DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the amendment filed on 09/02/2025.
Claims 1-20 have been canceled.
Claims 21-40 are currently pending and have been examined.
The previous 112(b) rejections and objections are hereby withdrawn due to applicant’s amendments.
Response to Arguments
Applicant’s arguments, see page 9, filed 09/02/2025, with respect to claims 1-20 rejected under 35 USC 103 have been fully considered and are persuasive. The 103 rejection of claims 1-20 has been withdrawn.
Applicant's arguments filed 09/02/2025 with respect to 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues #1:
The MPEP explains that "[d]uring examination, the examiner should analyze the 'improvements' consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement" (MPEP 2106,05(a)). This notion was reinforced by the Memo, which reminded examiners "to consult the specification to determine whether the disclosed invention improves technology or a technical field, and evaluate the claim to ensure it reflects the disclosed improvement" (Memo, pg. 4). However, the Office Action fails to consider the specification, providing no evidence that an evaluation of the specification was attempted to identify the technical problem, technical solution, or technical improvement.
In addition to reminding examiners, during their Step 2A, Prong Two, analysis, to (a) consider the claims as a whole and (b) review the specification, the Memo also "cautioned [examiners] not to oversimply claim limitations and expand the application of the 'apply it' consideration" (Memo, pg. 4). For example, the Memo reminds examiners to consider the following to determine whether a judicial exception with the words 'apply it' (or an equivalent):
1. Whether the claim recites only the idea of a solution or outcome i.e., the
claim fails to recite details of how a solution to a problem is accomplished.
2. Whether the claim invokes computers or other machinery merely as a tool
to perform an existing process.
3. (3) The particularity or generality of the application of the judicial exception.
(MPEP, §2106.05(f)).
The Office Action failed to take any of these considerations into account at Step 2A, Prong Two. Therefore, Applicant respectfully submits that the rejections of the claims under § 101 at Step 2A, Prong Two, is improper at least because (i) the claims were not considered as a whole, (ii) the specification was not analyzed to identify technical improvements, and (iii) improperly asserts the "apply it" consideration.
Thus, for at least the aforementioned reasons, Applicant respectfully submits that the claims are patent eligible at least at Step 2A, Prong Two.
Examiners response:
The Examiner respectfully disagrees, the Examiner did consider the claims as a whole as evident by analysis in the 101 rejection, and with respect to the specification, the Examiner fails to see any technical improvements, as MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), and Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); are well-understood routine and conventional, similar to the instant application claims which recites and sending and receiving data over network to facilitate purchasing and updating the terms of purchase between the two parties. Additionally, as per MPEP 2106.05(a) If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. As is the case in the instant application, the Examiner fails to see where specification reflects such an improvement, as the focus of the specification is on the business problem of providing the ability to be approved in advance for financing yet retain the ability to modify terms of the financing up through completion of the sale [0005] merely invoking the computers as tools to do.
Applicant argues #2:
Step 2B
At Step 2B, examiners "[e]valuate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP §2106.05(d)" (MPEP 2106.05(11)). However, the Office Action does not perform this evaluation. Instead, the Office action merely argues that the claims are "well-understood routine and conventional" because they describe "sending and receiving data over network to facilitate purchasing and financing an idea" (Office Action, pg 7). The finding that an element is well-understood, routine, or conventional is a factual determination, and this factual determination "is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity" (MPEP §2106.05(d)(1)(2)). However, the Office Action includes no factual evidence to support the rejection under Step 2B. Therefore, Applicant respectfully submits that the rejection of the claims under § 101 at Step 2B is improper. Thus, for at least the aforementioned reasons, Applicant respectfully submits that the claims are patent eligible at least at Step 2B.
Examiners response:
The Examiner respectfully disagrees, the Examiner cited Court decisions in 2106.05(d) to provide evidence that’s it’s well within a general purpose computer to perform the functions of the claims and as per see MPEP 2106.05(f) and MPEP 20106.05(h) Mere instructions to apply the judicial exception using generic computer components and limiting the judicial exception to a particular environment are not indicative of a practical application or significantly more.
For the reasons above, the 101 rejection is hereby 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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more, and fails step 2 of the analysis because the focus of the claims is not on the devices themselves or a practical application but rather directed towards an abstract idea, the analysis is provided below.
Step 1 (Statutory Categories) - The claims pass step 1 of the subject matter eligibility test (see MPEP 2106(III)) as the claims are directed towards a system, method and non-transitory computer-readable medium.
Step 2A – Prong One (Do the claims recite an abstract idea?):
Claim 21 recites an idea, in part, by:
receiving instructions for a user to purchase an item;
detecting a selection of the item for purchase from a first entity;
providing, to a first entity, a notice including a set of terms associated with the user and indicating that the selection of the item for purchase from the first entity was detected;
receiving a first link that provides remote access to a notification of a change to one or more terms of the set of terms;
determining that the first link was accessed;
detecting based on the first link being accessed, an input indicating an approval to the change to the one or more terms or an alteration to the term, one or more terms;
generating updated purchasing information based on (i) the input indicating the approval to the change to the one or more terms or (ii) the alteration to the one or more terms, and, wherein an approval code is associated with the updated purchasing information;
causing a map comprising one or more visual representations associated with each of a plurality of entities from which the item is available for purchase to be displayed;
detecting a selection of a visual representation of the one or more visual representations displayed by the map, the visual representation being associated with a second entity, and the second entity being one of the plurality of entities; and
providing, to a s second entity, based on the selection of the visual representation, the approval code and a second link to access the updated purchasing information.
Claims 28 and 35, while varying in scope, recite a similar idea, in part, by:
receive user interface instructions for displaying an interface for a user to purchase an item;
detect a selection of the item for purchase from a first entity,
providing, to a first entity, a notice including a set of terms associated with the user and indicating that the selection of the item for purchase from the first entity detected;
receive a first link that provides remote access to a notification of a change to one or more terms of the set of terms;
responsive to determining that the first link was accessed, detect, an input indicating an approval to the change to the one or more terms or an alteration to the one or more terms;
generate updated purchasing information based on (i) the input indicating the approval to the change to the one or more terms or (ii) the alteration to the one or more terms, and wherein an approval code is associated with the updated purchasing information;
cause a display of a visual representation associated with a second entity from which the item is available for purchase; and
detect a selection of the visual representation,
provide, to the second entity, based on the selection of the visual representation, the approval code and a second link to access the updated purchasing information.
The steps recited above under Step 2A Prong One of the analysis under the broadest reasonable interpretation covers commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) for exchanging information related to an item a user interested in purchasing and updated terms associated with the purchase between the first and second entities and providing the ability to be approved in advance for financing yet retain the ability to modify terms of the financing up through completion of the sale (see [0005] of specification) but for the recitation of generic computer components. That is other than reciting a client device, an interface, a first and second computing system associated with a first and second entity, one or more processors, and one or more non-transitory computer readable medium nothing in the claim elements are directed towards anything other than commercial or legal interactions. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas. Accordingly, the claims recite an abstract idea.
Step 2A – Prong Two (Does the claim recite additional elements that integrate the judicial exception into a practical application?) - This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of a client device, an interface, a first and second computing system associated with a first and second entity, one or more processors, and one or more non-transitory computer readable medium. The a client device, an interface, a first and second computing system associated with a first and second entity, one or more processors, and one or more non-transitory computer readable medium are generically described in [0035] and [0076] and recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment of networked computers. Mere instructions to apply the judicial exception using generic computer components and limiting the judicial exception to a particular environment are not indicative of a practical application (see MPEP 20106.05(f) and MPEP 20106.05(h)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed towards an abstract idea.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) - The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, with respect to integration of the abstract idea into a practical application, using the additional elements of a client device, an interface, a first and second computing system associated with a first and second entity, one or more processors, and one or more non-transitory computer readable medium to perform the steps recited in Step 2A Prong One of the analysis amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment. Mere instructions to apply an exception using generic computer components and limiting the judicial exception to a particular environment does not provide an inventive concept. The additional elements have been considered separately, and as an ordered combination, and do not add significantly more (also known as an “inventive concept”) to the judicial exception. Further, MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), and Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); are well-understood routine and conventional, similar to the instant application claims which recites and sending and receiving data over network to facilitate purchasing and updating the terms of purchase between the two parties. Further, the displaying step falls to transform the claims into patent eligible material, as this is part of the field of use and technical environment in which the abstract idea is being implement and does not result in an improvement to additional elements (see MPEP 2106.05(h) Electric Power Group court decision), with respect to selecting a visual representation this is similar to ineligible decisions such as Generating restaurant menus with functionally claimed features, Ameranth, 842 F.3d at 1245, 120 USPQ2d at 1857;, Generating a second menu from a first menu and sending the second menu to another location as performed by generic computer components, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1243-44, 120 USPQ2d 1844, 1855-57 (Fed. Cir. 2016), and Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015); in which the Courts found the claims to be mere instructions to apply the exception, merely invoking the computers as tools similar to the instant application. The claims are not patent eligible.
The dependent claims have been given the full analysis including analyzing the additional limitations both individually and in combination as a whole. For instance, claims 22-27, 29-34, and 36-40 are all steps that fall within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas further defining commercial and legal interactions and ineligible for the same reasons as discussed above. The Dependent claims when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 for the same reasoning as above and the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The additional limitations of the dependent claims when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY S CUNNINGHAM II whose telephone number is (313)446-6564. The examiner can normally be reached Mon-Fri 8:30am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
GREGORY S. CUNNINGHAM II
Primary Examiner
Art Unit 3694
/GREGORY S CUNNINGHAM II/Primary Examiner, Art Unit 3694