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 .
Status of Claims
Claims 1-10 were previously pending and subject to a non-final Office Action having a notification date of August 18, 2025 (“non-final Office Action”). Following the non-final Office Action, Applicant filed an amendment on January 20, 2026 (the “Amendment”), amending claims 1, 4-6, 8, and 9 and canceling claim 3
The present Final Office Action addresses pending claims 1, 2, and 4-10 in the Amendment.
Response to Arguments
Response to Applicant’s Arguments Regarding Claim Rejections Under 35 USC §101
On page 8 of the Amendment, Applicant asserts that the Examiner indicated during the Interview conducted on November 13, 2025 that further reciting "transmitting the generated message over a network" would not be practically performable in the human mind and that the claims are thus patent-eligible under 35 USC 101. While the Examiner agrees that such limitation is not practically performable in the human mind, the Examiner nevertheless asserts that the claims still recite "certain methods of organizing human activity" and "mental processes" for all of the reasons set forth in the rejection below. Furthermore, the Examiner asserts that the additional limitation directed to transmitting the generated message over a network merely adds insignificant extra-solution activity to the abstract idea (see MPEP § 2106.05(g)) and is not unconventional as it merely consists of receiving/transmitting data over a network. See Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1321, 120 USPQ2d 1353, 1362 (Fed. Cir. 2016); See MPEP 2106.05(d)(II).
The 35 USC 101 rejection is maintained.
Response to Applicant’s Arguments Regarding Claim Rejections Under 35 USC §103
At pages 8-9 of the Amendment, Applicant takes the position that the cited references do not teach or suggest wherein the determination process comprises determining whether there are value-added services available from a plurality of second operators related to the service, and in case that the determination process determines that value-added services are available from a plurality of the second operators, further estimating a user satisfaction level with the value-added services provided by the plurality of second operators, and based on the estimated result, selecting a second operator from the plurality of second operators to which agreement will be requested as now recited in the independent claims. The Examiner disagrees.
Kohli teaches ([0060]-[0064]) that it was known in the service provision art to determine and recommend secondary merchants/operators that provide ancillary ("value-added") services related to a primary purchase from a primary/first merchant/operator, where the process of determining and recommending ancillary/value-added services includes ranking/prioritizing the secondary merchants (which thus includes their corresponding value-added services) according to user preference/interaction with the secondary merchant, and where determining a ranking/prioritization with respect to each secondary merchant based on user preference/interaction with the second merchant necessarily amounts to estimating a "user satisfaction level" with respect to the secondary merchant and thus the services it provides. Additionally or alternatively, Figure 3B of Kohli illustrates how a user can select a category of "value-added" services such that recommended services in Figures 3C-3D would have higher "user satisfaction levels" than other services. Based on the ranking/prioritization/user satisfaction level, one or more "value-added services" available from one or more corresponding second operators/merchants are displayed/selected based on the "user satisfaction levels." This arrangement advantageously recommends secondary merchants and corresponding "value-added" services that are more likely to be desired by the user thus increasing the likelihood of satisfaction for the user and sales for secondary merchants.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the determination process of the Mulderry/Hall combination to determine whether there are value-added services available from a plurality of second operators related to the service, and in case that the determination process determines that value-added services are available from a plurality of the second operators, for the method to further estimate a user satisfaction level with the value-added services provided by the plurality of second operators, and based on the estimated result, select a second operator from the plurality of second operators similar to as taught by Kohli to advantageously recommend secondary merchants and corresponding "value-added" services that are more likely to be desired by the user thus increasing the likelihood of satisfaction for the user and sales for secondary merchants. A person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success in doing so. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Furthermore, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Id.
Furthermore, as the Mulderry/Hall combination already discloses the message to include an agreement request for provision of the user data (which is already possessed by the first merchant/operator in Mulderry) to the second merchant/operator such that the value-added service is receivable upon approval of the agreement request (see rejection below), then the second operator selected from the plurality of second operators per the teachings of Kohli is one to which agreement will be requested.
Claim Objections
Claim 9 is objected to because of the following informalities: In line 18, it appears that "are recorded" should not have been deleted. Appropriate correction is required.
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, and 4-10 are rejected under 35 U.S.C. §101 because the claimed invention is directed to an abstract idea without significantly more:
Subject Matter Eligibility Criteria - Step 1:
Claims 1, 2, and 4-7 are directed to an apparatus (i.e., a machine), claim 8 is directed to a method (i.e., a process), claim 9 is directed to a system (i.e., an apparatus), and claim 10 is directed to a computer-readable non-transitory storage medium (i.e., a manufacture). Accordingly, claims 1, 2, and 4-10 are all within at least one of the four statutory categories. 35 USC §101.
Subject Matter Eligibility Criteria - Alice/Mayo Test: Step 2A - Prong One:
Regarding Prong One of Step 2A of the Alice/Mayo test (which collectively includes the guidance in the January 7, 2019 Federal Register notice and the October 2019 and July 2024 updates issued by the USPTO as incorporated into the MPEP, as supported by relevant case law), the claim limitations are to be analyzed to determine whether, under their broadest reasonable interpretation, they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. MPEP 2106.04(II)(A)(1). An “abstract idea” judicial exception is subject matter that falls within at least one of the following groupings: a) certain methods of organizing human activity, b) mental processes, and/or c) mathematical concepts. MPEP 2106.04(a).
Representative independent claim 9 includes limitations that recite at least one abstract idea. Specifically, independent claim 9 recites:
An information processing system, comprising at least one processor and a memory, the at least one processor carrying out:
an acquisition process comprising acquiring user data pertaining to a service which a user has received from an operator;
a determination process comprising determining whether or not there is a value-added service which is receivable from a second operator in relation to the service;
a generation process comprising generating a message in a case where it has been determined that there is the value-added service, the message comprising (i) an agreement request for provision of the user data possessed by the operator to the second operator and (ii) information pertaining to the value-added service which is receivable upon approval of the user to the agreement request;
a transmitting process comprising transmitting the generated message over a network; and
storing, in the memory, a value-added service table in which information pertaining to the operator, information pertaining to the value-added service, information pertaining to the second operator that provides the value-added service, and information pertaining to provision user data to be provided to the second operator in association with each other,
wherein the determination process comprises determining whether there are value-added services available from a plurality of second operators related to the service, and in case that the determination process determines that value-added services are available from a plurality of the second operators, further estimating a user satisfaction level with the value-added services provided by the plurality of second operators, and based on the estimated result, selecting a second operator from the plurality of second operators to which agreement will be requested.
The Examiner submits that the foregoing underlined limitations recite (a) “certain
methods of organizing human activity” because they relate to commercial or legal interactions (e.g., contracts, legal obligations, advertising, marketing, or sales activities or behaviors, and business relations), and/or managing personal behavior or relationships or interactions between people (e.g., social activities, teaching, and following rules or instructions). For instance, the limitations directed to acquiring user data regarding a received service (e.g., name, type of service, date, price, etc. in relation to grocery services), determining a "value-added" service available from a plurality of second operators related to the service (e.g., coupons, ride-sharing services, etc.), estimating a user satisfaction level with the value-added services provided by the plurality of second operators, selecting one of the second operators to which agreement will be requested based on the estimated result, and generating a message to the user inquiring whether they agree to provide the user data to the second operator in exchange for information regarding the value-added service describe advertising, marketing, and sale activities (e.g., value-added or bundling sales techniques).
Furthermore, the foregoing underlined limitations recite (b) “mental processes” because they are observations/evaluations/judgments/analyses that can, at the currently claimed high level of generality, be practically performed in the human mind (e.g., with pen and paper). These recitations, under their broadest reasonable interpretation, are similar to the concepts of collecting information, analyzing it and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQe2d 1739 (Fed. Cir. 2016)). MPEP 2106.04(a)(2)(III).
Accordingly, the claim recites at least one abstract idea.
Furthermore, dependent claims 2 and 4-6 further define the at least one abstract idea (and thus fail to make the abstract idea any less abstract) as set forth below:
-Claim 2 recites how the message is generated based on determining that agreement on provision of the user data possessed by the operator to the second operator has already been obtained from the user which just further defines the abstract idea(a) discussed above.
-Claim 4 recites how the user satisfaction level is estimated based on a geographical relation between a place where the user has received the service from the operator and a place where the user receives the value-added service, or based on action information of the user which just further defines the abstract idea discussed above.
-Claim 5 calls for deciding, based on the user satisfaction level, a value-added service to be included in the message which relates to "certain methods of organizing human activity" and "mental processes" similar to as discussed above.
-Claim 6 calls for selecting, from the user data for each second operator, provision user data to be provided to the second operator which relates to "certain methods of organizing human activity" and "mental processes" similar to as discussed above.
Subject Matter Eligibility Criteria - Alice/Mayo Test: Step 2A - Prong Two:
Regarding Prong Two of Step 2A of the Alice/Mayo test, it must be determined whether the claim as a whole integrates the abstract idea into a practical application. As noted at MPEP §2106.04(II)(A)(2), it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements such as merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.” MPEP §2106.05(I)(A).
In the present case, the additional limitations beyond the above-noted at least one abstract idea recited in the claim are as follows (where the bolded portions are the “additional limitations” while the underlined portions continue to represent the at least one “abstract idea”):
An information processing system, comprising at least one processor and a memory, the at least one processor carrying out (using computers or machinery as mere tools to perform the abstract idea as noted below, see MPEP § 2106.05(f)):
an acquisition process comprising acquiring user data pertaining to a service which a user has received from an operator;
a determination process comprising determining whether or not there is a value-added service which is receivable from a second operator in relation to the service;
a generation process comprising generating a message in a case where it has been determined that there is the value-added service, the message comprising (i) an agreement request for provision of the user data possessed by the operator to the second operator and (ii) information pertaining to the value-added service which is receivable upon approval of the user to the agreement request,
a transmitting process comprising transmitting the generated message over a network (extra-solution activity as noted below, see MPEP § 2106.05(g)) ; and
storing, in the memory, a value-added service table in which information pertaining to the operator, information pertaining to the value-added service, information pertaining to the second operator that provides the value-added service, and information pertaining to provision user data to be provided to the second operator in association with each other (using computers or machinery as mere tools to perform the abstract idea as noted below, see MPEP § 2106.05(f));
wherein the determination process comprises determining whether there are value-added services available from a plurality of second operators related to the service, and in case that the determination process determines that value-added services are available from a plurality of the second operators, further estimating a user satisfaction level with the value-added services provided by the plurality of second operators, and based on the estimated result, selecting a second operator from the plurality of second operators to which agreement will be requested.
For the following reasons, the Examiner submits that the above-identified additional limitations, when considered as a whole with the limitations reciting the at least one abstract idea, do not integrate the above-noted at least one abstract idea into a practical application.
Regarding the additional limitations of the system including processor and memory that stores the "value-added service table" including information pertaining to the operators, value-added service, and provision user data in association with each other, the Examiner submits that these limitations amount to merely using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
Regarding the additional limitation of transmitting the generated message over a network, the Examiner submits that this additional limitation merely adds insignificant extra-solution activity to the at least one abstract idea in a manner that does not meaningfully limit the at least one abstract idea (see MPEP § 2106.05(g)).
Thus, taken alone, the additional elements do not integrate the at least one abstract idea into a practical application. Furthermore, looking at the additional limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. MPEP §2106.05(I)(A) and §2106.04(II)(A)(2).
For these reasons, representative independent claim 9 and analogous independent claims 1 and 8 do not recite additional elements that integrate the judicial exception into a practical application. Accordingly, representative independent claim 9 and analogous independent claims 1 and 8 are directed to at least one abstract idea.
The remaining dependent claim limitations not addressed above fail to integrate the abstract idea into a practical application as set forth below:
Claim 7 calls for displaying the user data provided to the second operator and the information regarding the value-added service in a single display screen which just amounts to using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
Claim 10 calls for carrying out the method via a computer-readable non-transitory storage medium which again just amounts to using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
When the above additional limitations are considered as a whole along with the limitations directed to the at least one abstract idea, the at least one abstract idea is not integrated into a practical application. Therefore, the claims are directed to at least one abstract idea.
Subject Matter Eligibility Criteria - Alice/Mayo Test: Step 2B:
Regarding Step 2B of the Alice/Mayo test, representative independent claim 9 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for reasons the same as those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application.
Regarding the additional limitations of the system including processor and memory that stores the "value-added service table" including information pertaining to the operators, value-added service, and provision user data recorded in association with each other, the Examiner submits that these limitations amount to merely using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
Regarding the additional limitation directed to transmitting the generated message over a network which the Examiner submits merely adds insignificant extra-solution activity to the abstract idea (see MPEP § 2106.05(g)) as discussed above, the Examiner has reevaluated such limitation and it to not be unconventional as it merely consists of receiving/transmitting data over a network. See Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1321, 120 USPQ2d 1353, 1362 (Fed. Cir. 2016); See MPEP 2106.05(d)(II).
The dependent claims also do not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the dependent claims do not integrate the at least one abstract idea into a practical application.
Claim 7 calls for displaying the user data provided to the second operator and the information regarding the value-added service in a single display screen which just amounts to using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
Claim 10 calls for carrying out the method via a computer-readable non-transitory storage medium which again just amounts to using a computer or other machinery as tools performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f)).
Therefore, claims 1, 2, and 4-10 are ineligible under 35 USC §101.
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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 1, 2, and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 7,343,322 to Mulderry et al. ("Mulderry") in view of U.S. Patent App. Pub. No. 2020/0084221 to Hall et al. ("Hall") and U.S. Patent App. Pub. No. 2020/0082455 to Kohli ("Kohli"):
Regarding claim 1, Hall discloses an information processing apparatus (online merchant 12 in Figure 1), comprising at least one processor (CPU 230 in Figure 3), the at least one processor carrying out:
an acquisition process comprising acquiring user data pertaining to a service which a user has received from an operator (5:12-18, 42-49, 59-67 discuss acquiring various types of user data as part of processing a merchandise order (service user has received from an operator));
a determination process comprising determining whether or not there is a value-added service which is receivable from a second operator in relation to the service (7:6-11 discusses presenting an offer from a second merchant (second operator) such that there is necessarily a determination that there is an offer from the second merchant/operator; furthermore, the offer (e.g., magazine offer as shown in Figure 8) is a "value-added service" because it increases a feeling of satisfaction of the user in relation to the primary service (e.g., the movie shown in Figure 8)); and
a generation process comprising generating a message in a case where it has been determined that there is the value-added service (message 840 in Figure 8), the message comprising … and (ii) information pertaining to the value-added service … (see information in box 840 in Figure 8 and information box 1015 in Figure 10)…; and
a transmitting process comprising transmitting the generated message over a network (7:5-15 discloses displaying/presenting the user with the offer/message from the second merchant which would be transmitted to the customer computer 10 via Internet 14 (over a network) per Figure 1);
…
Mulderry also discloses (8:49-62) how the user data can be transmitted from the first merchant/operator to the second merchant/operator
However, Mulderry appears to be silent regarding the message including (i) an agreement request for provision of the user data possessed by the operator to the second operator, whereby the value-added service is receivable upon approval of the user to the agreement request.
Nevertheless, Hall teaches (Figure 6, [0061], [0071]) that it was known in the service provision art to generate and present a message to a user including an agreement request for provision of user data in exchange for a particular version of an application (service) which advantageously allows service providers to generate more useful/customized services for individual users ([0003]) while at the same time providing users with a more transparent opt-in process regarding use of their data ([0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the message of Mulderry to include an agreement request for provision of the user data (which is already possessed by the first merchant/operator in Mulderry as noted above) to the second merchant/operator such that the value-added service is receivable upon approval of the agreement request as taught by Hall to advantageously generate more useful/customized services for individual users while at the same time providing users with a more transparent opt-in process regarding use of their data. A person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success in doing so. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Furthermore, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Id.
Furthermore, the Mulderry/Hall combination appears to be silent regarding wherein the determination process comprises determining whether there are value-added services available from a plurality of second operators related to the service, and in case that the determination process determines that value-added services are available from a plurality of the second operators, further estimating a user satisfaction level with the value-added services provided by the plurality of second operators, and based on the estimated result, selecting a second operator from the plurality of second operators to which agreement will be requested.
Nevertheless, Kohli teaches ([0060]-[0064]) that it was known in the service provision art to determine and recommend secondary merchants/operators that provide ancillary ("value-added") services related to a primary purchase from a primary/first merchant/operator, where the process of determining and recommending ancillary/value-added services includes ranking/prioritizing the secondary merchants (which thus includes their corresponding value-added services) according to user preference/interaction with the secondary merchant, and where determining a ranking/prioritization with respect to each secondary merchant based on user preference/interaction with the second merchant necessarily amounts to estimating a "user satisfaction level" with respect to the secondary merchant and thus the services it provides. Additionally or alternatively, Figure 3B of Kohli illustrates how a user can select a category of "value-added" services such that recommended services in Figures 3C-3D would have higher "user satisfaction levels" than other services. Based on the ranking/prioritization/user satisfaction level, one or more "value-added services" available from one or more corresponding second operators/merchants are displayed/selected based on the "user satisfaction levels." This arrangement advantageously recommends secondary merchants and corresponding "value-added" services that are more likely to be desired by the user thus increasing the likelihood of satisfaction for the user and sales for secondary merchants.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the determination process of the Mulderry/Hall combination to determine whether there are value-added services available from a plurality of second operators related to the service, and in case that the determination process determines that value-added services are available from a plurality of the second operators, for the method to further estimate a user satisfaction level with the value-added services provided by the plurality of second operators, and based on the estimated result, select a second operator from the plurality of second operators similar to as taught by Kohli to advantageously recommend secondary merchants and corresponding "value-added" services that are more likely to be desired by the user thus increasing the likelihood of satisfaction for the user and sales for secondary merchants. A person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success in doing so. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Furthermore, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Id.
As the Mulderry/Hall combination already discloses the message to include an agreement request for provision of the user data (which is already possessed by the first merchant/operator in Mulderry) to the second merchant/operator such that the value-added service is receivable upon approval of the agreement request as noted above) then the second operator selected from the plurality of second operators per the teachings of Kohli is one to which agreement will be requested.
Regarding claim 2, the Mulderry/Hall/Kohli combination discloses the information processing apparatus according to claim 1, further including
in the determination process, the at least one processor further determines whether or not agreement on provision of the user data possessed by the operator to the second operator has already been obtained from the user (because the message generated in Figure 6 of Hall is asking for agreement to provide user data, then there is necessarily a previous determination that such agreement has not been obtained from the user, where the agreement is on provision of the user data possessed by the first merchant/operator to the second merchant/operator of Mulderry as already noted above); and
in a case where it has been determined that the agreement has not been obtained from the user, the at least one processor generates the message in the generation process (the message requesting agreement for provision of the user data possessed by the first merchant/operator to the second merchant/operator is generated per the above combination of Mulderry and Hall; again, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the message of Mulderry to include an agreement request for provision of the user data (which is already possessed by the first merchant/operator in Mulderry as noted above) to the second merchant/operators such that the value-added service is receivable upon approval of the agreement request as taught by Hall to advantageously generate more useful/customized services for individual users while at the same time providing users with a more transparent opt-in process regarding use of their data. A person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success in doing so. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Furthermore, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Id.).
Regarding claim 4, the Mulderry/Hall/Kohli combination discloses the information processing apparatus according to claim 1, further including the user satisfaction level is estimated based on a geographical relation between a place where the user has received the service from the operator and a place where the user receives the value-added service, or based on action information of the user ([0063] of Kohli discloses how the rankings/user satisfaction levels can be estimated based on user interaction (action) while Figure 3B illustrates how a user can take an action (selecting category); again, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the processor of the Mulderry/Hall combination to carry out an estimation process of estimating a user satisfaction level with respect to the value-added service based on action information of the user as taught by Kohli to advantageously recommends secondary merchants and corresponding "value-added" services that are more likely to be desired by the user thus increasing the likelihood of satisfaction for the user and sales for secondary merchants. A person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success in doing so. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Furthermore, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Id.).
Regarding claim 5, the Mulderry/Hall/Kohli combination discloses the information processing apparatus according to claim 4, further including the at least one processor further carries out a decision process comprising deciding, based on the user satisfaction level, a value-added service to be included in the message (Figures 3C-3D of Kohli illustrate a message including particular value-added services (which would have relatively higher "user satisfaction" levels than others because they correspond to a category selected by the user from Figure 3B; also, [0063] of Kohli discloses displaying the secondary merchants (and thus their corresponding value-added services) based on their ranking (user satisfaction level); it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the processor of the Mulderry/Hall combination to carry out a decision process of deciding, based on the user satisfaction level, a value-added service to be included in the message as taught by Kohli to advantageously recommends secondary merchants and corresponding "value-added" services that are more likely to be desired by the user thus increasing the likelihood of satisfaction for the user and sales for secondary merchants. A person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success in doing so. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Furthermore, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Id.).
Regarding claim 6, the Mulderry/Hall/Kohli combination discloses the information processing apparatus according to claim 1, further including
the at least one processor further carries out a selection process comprising selecting, from the user data for each second operator, provision user data to be provided to the second operator ([0053]-[0071] and Figures 4 and 6 of Hall discuss/illustrate how different types/amounts of user data (which is provided to the second merchant/operator per the combination with Mulderry) can be selected in exchange for different services; similar to as discussed above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected "provision user data" from the user data to be provided to the second operator and for the message of Mulderry to include an agreement request for provision of the user data (which is already possessed by the first merchant/operator in Mulderry as noted above) to the second merchant/operators such that the value-added service is receivable upon approval of the agreement request as taught by Hall to advantageously generate more useful/customized services for individual users while at the same time providing users with a more transparent opt-in process regarding use of their data. A person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success in doing so. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Furthermore, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Id.).
Regarding claim 7, the Mulderry/Hall/Kohli combination discloses the information processing apparatus according to claim 1, further including
the message is configured such that user data provided to the second operator and information pertaining to the value-added service which is receivable are displayed in a single display screen (Figure 6 of Hall illustrates how the message is configured such that user data (provided to the second merchant/operator per the combination with Mulderry) and information pertaining to the receivable service ("value-added" as already disclosed by Mulderry) are displayed in a single display screen 600 which advantageously provides an improved, more transparent opt-in process ([0008] of Hall); it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the message of Mulderry to be configured such that user data provided to the second operator and information pertaining to the value-added service which is receivable are displayed in a single display screen as taught by Hall to advantageously provide an improved, more transparent opt-in process. A person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success in doing so. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Furthermore, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Id.).
Claim 8 is rejected in view of the Mulderry/Hall/Kohli combination as discussed above in relation to claim 1.
Regarding claim 9, the Mulderry/Hall/Kohli combination discloses an information processing system (online merchant 12 in Figure 1 of Mulderry), comprising at least one processor (CPU 230 in Figure 3 of Mulderry) and a memory (memory 200 and/or storage device 240 in Figure 3 of Mulderry), where the processor is configured to perform the acquisition process, determination process (including the user satisfaction level estimation and selection), generation, and transmission process discussed in relation to claim 1.
Furthermore, the Mulderry/Hall/Kohli combination discloses storing, in the memory, a … service table (some space/location in the memory of Mulderry) in which information pertaining to the operator (merchant products 270 in Figure 3 of Mulderry), … and information pertaining to provision user data to be provided to the second operator (customer transaction records 400 in Figure 3 of Mulderry) [are recorded] in association with each other (they are both in the storage device 240 in Figure 3 of Mulderry).
However, the Mulderry/Hall/Kohli combination appear to be silent regarding the service table being a value-added service table and further including information pertaining to the value-added service, and information pertaining to the second operator that provides the value-added service.
Nevertheless, Kohli teaches (Figure 4A and [0065]-[0074]) that it was known in the service provision art to maintain a database 404 ("value-added service table") that includes merchant identifiers 442 (information pertaining to merchants/operators which includes both initial/primary merchants/operators and secondary merchants/operators per [0069]-[0070]), item identifiers 446 (services provided by the merchants per [0067]), and user profile data 424 including purchase history 438, account identifiers 432, etc. (user data) recorded in association with each other (see Figure 4A) to advantageously facilitate the identification of secondary merchants/operators and corresponding secondary services related to a primary purchase (where the secondary services are thus "value-added services") and recommendation of the same to users.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the service table of the Mulderry/Hall/Kohli combination to be a value-added service table including information pertaining to the operator, the value-added service, the second operator that provides the value-added service, and provision user data (to be provided to the second operator as already disclosed in Mulderry) recorded in association with each other as taught by Kohli to advantageously facilitate the identification of secondary merchants/operators and corresponding secondary services related to a primary purchase and recommendation of the same to users. A person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success in doing so. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Furthermore, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. Id.
Claim 10 is rejected in view of the Mulderry/Hall/Kohli combination as discussed above in relation to claim 8.
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.
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/JONATHON A. SZUMNY/Primary Examiner, Art Unit 3686