DETAILED ACTION
Status of Claims
• The following is an office action in response to the communication filed 02/04/2026.
• Claims 1-7 and 15-20 have been canceled.
• Claims 21-33 have been added.
• Claims 8-14 and 21-33 are currently pending and have been examined.
Election/Restriction
Applicant’s election without traverse of claims 8-14 in the reply filed 02/04/2026 is acknowledged.
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 8-14 and 21-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 8-14 are directed to a machine, claims 21-27 are directed to a process, and claims 28-33 are directed to a manufacture. Therefore, claims 8-14 and 21-33 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 8 as representative, claim 8 recites at least the following limitations that are believed to recite an abstract idea:
select a product with a first availability;
provide a plurality of inputs for the product;
send an acquisition order for the product;
authenticate the acquisition order;
receive a notification; and
show the notification.
The above limitations recite the concept of selecting a product and providing notifications. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Specifically, the selection of a product in an acquisition order represents marketing and sales behaviors because it pertains to products offered. Claims 21 and 28 recite the same abstract ideas as claim 8 and accordingly fall within the same grouping of abstract ideas. Accordingly, under Prong One of Step 2A of the MPEP, claims 8, 21, and 28 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claims 8, 21, and 28 recite additional elements, such as a system, comprising: a computing device comprising a processor, a memory, and a display; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least: install a software module on a user device; execute the software module; a platform; the software module; the display of the computing device; and a non-transitory, computer-readable medium, comprising machine- readable instructions that, when executed by a processor of a computing device, cause the computing device to at least. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 8, 21, and 28 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 8, 21, and 28 merely recite a commonplace business method (i.e., selecting a product and providing notifications) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims generally 8, 21, and 28 link the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claims 8, 21, and 28 specifying that the abstract idea of selecting a product and providing notifications is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 8, 21, and 28 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 8, 21, and 28 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 8, 21, and 28 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 8, 21, and 28, these claims recite additional elements, such as a system, comprising: a computing device comprising a processor, a memory, and a display; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least: install a software module on a user device; execute the software module; a platform; the software module; the display of the computing device; and a non-transitory, computer-readable medium, comprising machine- readable instructions that, when executed by a processor of a computing device, cause the computing device to at least. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 8, 21, and 28 are manual processes, e.g., receiving information, sending information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 8, 21, and 28 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims 8, 21, and 28 specifying that the abstract idea of selecting a product and providing notifications is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 8, 21, and 28 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 8, 21, and 28 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 9-14, 22-27, and 29-33, 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. Dependent claims 9-14, 22-27, and 29-33 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Dependent claims 9, 11, 13, 22, 24, 26, 29, 31, and 33 fail to identify additional elements and as such, are not indicative of integration into a practical application. Dependent claims 10, 12, 14, 23, 25, 27, 30, and 32 further recite the additional elements of a user interface; a password authentication, a one-time passcode, a multi- factor authentication, or a biometric authentication. Similar to the discussion above under Prong Two of Step 2A, although these additional computer-related elements are recited, claims 9-14, 22-27, and 29-33 merely invoke such additional elements as a tool to perform the abstract idea. As such, under Step 2A, dependent claims 9-14, 22-27, and 29-33 are “directed to” an abstract idea and are not integrated into a practical application. Similar to the discussion above with respect to claims 8, 21, and 28, dependent claims 9-14, 22-27, and 29-33, analyzed individually and as an ordered combination, merely further define the commonplace business method being applied on a general purpose computer and, therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Further, these limitations generally link the use of the abstract idea to a particular technological environment or field of use. Accordingly, under the Alice/Mayo test, claims 8-14 and 21-33 are 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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 8-14 and 21-33 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US 10417605 B1), hereinafter Liu, in view of Skeen (US 20240161178 A1), hereinafter Skeen.
In regards to claim 8, Liu discloses a system, comprising: a computing device comprising a processor, a memory, and a display; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least (Liu: Col. 9, Ln. 5-30 – “FIG. 2 illustrates example details of the service provider 102 of FIG. 1. As noted above, the service provider 102 may be implemented as one or more computing devices (e.g., one or more service computing devices). The one or more computing devices may include one or more processors 202, memory 204, and one or more communication interfaces 206…The memory 204 may include software functionality configured as one or more ‘modules.’”)):
execute the software module (Liu: Col. 16, Ln. 66 – Col. 17, Ln. 1 – “customer interface 600 may be displayed on a user device via an application (e.g., mobile application…)”; Col. 13, Ln. 9-11 – “The user interaction module 216 may facilitate user interfaces via the computing devices, such as a customer interface”);
select a product on a platform with a first availability (Liu: Col. 7, Ln. 18-21 – “the user 108 accesses an online catalog of items that are offered for acquisition by the merchant 104 and places a pizza and breadsticks in an online shopping cart”; Col. 7, Ln. 8-11 – “An item may generally be referred to as unavailable for fulfillment if the item is out-of-stock, not able to be created/prepared due to sub-components being out-of-stock, and so on”; the examiner notes consistent with the specification [0051], out of stock is interpreted to be an availability);
provide a plurality of inputs for the product in the software module (Liu: Col. 7, Ln. 42-55 and Fig. 1 – “the likelihood of breadsticks being unavailable is higher than a threshold, and so, the service provider 102 prompts the user 108 for instructions on how to proceed with the order in the event that the breadsticks are unavailable…the pop-up window 122 may include selectable interface elements to specify, for example, whether the user 108 would like to proceed with a substitute item, cancel the entire order, cancel the breadsticks, be contacted, and so on”);
send an acquisition order for the product (Liu: Col. 7, Ln. 52-56 – “Upon providing instructions, the user 108 may place the order and the service provider 102 may send a communication to the merchant 104 to inform the merchant 104 of the order”);
authenticate (Liu: Col. 10, Ln. 22-45 – “payment transaction module 208 may store transaction records in a transaction data store 218. A transaction record may include…a type of payment being used (e.g., cash, check, payment card, electronic payment, etc.), as well as additional information, such as buyer information…Other examples of data that can be captured…any type of data that is received upon a buyer's authentication”);
receive a notification (Liu: Col. 16, Ln. 64 – Col. 17, Ln. 11 and Fig. 6 – “FIG. 6 illustrates an example customer interface 600 to prompt a user for instructions on how to proceed with a potentially unavailable item. The customer interface 600 may be displayed on a user device via an application (e.g., mobile application, desktop application, etc.), web browser (e.g., for an online site), etc. Here, the customer interface 600 includes a shopping cart screen with information 602 regarding items that have been placed in an online shopping cart. In this example, the service provider 102 has determined that the breadsticks are likely to be unavailable when the item is being fulfilled at Dave's Pizza (e.g., there is a threshold amount of risk of the breadsticks being unavailable). As such, a notification 604 is displayed requesting the user for information on how to proceed if the breadsticks are unavailable”; Col. 17, Ln. 15-20 – “the notification 604 may be displayed…right after the item has been purchased”; see also Col. 7, Ln. 42-55 and Fig. 1); and
show the notification on the display of the computing device (Liu: Col. 16, Ln. 64 – Col. 17, Ln. 11 and Fig. 6 – “FIG. 6 illustrates an example customer interface 600 to prompt a user for instructions on how to proceed with a potentially unavailable item. The customer interface 600 may be displayed on a user device via an application (e.g., mobile application, desktop application, etc.), web browser (e.g., for an online site), etc. Here, the customer interface 600 includes a shopping cart screen with information 602 regarding items that have been placed in an online shopping cart. In this example, the service provider 102 has determined that the breadsticks are likely to be unavailable when the item is being fulfilled at Dave's Pizza (e.g., there is a threshold amount of risk of the breadsticks being unavailable). As such, a notification 604 is displayed requesting the user for information on how to proceed if the breadsticks are unavailable”; see also Col. 7, Ln. 42-55 and Fig. 1).
Liu further discloses a mobile application (Liu: Col. 16, Ln. 66 – Col. 17, Ln. 1), which strongly suggests that software has been installed, yet Liu does not explicitly disclose install a software module on a user device; and authenticate the acquisition order.
However, Skeen teaches a similar system of out-of-stock items (Skeen: [0057]), including
install a software module on a user device (Skeen: [0088] – “a mobile application installed on the electronic device(s) of the other user(s)”); and
authenticate the acquisition order (Skeen: [0050] – “authorizing a payment and/or authenticating the customer 102 to complete the transaction may be implemented. In some examples, a Web5 platform is utilized for anonymous authentication to authorize a payment. In other examples, the customer 102 may have setup a payment instrument (e.g., a credit card, debit card, prepaid card, etc.) with the VR storefront service 110, and/or the customer 102 may have an account associated with a payment processing service or a payment application, and funds may be withdrawn from the account to facilitate a transaction for an item within the VR storefront”).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have included the installation and authentication of Skeen in the system of Liu because Liu already discloses software and processing a transaction and Skeen is merely demonstrating how these may occur. Additionally, it would have been obvious to have included install a software module on a user device; and authenticate the acquisition order as taught by Skeen because installation and authentication are well-known and the use of it in a transaction setting would have improved customer engagement (Skeen: [0021]).
In regards to claim 9, Liu/Skeen teaches the system of claim 8. Liu further discloses wherein the notification comprises at least one of an acquisition ID, the first availability, or a second availability (Liu: Col. 16, Ln. 64 – Col. 17, Ln. 11 and Fig. 6 – “FIG. 6 illustrates an example customer interface 600 to prompt a user for instructions on how to proceed with a potentially unavailable item. The customer interface 600 may be displayed on a user device via an application (e.g., mobile application, desktop application, etc.), web browser (e.g., for an online site), etc. Here, the customer interface 600 includes a shopping cart screen with information 602 regarding items that have been placed in an online shopping cart. In this example, the service provider 102 has determined that the breadsticks are likely to be unavailable when the item is being fulfilled at Dave's Pizza (e.g., there is a threshold amount of risk of the breadsticks being unavailable). As such, a notification 604 is displayed requesting the user for information on how to proceed if the breadsticks are unavailable”; Col. 17, Ln. 15-20 – “the notification 604 may be displayed…right after the item has been purchased”; see also Col. 11, Ln. 7-17; Col. 7, Ln. 42-55 and Fig. 1).
In regards to claim 10, Liu/Skeen teaches the system of claim 8. Liu further discloses wherein the plurality of inputs are provided through a user interface for the software module (Liu: Col. 7, Ln. 42-55 and Fig. 1 – “the likelihood of breadsticks being unavailable is higher than a threshold, and so, the service provider 102 prompts the user 108 for instructions on how to proceed with the order in the event that the breadsticks are unavailable…the pop-up window 122 may include selectable interface elements to specify, for example, whether the user 108 would like to proceed with a substitute item, cancel the entire order, cancel the breadsticks, be contacted, and so on”; Col. 16, Ln. 64 – Col. 17, Ln. 11 and Fig. 6 – “FIG. 6 illustrates an example customer interface 600 to prompt a user for instructions on how to proceed with a potentially unavailable item…a notification 604 is displayed requesting the user for information on how to proceed if the breadsticks are unavailable”; Col. 17, Ln. 15-20 – “the notification 604 may be displayed…right after the item has been purchased”).
In regards to claim 11, Liu/Skeen teaches the system of claim 8. Liu further discloses wherein the software module provides one or more alternative products based at least in part on a third availability and the plurality of inputs (Liu: Col. 4, Ln. 13-20 – “For example, if a particular pizza (along with other items) is placed in an online shopping cart, and the particular pizza has a relatively high likelihood of being unavailable, a window may pop-up to ask if a user would like to cancel the order, proceed without the particular pizza, use a substitute item, or be contacted in the event that the particular pizza is unavailable for fulfillment of the order. The buyer may provide instructions and proceed with placing the order.”; Col. 4, Ln. 25-32 – “if the instructions indicate that the buyer would like to use a substitute item for an unavailable item, the service provider may instruct the merchant to use the substitute item. In some instances, a substitute item may be recommended by the merchant, while in other instances the substitute item may be recommended by the service provider or others. The service provider may also send a communication to the buyer informing the buyer of the change to the order”).
In regards to claim 12, Liu/Skeen teaches the system of claim 8. Liu further discloses wherein the software module further comprises a user interface to display one or more of the notification, an acquisition order history, or a profile (Liu: Col. 7, Ln. 42-55 and Fig. 1 – “the likelihood of breadsticks being unavailable is higher than a threshold, and so, the service provider 102 prompts the user 108 for instructions on how to proceed with the order in the event that the breadsticks are unavailable…the pop-up window 122 may include selectable interface elements to specify, for example, whether the user 108 would like to proceed with a substitute item, cancel the entire order, cancel the breadsticks, be contacted, and so on”; Col. 16, Ln. 64 – Col. 17, Ln. 11 and Fig. 6 – “FIG. 6 illustrates an example customer interface 600 to prompt a user for instructions on how to proceed with a potentially unavailable item…a notification 604 is displayed requesting the user for information on how to proceed if the breadsticks are unavailable”; Col. 17, Ln. 15-20 – “the notification 604 may be displayed…right after the item has been purchased”).
In regards to claim 13, Liu/Skeen teaches the system of claim 8. Liu further discloses wherein sending the acquisition order further comprises providing a pre-authorization method to process the acquisition order based at least in part on a second availability (Liu: Col. 4, Ln. 13-20 – “For example, if a particular pizza (along with other items) is placed in an online shopping cart, and the particular pizza has a relatively high likelihood of being unavailable, a window may pop-up to ask if a user would like to cancel the order, proceed without the particular pizza, use a substitute item, or be contacted in the event that the particular pizza is unavailable for fulfillment of the order. The buyer may provide instructions and proceed with placing the order.”; Col. 4, Ln. 25-32 – “if the instructions indicate that the buyer would like to use a substitute item for an unavailable item, the service provider may instruct the merchant to use the substitute item. In some instances, a substitute item may be recommended by the merchant, while in other instances the substitute item may be recommended by the service provider or others. The service provider may also send a communication to the buyer informing the buyer of the change to the order”; the examiner interprets a user authorizing a substitute product in the event the item is out-of-stock to be pre-authorization).
In regards to claim 14, Liu/Skeen teaches the system of claim 8. Scott does not explicitly disclose wherein the acquisition order is authenticated through a secure user authorized method, wherein the secure user authorized method is at least one or more of a password authentication, a one-time passcode, a multi- factor authentication, or a biometric authentication.
However, Skeen teaches a similar system of transactions (Skeen: [abstract]), including
wherein the acquisition order is authenticated through a secure user authorized method, wherein the secure user authorized method is at least one or more of a password authentication, a one-time passcode, a multi- factor authentication, or a biometric authentication (Skeen: [0183] – “the reader device 1626 may also include a biometric sensor to receive and process biometric characteristics and process them as payment instruments, given that such biometric characteristics are registered with the payment service system 100 and connected to a financial account with a bank server”; [0114] – “POS system 1424, the server(s) 1402, and/or the server(s) 1410 may exchange payment information and transaction data to determine whether transactions are authorized. For example, the POS system 1424 may provide encrypted payment data, user authentication data”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventions to combine Skeen with Liu for the reasons identified above with respect to claim 8.
In regards to claim 21, claim 21 is directed to a method. Claim 21 recites limitations that are substantially parallel in nature to those addressed above for claim 8 which is directed towards a system. Liu/Skeen teaches the limitations of claim 8 as noted above. Liu further discloses a method (Liu: Col. 1, Ln. 45-50). Claim 21 is therefore rejected for the reasons set forth above in claim 8 and in this paragraph.
In regards to claims 22-27, all the limitations in method claims 22-27 are closely parallel to the limitations of system claims 9-14 analyzed above and rejected on the same bases.
In regards to claim 28, claim 28 is directed to a medium. Claim 28 recites limitations that are substantially parallel in nature to those addressed above for claim 8 which is directed towards a system. Liu/Skeen teaches the limitations of claim 8 as noted above. Liu further discloses a non-transitory, computer-readable medium, comprising machine- readable instructions that, when executed by a processor of a computing device, cause the computing device to at least (Liu: Col. 9, Ln. 5-55). Claim 28 is therefore rejected for the reasons set forth above in claim 8 and in this paragraph.
In regards to claims 29-33, all the limitations in medium claims 29-33 are closely parallel to the limitations of system claims 9-13 analyzed above and rejected on the same bases.
Conclusion
NPL Reference U teaches a system of shopping. Customers may browse a product online and be provided a notification to reserve in store. A customer may select inputs regarding reservation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA MAE MITROS whose telephone number is (571)272-3969. The examiner can normally be reached Monday-Friday from 9:30-6.
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/ANNA MAE MITROS/Examiner, Art Unit 3689