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 .
Response to Arguments
Applicant’s arguments with respect to the rejections of claims 1-4 under 35 USC 101 have been fully considered but are not persuasive.
Applicant first argues that the instant claims represent a technological solution to a technological problem, and therefore are not directed to an abstract idea. The Examiner respectfully disagrees. Rather than reciting a “particular technical process and system architecture that solves the specific problem of cold-start user onboarding and permission-based communication while preserving privacy and security,” the instant claims are quintessentially “organizing communications between people”. Claim 1, for example, requires the operation of no technology in particular besides the occasional insertion of the word “electronic” in front of processes that can, and often are, implemented entirely without technology. Claim 1 recites receiving a communication request from a party who wishes to remain anonymous and sending an anonymized version of that request to a recipient. Claim 4 even explicitly identifies that sending the anonymized request by “regular mail” falls within the scope of claim 1. Therefore, but for the invocation of generic electronics, claim 1 includes within its scope a human intermediary accepting a paper secret-admirer letter from an anonymous party, looking up the recipient’s address in a physical card file, and physically sending a paper letter containing a random code to the recipient. Step (d) of claim 1 mentions technology in the form of “an app,” but notably is not directed toward the operation of the app or of a computer, but instead essentially appears to describe provisions of a terms-of-service agreement that could be enforced by people. For example, step (d) reasonably encompasses a human mail clerk who, before forwarding messages, checks a paper file for a signed statement that the first person has downloaded an app and agreed to a ToS agreement.
Applicant next argues that the claims recite significantly more than the abstract idea because the “‘randomly-generated linking code’ is not a generic link, but rather, it is a computer-generated, unique, single-use token that is embedded in an outbound communication request that—upon consent—triggers a specific, automated account-creation.” The Examiner notes, however, that nothing in the claims requires the code to be computer-generated, unique, single-use, or “embedded,” and nothing in the claims requires automated account-creation. Furthermore, even assuming these features were made part of the claim (such as by amendment), they do not represent anything beyond generating a simple string of random information, such as by repeatedly rolling a die and writing down a corresponding sequence of numbers.
In light of the above, Applicant’s arguments cannot be held as persuasive and the rejections are maintained.
Applicant’s arguments with respect to the rejections of claims 1-4 under 35 USC 103 have been considered and are persuasive in light of the amendments. Accordingly, the rejections are withdrawn.
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 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-4 are directed to an abstract idea (which is a judicial exception to the four categories) without significantly more.
First, with respect to prong one of step 2A of the analysis, independent claim 1 is directed to the abstract idea of organizing communications between people. Claim 1 will be treated as representative. The idea is recited in the following aspects of claim 1:
“a second person…lodging an electronic request…”;
“retrieving or determining first contact details…”;
“sending a communication request… indicating that an anonymous party desires to communicate…, the communication request including a randomly-generated linking code, the communication request concealing the second contact details…, concealing the first contact details…, and revealing a purpose of the communication request”;
“if the first person consents to the communication request…the first person must (i) download and install an app…, (ii) use the linking code, and (iii) agree to specific conditions…in order to communicate with the second person”.
The idea amounts to a process that, under its broadest reasonable interpretation, covers managing personal relationships between people but for the recitation of generic computer components. For example, but for the generic computer components, the claimed process is analogous to a broker that arranges communication sessions by mail between people, anonymizes communications, uses a rolled die to determine secret codes, and before forwarding messages, checks a paper file for a signed statement that the first person has used the code (such as by writing it down for use in signing anonymous communications), downloaded an app, and agreed to a ToS agreement. Accordingly, each of the independent claims recites an abstract idea.
Next, with respect to prong two of step 2A, this abstract idea is not integrated into a practical application in each of the independent claims. In particular, besides the abstract idea itself, each claim recites generic computer functionality at a high level of generality such that it amounts to no more than mere instructions to apply the abstract idea using generic computer components. Simply invoking general-purpose computers or computer components as a tool to perform the abstract idea, or claiming the improved speed or efficiency inherent with applying the abstract idea on a computer, is not enough to transform the claims into a patent-eligible application, and does not provide an inventive concept. See MPEP 2106.05(f). Moreover, to the extent that the claims require such as gathering and transmitting data over a network, or outputting, storing, or displaying data, these features amount to insignificant extra-solution activity, which is not indicative of integration into a practical application. See MPEP 2106.05(g). Still further, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception cannot integrate a judicial exception into a practical application. See MPEP 2106.05(h).
As specific examples, the claims recite the following elements which are not sufficient to integrate the abstract idea into a practical application:
That certain aspects of claims 1 and 6 are “electronic” or “automated,” which amounts to an instruction to apply the abstract idea on a computer;
That a user “must” download an app, use a code, and agree to conditions, which is so broad as to encompass a person using a paper record-keeping system to enforce ToS.
In light of the above, the claimed invention clearly does not pertain to an improvement in the functioning of the computer itself or to any other technology or technical field. Rather than presenting a technological solution to a technological problem, each claim represents merely an abstract idea that is implemented using computers as tools. Therefore, the claims clearly cannot be said to represent a technological improvement. Accordingly, these additional elements do not integrate the abstract idea into a practical application. Because the claims recite an abstract idea but do not integrate the abstract idea into a practical application, each claim is directed to an abstract idea.
Next, with respect to 2B, each of the independent claims 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 additional elements of “electronic” or “automated” implementation, “apps,” etc., amount to mere instructions to apply the idea, insignificant extra-solution activity, or mere field-of-use limitations. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Moreover, as discussed above, to the extent that the claims imply features such as gathering and transmitting data over a network, or outputting, storing, or displaying data, these features amount to insignificant extra-solution activity, which cannot amount to significantly more to the abstract idea. Finally, upon reevaluating the elements previously determined to be insignificant extra-solution activity, they cannot be considered unconventional. Considering the additional elements individually and in combination, each of the claims as a whole does not recite additional elements that amount to significantly more than the judicial exception.
For the reasons given above, each of the independent claims is directed to an abstract idea without significantly more, and therefore the claims are not patent eligible under 35 USC 101.
Dependent claims 2-4 are rejected under the same rationale as given above. Each of these claims include further details of the abstract idea, making it more specific, but no less abstract. Any additionally recited limitations which are not directed to the abstract idea itself do not include limitations which amount to a practical application of, or significantly more than, the abstract idea.
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 1-4 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1 is directed to an “automated” process. Much of the claim (e.g., step (d) in particular) is written in ambiguous functional language, such as “if the first person consents…in order for the first person to be permitted to communicate…, the first person must (i) download and install an app…, (ii) use the linking code, and (iii) agree to specific conditions… in order to communicate.” This language is ambiguous because there is no clear-cut indication of the scope of the subject matter covered by the claim, the language does not set forth well-defined boundaries of the invention and only states a problem solved or a result obtained, and one of ordinary skill in the art would not know from the claim terms what steps encompassed by the claim. For example, step (d) essentially describes a terms-of-service or similar agreement, but does not require any actual steps—technological or otherwise—to enforce what the user “must” do. See MPEP 2173.05(g). Additionally, note that “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” See MPEP 2173.05(p)(II).
The Examiner recommends amending the claim to more clearly recite the structure of the various elements of the system.
Claims 2-4 are rejected for inheriting the deficiencies of claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Christopher D. Biagini whose telephone number is (571)272-9743. The examiner can normally be reached weekdays from 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Oscar Louie can be reached at (571) 270-1684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Christopher D. Biagini
Primary Examiner
Art Unit 2445
/Christopher Biagini/Primary Examiner, Art Unit 2445
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