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 Status
Claim 1 has been canceled via preliminary amendment.
Claims 2-28 are newly added via preliminary amendment.
Claims 2-28 are pending and rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/30/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Double Patenting
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of US Patent No. 12,020,295 (Application No. 17/589,468).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the patented claims. Specifically, the instant claims are anticipated by the patented claims of 12,020,295, as follows:
Instant claims
12,020,295 Patent (Claim 1)
2. A method comprising:
1. A method comprising:
receiving one or more positioning signals from one or more signal emitters;
receiving, at a mobile device, one or more positioning signals from one or more signal emitters;
determining, using the one or more positioning signals, that a mobile device is within a specified distance of an establishment;
determining, by the mobile device using the one or more positioning signals, that the mobile device is within a specified distance of an establishment;
in response to the determination, generating a first message including an identifier associated with the mobile device, wherein the first message is configured to cause the establishment to process a transaction associated with the mobile device;
in response to the determination, generating, by the mobile device, a first message including an identifier associated with the mobile device, wherein the first message is configured to cause the establishment to process a transaction associated with the mobile device;
transmitting the first message to a remote server;
transmitting, from the mobile device, the first message to a remote server;
in response to transmitting the first message, receiving, from the remote server; and
in response to transmitting the first message, receiving, at the mobile device from the remote server, a second message including information associated with the transaction and the establishment; and
communicating the received information associated with the transaction and the establishment to a user interface shown on a display coupled to the mobile device.
presenting, by the mobile device, the received information associated with the transaction and the establishment on a user interface shown on a display coupled to the mobile device.
Dependent claims 3-10 are anticipated by ‘295 as follows:
Instant claims
12,020,295 Patent Claims
Claim 3
Claim 2
Claim 4
Claim 3
Claim 5
Claim 4
Claim 6
Claim 5
Claim 7
Claim 6
Claim 8
Claim 7
Claim 9
Claim 8
Claim 10
Claim 9
With regards to claims 11-28, all the limitations in apparatus claims 11-19 and system claims 20-28 are closely parallel to the limitations of method claims 2-10 analyzed above and are rejected on the same bases.
These claims fully anticipate the independent claims of the instant application. See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998). Moreover, the scope of the above noted claims in the instant application, if patented, would extend the grant/monopoly and are thereby properly rejected.
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 2-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 2-10 are directed to a method, which is a process. Claims 11-19 are directed to a non-transitory storage media, which is an apparatus. Claims 20-28 are directed to a system, which is a machine. Therefore, claims 2-28 are directed to one of the four statutory categories of invention.
Step 2A (Prong 1):
Taking claim 2 as representative, claim 2 sets forth the following limitations which recite the abstract idea of exchanging data in order to facilitate a transaction:
receiving one or more positioning signals from one or more signal emitters;
determining, using the one or more positioning signals, that a mobile device is within a specified distance of an establishment;
in response to the determination, generating a first message including an identifier associated with the mobile device, wherein the first message is configured to cause the establishment to process a transaction associated with the mobile device;
transmitting the first message to a remote server;
in response to transmitting the first message, receiving, from the remote server, a second message including information associated with the transaction and the establishment; and
communicating the received information associated with the transaction and the establishment to a user interface shown on a display coupled to the mobile device.
The recited limitations above set forth the process for exchanging data in order to facilitate a transaction. These limitations amount to certain methods of organizing human activity, including commercial or legal interactions (e.g. advertising, marketing or sales activities or behaviors). (see: Applicant’s Specification, para [0004]-[0006]).
Such concepts have been identified by the courts as abstract ideas (see: MPEP 2106).
Step 2A (Prong 2):
Examiner acknowledges that representative claim 1 does recite additional elements, such as a mobile device and a remote server.
Taken individually and as a whole, representative claim 2 does not integrate the recited judicial exception into a practical application of the exception. The claim merely includes instruction to implement an abstract idea on a computer, or to merely use a computer as a tool to perform an abstract idea, while the additional elements do no more than generally link the use of a judicial exception to a particular field of technological environment or field of use.
Furthermore, this is also because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement a judicial exception with a particular machine, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (Prong 2), claim 2 does not integrate the recited exception into a practical application (see again: MPEP 2106).
Step 2B:
Representative claim 2, when taken individually or as a whole, the additional elements of claim 2 do not provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). The claim merely appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Claim 2 merely utilizes computer functions that the courts have recognized as well-understood, routine, and conventional, such as receiving or transmitting data over a network (determining a distance…, transmitting a message…, receiving a second message…, and communicating the information) and retrieving information in memory (generating a first message …). (See MPEP 2106.5(d)(II))
Even when considered as an ordered combination, the additional elements of claim 2 do not add anything further than when they are considered individually.
In view of the above, representative claim 2 does not provide an inventive concept under step 2B, and is ineligible for patenting.
Dependent claims 3-10 recite further complexity to the judicial exception (abstract idea) of claim 2, such as by further defining the process for facilitating a transaction. Thus, each of claims 3-10 are held to recite a judicial exception under Step 2A (Prong 1) for at least similar reasons as discussed above.
Thus, dependent claims 3-10 do not add “significantly more” to the abstract idea. The dependent claims recite additional functions that describe the abstract idea and only generally link the abstract idea to a particularly technological environment, and applied on a generic computer. Further, the additional limitations use well-understood, routine, and conventional computer operations as discussed above, while failing to provide an improvement to the functioning of the computer, another technology, or a technical field.
Even when viewed as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2A/2B for at least similar rationale as discussed above regarding claim 2.
The analysis above applies to all statutory categories of invention. Regarding independent claims 11 (non-transitory storage media) and 20 (system), the claim recites substantially similar limitations as set forth in claim 2. As such, claims 11 and 20 and their dependent claims 12-19 and 21-28 are rejected for at least similar rationale as discussed above.
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 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-28 are rejected under 35 U.S.C. 103 as being unpatentable over Ramalingam et al. (U.S. Pre-Grant Publication No. 2011/0238514), (“Ramalingam”), in view of Moring et al. (U.S. Pre-Grant Publication No. 2015/0120509), (“Moring”).
Regarding claims 2, 11 and 20, Ramalingam teaches a method (and related apparatus and system) comprising:
receiving one or more positioning signals from one or more signal emitters (Fig. 1; para [0028], wireless signals such as from a radio antenna may be used to determine a geolocation of the device… or from a locator signal broadcast from a known location, such as the merchant);
determining, using the one or more positioning signals, that a mobile device is within a specified distance of an establishment (Fig. 2, 3, 6, 9; para [0033], mobile device includes memory that contains a user identifier; para [0041]-[0042], each user identifier may be associated with a respective mobile device and authorization may involve handshaking or other verification between the authentication module of the server and the security module of the mobile device; para [0060]; para [0074]);
in response to the determination, generating a first message including an identifier associated with the mobile device, wherein the first message is configured to cause the establishment to process a transaction associated with the mobile device (Fig. 5; para [0051], [0053]-[0054], for merchants or transactions which are automated, the user may activate an automatic transaction functionality of his or her mobile device; para [0076]);
transmitting the first message to a remote server (Fig. 9; para [0074], presence of the user is communicated to the merchant);
in response to transmitting the first message, receiving, from the remote server (Fig. 5; para [0051], [0053]-[0054], for merchants or transactions which are automated, the user may activate an automatic transaction functionality of his or her mobile device; para [0076]); and
communicating the received information associated with the transaction and the establishment to a user interface shown on a display coupled to the mobile device (Fig. 5; para [0055], transaction between the user of the device and the merchant is completed automatically; para [0076], following the completion of the transaction merchant may send a message to the mobile device and message may be a receipt for the transaction or may comprise a barcode).
However, Ramalingam does not explicitly teach a second message including information associated with the transaction and the establishment.
In a similar field of endeavor, Moring teaches to second message including information associated with the transaction and the establishment (para [0033], user device 102 can communicate, to the merchant device 104, the user's purchase orders, location data, and electronic messages directly over the network 106. In such embodiments, the merchant device 104 can receive updates to the user's location data from the user device 102 at specified time intervals.).
Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. It would have been obvious to one of ordinary skill in the art at the time of filing to include the noted limitations as taught by Moring in the method of Ramalingam, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Namely, providing an improved method for processing orders of the requested items for the customer to pick-up from the merchant's brick-and-mortar store or for delivery to the customer (See Moring: para [0002]).
Regarding claims 3, 12 and 21, Ramalingam and Moring teach the above method, apparatus and system of claims 2, 11 and 20. Moring also teaches wherein the first message configured to cause the establishment to process a transaction associated with the mobile device comprises causing the establishment to allocate a resource to process the transaction associated with the mobile device (para [0011], prioritize purchase orders based on expected arrival times for customers allows merchants to more efficiently allocate their resources, e.g., staff, while improving customer satisfaction).
Regarding claims 4, 13 and 22, Ramalingam and Moring teach the above method, apparatus and system of claims 3, 12 and 21. Moring also teaches wherein the information included in the second message comprises information about the allocated resource (para [0041], to provide a status merchant can interact with the merchant device to send electronic messages to users to provide them with an updated time for preparing their respective orders), and
wherein communicating the information to the user interface comprises causing display of a representation of the allocated resource on the user interface (para [0041], to provide a status merchant can interact with the merchant device to send electronic messages to users to provide them with an updated time for preparing their respective orders).
Regarding claims 5, 14 and 23, Ramalingam and Moring teach the above method, apparatus and system of claims 2, 11 and 20. Ramalingam also teaches wherein the information included in the second message comprises barcode data (Fig. 5; para [0055], transaction between the user of the device and the merchant is completed automatically; para [0076], following the completion of the transaction merchant may send a message to the mobile device and message may be a receipt for the transaction or may comprise a barcode), and
wherein communicating the information to the user interface comprises causing display of a barcode based on the barcode data, the barcode configured to verify an identity of a user associated with the mobile device (Fig. 5; para [0055], transaction between the user of the device and the merchant is completed automatically; para [0076], following the completion of the transaction merchant may send a message to the mobile device and message may be a receipt for the transaction or may comprise a barcode).
Regarding claims 8, 17 and 26, Ramalingam and Moring teach the above method, apparatus and system of claims 2, 11 and 20. Ramalingam also teaches wherein generating the first message comprises:
determining whether there is a reason for a visit to the establishment by querying one or more sources on the mobile device (para [0092], When an amount of variance is less than the threshold amount, process 1300 proceeds along the “no” path and returns to decision point 1310 to once again query whether or not the mobile device has varied too far from the map. This loop may be repeated continuously, periodically, or randomly.); and
conditioned on determining that there is a reason for a visit to the establishment, generating the first message (para [0092]).
Regarding claims 9, 18 and 27, Ramalingam and Moring teach the above method, apparatus and system of claims 2, 11 and 20. Ramalingam also teaches further comprising:
determining a location of the mobile device using the one or more positioning signals received at the mobile device (para [0024], Many of these mobile computing devices are equipped with Global Positioning System (GPS) functionality to determine a location of the device, and thus, a location of the corresponding user.); and
determining that the mobile device is within a specified distance of the establishment based at least on determining the location of the mobile device (para [0044], Correlation between a particular merchant 106 and a particular geolocation may be used to infer that a mobile device 104 is located at or near a merchant 106 because the mobile device is located at or near a geolocation associated with that merchant 106 in the map ).
Regarding claims 10, 19 and 28, Ramalingam and Moring teach the above method, apparatus and system of claims 9, 18 and 27. Ramalingam also teaches wherein the one or more positioning signals received at the mobile device comprise GPS signals, and the location of the mobile device is determined using the GPS signals received at the mobile device (para [0024], [0044]).
Potentially Allowable Subject Matter
Claims 6-7, 15-16 and 24-25 are objected to as being dependent upon rejected base claims 2, 11 and 20, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. However, the rejection under 35 USC 101 continues to apply.
Conclusion
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/ANAND LOHARIKAR/Primary Examiner, Art Unit 3689