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 .
Response to Arguments
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive.
Applicant argues that the “claims do not recite a fundamental economic practice, commercial interaction, or method of organizing human activity in the abstract. Rather, they recite a specific technological solution to a technical problem in computer-based auction systems”. However, none of these statements rebut the actual basis of the rejection, which is that providing bidding notifications to users is a method of organizing human activity. Electronic transmissions have been addressed as an additional element that does not integrate the claim into a practical application or add significantly more. It merely describes a general link to a technological environment (i.e., computers and the Internet) in which to execute the abstract idea, and is a conventional function of ubiquitous generic computing devices. See e.g. Alice Corp., 134 S. Ct. at 2360, finding "Nearly every computer will include a 'communications controller' and 'data storage unit' capable of performing the basic calculation, storage, and transmission functions required by the method claims."
Applicant argues that the claims are analogous to eligible claims in MPEP Example 42.
However, most of the claim limitations are not additional elements. Rather, they merely describe the commercial activities that together comprise the abstract idea (e.g., determining item listings, determining an estimated time for commencement of bidding, generate notifications, etc.). An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016). See also Alice Corp., 134 S. Ct. at 2355, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 78, 101 USPQ2d at 1968 (after determining that a claim is directed to a judicial exception, "we then ask, '[w]hat else is there in the claims before us?") (emphasis added)); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"). Instead, an inventive concept is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 134 S. Ct. at 2355, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).
Applicant argues that “even assuming arguendo that the claims recite a judicial exception, the claims as a whole integrate any such exception into a practical application and therefore are not "directed to" an abstract idea under Step 2A, Prong 2, because “it enables users to participate effectively in fast-paced auctions without constant manual monitoring”.
The practical application that transforms a generic computer into a special-purpose machine for solving the technical problem of inefficient, low-satisfaction bidding system is not a technical problem, but rather a business problem.
Applicant argues that “the claims are analogous to cases that have found patent eligibility”, citing BASCOM.
However, nothing in the current claims require any non-generic combination of known elements. That is, there is no claimed arrangement of elements that is significantly more than the abstract idea. Instead, the 2B elements are claimed at a high level of generality and perform generic computer functions and no “inventive concept" can be found in those elements whether taken alone or in any ordered combination.
Applicant argues that the claims are similar to those in DDR Holdings. The instant claims do not adhere to the same fact pattern as DDR Holdings, as the improvements are not of a technical nature (i.e., dynamic website generation and network traffic redirection which solved problem of retaining website visitors particular to the Internet, and had no analogue outside of the technological realm). Rather, as characterized by Applicant the claimed invention's improvements are meant to solve purely commercial problems—they do not require technology and are not borne out of any technological issues (even if computers are used in its implementation, as was the case in Alice Corp.).
Accordingly, the rejection is maintained.
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 1-2,4-10,12-16 and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (a judicial exception without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-2,4-10,12-16 and 18-20, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 recites a method. Claim 9 recites a system. Claim 15 recites a non-transitory computer-readable media.
Step 2A, prong 1: Claim 1 recites the abstract idea of providing bidding notifications. This idea is described by the following steps:
receiving an indication of a selection of an item listing having a selected item listing characteristic;
determining item listings between the selected item listing and a current item listing, the current item listing having a current item listing characteristic and the item listings determination being made based on a comparison between the selected item listing characteristic and the current item listing characteristic;
determining an estimated time for commencement of bidding on the selected item listing, the estimated time for commencement being different at a first time period and a second time period, wherein the estimated time for commencement is determined at the second time period based on a bid velocity of the current item listing, the bid velocity being based on a set
of time intervals extending between bids for closed item listings and the current item
listing;
generating a notification indicating the estimated time for commencement of bidding on the selected item listing; and
causing presentation of the notification on to the user.
Claims 9 and 15 recite equivalent limitations.
This idea falls into the certain methods of organizing human activity grouping of abstract ideas as it is directed towards commercial interactions including advertising, marketing or sales activities or behaviors (i.e., determining item listings, determining an estimated time for commencement of bidding, etc.).
Step 2A, prong 2: Claims 1, 9 and 15 recite additional elements that fail to integrate the abstract idea into practical application.
Claims 9 and 15 recite a hardware processing circuitry; and one or more hardware memories; and a machine-readable storage medium. However, these elements are generic computing components (see at least paragraphs 164-165) that are simply used to perform operations that would otherwise be abstract (see MPEP2106.05(f)).
Claims 1, 9 and 15 recites the limitations “a set of user interface elements enabling interaction with the selected item listing based on a dynamic bidding model” and “causing presentation of the notification on a user interface with the set of user interface elements”. However, these limitations are considered insignificant extra solution activity as they amount to necessary data gathering and outputting, wherein all uses of the recited abstract idea require such data gathering and data output (i.e. displaying a notification) (see2106.05(g)).
Claim 1, 9 and 15 also recites “the dynamic bidding model determining a suggested bid for the selected item based on the bid velocity of the current item and providing automated bidding assistance to automatically enter the suggested bid for the selected item listing”.
However, the machine-learned models are recited at a high level of generality and are merely used as tools to perform the process (i.e., determining the cost of fulfilling an add-on order offer and determining a conversion rate) (see MPEP 2106.05(f)).
Step 2B: Claims 1, 9 and 15 fail to recite additional elements that amount to an inventive concept.
For the reasons identified with respect to Step 2A, prong 2, claims 1, 9 and 15 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)).
With respect to the limitations determined to be insignificant extra solution activity, these elements are similar to at least the following concepts determined by the courts to be insignificant extra solution activity that does not amount to significantly more than the abstract idea:
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information). For example, at least paragraph 31 describes a network system that facilitates a request for services received from a user including a selection of a merchant.
Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93. For example, at least paragraph 107describes presenting an offer for an add-on order to be added to a primary order.
Dependent Claims Step 2A:
The limitations of the dependent claims merely set forth further refinements of the abstract idea identified at step 2A—Prong One, without changing the analysis already presented. Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims identified at step 2A—Prong Two.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. These do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above.
Thus, when considering the combination of elements and the claimed invention as a whole, the claims are not patent eligible.
Allowable Subject Matter
Claims 1-2,4-10,12-16 and 18-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
Conclusion
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 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.
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/MILA AIRAPETIAN/Primary Examiner, Art Unit 3688
