DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-12 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
In accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance, the examiner is to perform an analysis (Step 1, Step 2A (Prong One and Prong Two), and Step 2B) to evaluate whether the claims are drawn to patent-eligible subject matter.
Step 1 – Evaluate whether the claimed subject matter fails within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
In the instant case, claims 1-7, 10-11 are directed to a machine. Claims 8-9 and 12 are directed to a process. Thus, each of the pending claims is directed to one of the statutory categories. Consequently, the analysis proceeds to the two-step framework previously set forth in Alice/Mayo.
Revised Step 2A: Prong One – Evaluate Whether the Claim Recites a Judicial Exception
To determine whether a claim recites a judicial exception, examiners are to (a) identify the specific limitations in the claims that the examiner believes recite an abstract idea and (b) determine whether the identified limitations fall within one of the following subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance:
(a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) Certain method of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interaction (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities of behaviors; business relationships); maintaining personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Claim 1 is illustrative of the claimed (ineligible) subject matter:
1. A network system, comprising: a communication terminal used by a user; and a server configured to communicate with the communication terminal via communication channel corresponding to the user, and to identify, from a plurality of refrigerators, a refrigerator corresponding to the user, wherein: the communication terminal accepts an input of a product to be purchased, and the server deletes, from stock information in the refrigerator corresponding to the user, the product to be purchased.
The claim(s) recite a system for communicating products to be purchased to a server and deletes (or adds in claim 5) the product from stock. The claim limitation(s) recite an abstract idea and are concepts that fall within certain methods of organizing human activity (commercial interaction). The limitations recited in the dependent claims add limitations that further limit the abstract idea. Accordingly, the claim(s) require further analysis under Prong Two.
Revised Step 2A: Prong Two – If the Claim Recites a Judicial Exception, Evaluate Whether the Claim Recites Additional Elements that Integrate the Exception into a Practical Application of that Exception.
A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. With respect to claims 1-12, these claims include a communication terminal, a server, microphone (claim 2), button (claim 2), and memory (claims 10-12). The devices are recited at a high level of generality and the communication between devices amounts to transmission of data which is not enough to integrate the abstract idea into a practical application (See MPEP 2106). Consequently, these claims are directed to an abstract idea.
Step 2B: If the Claim is directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept.
If a claim has been determined to be directed to a judicial exception under Step 2A, prong 2, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). Here, in regards to claims 1-12, the additional elements of a communication terminal, a server, microphone (claim 2), button (claim 2), and memory (claims 10-12) fail to provide an inventive concept and when considered separately and in combination, the elements do not add significantly more. Rather, the additional elements only transmit and store data, which are well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d) (e.g., use of a computer for electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log).
Moreover, “considered as an ordered combination, the computer components of [applicant’s] claims add nothing that is not already present when the steps are considered separately.” Alice v. CLS Bank, 134 S. Ct. 2347, 110 USPQ2d 1976, 1985 (2014). Consequently, the Examiner concludes that the claims do not amount to significantly more than the abstract idea, and consequently remain ineligible.
Claim Rejections - 35 USC § 103
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over US20090277199a1 (hereinafter US‘199) in view of JP2005202696A (hereinafter JP‘696).
PNG
media_image1.png
285
926
media_image1.png
Greyscale
PNG
media_image2.png
146
777
media_image2.png
Greyscale
PNG
media_image3.png
665
771
media_image3.png
Greyscale
US’199 discloses the limitations of the claims including removing and discarding products with expiry dates (thereby removing from stock/inventory) and ordering/replacing those products. (See paragraph 0039 above).
US’199 does not explicitly teach the use of a “server” (it does mention “Internet”) but JP‘696, in a similar refrigerator monitoring field, teaches the use of a server, per se (See paragraph below).
PNG
media_image4.png
380
899
media_image4.png
Greyscale
It would have been obvious to one of ordinary skill in the art at the effective time of filing of the present application to include a server, as taught by JP’696, in order to provide a means “for providing dish information of possible dishes” (see JP’696 paragraph above, last 4 lines).
US’199 in view of JP’696 does not explicitly teach “to identify, from a plurality of refrigerators, a refrigerator corresponding to the user”. US’199 does teach “subject refrigerator” (see paragraph 0036 below) hinting at the possibility of other refrigerators.
PNG
media_image5.png
292
768
media_image5.png
Greyscale
JP’696 teaches that it is old and well known (see screenshot below) to have a system that manages a plurality of “home appliances connected via a network” (plural, emphasis added).
PNG
media_image6.png
596
781
media_image6.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to further modify US’199 in view of JP’696 to include an identification of a singular refrigerator as part of a network of appliances and corresponding to the user (home network), in view of JP’696 “BACKGROUND-ART” (see JP’696 screenshot above), in order to access the personal food database “on the go” (JP’696 BACKGROUND ART, first paragraph).
In regard to claim 2/6: US’199 teaches the use of a telephone for communication (See paragraph 0051 above) but does not specifically teach voice and microphone while a predetermined button is pressed.
The examiner takes Official Notice that voice and microphone while a predetermined button is being pressed is old and well know, for example a walkie-talkie.
It would have been obvious to modify US’199 to include a push-button to be held down while talking, similar to a walkie-talkie, as one-way communication would suffice to make an order.
In regard to claim 3, US’199 teaches “automatically” ordering (See paragraph 0051).
In regard to claim 4/7, JP’696 teaches dishes that can be cooked based on what is in the refrigerator.
It would have been obvious to modify US’199 to include a menu/dish to be presented, in order to be able to cook from what the user has (See ‘696 paragraph above).
In regard to new claim 10-12, US’199 teaches place information indicating where the product to be purchased is purchased (in paragraph 0039; see below screenshot -“an order information to a store where such products were purchased”) and JP’696 teaches “location of the recommended store” (See screenshot below) but both references fail to specifically teach the claim limitation of “purchased based on position information of the communication terminal”.
The examiner, however, takes Official Notice that it was old and well known at the time of filing that food orders often take into consideration the position (i.e., location) of the place of storage such as the refrigerator when determining where the product is to be purchased. This is to avoid excessive shipping costs and to avoid spoilage of the food products.
It would have been obvious to one of ordinary skill in the art at the time of filing to have the place information indicating where the product to be purchased is purchased be based on position information of the communication terminal in order to avoid excessive shipping costs of ordered products and to avoid spoilage of the food products.
PNG
media_image7.png
323
771
media_image7.png
Greyscale
PNG
media_image8.png
544
794
media_image8.png
Greyscale
Response to Arguments
With respect to 35 USC 101, the applicant argues that the examiner has not addressed each limitation of every claim but the examiner has sufficiently addressed the limitations and the additional elements in the rejection above. The applicant argues that the claims improve the functioning of the computer itself, but the examiner is not convinced that the actual computer functioning is being improved. The computer is instead being used as a tool.
With respect to 103, applicant argues:
PNG
media_image9.png
243
761
media_image9.png
Greyscale
Regarding the 103 rejection, applicant argues that the examiner has not fully addressed claim 3 but US’199, in the context of the entire reference, does teach the limitation.
Applicant then argues that the reference does not teach claim 4. But, the reference teaches menus at various times depending on what is in the refrigerator. So therefore, menus are presented at times before any particular product is purchased. A similar analysis is true for claim 7. Menus are presented to the user after products are added to stock information (i.e., specifically when the product is in the refrigerator).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Florian Zeender whose telephone number is (571)272-6790. The examiner can normally be reached on Monday-Friday, 9:30-5:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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 the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FLORIAN M ZEENDER/ Supervisory Patent Examiner, Art Unit 3627
Prosecution Insights