Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 06/27/2025.
Claims 1-3, 5-6, 8, 10-13, 15-20 have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Applicant’s Arguments
Applicant’s amendments and arguments filed on 06/27/2025 have been fully considered and discussed in the next section. Applicant is reminded that the claims must be given its broadest, reasonable interpretation.
With regard to claims 1-20 rejection under 35 USC § 101:
Applicant argues that “Claim 20 is rejected under 35 USC §101 because the claimed invention is directed to non-statutory subject matter. Specifically, the claims were rejected as being directed to an abstract idea. Applicants have amended the claims to provide additional descriptive details related to the transmitting of specific requests to trigger second devices to perform specific responsive actions and then modifying the presentation of the electronic device to present additional features that enable the device to operate better as a shopping affordance in that supports collaborative shopping. The various amendments bring the claims into statutory subject matter, and thus the 101 rejections are overcome. Applicants respectfully request entry of the amendments and removal of the §101 rejection “ 1 /3)”.
Examiner disagrees. It appears that Applicant misunderstood claim 20 rejection under 35 USC § 101, because the claimed invention is to directed to non-statutory subject matter. Claim 20 recites a computer program product. That is claim 20 does/do not fall within at least one of the four categories of patent eligible subject matter.
Applicant’s amendment fails to clarify and/ or amend the claim as suggested by Examiner’s rejection. Therefore, the claim rejection of claim 20 under 35 USC § 101, because the claimed invention is to directed to non-statutory subject matter is maintained.
Additionally, as indicated in the Office Action claim 20 as well as claims 1-20 are rejected under 35 USC § 101. Examiner assumes that the above argument of: transmitting of specific requests to trigger second devices to perform specific responsive actions and then modifying the presentation of the electronic device to present additional features that enable the device to operate better as a shopping affordance in that supports collaborative shopping is applied to claims 1-20 as well.
As such “ transmitting of specific requests to trigger second devices to perform specific responsive actions and then modifying the presentation of the electronic device to present additional features that enable the device to operate better as a shopping affordance in that supports collaborative shopping” fails to (a) improve another technology or technical field and (b) improve the functioning of the computer itself and (c) applies the abstract idea with or by use of, a particular machine, which is a generic computer performing generic computer functions and are not seen to recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself.
Indeed, the identified improvements recited by Applicant are really, at best improvements to the performance of the abstract idea (e.g., improvements made in the underlying business method) and not in the operations of any additional elements or technology.
As such, the examiner finds that any improvement obtained by practicing the claimed invention is an improvement to a business process. Second, under Step 2a, Prong 2, the improvement to a technology or technological field must be rooted in the additional element. Additional elements are those elements outside of the identified abstract idea itself. In the instant case the only additional elements are electronic device, display, communication system; a memory and at least one processor, which are just general-purpose computers with generic computing components upon which the abstract idea is applied which is insufficient to transform an abstract idea into a practical application under Step 2a, Prong 2 or be considered significantly more under Step 2b. Thus, any improvement obtained by practicing the abstract idea, is an improvement obtained by practicing the abstract idea and not rooting in the additional elements upon which the abstract idea is applied. Improvements of this nature are not patent eligible (see SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because there are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.). Thus, the rejection has been maintained.
Therefore, the claim rejection of claims 1-20 rejection under 35 USC § 101 is maintained.
Claim Objection
Claims should be numbered in order, for instance the first claim should be numbered as claim 1 (amended) and so forth. Appropriate correction and/or clarification is required. For the purpose of this examination, the first claim is referred to as claim 1.
Claims 1, 11 and 20 recite the limitations of :
in response to receiving a response identifying the first potential incentive. However, there is no receiving step claimed. Appropriate correction and/ or clarification is received.
in response to detecting selection of the at least one potential second purchaser followed by selection of a next user-selectable option to transmit a notification for purchase collaboration. However, there is no detecting selection step claimed. Appropriate correction and/ or clarification is received.
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.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because Independent claim 20 is directed to a computer program product comprising: a computer readable storage device having stored thereon program code which, when executed by at least one processor of an electronic device having a display, a communication system, and a memory, enables the electronic device to complete the functionality of…, which is considered a “signal per se”. While the claim states that the “computer-readable storage” having a plurality of instructions stored thereon which, when executed by a “processor”, the specification provides an example of “a computer readable storage device may be any tangible medium that can contain or store a program for use by or in connection with an instruction execution system, apparatus, or device (paragraph 110).
Additionally, the specification further describe the terms "tangible" and "non-transitory" are intended to describe a computer-readable storage medium (or "memory") excluding propagating electromagnetic signals; but are not intended to otherwise limit the type of physical computer-readable storage device that is encompassed by the phrase “computer-readable medium” or memory. For instance, the terms "non-transitory computer readable medium" or "tangible memory" are intended to encompass types of storage devices that do not necessarily store information permanently, including, for example, RAM. Program instructions and data stored on a tangible computer-accessible storage medium in non-transitory form may afterwards be transmitted by transmission media or signals such as electrical, electromagnetic, or digital signals, which may be conveyed via a communication medium such as a network and/or a wireless link. Thus, amending the claims to recite a “computer-readable storage device” would not overcome the rejection. Additionally, the examiner notes that amending the claim to recite a “computer-readable storage media” or “computer-readable storage medium” would not overcome the rejection because the applicant’s specification does not provide a definition for these terms either. Absent a definition in the applicant’s specification, the broadest reasonable interpretation of “computer-readable storage media” or “computer-readable storage medium” includes signal/carrier waves. The examiner suggests amending the claims to recite “non-transitory computer-readable storage medium”. Such an amendment would overcome the rejection.
Claims 1-20 are rejected under 35 U.S.C.101 because the claimed invention is directed to a judicial exception subject matter, specifically an abstract idea. The analysis for this determination is explained below:
Step 1, determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
In this case, claim(s) 1-10 are directed to a machine (i.e. a system); claim (s) 11-19 are directed to a process (i.e. a method); claim (s) 20 is amended as suggested above, is directed to a manufacture (i.e. a non transitory computer medium).
The claimed invention is directed to at least one judicial exception (i.e a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim 1 for instance recite(s) the following abstract idea of: “ detect a trigger indicative of an intended purchase transaction having a transaction total spend amount; in response to detecting the trigger, transmitting, to an incentive tracking repository a request for incentive data of financial incentives that are applicable to the intended purchase transaction, the financial incentives including applicable to the intended purchase transaction, the financial incentives including potential incentive; and in response to receiving a response identifying the first potential incentive: generating and presenting a first incentive notification, the first incentive notification indicating that the first incentive is potentially available if activating and presenting at least one first user-selectable option that facilitates electronic notification of and coordination with at least one potential second purchaser associated to incorporate combined purchasing of additional items by the at least one potential second purchaser within the intended purchase transaction; presenting at least one first user-selectable option on the display that facilitates electronic notification of and coordination with at least one potential second purchaser associated to incorporate combined purchasing of additional items by the at least one potential second purchaser within the intended purchase transaction; in response to detecting selection of the at least one potential second purchaser followed by selection of a next user-selectable option to transmit a notification for purchase collaboration, generating and transmitting, associated with the at least one potential second purchaser, a purchase coordination notification informing the at least one potential second purchaser that the first incentive is potentially available with collaborative purchase of at least one additional second item by the at least one potential second purchaser; receiving, a response comprising a request to purchase a second item via the purchase transaction, the request comprising an identifier of the second item; and in response to receiving the response comprising the request to purchase the second item via the purchase transaction: updating include the second item and associated price, and an identification of the second potential purchaser; and updating current total spend and to include a notification that a first incentive threshold spend amount has been met in response to the updated current total spend being or surpassing the first incentive threshold spend amount”.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations, because the merely gather data, analyze the data, determine results based upon the analysis, generate tailored content based on the results, and transmit the tailored content. Accordingly, the claim recites an abstract idea (i.e. MPEP Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of “ GUI, electronic device, display, network, communication system; a memory and at least one processor”. The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. MPEP Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using the additional elements of “electronic device, display, communication system; a memory and at least one processor” to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computers communicating over a general purpose network (as evidenced from paragraphs 26-37, 39, 42-43, 109); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations are considered insignificant extra solution activity as they are directed to merely receiving, storing and/or transmitting data:
transmitting, via the communication network to the second electronic device associated with the at least one potential second purchaser, a purchase coordination notification informing the at least one potential second purchaser that the first incentive is potentially available with collaborative purchase of at least one additional second item by the at least one potential second purchaser;
receiving, from the second electronic device via the communication network, a response comprising a request to purchase a second item via the purchase transaction, the request comprising an identifier of the second item; and in response to receiving the response comprising the request to purchase the second item via the purchase transaction
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e.MPEP Step 2B=No).
For the same reason these elements are not sufficient to provide an inventive concept. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible. Same Judicial analysis is applied here to independent claims 11 and 20.
The dependent claims 2-10 and 12-19 appears to merely further limit the abstract idea of Certain methods of organizing Human Activity” as it relates to commercial interactions of advertising, marketing, or sales activities or behaviors; business relations), by adding the additional steps of: present a first shopping GUI on the display, the first shopping GUI including the first incentive notification and a second user-selectable option to continue shopping for at least one additional second item in order to qualify for the first potential incentive; and in response to detecting selection of the second user-selectable option: enable continuation of the intended purchase transaction to include addition of the at least one additional second item; update the transaction total spend amount to include a cost of the at least one additional second item; and generate an alert identifying when the updated transaction total spend amount reaches the first incentive threshold spend amount (claims 2 and 12); detect selection of the at least one first user-selectable option; in response to detecting selection of the at least one first user-selectable option, present a second GUI on the display, the second GUI including a third user-selectable option to select the at least one potential second purchaser from a first set of potential second purchasers to receive a purchase coordination notification (claims 3 and 13); receive, from the second electronic device, a response to the purchase coordination notification, the response including a request to purchase at least one additional second item having a second item purchase amount; add the at least one second item to the purchase transaction; update the transaction total spend amount by summing a first item purchase amount and the second item purchase amount; determine if the transaction total spend amount is greater than the first incentive threshold spend amount; and in response to determining that the transaction total spend amount is greater than the first incentive threshold spend amount: present a message indicating that the first incentive threshold spend amount has been reached and that the first incentive is now available; and enable completion of the purchase transaction using the first incentive to purchase the at least one first item and the at least one additional second item (claims 4 and 14); present at least one payment option from among: a first user-selectable payment option to initiate processing to complete payment for the combined purchase transaction by a first user of the electronic device; and a second user-selectable payment option to initiate a split payment processing to enable payment for the at least one first item by the first user of the electronic device and a separate payment for the at least one additional second item by a second user of the second electronic device; and in response to selection of the second user-selectable payment option: present a split payment option window on the display to initiate split payment processing, which enables entry of a separate payment method for the second item by the second potential purchaser. (claims 5 and 15); present at least one shipping option from among: a first user-selectable shipping option that provides a first address as a common shipping destination for the combined purchase transaction; and a second user-selectable shipping option that provides a first address as a first shipping destination for the at least one first item and at least one second address as a second shipping destination for the at least one additional second item; and in response to selection of the second user-selectable shipping option:present a separate shipping option window on the display to trigger separate shipment processing, which enables entry of a separate address of the second potential purchaser to which to ship the second item, separate from the first address to which the at least one first item is shipped (claims 6 and 16); determine that the transaction total spend amount is less than the first incentive threshold spend amount; determine a difference between the first incentive threshold spend amount and the transaction total spend amount; and output the difference along with the first incentive notification of the first potential incentive to alert a user of an additional spend amount required to obtain the first potential incentive (claims 7 and 17); identify an expiration time of the first potential incentive; determine a remaining time that the first potential incentive is valid; dynamically adjust, by an AI engine, based on historical response times for the second purchaser to respond to the request for collaborative purchasing, a threshold remaining time;and in response to the remaining time being greater than the threshold remaining time, present the remaining time that the first potential incentive is valid on the display and present the remaining time that the first potential incentive is valid on the display (claims 8 and 18); detect addition of at least one first item to an online shopping cart; and in response to detecting an addition of each subsequent item to the online shopping cart: update both the transaction total spend amount and a difference between the first incentive threshold spend amount and the transaction total spend amount; and present an updated difference on the display of the electronic device along with a remaining time to receive the first potential incentive (claims 9 and 19); receive, in response to the request for the incentive data, the incentive data from the incentive tracking repository; and identify, from the incentive data, the first potential incentive that is potentially available for the intended purchase transaction; and present the first potential incentive within the shopping GUI (claim 10); which is considered part of the abstract idea and therefore only further limit the abstract idea (i.e. MPEP Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. MPEP Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. MPEP Step 2B=No).
Thus, the dependent claims further narrows the abstract idea and/or recite additional elements previously rejected in the independent 1, 11.
Accordingly, the claim fails to recite any improvements to another technology or technical field, improvements to the functioning of the computer itself, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine the claim to a particular useful application, and/or meaningful limitations beyond generally linking the use of an abstract idea to a particular environment. See 84 Fed. Reg. 55. Viewed individually or as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Possible Allowable Subject Matter
The examiner, has been unable to find prior art that discloses the combination of the claimed features. Thus, the claims contain subject matter that would be allowable over the prior art if the applicant to be able to overcome the claim rejections under 35 USC § 101 cited above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Abraham et al, US Pub No: 2011/0178889, teaches method and system for allocating a transaction discount during collaborative shopping session.
Bawge et al, US Pub No: 2016/0171578 A1, teaches methods and systems supporting online shopping as a shared and social activity.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. THIS ACTION IS MADE FINAL. 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 files within TWO MONTHS from 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 mailing date of this final.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Affaf Ahmed whose telephone number is 571-270-1835. The examiner can normally be reached on [ Mon-Thursday 8-6 pm ].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached at 571-270-7537. 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 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.
/AFAF OSMAN BILAL AHMED/Primary Examiner, Art Unit 3621