DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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.
1. Claims 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 2-21 are directed to facilitating a purchase transaction prior to final gift selection, which is considered a commercial interaction. Commercial interactions fall within a subject matter grouping of abstract ideas which the Courts have considered ineligible (Certain methods of organizing human activity). The claims do not integrate the abstract idea into a practical application, and do not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea).
Under step 1 of the Alice/Mayo framework, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claim 2-8 recite a method and at least one step. Claims 8-14 recite a system comprising one or more processors and one or more non-transitory machine-readable storage media. Claims 15-21 recite a non-transitory computer-readable medium. Therefore, the claims are each directed to one of the four statutory categories of invention (process, apparatus, manufacture).
Under step 2A of the Alice/Mayo framework, it must be considered whether the claims are “directed to” an abstract idea. That is, whether the claims recite an abstract idea and fail to integrate the abstract idea into a practical application.
Regarding independent claim 2, the claim sets forth a process in which purchase transaction prior to final gift selection is facilitated, including through the facilitation of consumer-to-business interaction, in the following limitations:
determining, a gift intent to initiate a gift transaction of a gift product by a buyer for a recipient;
determining eligibility of a product group available for purchase, wherein the product group represents a set of available products, and includes a gift product group;
simulating a transaction between a user and the website; and
facilitating a purchase transaction and prior to a final selection of a product from the gift product group, wherein facilitating the purchase transaction is based on an output of the simulation.
The above-recited limitations establish a commercial interaction with a consumer to make facilitate a transaction prior to final selection of a gift and between a consumer and business to aid in the consummation of the transaction. This arrangement amounts to both a sales activity or behavior; and business relations. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See MPEP 2106.04(a)).
Claim 2 does recite additional elements:
by a processor and from a website;
by the processor,
on the website
via the website.
These additional elements merely amount to the general application of the abstract idea to a technological environment. The specification makes clear the general-purpose nature of the technological environment. Paragraphs 10 and 64-68 indicate that while exemplary general purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). In the instant case, the additional elements (recited above) simply facilitate commercial operations in a general technological environment. Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Independent Claims 9 and 15 are parallel in scope to claim 2 and ineligible for similar reasons.
Regarding Claims 4-8, 11-14, 17-21
Dependent claims 4-8. 11-14, and 17-21 merely set forth embellishments to the abstract idea of facilitating a purchase transaction prior to final selection of a gift, including facilitating interaction between consumers and businesses. Such embellishments are merely applied to an environment similar to the additional limitations in claim 2, as they do no more than generally link the use of the abstract idea to a particular technological environment. As such, they do not integrate the abstract idea into a practical application, and do not provide an inventive concept. Accordingly, the claims do not confer eligibility on the claimed invention and is ineligible for similar reasons to claim 2.
Regarding Claims 3, 10, 16
Dependent claims 3, 10, 16 recite
generating an embedded widget associated with the product
placing the embedded widget on the website
These recitations set forth additional limitations that are similar to the additional limitations in claim 2, as they do no more than generally link the use of the abstract idea to a particular technological environment. As such, they do not integrate the abstract idea into a practical application, and do not provide an inventive concept. Accordingly, the claims do not confer eligibility on the claimed invention and is ineligible for similar reasons to claim 2.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
2. Claims 2-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Each of claims 2, 9, and 15 recites “simulating a transaction between a user and the website”. The disclosure does not set forth any procedure that describes “simulating” a transaction. While the disclosure recites “mimicking” a transaction and “simulating at least one user interaction with the legacy merchant store front to identify user-facing functionality of the legacy merchant store front”, these recitations are not disclosed or described as equivalent. Dependent claims 7, 14, and 20 similarly recite “simulating” instead of “mimicking”. Appropriate correction is required.
For purposed of examination, the Examiner will consider the limitation as if “simulating” were changed to “mimicking”.
Dependent claims 3-6, 8, 10-13, 16-19, and 21 inherit the deficiencies of claims 2, 9, and 15, and are rejected on similar grounds.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3. Claims 2-7, 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 10-15 of U.S. Patent No. 10,540,630 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 2, 3 are anticipated by claim 1 of the patent.
Claim 4 is anticipated by claim 5 of the patent.
Claim 5 is anticipated by claim 3 of the patent.
Claim 6 is anticipated by claim 4 of the patent.
Claim 7 is anticipated by claim 6 of the patent.
Claims 9, 10, 15, 16 are anticipated by claim 10 of the patent.
Claims 11, 17 are anticipated by claim 14 of the patent.
Claims 12, 18 are anticipated by claim 12 of the patent.
Claims 13, 19 are anticipated by claim 13 of the patent.
Claims 14, 20 are anticipated by claim 15 of the patent.
EXAMINER COMMENT: With regard to Patent #’s 11195144, 12079767:
While the present claims recite similar subject matter to the referenced patents, the present claims set forth an embodiment that differs from that claimed in the patents, as the present claims seeks to determine the eligibility of a product group for purchase, rather than the eligibility for purchase of a product within a group.
Potentially Allowable Subject Matter
EXAMINER NOTE: The following is based on replacing the claimed “simulating” with “mimicking”, as indicated in the 35 USC 112, first paragraph rejection above.
Claims 2-21 would be allowable if rewritten to overcome to overcome the 35 USC 101 rejection above, and if the Double Patenting rejections were overcome, for the following reasons:
The claimed invention is directed towards a method and system for enabling gifting of a gift product on a legacy merchant store front. Each of independent claims 2 and 9, and 15 recite the novel features of determining, by the processor, eligibility of a product group available for purchase on the website, wherein the product group represents a set of available products, and includes a gift product group; simulating a transaction between a user and the website; and facilitating a purchase transaction via the website and prior to a final selection of a product from the gift product group, wherein facilitating the purchase transaction is based on an output of the simulation.
Particularly, the present claims set forth that the output of mimicking a transaction (which is defined in paragraph [0088] of the present specification) is used to facilitate a gift purchase transaction on a website prior to final selection of a product from a gift product group determined to be eligible for purchase on the website.
The following references has been identified as the most relevant prior art to the claimed invention(s). The prior art generally relates to determining gift recommendations. Isaacson et al. (US 20120150605 A1, hereinafter Isaacson) is directed to a system and method for collaborative gifts in a social network environment, including a manner of using an embedded widget to determine gift intent (see at least paragraphs 45, 190, and 192). Thomas et al. (US 20160103923 A1, hereinafter Thomas) is directed to a method and system for customizing content displayed to a user, including the use of abstract products (that is, products representing a set of all available SKUs for a given product). However, neither Isaacson nor Thomas discloses or renders obvious determining, by the processor, eligibility of a product group available for purchase on the website, wherein the product group represents a set of available products, and includes a gift product group; simulating a transaction between a user and the website; and facilitating a purchase transaction via the website and prior to a final selection of a product from the gift product group, wherein facilitating the purchase transaction is based on an output of the simulation.
The Examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
It is thereby asserted by the Examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DESIGNING E-COMMERCE USER INTERFACES (PTO-892 Reference U) discusses e-commerce’s impact on the popularity of usage of online gift registries and gift card.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A MISIASZEK whose telephone number is (571)272-6961. The examiner can normally be reached Monday-Thursday. 8:00 AM - 5:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Smith can be reached at 571272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL MISIASZEK/Primary Examiner, Art Unit 3688