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 .
Claims 1 and 3-11 have been examined.
Claim Objections
Claim 10 is objected to because of the following informalities: The verb forms in claim 10 are inconsistent. In the seventh line of claim 10, “start the second mode” would be better as “the information processing apparatus starts the second mode”. In the ninth line, “read identification information” should be “reads identification information”; note that this followed by “prevents duplicate registration”. In the eleventh line, “perform a payment process” should be “performs a payment process” In the twelfth line, “generates and display a store-leaving code” should be “generates and displays a store-leaving code”. In the thirteenth line, “clear the virtual cart” should be “clears the virtual cart”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: The verb forms in claim 11 are inconsistent. In the eighth line of claim 11, “start the second mode” would be better as “the information processing apparatus starts the second mode”. In the ninth line, “read identification information” should be “reads identification information”; note that this followed by “prevents duplicate registration”. In the eleventh line, “perform a payment process” should be “performs a payment process” In the twelfth line, “generates and display a store-leaving code” should be “generates and displays a store-leaving code”. In the thirteenth line, “clear the virtual cart” should be “clears the virtual cart”. 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 and 3-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea, in the field of commercial interactions) without significantly more. The claims recite an information processing apparatus, method, and computer-readable storage medium for supporting purchasing through the Internet and in a real store . This judicial exception is not integrated into a practical application because the claims do not recite specific limitations indicative of integration into a practical application, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, as set forth in detail below.
The following 35 U.S.C. 101 analysis is performed in accordance with section 2106 of the Manual of Patent Examination Procedure (concerning Patent Subject Matter Eligibility Guidance). Independent claim 1 recites an information processing apparatus comprising at least one processor, and therefore falls within the statutory category of machine, as do its dependents; independent claim 10 recites a method, and therefore falls within the statutory category of process; independent claim 11 recites a non-transitory computer-readable storage medium, and therefore falls within the statutory category of manufacture (Mayo test, Step 1). Claims 1 and 3-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea, and specifically to commercial interactions under the field of organizing human activity without significantly more (Mayo test, Step 2A, Prong 1). The claims recite an information processing apparatus, method, and computer-readable storage medium for supporting purchasing. This judicial exception is not integrated into a practical application because mere instructions to implement an abstract idea on a computer, or use a computer as a tool to perform an abstract idea, are not indicative of integration into a practical application, nor is linking the use of the judicial exception to a particular technological environment or field of use (Mayo test, Step 2A, Prong 2). Adding insignificant extra-solution activity to the judicial exception is also not indicative of integration into a practical application. The claims do not recite improvements to the functioning of a computer or to any other technology or technical field. The claims do not recite applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. The claims do not recite applying the judicial exception with, or by the use of, a particular machine. The claims do not recite effecting a transformation or reduction of a particular article to different state or thing. The claims do not recite applying or using a judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, failing to make the claim as a whole more than a drafting effort designed to monopolize the exception (Mayo test, Step 2A, Prong 2).
There are no additional elements recited in the claims to raise them to significantly more than the judicial exception. In particular, the claims do not add a specific limitation other than what is well-understood, routine, and conventional activity in the field (Mayo test, Step 2B). The detailed apparatus, method, and computer-readable storage medium recited are non-obvious over the prior art, but non-obviousness under 35 U.S.C. 103 is a different issue from eligibility under 35 U.S.C. 101. The specific steps of the claims, such as receiving a trigger for switching from a first to a second mode, performing a process of switching, and performing the process of switching when it is detected that a predetermined time has elapsed from a store entry time, or that position information of an information processing apparatus is away from the corresponding store by a predetermined distance, or a completion notification of a store leaving process is displayed, etc., do not qualify, alone or in combination, to raise the claimed method and system to significantly more than an abstract idea.
As per independent claim 1, Avidan et al. (U.S. Patent Application Publication 2017/0193592) discloses (paragraph 25, emphasis added), “Although not illustrated, it should be appreciated that the ecommerce server 110, the merchant computer 120, and the customer computer 130 each include conventional components, such as a processor and a memory medium storing computer-readable instructions that are executable by the processor to perform various operations including those described herein.” Hence, the at least one processor comprised in the information processing apparatus requires merely well-understood, routine, and conventional technology. Horvat (U.S. Patent Application Publication 2009/0031147) discloses (paragraph 17, emphasis added), “Conventional systems may therefore receive a wake up signal and switch the device back to a normal mode.” Further from paragraph 17, “Many conventional systems use a remote control to provide a wake up signal to a receiver, wherein the wake up signal then triggers a switch, switching the device back to normal mode.” Hence, a receiving unit configured to receive a trigger for switching from a first mode for supporting purchase through Internet online order to a second mode for supporting purchase in a physical store requires merely well-understood, routine, and conventional technology.
The switching itself, as recited in the claims, is not in itself technological in any defined way. Kang et al. (U.S. Patent Application Publication 2018/0232824) discloses (paragraph 53, emphasis added), “Any one of various well-known technologies may be used to determine a pre-set threshold distance. For example, the apparatus 110 according to embodiments may determine a distance between two places by using a difference on a 2-dimensional (2D) coordinate values. The apparatus 110 according to embodiments may calculate a distance between two places by using global coordinate system (GPS) coordinates or latitude and longitude coordinates.” Hence, for the processing unit to perform a process of switching from the second mode to the first mode in a case where it is detected that a predetermined time has elapsed from a store entry time, or that position information of the information processing apparatus is away from the corresponding store by a predetermined distance, or a completion notification of a store leaving process is displayed, while the second node is being executed, requires merely well-understood, routine, and conventional technology. New language in claim 1 includes:
(a) reads identification information of a product and prevents duplicate registration in a virtual cart;
(b) upon completion of purchase, performs a payment process for the products in the virtual cart;
(c) generates and displays a store-leaving code associated with the purchased products;
(d) clears the virtual cart;
Preventing duplicate registration is not specifically technological. Bochicchio (U.S. Patent Application Publication 2009/0059004) discloses (paragraph 22, emphasis added), “The input device can be a conventional commercially available scanner, whereby the scanner will read coded identifying information in the form of a bar code when the scanner is pointed at the bar code and activated, such as pressing a switch or pulling a trigger.” Hence, only well-understood, routine, and conventional technology would have been required to read identification information of a product. Performing a payment process is not specifically technological, nor is clearing the virtual cart. Derner et al. (U.S. Patent Application Publication 2019/01633349) discloses (paragraph 3, emphasis added), “Other conventional web-based maps may have a panel of the user interface adjacent to the map region that displays images or other information associated with items within the map view – again, often in response to the user selecting an item located on the map.” Hence, generating and displaying a store-leaving code requires only well-understood, routine, and conventional technology. The limitations of claim 1, whether considered separately or in combination with each other, do not raise the recited invention to significantly more than an abstract idea.
Claim 3, which depends from claim 1, recites that the processing unit acquires a floor map of the corresponding store in the second mode. The courts have recognized the following computer functions as well-understood, routine and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090,1093 (Fed. Cir. 2015) sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). The floor map can be acquired by (inter alia) receiving or transmitting data over a network, and therefore requires merely well-understood, routine, and conventional technology. Claim 4, which depends from claim 3, recites that the processing unit is capable of registering one or a plurality of products in a list, and displays the one or the plurality of products registered in the list to be identifiable on the floor map in the second mode. The registering need not in itself be technological. Derner et al. (U.S. Patent Application Publication 2019/01633349) discloses (paragraph 3, emphasis added), “Other conventional web-based maps may have a panel of the user interface adjacent to the map region that displays images or other information associated with items within the map view – again, often in response to the user selecting an item located on the map.” Hence, displaying the one or the plurality of products registered in the list to be identifiable on the floor map requires merely well-understood, routine, and conventional technology. The limitations of claim 3 and 4, whether considered separately, or in combination with each other and with the limitations of claim 1, do not raise the recited invention to significantly more than an abstract idea.
Claim 5, which depends from claim 1, recites that the receiving unit is capable of receiving a beacon signal from the physical store, and the trigger includes the beacon signal. Black et al. (U.S. Patent Application Publication 2021/0203888) discloses (paragraph 34, emphasis added), “A device wishing to determine its location does so by measuring the received beacon signal strength (RSS), or signal power, from each of the beacons to perform a trilateration calculation that is well-known in the art.” The calculation being well-known, beacon signals would inherently have to have been well-known; hence, only well-understood, routine, and conventional technology would have been required for the receiving unit to be capable of receiving a beacon signal from the physical store. For the trigger to include the beacon signal is not in itself technological. The limitations of claim 5, whether considered separately, or in combination with each other and with the limitations of claim 1, do not raise the recited invention to significantly more than an abstract idea.
Claim 6, which depends from claim 1, recites that the receiving unit is capable of receiving a short range wireless communication signal from the physical store, and the trigger includes the short range wireless communication signal. Suzuki (U.S. Patent Application Publication 2020/0382900) discloses (paragraph 2, emphasis added), “Conventionally, using short-range wireless communication to transmit and receive data between apparatuses is known. For example, in Japanese Patent Laid-Open No. 2017-037427, there is a technology for specifying the distance between devices, using Bluetooth (registered trademark) communication.” Hence, only well-understood, routine, and conventional technology would have been required for the receiving unit to be capable of receiving a short range wireless communication signal from the physical store. For the trigger to include the beacon signal is not in itself technological. The limitations of claim 6, whether considered separately, or in combination with each other and with the limitations of claim 1, do not raise the recited invention to significantly more than an abstract idea.
Claim 7, which depends from claim 1, recites that the receiving unit is capable of acquiring position information of the information processing apparatus, and the trigger includes the position information being within a predetermined distance from the physical store. Doan et al. (U.S. Patent Application Publication 2019/0291274) discloses (paragraph 4, emphasis added), “The conventional robot control apparatus includes a robot speed calculation device having a part for acquiring current position information on a robot, a part for acquiring maximal rated speed information on a joint of the robot, and a part for acquiring a permissible speed limit that can be taken in a linear interpolation operation on the distal end of the robot on the basis of the current position information on the robot and the maximal rated speed information on the joint.” Hence, only well-understood, routine, and conventional technology would have been required for the receiving unit to be capable of acquiring position information of the information processing apparatus. For the trigger to include the position information being within a predetermined distance from the real store is not in itself technological. The limitations of claim 7, whether considered separately, or in combination with each other and with the limitations of claim 1, do not raise the recited invention to significantly more than an abstract idea.
Claim 8, which depends from claim 1, recites that the information processing apparatus further comprises a reading unit configured to read code information including store information, wherein the trigger includes the code information. Bochicchio (U.S. Patent Application Publication 2009/0059004) discloses (paragraph 22, emphasis added), “The input device can be a conventional commercially available scanner, whereby the scanner will read coded identifying information in the form of a bar code when the scanner is pointed at the bar code and activated, such as pressing a switch or pulling a trigger.” Hence, only well-understood, routine, and conventional technology would have been required for the reading unit to be configured to read code information including store information. . For the trigger to include the code information is not in itself technological. The limitations of claim 8, whether considered separately, or in combination with each other and with the limitations of claim 1, do not raise the recited invention to significantly more than an abstract idea.
Claim 9, which depends from claim 1, recites that the information processing apparatus is a mobile terminal owned by a consumer. Shah et al. (U.S. Patent Application Publication 2019/0200160) discloses (paragraph 1, emphasis added), “Conventionally, users would purchase mobile communication devices through a particular service provider. . . . Conventionally, the customers may have purchased mobile communication devices directly from the communication service provider.” Purchasing creates ownership (relevant if ownership by a consumer can be considered technology); for users or customers to have conventionally purchase mobile communication devices shows the devices themselves to have been well-understood, routine, and conventional. Hence, only well-understood, routine, and conventional technology would have been required for the information processing apparatus to be a mobile terminal owned by a consumer. The limitation of claim 9, whether considered separately or in combination with the limitations of claim 1, does not raise the recited invention to significantly more than an abstract idea.
As per independent claim 10, Avidan et al. (U.S. Patent Application Publication 2017/0193592) discloses (paragraph 25, emphasis added), “Although not illustrated, it should be appreciated that the ecommerce server 110, the merchant computer 120, and the customer computer 130 each include conventional components, such as a processor and a memory medium storing computer-readable instructions that are executable by the processor to perform various operations including those described herein.” Hence, the information processing apparatus [computer] requires merely well-understood, routine, and conventional technology. Horvat (U.S. Patent Application Publication 2009/0031147) discloses (paragraph 17, emphasis added), “Conventional systems may therefore receive a wake up signal and switch the device back to a normal mode.” Further from paragraph 17, “Many conventional systems use a remote control to provide a wake up signal to a receiver, wherein the wake up signal then triggers a switch, switching the device back to normal mode.” Hence, a receiving step of receiving a trigger for switching from a first mode for supporting purchase through Internet online order to a second mode for supporting purchase in a physical store requires merely well-understood, routine, and conventional technology.
Claim 10 as amended recites sub-steps (a), (b), (c), and (d), parallel to the corresponding additions to claim 1. These new operations are found not to be significantly technological, in accordance with the analysis set forth above with regard to claim 1, and based on Bochicchio and Derner, as quoted above with regard to claim 1.
The switching itself, as recited in the claims, is not in itself technological in any defined way. Kang et al. (U.S. Patent Application Publication 2018/0232824) discloses (paragraph 53, emphasis added), “Any one of various well-known technologies may be used to determine a pre-set threshold distance. For example, the apparatus 110 according to embodiments may determine a distance between two places by using a difference on a 2-dimensional (2D) coordinate values. The apparatus 110 according to embodiments may calculate a distance between two places by using global coordinate system (GPS) coordinates or latitude and longitude coordinates.” Hence, a processing step of performing a process of switching from the second mode to the first mode in a case where it is detected that a predetermined time has elapsed from a store entry time, or that position information of the information processing apparatus is away from the corresponding store by a predetermined distance, or a completion notification of a store leaving process is displayed, while the second node is being executed, requires merely well-understood, routine, and conventional technology. The limitations of claim 10, whether considered separately or in combination with each other, do not raise the recited invention to significantly more than an abstract idea.
As per independent claim 11, Avidan et al. (U.S. Patent Application Publication 2017/0193592) discloses (paragraph 25, emphasis added), “Although not illustrated, it should be appreciated that the ecommerce server 110, the merchant computer 120, and the customer computer 130 each include conventional components, such as a processor and a memory medium storing computer-readable instructions that are executable by the processor to perform various operations including those described herein. The computer-readable instructions can be stored on non-transitory computer-readable storage media of a conventional type, whether devices and/or materials.” Hence, the non-transitory computer-readable storage medium configured to store a computer program comprising instructions for an information processing apparatus that supports purchase to carry out a series of steps requires merely well-understood, routine, and conventional technology. Horvat (U.S. Patent Application Publication 2009/0031147) discloses (paragraph 17, emphasis added), “Conventional systems may therefore receive a wake up signal and switch the device back to a normal mode.” Further from paragraph 17, “Many conventional systems use a remote control to provide a wake up signal to a receiver, wherein the wake up signal then triggers a switch, switching the device back to normal mode.” Hence, the step of receiving a trigger for switching from a first mode for supporting purchase through Internet online order to a second mode for supporting purchase in a physical store requires merely well-understood, routine, and conventional technology.
Claim 11 as amended recites sub-steps (a), (b), (c), and (d), parallel to the corresponding additions to claim 1. These new operations are found not to be significantly technological, in accordance with the analysis set forth above with regard to claim 1, and based on Bochicchio and Derner, as quoted above with regard to claim
The switching itself, as recited in the claims, is not in itself technological in any defined way. Kang et al. (U.S. Patent Application Publication 2018/0232824) discloses (paragraph 53, emphasis added), “Any one of various well-known technologies may be used to determine a pre-set threshold distance. For example, the apparatus 110 according to embodiments may determine a distance between two places by using a difference on a 2-dimensional (2D) coordinate values. The apparatus 110 according to embodiments may calculate a distance between two places by using global coordinate system (GPS) coordinates or latitude and longitude coordinates.” Hence, performing a process of switching from the second mode to the first mode in a case where it is detected that a predetermined time has elapsed from a store entry time, or that position information of the information processing apparatus is away from the corresponding store by a predetermined distance, or a completion notification of a store leaving process is displayed, while the second node is being executed, requires merely well-understood, routine, and conventional technology. The limitations of claim 11, whether considered separately or in combination with each other, do not raise the recited invention to significantly more than an abstract idea.
Non-Obvious Subject Matter
Claims 1 and 3-9 are rejected under 35 U.S.C. 101, and objected to for informalities, but recite non-obvious subject matter.
Claim 10 is rejected under 35 U.S.C. 101, and objected to for informalities, but recites non-obvious subject matter.
Claim 11 is rejected under 35 U.S.C. 101, and objected to for informalities, but recites non-obvious subject matter.
The following is a statement of reasons for the indication of non-obvious subject matter: The closest prior art of record, Isaacson et al. (U.S. Patent Application Publication 2018/0232824), discloses (paragraph 68, emphasis added), “Shopping carts in one scenario can span online, in-app, and in-store product selections. The system can store the various products that have been perused on the various websites and/or in store. As a user then enters a product into a shopping cart, and [sic, presumably “an”] option can be presented which populates the shopping cart with one or more of these other sites or physical stores.” Isaacson further discloses (paragraph 123, emphasis added), “FIG. 4 illustrates an example user interface 400, which can be presented on a browser 318, or other app to guide the user through a store or group of stores. The figure illustrates various items in a persistent shopping cart which can span purchases online, in-store, or both.”
Isaacson further discloses (paragraph 191, emphasis added), “When the user is making a purchase either online or in store, the system can present the various payment accounts stored, such as a credit card in Google Wallet, plus a Pay Store account, and let the user choose amongst the available payment options.” Also from paragraph 191, emphasis added: “The server 910 can continuously receive additional data entered by the user in the unified input field via an update, or modify data entered at the merchant website 916 based on products selected for purchase at the merchant website 916 or from a brick-and-mortar store, or even switch to a different merchant website or different store altogether.”
With regard to the new claim limitation of claim 1, “(a) reads identification information of a product”, and parallel language in claims 10 and 11, Isaacson discloses (Abstract, emphasis added), “The user can scan products codes in the store using the interactive interface.” Isaacson further discloses (paragraph 59, emphasis added), “The user device 204 can have a code reader/camera or other communication component and as they look at products they like, they can scan a code, or the product could be automatically identified through near field communication or some other wireless protocol.”
With regard to the new claim limitation of claim 1, “(b) upon completion of purchase, performs a payment process for the products in the virtual cart”, and parallel language in claims 10 and 11, Isaacson discloses (paragraph 82, emphasis added), “Having identified the product or products 302, 306 that the user desires to purchase, the device 204 via the browser communicates with the store server 218, and enables the store server to initiate a browser API based payment process for products in a shopping cart. FIG. 3A can also illustrate other aspects on this disclosure.” See also paragraph 123 and Figure 4. Isaacson does not disclose (c) generat[ing] and display[ing] a store-leaving code associated with the purchased products, but Dalal et al. (U.S. Patent Application Publication 2021/0158051) teaches (paragraph 136, emphasis added), “When the shopper scans their personal device on the scanner 115, the personal device may provide an electronic code that uniquely identifies the shopper to indicate that the shopper is leaving the store. When the shopper leaves the store, an account for the shopper is charged for the items that the shopper removed from the store.” Dalal does not explicitly teaches displaying the store-leaving code, but, for example, Jones et al. (U.S. Patent Application Publication 2017/0280290) teaches (paragraph 51, emphasis added), “In one embodiment, a unique identifier 462 is provided to the user and displayed on display 206, either alone or printed below the optical machine-readable representation 460. In this embodiment, the user may manually input or key in the unique identifier 462 at a point of sale terminal, or provide the unique identifier 462 to a cashier who then can manually enter the unique identifier 462 at the point-of-sale terminal 600.”
Isaacson does not disclose (d) clear[ing] the virtual cart, but Jones et al. (U.S. Patent Application Publication 2017/0280290) teaches clearing (emptying) a virtual cart (paragraph 42, emphasis added), “The shopping cart screen 430 may also present the user with the option to cancel an order 452 by pressing a cancel order button 438, wherein the contents of the virtual shopping cart 433 are emptied and the user is presented with either the shopping screen 418 or the home screen 402 again. With reference to FIG. 15, in one embodiment, when the cancel order button 438 is selected, the user may be prompted with an order cancellation screen 490 which prompts the user to confirm his/her desire to cancel order 452 and empty the virtual shopping cart 433.”
Isaacson further discloses (paragraph 194, emphasis added), “The device 904 can also be switched from a ‘normal’ state mode to an in-store mode in which the browser is acting as an agent to retrieve data from a scanner, camera, or other input component built into the mobile device.” However, Isaacson does not disclose the specifics of switching between modes and the other units and operations of apparatus claim 1, or the parallel limitations of method claim 10 and non-transitory computer-readable storage medium claim 11. No other prior art of record supplies the deficiencies of Isaacson. In particular, Dalal and Jones do not.
Response to Arguments
Applicant's arguments filed December 1, 2025 have been fully considered but they are not persuasive. The objection to the specification has been withdrawn, but Applicant’s amendments to claims 10 and 11 have given rise to new objections, and, more importantly, the claims are still rejected under 35 U.S.C. 101. Applicant argues (pages 8 and 9 of the Amendment and Remarks) that, under Step 2A, Prong One of the Mayo test, amended independent claim 1 is not directed to any of the abstract idea groupings identified in the 2019 PEG, and in particular, not directed to commercial interactions. Examiner replies that claim 1, as amended, recites, “switching from a first mode for supporting purchase through Internet online order to a second mode for supporting purchase in a physical store, and further recites “upon completion of purchase, performs a payment process for the products in the virtual cart”. Therefore, whatever else may be involved, claim 1 (and its dependents, and parallel claims 10 and 11) are at some level directed to commercial interactions.
Applicant then argues that the analysis under Step 2A, Prong Two in any event demonstrates that the claim integrates any alleged abstract idea into a practical application (pages 9 through 11 of the Amendment and Remarks). Applicant bases this on “the claim’s recitation of specific operations that alter the functioning of the apparatus itself”, in particular with regard to switching from a first mode to a second mode, and then, based on certain kinds of detection, from the second mode to the first mode. Examiner replies that this action of switching is not technological in any strong sense, and further that the instant specification does not make clear what need be done technologically to switch between modes. (In accordance with the discussion in the interview held November 24, 2025, Examiner considered the specification for disclosures that might be incorporated into the claims to make the claims a definitely technological improvement; Examiner did not find anything which, in his judgment, could be proposed to make the claims allowable.) The recited apparatus can behave differently, so as to be used either for supporting purchase through Internet online orders or for supporting purchase in a physical store, but the claims do not recite what is done technologically to switch between modes.
Applicant argues that claim 1 addresses technical problems through a technical solution by performing a process of switching from the second mode to the first mode where it is detected that a predetermined time has elapsed from a store entry time, or that position information of the information processing apparatus is away from the corresponding store by a predetermined distance, or a completion notification of a store leaving process is displayed. Applicant cites Enfish, LLC v. Microsoft Corporation as an example of claims being found patent-eligible as a result of an improvement in computer software, rather than hardware. Examiner replies that this is not analogous to the present case. Enfish involved a self-referential database as a technological improvement in databases and thus computers, even though the improvement was in software rather than hardware. In the instant case, the information processing apparatus presumably has ordinary software which any programmer of ordinary skill could write, given instructions on what was wanted. The software would tell the information processing apparatus to switch to the first mode if a predetermined time had elapsed on a timer, or if position information (e.g., from GPS) indicated a sufficient distance from a physical store, or a completion notification was displayed.
The Supreme Court noted in the Alice case, “The fact that a computer ‘necessarily exist[s] in the physical, rather than the purely conceptual, realm,’ Brief for Petitioner 39, is beside the point. There is no dispute that a computer is a tangible system (in §101 terms, a ‘machine’), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the §101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept.” The Court opposed letting that happen, and in accordance with precedent, Examiner maintains that having a computerized device be configured to implement switching between commercial modes is not sufficient to integrate the abstract idea into a practical application for purposes of Step 2A, Prong Two.
There is also the decision in FairWarning IP, LLC, v. Iatric Systems, Inc., where claims directed to a method of detecting improper access of a patient’s protected health information (PHI) in a computer environment, and to a corresponding system, were found patent-ineligible, despite the recitation of computer technology, and of a computer environment such that the method could not be performed, and the system could not operate, without the use of computers. The court nonetheless ruled that the clams were not patent-eligible under 35 U.S.C. 101.
Applicant further argues (page 12 of the Amendment and Remarks) that the claims are patent-eligible under Step 2B of the Mayo test. In particular, Applicant argues that the acknowledgement that the claimed invention is non-obvious over the prior art of record undermines the assertion that the same configuration of operation steps was routine or conventional. Examiner replies that inquiries under 35 U.S.C. 103 and 35 U.S.C. 101 are distinct, and that a non-obvious invention directed to commercial interactions or another form of abstract idea may properly be rejected under 101, or that a mechanical device (for example) may be potentially eligible under 101, but nonetheless rejected as obvious of even anticipated. Regarding Step 2B, Examiner replies that evidence or judicial precedents showing that a claim directed to an abstract idea uses only well-understood, routine, and conventional technology may properly establish conventionality under the Berkheimer standard. This is so even when multiple references are use to establish the well-understood, routine, and conventional of different elements in a claim.
Examiner further calls to Applicant’s attention the CAFC decision, Intellectual Ventures I LLC, Intellectual Ventures II LLC v. Capital One Bank (USA), National Association, Capital One Financial Corporation, Capital One, National Association, wherein the court ruled that certain patents claimed unpatentable abstract ideas, and were thus invalid, even though the claims at issue recited particular features for image processing, tailoring web pages to particular users, etc., and thus involved actual technology and recited more than purely abstract ideas as such. Examiner therefore maintains that his decision in the present case is in accordance with precedent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jones et al. (U.S. Patent 10,251,024) disclose a system for tracking physical objects. Dalal et al. (U.S. Patent 11,023,741) disclose draw wire encoder based homography.
Jones et al. (U.S. Patent Application Publication 2017/0280290) disclose a system for tracking physical objects. Dalal et al. (U.S. Patent Application Publication 2021/0158051) disclose draw wire encoder based homography.
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 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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/NICHOLAS D ROSEN/ Primary Examiner, Art Unit 3689 December 22, 2025