Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
2. Claims 1-7, 9 and 10 have been examined.
Claim Objections
3. Claims 4-6 are objected to because of the following informalities: Each recites “wherein the store is grouped… in the store list”. However, as “store” is singular, and in the context of a “store list”, it cannot be grouped. For purposes of examination, the language “wherein the store is grouped”, is interpreted as “wherein the stores are grouped”. Claim 6 additionally recites “… of the store in the store list”. For purposes of examination, it will be interpreted as “of the stores in the store list”. Appropriate correction is required.
Claim Interpretation
Intended Use
4. Claim 1, “at least one processor configured to execute instructions to: acquire…; identify…; and output …”
Claim 3, “at least one processor configured to execute instructions to: identify…”
Claim 7, “at least one processor configured to execute instructions to: store…; and identify…” Claim 10, “A computer-readable recording medium storing a program for causing a computer to execute: acquiring…; identifying…; and outputting…” The language represents the intended use of: what “at least one processor” is configured to do (i.e. execute instructions) or “storing a program”. According to the MPEP, such language will not differentiate a claim from the prior art (MPEP 2103 I C).
Not positively recited
5. Claim 1 recites “output a store list generated based on the identification information and history information including the visit information”. Claims 9 and 10 recite similar language.
Claims 4-6 recite “wherein the store is grouped…”, “wherein the store is grouped based on the history information…” and “wherein the store is grouped based on location information…”, respectively. The language “generated based on…” does not further describe the functionality of outputting a “store list”. Nor, giving claims 1, 9 and 10, their respective BRI, is the generating performed by the “at least one processor”, whatever performs “acquiring”, identifying”… etc., or “computer”, respectively. Same holds for claims 4-6 as grouping does not represent functionality attributed to the “at least one processor”. As a result, the limitations will not differentiate the claims from the prior art.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 1-7, 9 and 10 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.
8. Claim 9 recites:
acquiring, …, identification information for identifying at least one of the user and…, and location information of the …;
identifying a stored visiting by the user based on the location information, and associating the store, visit information regarding a visit to the store, and the identification information with each other;
outputting a store list generated based on the identification information and history information including the visit information.
Therefore, the claim recites “tracking a user and determining which stores the user visited based on the tracking”, which is a form of commercial or legal interactions (i.e. organizing human activity) and an abstract idea.
The additional elements of “mobile terminal possessed by a user” represent the use of a computer, or computer technology, as a tool to implement “tracking a user and determining which stores the user visited based on the tracking” and/or generally link the abstract idea to a particular technological environment or field of use. And, as the additional elements do no more than represent the use of a computer, or computer technology, as a tool to perform the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use, they do not improve computer functionality or provide an improvement to another technology or technological field. Hence, claim 9 is not patent eligible.
9. Claims 1 and 10 also recite the abstract idea of “tracking a user and determining which stores the user visited based on the tracking” as well as the additional element “mobile terminal possessed by a user”. Claims 1 and 10 further recites “store information display system”, “at least one memory storing instructions” and “at least one processor configured to execute instructions”, and “computer-readable recording medium storing a program for causing a computer to execute”, respectively. Therefore, the additional elements represent the use of a computer, or computer technology, as a tool to implement “tracking a user and determining which stores the user visited based on the tracking” and/or generally link the abstract idea to a particular technological environment or field of use.
And, as they do no more than represent the use of a computer, or computer technology, as a tool to perform the abstract idea and/or generally link the abstract idea to a particular technological environment or field of use, they do not improve computer functionality or provide an improvement to another technology or technological field.
Hence, claims 1 and 10 are also not patent eligible.
10. Claim 2 recites “wherein the visit information includes a date and time of the visit to the store” which further describes the abstract idea.
11. Claim 3 recites “identify the store as the visited store when the location information matches location information of the store for a predetermined time or more” which further describes the abstract idea.
12. Claims 4-6 describing in further details the grouping of data. For example, claims 4-6 recite grouping “in the store list”, “based on the history information in the store list” and “based on the location information of the store in the store list”, respectively. Therefore, the claims do no more than describe the abstract idea.
13. Claim 7 recites “store candidate stores to be visited” and “identify based on the location information, a store visited by the user from among the candidate stores to be visited”, which further describes the abstract idea.
Does not fall within at least one of the four categories
14. Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is the claimed invention is directed to non-statutory subject matter.
15. Claim 10 is directed to a “computer-readable recording medium storing a program…”
According to Applicant’s Specification, the claimed program “… may be supplied to the CPU 901 via the communication network 909” (PGPub, para 164). And, while the program “can be recorded on a computer-readable (non-transitory) recording medium” (para 165) (emphasis added) such a statement is insufficient for requiring the claimed “computer-readable recording medium” to be interpreted as non-transitory. Therefore, as Applicant’s Specification does not exclude the “program” of claim 10 from being stored on a computer-readable recording medium such as signals or other transitory media, the claim does not fall within at least one of the four categories of patent eligible subject matter and is, hence, non-statutory (MPEP 2106 II; In re Nuijten, 84 USPQ2d 1495 (Fed. Cir. 2007)).
Claim Rejections - 35 USC § 112(b)
16. The following is a quotation of 35 U.S.C. 112(b):
(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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
17. Claims 1-7 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
More than one interpretation
18. Claim 1 is directed to a “store information display system”. Additionally, the claim recites outputting a store list, where the list is “… generated based on the identification information and history information including the visit information”. However, Applicant does not identify what performs the generation. In other words, it is unclear to one of ordinary skill whether the generation of the store list is performed by the “at least one processor” of the “store information display system” or another device within the system or one that is not part of the system. “If the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate” (MPEP 2173.02 I).
Claim 10 is also rejected as it recites similar language.
19. Claims 4-6 recite “wherein the store is grouped…”, “wherein the store is grouped based on the history information…” and “wherein the store is grouped based on location information…”, respectively. However, in each instance, the claim does not attribute the functionality to the “at least one processor”. Therefore, it is unclear whether the grouping of stores is performed by the “at least one processor”, another device of “store information display system”, or a device that is not part of the system. “If the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate” (MPEP 2173.02 I).
Dependent Claims
20. Claims 2-7 are also rejected as each depends from claim 1.
Claim Rejections - 35 USC § 102
21. 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.
(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.
22. Claims 1-7 and 10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Iannace et al., US 20210049635.
23. As per claim 1, The claim is directed to a “store information display system comprising: at least one memory storing instructions; and at least one processor to execute the instructions to: acquire…; identify…; and output…”. However, “to: acquire…; identify…; and output…” represent the intended use of what the “at least one processor” is configured to do (i.e. “execute the instructions”) (Applicant’s Specification-PGPub, fig. 19, item 901; para 154), and it has been held that such language will not differentiate the claim from the prior art (MPEP 2103 I C). Therefore, as Iannace et al. teach “a store information display system (fig. 3, fig. 4, “selected offers”, item 450; paras 36-38) comprising: at least one memory storing instructions (fig. 5, items 515 and 530); and at least one processor configured to execute the instructions” (fig. 5, item 510; claim 20) it is sufficient in terms of art. This applies to claims 3 and 7 also, as each recites “wherein the at least one processor is further configured to execute the instructions to:…” which results in the limitations of “[to] identify…” and “[to] store… and to identify…” being interpreted as no more than intended use.
24. As per claim 2, the claim recites “wherein the visit information includes a date and time of the visit to the store” which further describes the intended use claim 1 (i.e. “[to] identify… visit information…”) and, as a result, will not differentiate claim 2 from the prior art.
25. As per claims 4-6, each is directed to the grouping of information. However, as claimed, the limitations are not positively recited. Claim 4, for example, recites “wherein the store is grouped in the store list”. However, the functionality is not attributed to the “at least one processor” and is therefore, insufficient for differentiating the claim from the prior art. Same holds for claims 5 and 6 as each recites similar language.
26. As per claim 10, the claim recites “[a] computer-readable recording medium storing a program for causing a computer to execute: acquiring…; identifying…; and outputting…”, where the language “to execute: acquiring…; identifying…; and outputting…” represents the intended use of “storing a program”. Therefore, as Iannace et al. teach a “computer-readable recording medium storing a program for causing a computer to execute” (fig. 3; fig. 4 “selected offers”, item 450; fig. 5, items 510, 515 and 530; paras 36-38, 41 and 42; claim 20) it is sufficient in terms of art. (MPEP 2103 I C).
27. Claims 1, 4-6, 9 and 10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Iannace et al., US 20110231233.
28. As per claims 1, 9 and 10, Iannace et al. teach a store information display system (fig. 3, fig. 4, “selected offers”, item 450; paras 36-38) comprising:
at least one memory storing instructions (fig. 5, items 515 and 530; claim 20) and
at least one processor configured to execute instructions (fig. 5, item 510; claim 20) to:
acquire, from a mobile terminal possessed by a user, identification information for identifying at least one of the user and the mobile terminal, and location information of the mobile terminal (fig. 2, item 204; paras 37, 54 and 55);
identify a store visited by the user based on the location information (fig. 2, item 204; para 28) and associating the store (para 28), visit information regarding the store (paras 66 and 78) and the identification information with each other (paras 36, 37 and 78)
output a store list (fig. 2, item 208; fig. 3) generated based on the identification information (paras 36, 37, 54 and 55) and history information including the visit information (paras 60, 61, 66 and 78; claim 13)
As per claim 10, Iannace et al. also teach a “computer-readable
recording medium storing a program for causing a computer to execute” (fig. 5, items 510, 515 and 530; paras 41 and 42).
29. As per claim 4, Iannace et al. teach wherein the store is grouped in the store list (fig. 3; paras 30 and 37).
30. As per claim 5, Iannace et al. teach wherein the store is grouped based on the history information in the store list (fig. 2, items 206 and 208; fig. 3; paras 28-31, 60, 61, 66 and 78; claim 13).
31. As per claim 6, Iannace et al. teach wherein the store is grouped based on the location information of the store in the store list (paras 30, 37, 64 and 70).
Claim Rejections - 35 USC § 103
32. 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.
33. Claims 2-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Iannace et al., US 20110231233 in view of Zazula, U.S. Patent No. 8,736,442.
34. As per claim 2, Iannace et al. do not explicitly disclose wherein the visit information includes a date and time of the visit to the store. However, this is taught by Zazula (col/line 7/45-8/13). Specifically, Zazula teaches tracking the location of a user according to “a day, a week, a month, a year, or other user-specified period of time and/or the duration electronic device… has spent in each location” (col/line 7/63-8/1) as well as a timestamp (col/line 14/59-15/10).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Iannace et al. and Zazula in order to more accurately target an offer to a user (‘233, fig. 3) such as by identifying a location that is most popular to the user (‘442, col. 8, lines 6-12) and/or distinguishing a destination location from a transient passage through a location (‘442, col. 15, lines 10-43).
35. As per claim 3, Iannace et al. do not explicitly disclose identifying the store as the visited store when the location information matches location information of the store for a predetermined time or more. However, this is taught by Zazula (col. 11, lines 21-45; col/line 14/59-15/43). Specifically, Zazula teaches distinguishing between transient and actual visits to a location such as a supermarket by determining whether a user is traveling less than particular speed (col. 11, lines 20-45) or spends a particular amount of time at a location (col. 12, lines 18-37; col. 15, lines 10-43).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Iannace et al. and Zazula in order to more accurately target an offer to a user (‘233, fig. 3) by distinguishing locations that are transient from those that are destinations (‘442, col/line 11/21-12/37; col. 15, lines 10-43).
36. As per claim 7, Iannace et al. do not explicitly disclose:
store candidate stores to be visited and
identify based on the location information, a store visited by the user from among the candidate stores to be visited
Iannace et al. teach candidate locations to be visited (para 28), not
candidate stores. However, this is taught by Zazula. Specifically, Zazula teach storing candidate
stores to be visited as part of “tasks” (e.g. specific dry cleaner store) (col/line 16/35-17/15) and determining whether the store is actually visited by the user by distinguishing between transient and destination visits (col. 12, lines 18-36) and updating a visited location list, accordingly (col. 2, lines 38-53; col/line 12/47-13/4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Iannace et al. and Zazula in order to more specifically target a user (‘233, fig. 3; para 28) by presenting offers not just based on an expected region (e.g. San Jose) but a specific store within the region (‘442, col/line 16/35-17/15).
Conclusion
37. The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure:
Natarajan et al., US 20210049635 disclose generating offers as games to a user based on transaction history and user location, and refines game-offers utilizing machine learning
Carlson et al., US 20120094639 generating heat maps based on location and transaction data, where the heat maps reflect transaction, spending, fraud and other data, to degrees of granularity; system predicts future visits based on location and customer patterns.
38. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CALVIN L HEWITT II whose telephone number is (571)272-6709. The Examiner can normally be reached Monday-Friday 10a-7p.
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/CALVIN L HEWITT II/Supervisory Patent Examiner, Art Unit 3692
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