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 .
Status of the Application
Claims 21-44 are currently pending. Claims 41-44 are withdrawn. Claims 21-40 have been examined in this application. This communication is a first action on the preliminary amendments of the claims. As of the date of this communication, no Information Disclosure Statements (IDS) have been filed on behalf of this case.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 21-40, drawn to utilizing user interfaces specially adapted for shopping, classified in G06Q 30/0641.
II. Claims 41-44, drawn to chance discounts or incentives, classified in G06Q 30/0212.
The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as placing by said host device said wager with said online bookmaker for an amount that is equal to or less than said compensation due to said host in response to said user purchasing said at least one item from said merchant, which is not required for subcombination II. Subcombination II has a separate utility such as receiving by said host device said prediction from said user, said host device linking said prediction to the odds of said prediction coming true, said odds being received from a bookmaker, which is not required for subcombination I. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries);
(b) the prior art applicable to one invention would not likely be applicable to another invention.
(c) the inventions have acquired a separate status in the art in view of their different classification;
(d) the inventions have acquired a separate status in the art in view of their divergent subject matter.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation on January 22, 2026 with Attorney, Todd Fitzsimmons, a provisional election was made without traverse to prosecute the invention of Group I, claims 21-40. Affirmation of this election must be made by applicant in replying to this Office action. Claims 41-44 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/530,183, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application No. 61/785,899 at least does not disclose providing by said host device said rebate to said user when said result of said user's prediction is accurate, said rebate resulting in at least a portion of a price of said purchase being credited to said user; and providing by said host device an electronic message to said user when said result of said user's prediction is inaccurate, said electronic message indicating that said rebate is not available for said purchase.
Therefore, as the present application is a nonprovisional of the prior-filed application, Application No. 63/530,183; and the claims are not supported by the disclosure of the application, the current claims, 21-40 of present application do not receive priority to the filing date of Application No. 63/530,183.
Claim Rejections - 35 USC § 112
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.
Claims 21-40 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 pre-AIA the applicant regards as the invention.
Claims 21 and 32 recite the limitation “receiving by a host device operated by a host and having a host website login data from a user device operated by said user, said user subsequently using said host website to select a merchant from a plurality of merchants offered on said host website, said selection of said merchant resulting in said user device being redirected at least indirectly to a merchant website corresponding to said selected merchant where said at least one item can be selected and purchased by said user.” However, claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure (see MPEP § 2111.04). As such, the optional language “at least one item can be selected and purchased” renders the claims indefinite. Claims 22-31 and 33-40 by being dependents of claims 21 and 32 respectively are also rejected.
Claim 23 recites the limitation “wherein said compensation data further includes information that can be used to identify said user and a price of said purchase.” However, claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure (see MPEP § 2111.04). As such, the optional claim language renders the claim indefinite.
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 21-40 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.
Claims 21-40 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 21-40 are directed toward at least abstract idea without significantly more. In accordance with MPEP § 2106, the rationale for this determination is explained below.
Representative claim 21 is directed towards a method, claim 32 is directed towards a system, which are statutory categories of invention.
Although, claim 21 is directed toward a statutory category of invention, the claim however, is directed toward a judicial exception namely an abstract idea. The limitations that set forth the abstract idea recite: receiving by a host login data from said user, said user subsequently select a merchant from a plurality of merchants, said selection of said merchant resulting in being redirected at least indirectly to a merchant website corresponding to said selected merchant where said at least one item can be selected and purchased by said user; receiving compensation data identifying compensation due to said host in response to said user purchasing said at least one item from said merchant; receiving said prediction from said user, linking said prediction to a wager having a corresponding betting line received from an online bookmaker; placing said wager with said online bookmaker for an amount that is equal to or less than said compensation due to said host in response to said user purchasing said at least one item from said merchant; receiving a result of said wager from said online bookmaker, using said result of said wager to determine whether said user's prediction is accurate; providing said rebate to said user when said result of said user's prediction is accurate, said rebate resulting in at least a portion of a price of said purchase being credited to said user; and providing an electronic message to said user when said result of said user's prediction is inaccurate, said electronic message indicating that said rebate is not available for said purchase. These limitations, entail; fundamental economic practices (customer-merchant transaction, wagering); commercial interactions including, marketing or sales activities or behaviors, business relations; as well as managing personal behavior including following rules or instruction. As such, the limitations are directed towards the abstract grouping of Certain Methods of Organizing Human Activity in prong one of step 2A of the Alice/Mayo test (see MPEP 2106.04(a)(2) II).
This judicial exception is not integrated into a practical application because, when analyzed as a whole under prong two of step 2A of the Alice/Mayo test (see MPEP 2106.04(d)), the additional elements provided by the claim amount to merely using a computer as a tool to perform an abstract idea. In particular the claim recites the additional elements: a host device operated by, having a host website, a user device operated by, using said host website to, offered on said host website, said user device; by said host device; by said host device, said host device; by said host device; by said host device, said host device; by said host device; by said host device an electronic message, said electronic message, which are recited at a high level of generality and are the mere use of a computer as a tool to perform the abstract ideas. See MPEP 2106.05(f). Similarly, claim 32 is directed to the same abstract idea and additional elements, and includes an affiliate network and memory device. Simply applying the abstract idea by computer components is not a practical application of the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claim does not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claim does not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claim does 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 exception (MPEP 2106.05(e)). Therefore, the claim does not, for example, purport to improve the functioning of a computer. Nor does it effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claim is directed to abstract ideas.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the claim recites the additional limitations of a host device, a host website, user device, electronic message, memory device (claim 32), which do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment1. Viewing these limitations as a combination, the additional elements amount to no more than merely applying the exception using generic computer components, executing basic functions of a computer. Merely applying an exception using generic computer components cannot provide an inventive concept. Therefore, the limitations of the claim as a whole, when viewed individually and as an ordered combination, do not amount to significantly more than the abstract idea.
A review of dependent claims 22-32, likewise, do not recite any limitations that would remedy the deficiencies outlined above. The claims only further add to the abstract idea, with no elements which integrate the abstract idea into a practical application or constitute significantly more. Thus, while they may slightly narrow the abstract idea by further describing it, they do not make it less abstract and are rejected accordingly. Further still, claims 32-40 suffer from substantially the same deficiencies as outlined with respect to claims 21-31 and are also rejected accordingly.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Errol CARVALHO whose telephone number is (571)272-9987. The
Examiner can normally be reached on M-F 9:30-7:00 Alt Fri
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on 571- 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E CARVALHO/
Primary Examiner, Art Unit 3622
1 See, Alice Corp. Pty Ltd. v. CLS Bank lnt'l, 134 S. Ct. 2347, 2360 (2014) (noting that none of the hardware recited “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers” (citing Bilski v. Kappos, 561 U.S. 593, 610-11 (2010))).
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