DETAILED ACTION
Claims 1-22 are pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's amendment filed 6/18/2026 canceled claims 23-27 and added claim 28. Applicant did not make an election, and newly added claim 28 would have been restricted from invention I, claims 1-22, for the reasons stated in the Restriction Requirement. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Accordingly, claim 28 is withdrawn, and claims 1-22 will be examined on the merits.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,989,771 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are anticipated by the patented claims.
Reasons for Patent Eligibility and Allowability Over the Prior Art
Claims 1-22 are patent eligible because they constitute significantly more than that abstract idea and integrate the abstract idea into a practical application, and the claims represent an improvement to application programming interface technology. The claims recite additional elements including a universal ecommerce cart, a commerce engine, a token, an application programming interface, a universal shopping cart, a vendor page of a vendor application, and a graphical user interface. Together these additional elements integrate the abstract idea of viewing and selecting items (Specification ¶0020) into a practical application that utilizes the recited hardware and improves interface technology. The claims add other meaningful limitations beyond generally linking the use of the judicial exception to a particular environment to transform the judicial exception into patent eligible subject matter. The claims are not the mere instructions to apply the abstract idea on a computer because the claims recite details as to how the solution is accomplished, do not merely invoke computers as a tool to perform an existing process, and the claims apply to a particular application in the specific field of graphical user interfaces. There is no evidence that the claim recitations are well-understood, routine, and conventional. The claims do not recite insignificant extra-solution activity because the limitations are core to the solution of the invention as described in the specification. In consideration of all the factors the claims recite patent eligible subject matter.
The prior art includes Tarvydas et al., US PG Pub 2006/0041485 A1, which teaches a universal shopping cart and order injection system but does not teach to use a token from within a vendor page of a vendor application through the application programming interface or wherein an additional orderer is provided with a notification of the offer in the universal cart, and wherein the commerce engine is configured to add the additional orderer to the group of orderers in response to the additional orderer to the notification.
The prior art also includes Isaacson et al., US PG Pub 2019/0306137 A1, which teaches a system and method for providing a social media shopping experience including an application programing interface but does not teach to use a token from within a vendor page of a vendor application. Isaacson teaches a notification and adding an additional ordered to a group of orderers but does not teach that the additional ordered may select items within the universal cart. Non-patent literature Gao, Yanjun, Madhu Reddy, and Bernard J. Jansen teaches a collaborative e-commerce system but does not cure the deficiencies noted above. The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable over the prior art as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
For the purposes of clarity, the examiner reiterates that claim 28 is withdrawn from further consideration and does not share any of the reasons for patent eligibility or allowability over the prior art as discussed above with respect to claims 1-22.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER B SEIBERT whose telephone number is (571)272-5549. The examiner can normally be reached Monday - Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kambiz Abdi can be reached at 571-272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER B SEIBERT/Primary Examiner, Art Unit 3688
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