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 .
Terminal Disclaimer
The Terminal Disclaimer form submitted on 07/20/2026 is incorrect. Please resubmit PTO/AIA /25 (04-13) for pending reference or PTO/AIA /26 (04-14) for prior patent. The double patenting rejection is maintained.
Response to Arguments
Applicant’s amendments overcome the rejection made under § 103. The rejection is withdrawn.
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive.
Applicant argues that the claims integrate the abstract idea into a practical application. " The specific claimed sequence of operations, including the generation and return of a Form ID number, a signup token, and a partial postal/zip code to the API Server, constitutes a particular technical implementation that imposes meaningful limits on the scope of the claims and integrates any alleged abstract idea into a practical application. These features are not merely generic computing functions; rather, they define a specific mechanism by which case information is processed, validated, and routed through the system architecture." Examiner respectfully disagrees. All of these highlighted elements are part of the abstract idea. "Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application…" MPEP 2106.04(d) II. (emphasis added). The only additional element beyond the abstract idea is a generic computer (data processing device/data processor, memory/memory device). With respect to a "specific computational pipeline," specificity is not the test for eligibility. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018) ("a claim is not patent eligible merely because it applies an abstract idea in a narrow way").
Accordingly, the rejection is maintained.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 §§ 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/patent/patents-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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 47 of U.S. Patent No. 12,067,603. Although the claims at issue are not identical, they are not patentably distinct from each other because all the elements of the application claim 1 are to be found in patent claims 1 and 47. The difference between the application claims and the patent claims lies in the fact that the patent claim includes more elements and is thus more specific. Thus the invention of claims 1 and 47 of the patent is in effect a “species” of the “generic” invention of the application claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 1 is anticipated by claims 1 and 47 of the patent, it is not patentably distinct from the claims of the patent.
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 1-17, 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (a judicial exception without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-17, 19-20, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 recites a system. Claims 14 and 20 recite a system.
Step 2A, prong 1: Claim 20 recites the abstract idea of managing add-ons for delivery service orders. This idea is described by the following steps:
A method comprising:
submitting practitioner personal Information for validation;
recording, upon successful validation, said practitioner personal Information;
displaying posted client cases for review and consideration;
permitting targeted searching of posted client cases to display practitioner-desired cases for practitioner review and consideration;
placing bids on client cases;
displaying the status of practitioner bids; and
displaying the client personal Information associated with any accepted bid following bid acceptance; wherein the client sends a case type request to a case information entry and sends it back to the client, permitting client to enter their case information, sends said case information back to case information entry, which then returns a Form ID number, a signup token and partial postal/zip.
Claims 1 and 14 recite equivalent limitations.
This idea falls into the certain methods of organizing human activity grouping of abstract ideas as it is directed towards commercial interactions including advertising, marketing or sales activities or behaviors (i.e., placing bids by a practitioner and enabling clients to accept practitioner’s bids).
Step 2A, prong 2: Claims 1, 14 and 20 recite additional elements that fail to integrate the abstract idea into practical application.
Claims 1, 14 and 20 recite practitioner’s device, client’s device, API server, payment processing platform. However, these elements are generic computing components (see at least paragraphs 034) that are simply used to perform operations that would otherwise be abstract (see MPEP2106.05(f)).
Claims 1, 14 and 20 also recites the limitations “requesting to download the Invented Platform’s application data by a Clients device” and “sending the Invented Platform’s application data to the Client device in response to the request from the Client device”. However, these limitations are considered insignificant extra solution activity as they amount to necessary data gathering and outputting, wherein all uses of the recited abstract idea require such data gathering and data output (see2106.05(g)). Note how the abstract idea above includes the offer and menu communicating aspects of the claimed modifying steps.
Step 2B: Claims 1, 14 and 20 fail to recite additional elements that amount to an inventive concept.
For the reasons identified with respect to Step 2A, prong 2, claims 1, 14 and 20 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)).
With respect to the limitations determined to be insignificant extra solution activity, these elements are similar to at least the following concepts determined by the courts to be insignificant extra solution activity that does not amount to significantly more than the abstract idea:
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information). For example, at least paragraph 31 describes a network system that facilitates a request for services received from a user including a selection of a merchant.
Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93. For example, at least paragraph 107describes presenting an offer for an add-on order to be added to a primary order.
Dependent Claims Step 2A:
The limitations of the dependent claims merely set forth further refinements of the abstract idea identified at step 2A—Prong One, without changing the analysis already presented. Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims identified at step 2A—Prong Two.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. These do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above.
Thus, when considering the combination of elements and the claimed invention as a whole, the claims are not patent eligible.
Allowable Subject Matter
The claims are allowable over the prior art and would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and upon approval of a Terminal Disclaimer to overcome the double patenting rejection above.
Regarding claim 14
The prior art of record neither anticipates nor renders obvious the combination of:
Requesting to download the Invented Platform's application data by a Client's device; Sending the Invented Platform's application data to the Client-7 device in response to the request from the Client device; Submitting Client Personal Information using the Client device for validation; Recording, upon successful validation, said Client Personal Information; Entering, posting, and recording Case Information by the Client using the Client device; Displaying information about any Practitioner bids which may have been applied to Client's posted case to the Client device; Enabling the Client to accept Practitioner Client device; and Personal Information bids through the on the Client Displaying Practitioner device following bid acceptance; wherein the Client device sends a case type request to a Case Information Entry Platform via a Web Server and sends it back to the Client device, permitting Client to enter their Case Information, send said Case Information back to Case Information Entry Platform, which then returns a Form ID number, a signup token, and partial postal/zip code to API Server.
Regarding claims 1 and 20
Claims 1 and 20 are each parallel in subject matter to the feature noted above with respect to claim 14 and are allowable for reasons similar to those provided for claim 14.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MILA AIRAPETIAN whose telephone number is (571)272-3202. The examiner can normally be reached Monday-Friday 8:30 am-6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at (571) 272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MILA AIRAPETIAN/Primary Examiner, Art Unit 3688
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