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 .
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 1-20 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 1-20, 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.
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gabel (US 20170374502) in view of Lieberman et al. (US 10,339,600).
Claim 1. Gabel teaches a kiosk system designed for conducting auctions, comprising:
A Practitioner device which connects to and exchanges Practitioner Personal Information and Bid Information with a Web Server, and an API Server, and the Invented Platform and its associated databases, and Verification APIs and databases, and a Payment Processing Platform, and an E-mail Communications Platform, for the purpose of downloading, gaining access to, and interacting with the Invented Platform, and its associated databases, and validating, transmitting, and storing said Practitioner Personal Information and Bid Information [0066], [0069], [0070], [0073], [0074], [0080];
Said Web Server which connects to and exchanges said Practitioner Personal Information and Bid Information with said Practitioner device and an E-Mail Communications Platform for the purpose of receiving Client Personal Information when Practitioner-issued bids have been accepted by Clients [0080], [0086], [0090], [0096];
Said API Server which connects to and exchanges said Practitioner Personal Information and Bid Information with said Practitioner device, Verification APIs and Databases, Invented Platform Databases, and Payment Processing Platforms for the purpose of downloading, gaining access to, and interacting with the Invented Platform and its associated databases, validating said Practitioner Personal Information and Bid Information, processing transactions, and storing said Practitioner Personal Information and Bid Information [0098], [0104], [0141], [0142];
Said Verification APIs, and databases which connect to and exchange Practitioner Personal Information and Bid Information with said Practitioner device and said Invented Platform Databases via said API Server for Practitioner validation purposes [0113], [0117], [0118];
Said Invented Platform databases which connect to and exchange said Practitioner Personal Information and Bid Information with said Practitioner device and Verification APIs, and databases via said API Server for the purpose of Practitioner validation and storage [0118], [0119];
Said Payment Processing Platforms which connect to and exchange said Practitioner Personal Information with Invented Platform Databases via said API Server [0085], [0142]; and
Said E-Mail Communications Platform which connects to and exchanges said Practitioner Personal Information with said Practitioner device and Client device via said Webserver for the purpose of sharing said Practitioner Personal Information [0075], [0081], [0090].
Gabel does not explicitly disclose widgets.
Lieberman et al. (Lieberman) teaches a system for providing a reverse auction wherein the user interface may include a graphical user interface (GUI) that displays information on a display device, such as a computer monitor or a touchscreen on a handheld computer device. The graphical user interface may include various graphical user interface widgets that organize what data is shown as well as how data is presented to a user (col. 15, lines 17-20).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify Gaber to include widgets, because it would advantageously provide for a simple and easy way for the user to interact with the associated software.
Claim 2. Gabel teaches said system wherein the means through which the Practitioner device sends a request for, and later receives, the Invented Platform application data is selected from the group consisting of: a Web Browser, an App Store, or some combination of the members of this group [0036], [0043].
Claim 3. Gabel teaches said system wherein the Practitioner Personal Information and Bid Information which is to be validated by sending from the Client device via the API Server to the Validation APIs, and Databases and Invented Platform Databases is selected from the group consisting of: first name, middle name, last name, firm/office address, firm/office telephone number, firm/office facsimile number, firm/office geographic location, the Practitioner's professional e-mail address, Practitioner device's IP address, the number of other Practitioner personnel who work for firm/office, the Practitioner's professional identification/registration number, the number of years of relevant professional experience possessed by Practitioner, Practitioner's area(s) of subject matter expertise, Practitioner's spoken language(s), Practitioner's, Practitioner's gender identity, Practitioner's age, the year Practitioner became registered as a Practitioner with the relevant regulatory authority, credit card type, credit card number, credit card expiration date, credit card CVV code, credit card-holder billing information, and credit card-holder name, or some combination of the members of this group [0060], [0071], [0081], [0068].
Claim 4. Gabel teaches said system wherein the Practitioner Personal Information and Bid Information which is to be validated is sent from the Practitioner device via the API Server to the Validation APIs, and Databases and Invented Platform Databases which are selected from the group consisting of: a Geocoder API, a Practitioner Registration Number Database, the Invented Platform Database A for rate limiting, an Information Protocol Stack, or some combination of the members of this group [0086], [0133], [0134].
Claim 5. Gabel teaches said system wherein the Practitioner device sends said entered personal information to the API Server, which in turn sends it to the Practitioner Professional Registration Number Database for validation and, upon receiving confirmation of said personal information's validity, receives sends validated personal information from the Practitioner Professional Registration Number Database via the API Server [0086], [0133], [0134].
Claim 6. Gabel teaches said system wherein the Practitioner device sends said entered payment information to Payment Processing Platform for validation and, upon receiving confirmation of said payment information's validity, sends validated payment information to the API Server [0142], [0065].
Claim 7. Gabel teaches said system wherein Bid Information is selected from a group consisting of: proposed contingent fee percentage, proposed hourly rate, proposed terms on the payment of disbursements and other costs, and the proposed extent to which the proposed contingent fee and/or hourly rate may change based on the chronological progression of the case from beginning to end, or some combination of the members of this group [0144].
Claim 8. Gabel teaches said system wherein Case Information which is entered into the Case Information Entry Platform is selected from a group consisting of: date, time, location, conditions at the scene (including visibility, temperature, lighting, and weather), the type of footwear Client was wearing at the time, the safety signage present, the injuries sustained, the level of medical attention received, the duration of receiving medical attention, the number of days which separated the onset of the circumstances and the receipt of medical attention, whether or not time at work was missed as a result of the circumstances, the amount of work time missed, the nature of Client's occupation, Client's average annual salary, Client's highest level of education attained, Client's age, the non-healthcare damages experienced by Client, make, model, and year of Client's vehicle, whether or not Client was found at-fault, whether or not Client was intoxicated, how many people were involved in the circumstances, whether they remained at the scene, whether there were witness accounts, whether Client has pre-existing injuries and (if so) what they are, whether Client has long-term disability coverage, whether or not Client has a copy of their employment contract, and a free-form request for other information which is relevant to the circumstances, or some combination of the members of this group [0099.
Claim 9. Gabel teaches said system wherein the API Server, upon each Practitioner device sign in or refresh that triggers a request, sends the Practitioner device information about any Client cases which may have been posted [0151].
Claim 10. Gabel teaches said system wherein Practitioner device sends a query to Database B via API Server to execute a customized search of the Invented Platform Database B's Case Information which is defined by the Practitioner according to the available types of Case Information, which returns Client posted cases which match Practitioner's search terms and displays them on Practitioner's device via API Server [0132], [0146].
Claim 11. Gabel teaches said system wherein the Practitioner device, upon Practitioner request, sends a request to purchase bid from Payment Processing Platform via the API Server which, upon receiving confirmation of a successful Payment Processing Platform transaction, sends a bid token to Database B for storage and sends a confirmation to Practitioner device [0142].
Clam 12. Gabel teaches said system wherein the Practitioner device allows Practitioner user to apply an existing bid token to a particular case by sending a confirmation request to the API Server, which sends said confirmation request to Database B and returns any received confirmation form Database B back to the Practitioner device, resulting in a successful bid placement entry in Database B [0086].
Claim 13. Gabel teaches said system wherein the API Server, upon each Practitioner device sign in or refresh that triggers a request, sends the Practitioner device information about any of Practitioner's bids on posted Client cases which have been accepted [0132].
Claim 14. Same reasoning applied to claim 1.
Claim 15. Same reasoning applied to claim 2.
Claim 16. Same reasoning applied to claim 3.
Claim 17. Same reasoning applied to claim 4.
Claim 18. Same reasoning applied to claim 10.
Claim 19. Same reasoning applied to claim 8.
Claim 20. Same reasoning applied to claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20020038233 to Shubov et al. discloses a system and method for matching professional service providers with consumers. The matching system may allow different levels of access for consumers and attorneys. Consumers have access to their own information, bids on their cases and information while attorneys will not have access to the consumers personal information or the personal information of other attorneys. After the attorney has reviewed the bid information for accuracy, the attorney can transmit the bid through the matching system to the consumer. The attorney can view, edit, modify or revoke the bid after it is posted through the view and modify my offer function through the attorney homepage. Alternatively, the attorney can view bids from other attorneys from the attorney home page.
US 20180268370 to Fallah discloses a system and method that provides for the routing and delivery of services to consumers by providers. The system enables providers to advertise and list the products and services they provide, and customers to solicit bids or to otherwise seek to engage a provider to perform a service or from whom to purchase a good. The system may store customer and provider information in databases to be searched to identify a match between customer and provider. The displays 1900 may be used as part of the mobile auction management platform to provide group communications, such as through postings of offerings (FIG. 19A), requests for proposals that solicit one or more proposals (FIG. 19B), and bidding on providing a service or valuable asset.
US 20170032461 to Zheng et al. discloses a method for matching one or more buyers with one or more sellers to facilitate trade in a marketplace provided by a service provider includes the steps of receiving a bid to sell mobile data from one or more sellers, receiving a bid to buy mobile data from one or more buyers, matching at least a portion of the bid of the one or more buyers with at least a portion of the bid of the one or more sellers based on: a revenue maximization function to maximize the service provider's revenue based on a relationship between administration revenue and bid revenue, facilitating a transfer of the mobile data from the one or more seller to the one or more buyer, following the matching of the one or more buyers with the one or more sellers, through the service provider.
US 20150339764 to Roychowdhury discloses a method and system for reverse auctioning or bidding by user (s) or patient(s) on healthcare services or medical facilities or medical products. Wherein, a user (s) or patient (s) can submit information on a particular disease or symptom, procedure or any health-related facilities, product and an input price variable willing to pay for these services and products.
US 20140019289 to Colucci discloses a system and method for bidding on groups of fee or contingency fee-based matters. A system may comprise: a web server for posting matters of clients for requesting fee proposals or for bidding by contingency professionals or law firms that offer contingency, fee or hybrid fee arrangements; a client matter engine for enabling a particular client or group of clients to post a particular group of matters and to select a particular contingency professional making offers for, or bidding on, the particular group of matters to handle the particular group of matters; a professional bidding engine for enabling the particular contingency professional to review at least a portion of the posted matters and to make an offer or bid on the particular group of matters; and an offer or bidding exchange engine for enabling the particular client and the particular contingency professional to communicate without exchanging direct contact information.
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.
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 A. Smith can be reached at (571) 272-6763. 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.
/MILA AIRAPETIAN/Primary Examiner, Art Unit 3688