combination, cannot provide significantly more than the abstract idea itself because implementation on a computer cannot do so (MPEP 2106.05(f)(2)), because the other additional elements are the well-understood, routine, and conventional actions of transmitting or receiving data over a network (MPEP 2106.05(d)), and because there is no nexus between the additional elements to provide significantly more than the elements themselves.
Claims 2, 3, 5-7, and 9, dependent upon Claim 1, only recite additional elements which narrow the data being used or produced in the implementation of the abstract idea, e.g. only specify the particular technological environment or field of use of the abstract idea, which by MPEP 2106.05(h) cannot integrate the abstract idea into a practical application nor provide significantly more than the abstract idea itself.
Claim 4, dependent upon Claim 3, only recites insignificant extra-solution activity of data gathering and data output (MPEP 2106.05(g)) which is further well-understood, routine, and conventional (see the typical search results, including links, of Google, illustrated in Guo Fig. 2).
Claim 8, dependent upon Claim 3, only recites insignificant extra-solution activity of data output (MPEP 2106.05(g)) which is further well-understood, routine, and conventional (by Jhaveri, US PG Pub 2008/0071743, [0027], which teaches that it is typical/common to overlay information and search results).
Claims 9-18 recite a computing system comprising: one or more processors and a computer readable medium to perform precisely the steps of the methods of Claims 1-8, respectively. As performance of an abstract idea on generic computer components cannot integrate an abstract idea into a practical application nor provide significantly more than the abstract idea itself (MPEP 2106.05(f)(2)), Claims 9-18 are rejected for reasons set forth in the rejections of Claims 1-8, respectively. Similarly, Claim 19 recites a non-transitory computer readable medium storing instructions that cause at least one processor to perform the steps of the method of Claim 1, and is thus also rejected for reasons set forth in the rejection of Claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 5, and 9; 10, 11, 14, and 18; and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al., “Ready to Buy or Just Browsing? Detecting Web Searcher Goals from Interaction Data,” in view of Kumar, US PG Pub 2015/0051955.
Regarding Claim 1, Guo teaches a method implemented by one or more processors (Guo implements their method on a computer, see pg. 134, 2nd column discussing the different code bases they used to implement their invention, e.g. Weka & Mallet & pg. 135, 1st column, “Firefox plugin”), the method comprising: receiving a search query via a search interface of a computing device, the search query including data specifying an entity (Guo, pg. 132, 1st column, 2nd paragraph, “As a concrete example, consider how users with research intent examine the search engine result page (SERP) for a query ‘nikkor 24-70 review.’ This query is commercial (the searcher is probably considering whether to buy this digital camera model)” & pg. 135, “Data collection … Web Search. Each subject was first asked to research a product of interest” & pg. 132, Fig. 2); in response to receiving the search query via the search interface of the computing device: determining, based on the search query, a plurality of search results that are responsive to the search query and are associated with the entity; causing the plurality of search results to be provided for display via the search interface of the computing device (Guo, pg. 132, Fig. 2); determining, based on the search query, an inferred intention of a suer of the computing device, the inferred intention being selected from a plurality of defined intentions (Guo, title, “Detecting Web Searcher Goals from Interaction Data” & pg. 135, 1st column, 2nd paragraph, “the problem is to detect, given a user’s behavior on a SERP, whether the query had research or purchase intent” where, pg. 134, Fig. 6, the ”Query” is a feature upon which the intent determination is based).
Guo’s goal is merely to determine an intent of the search, and thus does not teach the remaining limitations concerning determining whether the inferred intention is advisable. However, Kumar, in the analogous art of online shopping, teaches determining, based on one or more stored attributes associated with the entity, whether the inferred intention is advisable with respect to one or more search results, from among the plurality of search results, that are associated with the entity (Kumar, [0026], “the merchant may be an online merchant” & [0031], “determine whether lower prices are found for the items being purchased” denotes determining that purchasing from one of the search results is inadvisable because the item is lower priced elsewhere); and in response to determining that the inferred intention is not advisable with respect to one or more of the search results that are associated with the entity: generating, based on one or more of the stored attributes associated with the entity, an notification that includes at least first notification data, the first notification data indicating that the inferred intention is not advisable with respect to one or more of the search results that are associated with the entity; and causing the notification to be provided for display via the search interface of the computing device (Kumar, [0036-0037], “server may notify the customer … server may send lower-price information … to be displayed to the customer. The lower-price information may include the amount of the lower price and the identity of the competing merchant” & [0043], “the customer is notified with the identity of the online merchant including web address”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine whether an item, which the invention of Guo has determined that a user intends to purchase, is available for a lower price elsewhere online, as does Kumar. The motivation to do so is to notify the customer of the best deal.
Regarding Claim 2, the Guo/Kumar combination of Claim 1 teaches the method of Claim 1 (and thus the rejection of Claim 1 is incorporated). The combination has already been shown to teach, via Kumar, second notification data indicating a certain reason for why the inferred intention is not advisable with respect to one or more of the search results that are associated with the entity (Kumar, [0036-0037], “server may notify the customer … server may send lower-price information … to be displayed to the customer”).
Regarding Claim 5, the Guo/Kumar combination of Claim 1 teaches the method of Claim 2 (and thus the rejection of Claim 2 is incorporated). The combination has already been shown to teach, via Guo, wherein the entity specified by the search query is a product, and wherein the inferred intention is to purchase the product (Guo, pg. 132, 1st column, 2nd paragraph, “the search engine result page (SERP) for a query ‘nikkor 24-70 review.’” & pg. 135, 1st column, 2nd paragraph, “the problem is to detect, given a user’s behavior on a SERP, whether the query had research or purchase intent”).
Regarding Claim 9, the Guo/Kumar combination of Claim 1 teaches the method of Claim 1 (and thus the rejection of Claim 1 is incorporated). Guo further teaches wherein the plurality of search results comprise links to one or more of … sponsored listings (Guo, pg. 132, Fig. 2).
Claims 10, 11, 14, and 18 recite a computing system comprising: one or more processors and a computer readable medium to perform precisely the steps of the methods of Claims 1, 2, 5, and 9, respectively. As Guo has been shown to perform their method on a computer, in which a processor and computer readable medium are inherent, Claims 10, 11, 14, and 18 are rejected for reasons set forth in the rejections of Claims 1, 2, 5, and 9, respectively. Similarly, Claim 19 recites a non-transitory computer readable medium storing instructions that cause at least one processor to perform the steps of the method of Claim 1, and is thus also rejected for reasons set forth in the rejection of Claim 1.
Claims 3, 4, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Guo, in view of Kumar, and further in view of Grabovski, US PG Pub 2016/0307151.
Regarding Claim 3, the Guo/Kumar combination of Claim 1 teaches the method of Claim 2 (and thus the rejection of Claim 2 is incorporated). The combination, via Kumar, has already been shown to teach wherein the notification includes third notification data, the third notification data indicating [a web address] for additional information for the certain reason why the inferred intention is not advisable with respect to one or more of the search results that are associated with the entity (Kumar, [0043], “the customer is notified with the identity of the online merchant including web address” where the web address of a merchant where the item can be purchased at a lower price includes additional information for the certain reason). However, the Guo/Kumar combination does not teach a selectable link for the additional information, just the display of a web address. Grabovski, also in the analogous art of electronic shopping, teaches such a selectable link (Grabovski, [0045], “provides the local device with information which preferably links to a website or website address. Information 280 provides a link to more information about the product”). It would have been obvious to one of ordinary skill in the art before the effective filing date to include such a link to additional information about the entity and the reason why the inferred intention is not advisable (i.e. the lower price and how to purchase the item). The motivation to do so is to easily allow the user to connect to the (already given via Kumar) website address.
Regarding Claim 4, the Guo/Kumar/Grabovski combination of Claim 3 teaches the method of Claim 3 (and thus the rejection of Claim 3 is incorporated). Grabovski further teaches receiving, from the user, a user selection of the link for the additional information for the certain reason why the inferred intention is not advisable with respect to one or more of the search results that are associated with the entity, and causing the computing device to navigate to a source of the link via the search interface of the computing device (Grabovski, [0044-0045], “at the direction of the user … a user may look up products … Information 280 provides a link … [and] causes the local device to access or launch a website from the remove server”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to allow a user to select the link for more information. The motivation to do so is to easily allow the user to connect to the (already given via Kumar and linked via Grabovski) website address.
Claims 12 and 13 recite a computing system comprising: one or more processors and a computer readable medium to perform precisely the steps of the methods of Claims 3 and 4, respectively. As Guo has been shown to perform their method on a computer, in which a processor and computer readable medium are inherent, Claims 12 and 13 are rejected for reasons set forth in the rejections of Claims 3 and 4, respectively.
Claims 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Guo, in view of Kumar, and further in view of Lucas, US PG Pub 2016/0241997 (with a provisional application filed 2/13/2015).
Regarding Claim 6, the Guo/Kumar combination of Claim 1 teaches the method of Claim 5 (and thus the rejection of Claim 5 is incorporated). The combination does not teach, but Lucas, in the analogous art of electronic shopping, does teach wherein the certain reason for why the inferred intention is not advisable with respect to one or more of the search results that are associated with the entity is based on a recall for the product (Lucas, [0036], “The present system may, for example, alert a customer … to inform the consumer of one or more products currently on recall”). It would have been obvious to one of ordinary skill in the art before the effective filing date to, upon receiving search results for products that it has been determined that a user intends to buy, as does Guo/Kumar, additionally alert the user that the product is subject to a recall, as does Lucas. The motivation to do so is “to reduce the time a consumer needs to spend to make an informed decision about a product” (Lucas, [0039]).
Claim 15 recites a computing system comprising: one or more processors and a computer readable medium to perform precisely the steps of the method of Claim 5. As Guo has been shown to perform their method on a computer, in which a processor and computer readable medium are inherent, Claim 15 is rejected for reasons set forth in the rejection of Claim 5.
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Guo, in view of Kumar, and further in view of Hulst, US PG Pub 2006/0118619.
Regarding Claim 7, the Guo/Kumar combination of combination of Claim 1 teaches the method of Claim 5 (and thus the rejection of Claim 5 is incorporated). The combination does not teach, but Hulst, in the analogous art of electronic shopping, does teach wherein the certain reason for why the inferred intention is not advisable with respect to one or more of the search results that are associated with the entity is based on the product being available for free (Hulst, [0129], “The purchase option data may also indicate when a content item is available free”). It would have been obvious to one of ordinary skill in the art before the effective filing date to, upon receiving search results for products that it has been determined that a user intends to buy, as does Guo/Kumar, additionally alert the user that the product is available for free, as does Hulst. The motivation to do so is to allow the user to obtain the item at the best price.
Claim 16 recites a computing system comprising: one or more processors and a computer readable medium to perform precisely the steps of the method of Claim 7. As Guo has been shown to perform their method on a computer, in which a processor and computer readable medium are inherent, Claim 16 is rejected for reasons set forth in the rejection of Claim 7.
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Guo, in view of Kumar, and further in view of Walther, US Patent 9,984,164.
Regarding Claim 8, the Guo/Kumar combination of Claim 1 teaches the method of Claim 5 (and thus the rejection of Claim 5 is incorporated). The combination does not teach, but Walther does teach, to overlay the plurality of search results that are provided for display via the search interface of the computing device with additional information (Walther, Claim 6, “wherein the annotation view page comprises an overlay displayed over the search result page”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to overlay, as does Walther, the additional notification information of Guo/Kumar in order to display it along with the search results. The motivation to do so is to display the additional information/notification along with the original search results (Walther, Claim 7, “wherein the search result page is at least partially visible”).
Claim 17 recites a computing system comprising: one or more processors and a computer readable medium to perform precisely the steps of the method of Claim 8. As Guo has been shown to perform their method on a computer, in which a processor and computer readable medium are inherent, Claim 17 is rejected for reasons set forth in the rejection of Claim 8.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 8, 9; 10, 17, 18; and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 11,972,362 in view of Guo et al., “Ready to Buy or Just Browsing? Detecting Web Searcher Goals from Interaction Data.” Claim 1 renders obvious all of the limitations of the independent claims of the instant application (i.e. implemented by one or more processors implies a non-transitory computer readable medium) other than the limitations of determining, based on the search query, a plurality of search results that are responsive to the search query and that are associated with the entity and causing the plurality of search results to be provided for display via the search interface. However, Guo teaches these limitations (Guo, pg. 132, Fig. 2 shows a search query and search results which have been determined and provided for display). It would have been obvious to one of ordinary skill in the art to modify the claimed invention of the reference patent by including the actual search and display of search results, as does Guo. The motivation to do so is to provide the search results that the user desires.
Regarding Claims 8 and 17, their parent claims have already been shown to be obvious over Claim 1 of the reference patent, in view of Guo. Guo Fig. 2 demonstrates that additional information can be made to overlay the plurality of search results. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to overlay notification information, as does Guo, over the search results of Claim 1 of the reference patent. The motivation to do so is to be able to see both pieces of information at once.
Regarding Claims 9 and 18, their parent claims have already been shown to be obvious over Claim 1 of the reference patent, in view of Guo. Guo Fig. 2 demonstrates that the plurality of search results comprise links to: … sponsored listings. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include sponsored listings in the results. The motivation to do so is to make money through advertising.
Claims 2-4 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 2 of U.S. Patent No. 11,972,362 in view of Guo.
Regarding Claims 2 and 11, their parent claims have already been shown to be obvious over Claim 1 of the reference patent, in view of Guo. Claim 2 of the reference patent further teaches notification data indicating a certain reason why the inferred intention is not advisable, e.g. the place of business is closed.
Regarding Claims 3, 4, 11, and 12, Guo’s search results already teach a selectable link indicating additional information and imply that upon selection of the link, the additional information will be provided.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Berg, US PG Pub 2015/0317719, which teaches “Determining Customer Intent in an Online Retail Environment.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN M SMITH whose telephone number is (469)295-9104. The examiner can normally be reached Monday - Friday, 8:00am - 4pm Pacific.
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/BRIAN M SMITH/ Primary Examiner, Art Unit 2122
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