DETAILED ACTION
Status
This communication is in response to Applicant’s “AMENDMENT” filed on May 30, 2024 (hereinafter “Amendment”). In the Amendment, Applicant amended Claims 1-20; cancelled no claim(s); and added no claim(s). No claim(s) was previously cancelled. Therefore, Claims 1-20 remain pending and presented for examination. Of the pending claims, Claims 1, 11 and 20 are independent claims.
Original Claims 1-20 were originally presented by Applicant and, therefore, have been constructively elected by original presentation for prosecution on the merits per MPEP § 819 and MPEP § 821.03.
The present application (U.S. App. No. 18/678,826) and each of its parent applications were filed after March 16, 2013; and, therefore, this application is being examined under the first inventor to file (FITF) provisions of the America Invents Act (AIA ).
Examiner notes that this U.S. patent application (U.S. App. No. 18/678,826) has published as U.S. Patent Application Publication No. 2024/0311871 of MANFIELD et al. (hereinafter “Manfield”).
CPC Classification Notes
Examiner notes CPC classifications listed below:
G06Q 30/00 Commerce
G06Q 30/02 • Marketing Price estimation or determination…
G06Q 30/0241 •• Advertisements
G06Q 30/0251 ••• Targeted advertisements
G06Q 30/0255 •••• based on user history
G06Q 30/0259 •••• based on store location
G06Q 30/0261 •••• based on user location
Response to Amendments
A Summary of the Response to Applicant’s Amendment:
Applicant’s Amendment overcomes all previous drawing objections; therefore, the Examiner withdraws all previous drawing objections. However, in view of 37 CFR 1.84(p)(5), Applicant’s Amendment introduces new drawing objections; therefore, the Examiner asserts the new drawing objections in view of 37 CFR 1.84(p)(5), as provided below.
Applicant’s Amendment overcomes the rejections to Claims 2-10 and 12-19 under 35 U.S.C. § 112(d); therefore, the Examiner withdraws § 112(d) rejections to Claims 2-10 and 12-19. However, Applicant’s Amendment introduces objections to Claims 2, 13 and 18-19; therefore, the Examiner asserts objections to Claims 2, 13 and 18-19, as provided below.
Applicant’s Amendment does not overcome the nonstatutory double patenting rejections to Claims 1-20; therefore, the Examiner maintains the nonstatutory double patenting rejections to Claims 1-20, as provided below.
Applicant’s Amendment does not overcome rejections to Claims 1-20 under 35 U.S.C. § 101; therefore, the Examiner asserts/maintains § 101 rejections to Claims 1-20, as provided below.
Applicant’s Amendment does not overcome prior art rejections under AIA 35 U.S.C. §§ 102 and 103; therefore, the Examiner maintains/asserts prior art rejections to Claims 1-20, as provided below under §§ 102 and 103 of the AIA .
Applicant’s arguments are found to be not persuasive; please see Examiner’s “Response to Arguments” provided below.
Continuation
This application is a continuation application of U.S. Application No. 17/425,645 filed on July 23, 2021 (hereinafter “Parent Application”), which issued as U.S. Patent No. 12,039,568. See MPEP § 201.07. In accordance with MPEP § 609.02 A. 2 and MPEP § 2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP § 2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. In addition, Applicant(s) is reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicant(s) desires the information to be printed on a patent issuing from this application. See MPEP § 609.02 A. 2. Finally, Applicant(s) is reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Claim Objections
Claims 2, 13 and 18-19 are objected to because of the following informalities: grammatical/spelling errors. Appropriate correction(s) is required to each of Claims 2, 13 and 18-19.
Claim 2: The phrase “The computer implemented of claim 1” recited in Claim 2 should be, for example, “The computer implemented system of claim 1” (underlining emphasis added).
Claim 13: The phrase “The computer implemented of claim 11” recited in Claim 13 should be, for instance, “The computer implemented method of claim 11” (underlining emphasis added by Examiner).
Claim 18: The phrase “The computer implemented method of 11” recited in Claim 18 should be, for instance, “The computer implemented method of claim 11” (underlining emphasis added by Examiner).
Claim 19: The phrase “The computer implemented method of 11” recited in Claim 19 should be, for instance, “The computer implemented method of claim 11” (underlining emphasis added by Examiner).
Appropriate correction(s) is required to each of Claims 2, 13 and 18-19.
Drawing Objections
Applicant’s 3/3/2026 drawings are objected to as failing to comply with 37 CFR § 1.84(p)(5). The following identified errors are provided by way of example and may not be inclusive of all errors present in the drawings filed on 3/3/2026. Applicant is requested to review the 3/3/2026 drawings for additional and similar errors present in the drawings albeit such errors may not have been specifically identified in this Office action.
Applicant’s 3/3/2026 drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference characters are not mentioned in Applicant’s description: 727a, 727b, 727c, 737a, 737b, 827a, 827b and 827c. 37 CFR 1.84(p)(5) states that reference characters not mentioned in the description shall not appear in the drawings. Figure 7B (filed March 3, 2026) includes reference numerals 727a, 727b, 727c, 737a and 737b; however, reference numerals 727a, 727b, 727c, 737a and 737b are not mentioned/distinguished in Applicant’s description, as originally filed. Therefore, Figure 7B fails to comply with 37 CFR 1.84(p)(5). Similarly, Figure 8B includes reference numerals 827a, 827b and 827c; however, reference numerals 827a, 827b and 827c are not mentioned/distinguished in Applicant’s description, as originally filed. Therefore, Figure 8B fails to comply with 37 CFR 1.84(p)(5). Amendments to the specification to add the reference characters in the description in compliance with 37 CFR 1.121(b), or corrected drawing sheets in compliance with 37 CFR 1.121(d), are required in reply to this Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Examiner notes that Applicant’s 5/30/2024 original drawings were previously objected to as failing to comply with 37 CFR 1.84(p)(4) because: reference numeral “727” was used to designate “Change password” (original Figure 7B), “Confirm Password” (original Figure 7B), and “Passwords match?” (original Figure 7B); reference numeral “737” was used to designate “Promote Offers” (original Figure 7B) as well as “Create Offer” (original Figure 7B); and reference numeral “827” was used to designate “Change password” (original Figure 8B), “Confirm Password” (Figure 8B), and “Passwords match?” (original Figure 8B).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b) of the America Invents Act (AIA ):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) of the AIA as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. “A claim is indefinite when it contains words or phrases whose meaning is unclear” (MPEP § 2173.05(e)).
Regarding Claim 4, since it is unclear as to what the phrase “the search queries” makes antecedent reference to in Claim 1, Claim 4 is rejected under AIA 35 U.S.C. 112(b) as being indefinite. There is insufficient antecedent basis for the phrase “the search queries” recited in Claim 4 (bolding emphasis added by Examiner). For example, it is unclear as to whether the phrase “the search queries” references search queries not specifically/positively recited in Claim 1, references recited “previously collected data”, which may or may not include any search queries, or references something else recited in Claim 1. For purposes of this Office action, “the search queries”, as recited in Claim 4, is understood to be any search queries. Appropriate correction(s) is required.
Claims 11 and 12 are each rejected under 35 U.S.C. 112(b) of the AIA , as being indefinite because it is unclear as to what the phrase “the notifications” means in the context of Claim 11 reciting alternative language in the phrase “one or more notifications” (emphasis added). More specifically, it is unclear as to whether the phrase “the notifications” (plural) recited in each of Claims 11 and 12: refers to multiple notifications (plural) of the recited “one or more notifications” in Claim 11; refers to any one notification (singular) of the recited “one or more notifications” in Claim 11; or refers to the recited “one or more notifications” (entire alternative phase) recited in Claim 11. As currently presented, “the notifications” recited in each of Claims 11 and 12 is amenable to multiple plausible constructions and, therefore, a person having ordinary skill in the art would be unable to determine what the Applicant does and does not regard as the invention. Therefore, Claims 11-12 are rejected under AIA 35 U.S.C. 112(b) as being indefinite.
Regarding independent Claim 20, since it is unclear as to what the phrases “the one or more secondary user devices” makes antecedent reference to in Claim 20, independent Claim 20 is rejected under 35 U.S.C. 112(b) of the AIA as being indefinite. There is insufficient antecedent basis for the phrases “the one or more secondary user devices” recited in Claim 20. For example, it is unclear as to whether the phrase “the one or more secondary user devices” references one or more secondary user devices not specifically/positively recited in Claim 20 that are different from recited “a secondary user devices”, references recited “a secondary user devices”, which may or may be more than one secondary user device, or references a combination thereof. For purposes of this Office action, “the one or more secondary user devices”, as recited in Claim 20, is understood to be any secondary user device. Appropriate correction(s) is required.
Claim 1 is rejected under 35 U.S.C. 112(b) of the AIA as being indefinite because Claim 1 recites “A… system” as being defined by “and further wherein the system is operable to execute…to automatically send…” — essentially a circular definition (i.e., defining a term by using the term in the definition) — and, therefore, Claim 1 being drawn to “A computer implemented system”, is deficient in including the term(s) to be defined in the definition itself. In other words, Applicant is attempting to define “A computer implemented system” by what “the system” does (i.e., perform operations) in its definition — a logical fallacy. See MPEP § 2173.05(p) II: “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b).” Appropriate correction(s) is required.
Claims 2-10 depend from independent Claim 1, but do not resolve the above issues and directly inherit the deficiencies of independent Claim 1; therefore, Claims 2-10 are rejected under 35 U.S.C. 112(b) of the AIA . Similarly, Claims 12-19 depend from independent Claim 11, but do not resolve the above issues and directly inherit the deficiencies of independent Claim 11; therefore, Claims 12-19 are rejected under 35 U.S.C. 112(b) of the AIA .
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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 seg. for applications not subject to examination under the first inventor to file provisions of the AlA.
The USPTO’s Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is to be filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used.
The USPTO provides for submission of an eTerminal Disclaimer (eTD) via the USPTO patent electronic filing system. A web-based eTD may be filled out completely online. An eTD that meets all requirements is auto-processed and approved upon submission. For more information about the eTD, please refer to https://www.uspto.gov/TerminalDisclaimer.
A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Claims 1-20 of this application (App. No. 18/678,826) are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-27 of U.S. Patent No. 12,039,568 (corresponding to U.S. Application No. 17,425,645). Although Claim 1-20 of this application are not identical to the claims in U.S. Patent No. 12,039,568, they are not patentably distinct from each other because Claims 1-20 of the instant application merely omit some of the limitations found in the claims in U.S. Patent No. 12,039,568 and use some slightly different terms and phrases, such as “specified region” instead of “specified region or distance”, that are commensurate in scope. As such, Claims 1-20 of the instant application merely broaden the scope of Claims 1-27 of U.S. Patent No. 12,039,568 and do not include any limitations that would not be considered obvious variants of Claims 1-27 of U.S. Patent No. 12,039,568. Thus, the nonstatutory double patenting rejection is appropriate because the conflicting claims are not identical, but at least one of the examined application claims (in this App. No. 18/224,536) is not patentably distinct from the reference claim(s) recited in U.S. Patent No. 12,039,568 because the examined application claims are either anticipated by, or would have been obvious over, the reference claim(s) recited in U.S. Patent No. 12,039,568.
See MPEP § 1490 for information about filing a terminal disclaimer to overcome a double patenting rejection(s).
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification” (MPEP § 2111). In view of this standard and based upon consideration of all of the relevant factors with respect to each claim as a whole, Claims 1-20 are rejected as ineligible subject matter under 35 U.S.C. 101.
Step 1: Claims 1-20 appear to satisfy Step 1 enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).
Step 2A: Claims 1-20 are rejected under § 101 because Applicant’s claimed subject matter is directed to an abstract idea without significantly more. The rationale for this finding is that Applicant’s claims recite targeting a user with advertising/marketing material (i.e., recited “notifications”) based on information collected about the user (e.g., recited “collected data regarding the user of the secondary user device”, “purchases made by the user”, etc.) that matches the advertising/marketing material as being “relevant to the user” (targeted to the user), and the targeting of the user being geographical {i.e., “located within a specified region in relation to a geographical location” (e.g., a current location of the user, etc.)} as well as temporal {i.e., recited “at a specified time, or within a specified period of time”}, which is a form of targeted advertising/marketing or contextual advertising/marketing — also see Manfield at ¶¶ [0004] and [0007] of Applicant’s published specification indicating “present invention relates to… disseminating relevant retail information to consumers, including….products and services offered for sale, retail offers and/or promotional material” and “need to consider how to advertise to consumers at a time and place which is likely to be convenient to the consumer to consider purchasing” (see Manfield at ¶¶ [0004] and [0007], respectively); and “disseminating advertising or promotional information… relevant to consumers … is provided to the consumer at a time and/or place that improves convenience for the consumer hence improving the prospects of a sale” (Manfield at ¶ [0008] with bolding emphases added by Examiner) — as more particularly recited in Applicant’s pending claims save for recited (non-abstract claim elements):
a primary user device being operable to access and to execute computer instruction code; a database of previously collected data; one or more secondary user devices operated by users; a matching engine; each of the recited steps/processes of receiving, accessing and sending; (only Claims 6 and 16) wherein the one or more secondary user devices are operable to send messages to the primary user device; (only Claims 7 and 17) wherein the one or more secondary user devices are operable to reserve or schedule; (only Claim 8) wherein the one or more secondary user devices are operable to effect a payment transaction; (only Claims 9 and 18) the primary user device receiving; (only Claims 10 and 19) wherein the primary user device automatically sends to one or more secondary user devices; and (only Claim 20) a non-transitory computer readable medium including instructions stored therein executable by one or more processors to perform steps. However, targeted advertising/marketing or contextual advertising/marketing — utilizing information collected about a user (e.g., recited “collected data regarding the user of the secondary user device”, “purchases made by the user”, etc.) and advertising/marketing material (i.e., recited “notifications”) to find matching advertising/marketing material “relevant to the user” and targeting the user with the matching advertising/marketing material “relevant to the user” based geographical information of the user {i.e., “located within a specified region in relation to a geographical location” (e.g., a current location of the user, etc.)} and temporal information of the user {i.e., recited “at a specified time, or within a specified period of time”}, as currently recited in Applicant’s pending claims and further explained below, is within a certain method of organizing human activity — (i) fundamental economic principle or practice; and/or (ii) commercial interaction (including advertising, marketing or sales activities or behaviors; business relations). MPEP 2106.04(a)(2)(II)(A) provides examples of “fundamental economic principles or practices” and MPEP 2106.04(a)(2)(II)(B) provides additional discussion and examples of commercial or legal interactions. This judicial exception (i.e., abstract idea exception) is not integrated into a practical application because each claim as a whole, having the combination of additional elements beyond the judicial exception(s), does not integrate the exception into a practical application of the exception and, therefore, the pending claims are “directed to” a judicial exception under USPTO Step 2A. More specifically, each claim as a whole does not appear to reflect the combination of additional elements as: (1) improving the functioning of a computer itself or improving another technology or technical field, (2) applying the judicial exception with, or by use of, a particular machine/manufacture that is integral to the claim, (3) effecting a transformation or reduction of a particular article to a different state or thing, or (4) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. Instead, any improvement is to the underlying abstract idea of targeted advertising/marketing or contextual advertising or marketing based on information about a user (e.g., recited “collected data regarding the user of the secondary user device”, “purchases made by the user”, user location, timing of user, etc.). SAP Am., Inc. v. InvestPic, LLC, No. 2017-2081, 2018 U.S. App. LEXIS 12590, Slip. Op. 13 (Fed. Cir. May 15, 2018) (“What is needed is an inventive concept in the non-abstract realm.”). Applicant’s additional elements, taken individually and in combination, do not appear to be integrated into a practical application since they embody mere instructions to implement the abstract idea on a computer or mere use of a computer as a tool to perform the abstract idea, do no more than generally linking the use of the abstract idea to a particular technological environment or field of use (e.g., an online retail environment having a primary user device in network communication with a database of collected data and with one or more secondary user devices operated by users/consumers), and amount to no more than combining the abstract idea with insignificant extra-solution activity including each of Applicant’s recited operations/processes of receiving, accessing and sending, as further explained below. For the reasons discussed above, Applicant’s pending claims are directed to an abstract idea that is not integrated into a practical application under Step 2A, Prong 2 of the Subject Matter Eligibility (SME) analysis of 35 U.S.C. 101.
Step 2B: Under Step 2B enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), Applicant’s instant claims do not recite limitations, taken individually and in combination, that are sufficient to amount to “significantly more” than the abstract idea because Applicant’s claims do not recite, as further explained in detail below, an improvement to another technology or technical field, an improvement to the functioning of a computer itself, an application with or by a particular machine, a transformation or reduction of a particular article to a different state or thing, unconventional steps confining the claim to a particular useful application, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Examiner also notes that albeit limitations recited in the Claims 1-20 are performed by the generically recited “a primary user device” and “a matching engine” (with Claim 20 also using “one or more processors”), these claim limitations taken individually and in combination are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to generally link the abstract idea to a particular technological environment or field of use {e.g., an online retail environment having a primary user device in network communication with a database of collected data and with one or more secondary user devices operated by users/consumers}, and no more than a combination of the abstract idea with insignificant extra-solution activity including each of Applicant’s recited operations/processes of receiving, accessing and sending, as further explained below. As mentioned above, the claim elements in addition to the abstract idea arguably include: a primary user device being operable to access and to execute computer instruction code; a database of previously collected data; one or more secondary user devices operated by users; a matching engine; each of the recited steps/processes of receiving, accessing and sending; (only Claims 6 and 16) wherein the one or more secondary user devices are operable to send messages to the primary user device; (only Claims 7 and 17) wherein the one or more secondary user devices are operable to reserve or schedule; (only Claim 8) wherein the one or more secondary user devices are operable to effect a payment transaction; (only Claims 9 and 18) the primary user device receiving; (only Claims 10 and 19) wherein the primary user device automatically sends to one or more secondary user devices; and (only Claim 20) a non-transitory computer readable medium including instructions stored therein executable by one or more processors to perform steps. However, each of these components is recited at a high level of generality that taken individually and in combination perform corresponding generic computer functions of receiving, accessing and sending — there is no indication that the combination of elements improves the functioning of a computer or improves any other technology since the additional elements taken individually and collectively merely provide generic computer implementations known to the industry. Furthermore, Examiner notes that none of the processes/steps recited in the pending claims taken individually and in combination impose a meaningful limit on the claim’s scope since none of recited processes/steps taken individually and in combination involve activity that amounts to more than generic computer functions/activity. The steps/processes of receiving, accessing and sending, as currently recited individually and in combination in Applicant’s claims, are considered to be generic computer functions since they involve having the abstract idea combined with insignificant extra-solution activity, and generally linking the use of an abstract idea to a particular technological environment or field of use previously known to the industry — each of the steps of receiving encompasses a data input/loading or retrieving function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014); and see Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S.Ct. 1289, 101 USPQ2d 1961 (2012)}; each of the steps of accessing encompasses a data recognition/lookup function or retrieving function performed by virtually all general purpose computers {see Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 113 U.S.P.Q.2d 1354 (Fed. Cir. 2014), hereinafter “Content Extraction”, for data recognition); and each of the steps of sending and automatically sending encompasses a data output/transmittal function performed by virtually all general purpose computers {see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); and see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014)}. In addition, Examiner notes that Applicant’s disclosure mentions that “It will be appreciated the data communication network may be any type of data communication network” (Manfield at ¶ [0060]). Examiner notes it may be worth being mindful of the “July 2015 Update: Subject Matter Eligibility” document, at page 7, second and sixth bullet points (July 30, 2015) regarding various well‐understood, routine, and conventional functions of a computer. Examiner notes employing well-known computer functions individually and in combination to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the computer-implemented abstract idea in Flook (Parker v. Flook, 437 U.S. 584, 19 U.S.P.Q. 193 (1978)) to petrochemical and oil-refining industries was insufficient. For the reasons discussed above, Applicant’s pending claims do not satisfy Step 2B enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).
Consequently, based upon consideration of all of the relevant factors with respect to each claim as a whole, Claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. For information regarding 35 U.S.C. 101, please see Subject Matter Eligibility (SME) guidance and instructional materials at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility, which includes guidance, memoranda, and updates regarding SME under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraph(s) of AIA 35 U.S.C. 102 that form(s) the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-13 and 15-20 are rejected under America Invents Act (AIA ) 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2016/0343019 of Postrel Richard (hereinafter "Richard").
Regarding Claim 1, Richard discloses a computer implemented system comprising:
a primary user device operable to access and execute computer instruction code that, when executed, causes generation of notifications to one or more secondary user devices (e.g., merchant user device generates and sends targeted notifications to a secondary mobile device of a consumer/user based on data collected about the consumer/user —Richard at ¶¶ [0004]–[0008]; and Figures 2a–2c of Richard);
a database of previously collected data in respect of users of the secondary user devices where the one or more secondary user devices are operated by users other than users of primary user devices (e.g., “providing a purchase incentive to a user's mobile device based on several parameters including… prior transaction history” —Richard at ¶ [0004]; “generates the purchase incentive based on the prior transaction log” —Richard at ¶¶ [0007] and [0009]; Figures 2a–2d of Richard illustrating a “Prior Transaction Log 214”; “generate personalized offers based on prior shopping history as well as a user profile” and “profile data may be compiled…and used for marketing purposes… in conjunction with shopping pattern data collected and stored” —Richard at ¶¶ [0051] and [0043]; “prior purchase history including details of transactions executed, and preferences” —Richard at ¶ [0056]; “prior transactions may include purchases made by user” —Richard at ¶¶ [0083], [0097] and [0111]; as well as Richard at ¶¶ [0004]–[0008], [0051], [0056] and [0058]); and
a matching engine; wherein generated notifications are matched, by the matching engine, to the user of a secondary user device according to analysis of the previously collected data regarding the user of the secondary user device such that notifications sent to the secondary user device are relevant to the user of the secondary user device (e.g., “providing a purchase incentive to a user's mobile device based on several parameters including… prior transaction history” —Richard at ¶ [0004]; “generates the purchase incentive based on the prior transaction log” —Richard at ¶¶ [0007] and [0009]; Figures 2a–2d of Richard illustrating a “Prior Transaction Log 214”; “generate personalized offers based on prior shopping history as well as a user profile” and “profile data may be compiled…and used for marketing purposes… in conjunction with shopping pattern data collected and stored” —Richard at ¶¶ [0051] and [0043]; “prior purchase history including details of transactions executed, and preferences” —Richard at ¶ [0056]; “prior transactions may include purchases made by user” —Richard at ¶¶ [0083], [0097] and [0111]; as well as Richard at ¶¶ [0004]–[0008], [0051], [0056] and [0058]); and further wherein:
the system is operable to execute computer instruction code to automatically send matched notifications to the one or more secondary user devices (e.g., “providing a purchase incentive to a user's mobile device based on several parameters including… prior transaction history” —Richard at ¶ [0004]; “generates the purchase incentive based on the prior transaction log” —Richard at ¶¶ [0007] and [0009]; Figures 2a–2d of Richard illustrating a “Prior Transaction Log 214”; “generate personalized offers based on prior shopping history as well as a user profile” and “profile data may be compiled…and used for marketing purposes… in conjunction with shopping pattern data collected and stored” —Richard at ¶¶ [0051] and [0043]; “prior purchase history including details of transactions executed, and preferences” —Richard at ¶ [0056]; “prior transactions may include purchases made by user” —Richard at ¶¶ [0083], [0097] and [0111]; as well as Richard at ¶¶ [0004]–[0008], [0051], [0056] and [0058]): when the one or more secondary user devices are located within a specified region in relation to a geographical location (e.g., “providing a purchase incentive to a user's mobile device based on several parameters including…the user's location” —Richard at ¶ [0004]; “mobile device is preferably a smartphone that has GPS capabilities” —Richard at ¶ [0061]; Figures 2a–2c of Richard illustrating “LOCATION DATA” at reference numeral 205; as well as Richard at ¶¶ [0006]–[0010], [0061], [0073], [0075]–[0076], [0092]–[0093], [0106]–[0107] and [0121]–[0123]); and at a specified time, or within a specified period of time (e.g., “providing a purchase incentive… based on several parameters including… the user's location, predicted route of travel, and prior transaction history” —Richard at ¶ [0004]; “records the locations and associated timeframes in a location log” and “purchase incentive may be effective only for the timeframe associated with the predicted subsequent location” —Richard at each of ¶¶ [0004], [0006], [0008] and [0010]; “when the user/device will arrive at that location” —Richard at each of ¶¶ [0069], [0089], [0103] and [0117]; “determine when a certain customer has entered the store” —Richard at ¶ [0048]; “purchase incentive may be made effective only for a time period…$10 discount coupon effective only between 11 AM and 1 PM” —Richard at each of ¶¶ [0081], [0095], [0109] and [0125]; “purchase incentive parameters such as discount amount, expiration time” —Richard at each of ¶¶ [0082], [0096], [0110] and [0126]; and Richard at ¶¶ [0068] and [0075]).
Regarding Claim 2, Richard discloses the computer implemented system of claim 1, wherein the notifications relate to retail information (e.g., “Purchase incentives such as coupons… discounts… are a… tool in giving users an incentive to transact commerce with a certain merchant” —Richard at ¶ [0002]; and Richard at ¶¶ [0004]–[0008], [0051], [0056], [0058] and [0075]–[0076]).
Regarding Claim 3, Richard discloses the computer implemented system of claim 1, wherein the previously collected data comprises purchases made by the user of the secondary user device (e.g., “providing a purchase incentive to a user's mobile device based on several parameters including… prior transaction history” —Richard at ¶ [0004]; “generates the purchase incentive based on the prior transaction log” —Richard at ¶¶ [0007] and [0009]; Figures 2a–2d of Richard illustrating a “Prior Transaction Log 214”; “generate personalized offers based on prior shopping history as well as a user profile” and “profile data may be compiled…and used for marketing purposes… in conjunction with shopping pattern data collected and stored” —Richard at ¶¶ [0051] and [0043]; “prior purchase history including details of transactions executed, and preferences” —Richard at ¶ [0056]; “prior transactions may include purchases made by user” —Richard at ¶¶ [0083], [0097] and [0111]; as well as Richard at ¶¶ [0004]–[0008], [0051], [0056] and [0058]).
Regarding Claim 5, Richard discloses the computer implemented system of claim 1, wherein the previously collected data comprises prior purchases made by the secondary user device at one or more geographical locations specified by the primary user device (e.g., “providing a purchase incentive to a user's mobile device based on several parameters including… prior transaction history” —Richard at ¶ [0004]; “generates the purchase incentive based on the prior transaction log” —Richard at ¶¶ [0007] and [0009]; Figures 2a–2d of Richard illustrating a “Prior Transaction Log 214”; “generate personalized offers based on prior shopping history as well as a user profile” and “profile data may be compiled…and used for marketing purposes… in conjunction with shopping pattern data collected and stored” —Richard at ¶¶ [0051] and [0043]; “prior purchase history including details of transactions executed, and preferences” —Richard at ¶ [0056]; “prior transactions may include purchases made by user” —Richard at ¶¶ [0083], [0097] and [0111]; as well as Richard at ¶¶ [0004]–[0008], [0051], [0056] and [0058]).
Regarding Claim 6, Richard discloses the computer implemented system of claim 1, wherein the one or more secondary user devices are operable to send messages to the primary user device (e.g., Richard at ¶¶ [0004]–[0008], [0051], [0056] and [0058]; and Figures 3-6 of Richard).
Regarding Claim 7, Richard discloses the computer implemented system of claim 1, wherein the one or more secondary user devices are operable to reserve one or more products, or schedule one or more services, offered for sale by a retail establishment associated with the geographical location (e.g., Richard at ¶¶ [0006]–[0010], [0036], [0038], [0061], [0073], [0075]–[0076], [0092]–[0093], [0106]–[0107] and [0121]–[0123]).
Regarding Claim 8, Richard discloses the computer implemented system of claim 1, wherein the one or more secondary user devices are operable to effect a payment transaction (e.g., Richard at ¶¶ [0026], [0040], [0056] and [0060]).
Regarding Claim 9, Richard discloses the computer implemented system of claim 1, wherein the primary user device associated with the geographical location receives a notification when the one or more secondary user devices are located within the specified region of the geographical location associated with the primary user device (e.g., Richard at ¶¶ [0006]–[0010], [0061], [0067]–[0068], [0073], [0075]–[0076], [0087]–[0088], [0092]–[0093], [0101]–[0102], [0106]–[0107] and [0121]–[0123]).
Regarding Claim 10, Richard discloses the computer implemented system of claim 1, wherein the primary user device automatically sends notifications to one or more secondary user devices upon determining that the one or more secondary user devices are located within the specified region of the geographical location associated with the primary user device (e.g., Richard at ¶¶ [0006]–[0010], [0061], [0073], [0075]–[0076], [0092]–[0093], [0106]–[0107] and [0121]–[0123]).
Regarding Claim 11, Richard discloses a computer implemented method by a primary user device operable to access and execute computer instruction code (e.g., Figures 2a–2c and 7 of Richard) to perform respective processes/steps as recited in Claim 1, and, therefore, Claim 11 is rejected on the same basis(es) as applied above with respect to Claim 1.
Claims 12-13 and 15-17 recite substantially similar subject matter to that of respective Claims 2-3 and 5-7 and, therefore, Claims 12-13 and 15-17 are rejected on the same basis(es) as applied above with respect to Claims 2-3 and 5-7, respectively.
Claims 18-19 recite substantially similar subject matter to that of respective Claims 9-10 and, therefore, Claims 18-19 are rejected on the same basis(es) as applied above respect to Claims 9-10, respectively.
Regarding Claim 20, Richard discloses a non-transitory computer readable medium including instructions stored therein executable by one or more processors (e.g., Figures 2a–2c and 7 of Richard) to perform respective processes/steps as recited in Claim 1, and, therefore, Claim 20 is rejected on the same basis(es) as applied above with respect to Claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 (AIA ) 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 of this title, 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.
Claims 4 and 14 are rejected under 35 U.S.C. 103 of the AIA as being unpatentable over U.S. Patent Application Publication No. 2016/0343019 of Postrel Richard ("Richard") in view of U.S. Patent Application Publication No. 2012/0197858 of Bernard R. Baker, III (hereinafter “Baker”).
Regarding Claim 4, Richard discloses the system of claim 1, wherein user activities initiated by the secondary user device are in respect of goods and/or services (e.g., merchant user device generates and sends targeted notifications to a secondary mobile device of a consumer/user based on user activity data collected about the consumer/user —Richard at ¶¶ [0004]–[0008]; and Figures 2a–2c of Richard), but Richard fails to explicitly disclose the user activities including search queries initiated by the secondary user device being in respect of goods and/or services. However, Baker teaches “consumer interest data (e.g., purchase plans, item she wishes to purchase, service she wishes to use, etc.)” (e.g., Baker at ¶¶ [0045]); displaying a message to inform a user of an available benefit applicable to her consumer interest data (Baker at ¶¶ [0041]–[0042]); as well as user activities including search queries initiated by a user device of the user regarding goods and/or services (e.g., Baker at ¶¶ [0005]–[0007], [0039] and [0043]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the user activities including search queries initiated by the secondary user device in respect of goods and/or services, as taught by Baker, into the method/system disclosed by Richard, which is directed toward utilizing user data collected about a consumer/user to send incentive notifications to the consumer/user—Richard at ¶¶ [0004]–[0008]; and Figures 2a–2c of Richard), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Regarding Claim 14, Richard discloses the method of Claim 11, wherein the previously collected data comprises user activity initiated by the secondary user device (e.g., merchant user device generates and sends targeted notifications to a secondary mobile device of a consumer/user based on user activity data collected about the consumer/user —Richard at ¶¶ [0004]–[0008]; and Figures 2a–2c of Richard), but Richard fails to explicitly disclose the user activity including search queries initiated by the secondary user device. However, Baker teaches “consumer interest data (e.g., purchase plans, item she wishes to purchase, service she wishes to use, etc.)” (e.g., Baker at ¶¶ [0045]); displaying a message to inform a user of an available benefit applicable to her consumer interest data (Baker at ¶¶ [0041]–[0042]); as well as user activities including search queries initiated by a user device of the user (e.g., Baker at ¶¶ [0005]–[0007], [0039] and [0043]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the user activity including search queries initiated by the secondary user device, as taught by Baker, into the method/system disclosed by Richard, which is directed toward utilizing user data collected about a consumer/user to send incentive notifications to the consumer/user—Richard at ¶¶ [0004]–[0008]; and Figures 2a–2c of Richard), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Response to Arguments
Applicant’s arguments in the Amendment filed on March 3, 2026, have been fully considered and are not persuasive. Examiner notes further citation above to U.S. Patent Application Publication No. 2016/0343019 of Postrel Richard ("Richard") in an effort to assist Applicant given Applicant’s amendments and arguments in “Amendment”.
Applicant's Arguments in the Amendment
Applicant asserts that the pending claims, as currently amended, are drawn to eligible subject matter under 35 U.S.C. § 101.
Applicant asserts that the independent claims, as currently amended, are not anticipated by Richard.
Examiner’s Response to Applicant's Arguments
Examiner respectfully disagrees. In Applicant’s March 2026 Amendment, Applicant argues that Applicant’s claims recite a practical application because “… only notifications that are relevant to the user’s interests and only… at a particular location and at selected times or during selected time periods” (underlining original to Applicant’s March 2026 Amendment). However, such alleged practical application is to Applicant’s underlying abstract idea — targeted advertising/marketing or contextual advertising/marketing, such as to “facilitate consumer engagement and increase sales” per Applicant’s March 2026 Amendment under subheading “35 U.S.C. 102 – Novelty”. However, “What is needed is an inventive concept in the non-abstract realm” per SAP Am. v. InvestPic as noted above. Applicant’s pending claims do not disclose any improvement or inventive concept rooted in technology. At their core, Applicant’s pending claims are directed to targeted advertising/marketing or contextual advertising/marketing, with all functions being performed by a generic computer without any novel programming or improvement in the operation of the computer itself. Furthermore, Examiner notes that the prohibition against patenting abstract ideas cannot be circumvented by limiting the use of the idea (e.g., targeted advertising/marketing or contextual advertising/marketing) to a particular technological environment. Please see updated/modified § 101 rejections above regarding examined claims being drawn to ineligible subject matter in view of considering all relevant factors with respect to each claim as a whole including amended portions of the independent claims. Applicant's pending claims, as currently submitted, are drawn to unpatentable subject matter under 35 U.S.C. § 101.
Regarding prior art arguments made in Applicant’s March 2026 Amendment, Examiner respectfully disagrees. According to MPEP § 2173.05(q), “[a]lthough a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In rePrater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.” Examiner notes that “it is important not to import into [] claim limitations that are not part of the claim” per MPEP § 2111.01 (II.). Furthermore, Applicant's arguments in view of Richard are generic and non-specific to the pending claims and, therefore, Applicant's arguments constitute no more than a general allegation that the pending claims define a patentable invention in view of Richard. See 37 C.F.R. 1.111(b): “The reply …must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action” (emphases added) and “The reply must present arguments pointing out the specific distinctions believed to render the claims…patentable over any applied references” (emphasis added). In addition, please see citations to prior art references of Richard in the prior art rejections above regarding amended portions of Applicant’s independent claims. Examiner notes that during patent examination, the pending claims must be “given their broadest reasonable interpretation”. In view of this standard, Examiner asserts the prior art rejections to Applicant’s amended claims, as noted above under § 102 and § 103. In addition, Examiner notes that patent documents are relevant as prior art for all they contain and that “[a] reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments” —MPEP § 2123.
Conclusion
The following references are considered pertinent to Applicant's disclosure, and are being made of record albeit the references are not relied upon as a basis for rejection in this Office action:
U.S. Patent Application Publication No. 2019/0271560 of Hanan AHMED (hereinafter “Ahmed”) for determining that the distance between a facility/business and a vehicle is currently within a predetermined distance for target marketing a user in the vehicle — e.g., Ahmed at ¶¶ [0005], [0030]–[0031], [0036] and [0038]; “restaurants within 8 miles of the vehicle should be displayed” —Ahmed at ¶ [0044]; “restaurants of X type within 2 miles of the vehicle may be displayed” —Ahmed at ¶ [0045]; “determining that a predefined event indicating a stop at one of the POIs of the type has occurred and removing the plurality of POIs when the condition set no longer correlates to the predefined parameter values” —Ahmed at ¶ [0006]; and “These parameters can be time-based, day of week based…. remove the remaining coffee POIs until the following day” —Ahmed at ¶ [0031].
U.S. Patent Application Publication No. 2016/0048892 of Luk et al. (hereinafter “Luk”) for “LOCATION AND TIME-BASED CONVERSATIONS FOR DISCUSSING RELEVANT INFORMATION” —Title of Luk; and “the user to submit a search query that includes… search terms that may be matched by the e-commerce site against the listings created by the sellers. Listings that match the submitted search query may be presented to the buyer… and the buy[er] may then select one of the listing to effectuate a purchase” —Luk at ¶ [0002].
U.S. Patent Application Publication No. 2013/0006742 of Postrel Richard (hereinafter "Richard ‘742").
U.S. Patent Application Publication No. 2008/0248815 of James David Busch (hereinafter “Busch”) for “the types of businesses along the route that the mobile device is currently on or usually takes, the types of businesses that the mobile device appears to visit based on past location and other data, the types of targeted content that the device has responded to, preferences and favored keywords of the user, historical search queries from the mobile device …and preferences of advertisers may also be used to more effectively target content for mobile devices” —Busch at ¶ [0007]; and “information is sent to the mobile device describing the location and a radius, or a perimeter, of businesses in a certain geographic area. When the user is within the areas defined by the data sent to the mobile device, then the mobile device reports the location of the device to a remote portion of the system or records the location of the device to a local portion of the system. Alternatively, the mobile device only reports that it is located at the particular business. The mobile device may also report other information such as the time spent at the business location” —Busch at ¶ [0346].
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 Mathew Syrowik whose telephone number is 313-446-4862. The examiner can normally be reached on Monday through Friday 8:30 AM to 4:00 PM (Eastern Time). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf, can be reached at telephone number 517-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information of published applications may be obtained from Patent Center. Status information of unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, please contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free) or by email at EBC@uspto.gov. Examiner interviews are available via telephone or video conference using a USPTO supplied web-based collaboration tool. To schedule an interview, please email Mathew.Syrowik@USPTO.gov or applicant may use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form. For additional information or questions, please contact the Inventors Assistance Center at 1-800-786-9199 (toll free), 571-272-1000 (local), or 1-800-877-8339 (TDD/TTY).
/Mathew Syrowik/ Primary Examiner, Art Unit 3621
Prosecution Insights