DETAILED ACTION
Notice to Applicant
This Office Action is responsive to amendment filed 25 February 2026.
Claims 1, 3-8, 10, 11, and 13 are amended.
Claim 2 is cancelled.
Claims 1, 3-11, and 13 are pending.
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, 3-11 and 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites collecting a user’s online behavior history in association with a user ID of the user, acquiring biometric information of the user acquired in a real store that the user has visited, specifying the user ID of the user by controlling biometric authentication on the basis of biometric information, outputting the behavior history associated with the user ID in a case where the biometric authentication is successful, outputting user information of the user and product information associated with the user information, the user information including at least one of attribute information of the user and information indicating a preference of the user, and the product information associated with the user information indicates the product and that the product is in fashion for at least one of a same generation, a same occupation, a same education background, and a same hometown as the user, which is an abstract idea reasonably categorized as a certain method of organizing human activity (i.e., commercial interactions in the form of marketing and sales activities).
The additional elements unencompassed by the abstract idea include at least one memory storing instructions, at least one processor configured to execute instructions, and a store terminal. These additional elements fail to integrate the abstract idea into a practical application because the additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
The claim does not include limitations sufficient, either alone or in combination, to amount to significantly more than the claimed abstract idea because the aforementioned additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
Claims 3-6 describe information and the evaluation thereof and thus further describe the abstract idea.
Claim 7 recites collecting a user’s online behavior history in association with a user ID of the user, acquiring biometric information of the user acquired in a real store that the user has visited, specifying the user ID of the user by controlling biometric authentication on the basis of biometric information, and outputting the behavior history associated with the user ID in a case where the biometric authentication is successful, outputting user information of the user and product information associated with the user information, the user information including at least one of attribute information of the user and information indicating a preference of the user, and the product information associated with the user information indicates the product and that the product is in fashion for at least one of a same generation, a same occupation, a same education background, and a same hometown as the user, which is an abstract idea reasonably categorized as a certain method of organizing human activity (i.e., commercial interactions in the form of marketing and sales activities).
The additional elements unencompassed by the abstract idea include a store terminal provided in a real store, an information processing apparatus connected to the store terminal via a wireless or wired communication line, at least one memory storing instructions, at least one processor configured to execute instructions, and a store terminal. These additional elements fail to integrate the abstract idea into a practical application because the additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
The claim does not include limitations sufficient, either alone or in combination, to amount to significantly more than the claimed abstract idea because the aforementioned additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
Claim 8 recites acquiring biometric information and executing authentication based on the acquired information and thus further describes the abstract idea.
The additional elements unencompassed by the abstract idea include a biometric authentication apparatus connected to the information processing apparatus. These additional elements fail to integrate the abstract idea into a practical application because the additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
The claim does not include limitations sufficient, either alone or in combination, to amount to significantly more than the claimed abstract idea because the aforementioned additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
Claim 9 recites acquiring information and thus further describes the abstract idea.
The additional elements unencompassed by the abstract idea include a user terminal connected to the information processing apparatus. These additional elements fail to integrate the abstract idea into a practical application because the additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
The claim does not include limitations sufficient, either alone or in combination, to amount to significantly more than the claimed abstract idea because the aforementioned additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
Claims 10 and 11 recite sending and receiving information and thus further describe the abstract idea.
Claim 13 recites collecting a user’s online behavior history in association with a user ID of the user, acquiring biometric information of the user acquired in a real store that the user has visited, specifying the user ID of the user by controlling biometric authentication on the basis of biometric information, and outputting the behavior history associated with the user ID in a case where the biometric authentication is successful, outputting user information of the user and product information associated with the user information, the user information including at least one of attribute information of the user and information indicating a preference of the user, and the product information associated with the user information indicates the product and that the product is in fashion for at least one of a same generation, a same occupation, a same education background, and a same hometown as the user, which is an abstract idea reasonably categorized as a certain method of organizing human activity (i.e., commercial interactions in the form of marketing and sales activities).
The additional elements unencompassed by the abstract idea include a non-transitory computer-readable medium storing an information processing program. These additional elements fail to integrate the abstract idea into a practical application because the additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
The claim does not include limitations sufficient, either alone or in combination, to amount to significantly more than the claimed abstract idea because the aforementioned additional elements merely serve as generic computer components on which the abstract idea is implemented. See MPEP 2106.05(f).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 6-9, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Suetsugi (US 20210233103 A1) in view of Peyrelevade (US 20030065636 A1).
As per claim 1, Suetsugi discloses an information processing apparatus comprising: at least one memory storing instructions, and at least one processor configured to execute the instructions to:
collect an online behavior history of a user on a website including a product ([0084]);
register the online behavior history in association with a user ID of the user ([0085]);
acquire, from a store terminal provided in a real store, biometric information of the user acquired in a real store that the user has visited ([0089]);
specify the user ID of the user by controlling biometric authentication on the basis of the biometric information ([0089]); and
output, in a case where the biometric authentication is successful, the online behavior history associated with the user ID to the store terminal ([0124-0125] E.g., store staff terminal provided with products customer has shown high motivation to purchase such as products viewed on a website in the past.).
output, in addition to outputting the online behavior history, user information of the user and product information associated with the user information in addition to the behavior history ([0124-0125] E.g., store staff terminal provided with products customer has shown high motivation to purchase such as products viewed on a website in the past.).
Although Suetsugi discloses a camera inside a real store collecting and providing biometric information of in-store users (e.g., [0089]), Suetsugi does not explicitly disclose that the camera itself is part of a “store terminal.” However, given that the camera, POS terminals, and touchpoint terminals are all located within the store and networked to one another (e.g., Fig. 5) and that the reference notes that both the camera and touchpoint terminals may be installed “at the entrance/exit of the store,” it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the disclosed camera at the disclosed terminal(s) in order to collect biometric information as the choice from a finite number of identified, predictable solutions, with a reasonable expectation of success. Furthermore, all of the claimed elements were known in the prior art of Suetsugi and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention.
Suetsugi may not explicitly disclose, however, Peyrelevade discloses the user information includes at least one of attribute information of the user and information indicating preference of the user ([0037]), and the product information associated with the user information includes the product that is in fashion for at least one of the same generation, the same occupation, the same educational background, and the same hometown as the user ([0037] “personal characteristics” further defined in [0160].).
Both Suetsugi and Peyrelevade concern customized product recommendation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventions to add Peyrelevade’s features to Suetsugi with the motivation to better recommend products to customers by utilizing more complete customer information. Peyrelevade [0001]-[0008].
As per claim 3, Suetsugi in view of Peyrelevade discloses the limitations of claim 1 as discussed above. Suetsugi may not explicitly disclose, however Peyrelevade discloses wherein the product includes a cosmetic product ([0037]).
Both Suetsugi and Peyrelevade concern customized product recommendation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventions to add Peyrelevade’s features to Suetsugi with the motivation to better recommend products to customers by utilizing more complete customer information. Peyrelevade [0001]-[0008].
As per claim 6, Suetsugi in view of Peyrelevade discloses the limitations of claim 1 as discussed above. Suetsugi further discloses wherein the at least one processor is further configured to execute the instructions to accept, from the store terminal, purchase of the product desired by the user online on the website including the product ([0123] e.g., customer completes purchase at POS checkout counter.).
As per claim 7, Suetsugi in view of Peyrelevade discloses an information processing system comprising: a store terminal provided in a real store; and an information processing apparatus connected to the store terminal via a wireless or wired communication line (Fig. 5.), wherein the information processing apparatus includes at least one memory storing instructions, and at least one processor configured to execute the instructions to
collect an online behavior history of a user on a website including a product ([0084]);
register the online behavior history in association with a user ID of the user ([0085]);
acquire, from a store terminal provided in a real store, biometric information of the user acquired in a real store that the user has visited ([0089]);
specify the user ID of the user by controlling biometric authentication on the basis of the biometric information ([0089]); and
output, in a case where the biometric authentication is successful, the online behavior history associated with the user ID to the store terminal ([0124-0125] E.g., store staff terminal provided with products customer has shown high motivation to purchase such as products viewed on a website in the past.).
output, in addition to outputting the online behavior history, user information of the user and product information associated with the user information in addition to the behavior history ([0124-0125] E.g., store staff terminal provided with products customer has shown high motivation to purchase such as products viewed on a website in the past.).
Although Suetsugi discloses a camera inside a real store collecting and providing biometric information of in-store users (e.g., [0089]), Suetsugi does not explicitly disclose that the camera itself is part of a “store terminal.” However, given that the camera, POS terminals, and touchpoint terminals are all located within the store and networked to one another (e.g., Fig. 5) and that the reference notes that both the camera and touchpoint terminals may be installed “at the entrance/exit of the store,” it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the disclosed camera at the disclosed terminal(s) in order to collect biometric information as the choice from a finite number of identified, predictable solutions, with a reasonable expectation of success. Furthermore, all of the claimed elements were known in the prior art of Suetsugi and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention.
Suetsugi may not explicitly disclose, however, Peyrelevade discloses the user information includes at least one of attribute information of the user and information indicating preference of the user ([0037]), and the product information associated with the user information includes the product that is in fashion for at least one of the same generation, the same occupation, the same educational background, and the same hometown as the user ([0037] “personal characteristics” further defined in [0160].).
Both Suetsugi and Peyrelevade concern customized product recommendation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventions to add Peyrelevade’s features to Suetsugi with the motivation to better recommend products to customers by utilizing more complete customer information. Peyrelevade [0001]-[0008].
As per claim 8, Suetsugi in view of Peyrelevade discloses the limitations of claim 7 as discussed above. Suetsugi further discloses a biometric authentication apparatus, connected to the information processing apparatus via the wireless or wired communication line, configured to acquire biometric information of the user acquired in the real store and to execute biometric authentication using the biometric information ([0089] face authenticator.).
As per claim 9, Suetsugi in view of Peyrelevade discloses the limitations of claim 7 as discussed above. Suetsugi further discloses a user terminal, connected to the information processing apparatus via the wireless or wired communication line, via which the user acquires information regarding the product online on the website including the product ([0130] e.g., sales promotion information provided to customer terminal).
As per claim 11, Suetsugi in view of Peyrelevade discloses the limitations of claim 7 as discussed above. Suetsugi further discloses wherein the at least one processor is further configured to execute the instructions to accept, from the store terminal, purchase of the product desired by the user online on the website including the product, wherein the store terminal outputs the product to be purchased and user information to the information processing apparatus ([0123]).
As per claim 13, Suetsugi discloses non-transitory computer-readable medium storing an information processing program for causing a computer to execute:
a step of collecting an online behavior history of a user on a website including a product ([0084]);
a step of registering the behavior history in association with a user ID of the user ([0085]);
a step of acquiring biometric information of the user acquired in a real store that the user has visited from a store terminal provided in the real store ([0089]);
a step of specifying the user ID of the user by controlling biometric authentication on the basis of the biometric information ([0089]); and
a step of outputting, in a case where the biometric authentication is successful, the behavior history associated with the user ID to the store terminal i ([0124-0125] E.g., store staff terminal provided with products customer has shown high motivation to purchase such as products viewed on a website in the past.).
a further step of outputting, in addition to outputting the online behavior history, user information of the user and product information associated with the user information in addition to the behavior history ([0124-0125] E.g., store staff terminal provided with products customer has shown high motivation to purchase such as products viewed on a website in the past.).
Although Suetsugi discloses a camera inside a real store collecting and providing biometric information of in-store users (e.g., [0089]), Suetsugi does not explicitly disclose that the camera itself is part of a “store terminal.” However, given that the camera, POS terminals, and touchpoint terminals are all located within the store and networked to one another (e.g., Fig. 5) and that the reference notes that both the camera and touchpoint terminals may be installed “at the entrance/exit of the store,” it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the disclosed camera at the disclosed terminal(s) in order to collect biometric information as the choice from a finite number of identified, predictable solutions, with a reasonable expectation of success. Furthermore, all of the claimed elements were known in the prior art of Suetsugi and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention.
Suetsugi may not explicitly disclose, however, Peyrelevade discloses the user information includes at least one of attribute information of the user and information indicating preference of the user ([0037]), and the product information associated with the user information includes the product that is in fashion for at least one of the same generation, the same occupation, the same educational background, and the same hometown as the user ([0037] “personal characteristics” further defined in [0160].).
Both Suetsugi and Peyrelevade concern customized product recommendation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventions to add Peyrelevade’s features to Suetsugi with the motivation to better recommend products to customers by utilizing more complete customer information. Peyrelevade [0001]-[0008].
Claims 4, 5, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Suetsugi (US 20210233103 A1) in view of Peyrelevade (US 20030065636 A1) and Whiteley et al. (US 11580514 B1).
As per claim 4, Suetsugi in view of Peyrelevade discloses the limitations of claim 1 as discussed above. Suetsugi does not explicitly disclose, however, Whitely discloses wherein the at least one processor is further configured to accept a reservation of the user for a visit to the real store and notifying the store terminal of the reservation (c33 l56 – c34 l1, c34 l27-37).
Suetsugi, Peyrelevade, and Whiteley concern customized product recommendation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventions to add Whiteley’s features to Suetsugi with the motivation to increase efficiency through which customers may secure products. Whiteley c3 l38-54.
As per claim 5, Suetsugi in view of Peyrelevade and Whiteley discloses the limitations of claim 4 as discussed above. Suetsugi does not explicitly disclose, however, Whitely discloses wherein the online behavior history includes the reservation for the visit to the real store and information regarding the product associated with the visit (c32 l67 – c33 l3 “reservations data”).
Suetsugi, Peyrelevade, and Whiteley concern customized product recommendation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventions to add Whiteley’s features to Suetsugi with the motivation to increase efficiency through which customers may secure products. (Whiteley c3 l38-54.)
As per claim 10, Suetsugi in view of Peyrelevade discloses the limitations of claim 7 as discussed above. Suetsugi does not explicitly disclose, however, Whitely discloses wherein the at least one processor is further configured to execute the instructions to accept a reservation of the user for a visit to the real store and notifying the store terminal of the reservation, and in a case where the reservation has been accepted from the user, the store terminal notifies the information processing apparatus of completion of the reservation (c33 l56 – c34 l1, c34 l27-37).
Suetsugi, Peyrelevade, and Whiteley concern customized product recommendation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed inventions to add Whiteley’s features to Suetsugi with the motivation to increase efficiency through which customers may secure products. (Whiteley c3 l38-54.)
Response to Arguments
Claim Rejections – 35 USC 101
Applicant submits the claims are not directed to an abstract idea because no commercial interactions are recited in the claims. Examiner respectfully disagrees and submits that Applicant’s argument is betrayed by his own definition of the problem solved by the claims. That is “selection of a recommended product recommended to a purchaser largely depends on the experience of a salesperson who provides counseling, and there may be a question as to whether the product is a product with which the purchaser is really satisfied. It is desired that purchasers be able to purchase products in a real store with satisfaction, thereby increasing sales of cosmetics in the real store.” Spec. [0004]. The claims recite collecting and evaluating information about users for the purpose of recommending products to those users such that they are satisfied. It is unclear from Applicant’s argument how or why such activities do not constitute marketing activities. For these reasons, Applicant’s argument is not persuasive.
Applicant appears to attempt an analogy to Ex Parte Desjardins, copies and pastes the entirety of the decision, highlights much of it, and submits that the pending claims should be found patent eligible. Desjardins involved a method of training a machine learning model on a series of tasks to perform multiple tasks while avoiding the problem of “catastrophic forgetting” in continual learning systems. The invention calculates the importance of model parameters from a first task and adjusts them during training on a second task to optimize performance while preserving prior knowledge. This approach reduces memory usage and simplifies system architecture, providing concrete technological benefits. In contrast, Applicant’s claimed invention does not appear to have anything to do with machine learning or artificial intelligence. Applicant has not identified any technological benefits akin to solving the problem of catastrophic forgetting in continual learning systems. Instead, Applicant describes the problem purportedly solved as that of unsatisfied customers. Spec. [0004]. Consequently, Applicant’s attempted analogy is misguided and this argument is not persuasive.
Applicant submits that “the Step 2B of the pending rejection should be … withdrawn as at least the pending claims seem to be . . . allowable, at least by the criteria of 35 USC 102 and 103 . . . which . . . seems to be at least informative, if not dispositive, to the step 2B inquiry . . . .” Examiner respectfully disagrees that the claims are eligible at step 2B. First, the claims do not overcome 35 USC 103 as discussed in the rejections above. Second, and more importantly, MPEP 2106.05(I) addresses the clear distinction between novelty/nonobviousness under 102/103 and eligibility under judicial exceptions to 101.
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101”). As made clear by the courts, the “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (“The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103) is further discussed in MPEP § 2106.05(d).
Because the pending claims are not nonobvious and because novelty and nonobviousness does not necessitate eligibility at step 2B, Applicant’s argument is unpersuasive.
Claim Rejections – 35 USC 103
Applicant submits that the references do not teach “the product information associated with the user information indicates the product and that the product is in fashion for at least one of a same generation, a same occupation, a same educational background, and a same hometown as the user.” Examiner respectfully disagrees. Peyrelevade’s “personal characteristics” are described in [0160] and include at least “age” (i.e., “same generation”) and “geographic location of the individual’s residence” (i.e., “same hometown”). The inclusion of these two pieces of information which are utilized in the recommendation of products to the user [0037] reads on the claimed limitation which merely requires information indicating a product is used by a single demographic of the Markush group. For these reasons, Applicant’s arguments are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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JEFF ZIMMERMAN
Supervisory Patent Examiner
Art Unit 3628
/JEFF ZIMMERMAN/Supervisory Patent Examiner, Art Unit 3628
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