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 .
Election
Applicant's election with traverse of claims 2-9 in the reply filed on 04/23/2026 is acknowledged. The traversal is on the ground(s) that the search and examination of species I (claims 2-9) and species II (claims 10-17 and 18-21) would not require a serious burden. This is not found persuasive because two species recite separate utility, as described in the Restriction on 02/23/2026 requiring different fields of search, different prior art, and different analysis under 35 U.S.C. § 101 and 112(a).
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species there being no allowable generic or linking claim.
Status of Claims
This action is in reply to the claims filed on 04/23/2026.
Claim 1 is cancelled.
Claims 10-21 are withdrawn.
Claims 2-21 are currently pending, and claims 2-9 have been examined.
Information Disclosure Statement
Information Disclosure Statement received 09/13/2024 has been reviewed and considered.
Continuation
This application is a continuation of U.S. Patent Application No. 17/510,241, filed October 25, 2021, now U.S. Patent No. 12,086,862, which is a continuation of U.S. Patent Application No. 16/235,657, filed December 28,2018, now U.S. Patent No. 11,157,989.
Drawing Objections
The drawings are objected to because FIG. 3B, FIG. 5A, and FIG 5B contain graphics and text which are too blurry and cannot be easily read. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Subject Matter Free of Prior Art
Claim 2 is determined to have overcome the prior art, however the claims remain rejected under 35 U.S.C. 101 and the double patenting rejection, as set forth in this Office Action. Dependent claims 3-9 are also free from prior art by virtue of dependency, but remain rejected under 35 U.S.C. 101. Dependent claims 3, 5-6, and 9 additionally remain rejected by the double patenting rejections set forth in this Office Action.
Regarding claim 2, the closest prior art was found to be as follows:
Conchola et al. (US 2016/0162977 A1) discloses detecting a selection of a representation of a product on a website associated with a merchant by a user via an application on a user device of the user (¶ [0024] add to cart buttons, when selected, cause the corresponding item to be added to an electronic shopping cart on a mobile device; ¶ [0044]); determining that, on the website, the user is identified an anonymous user that prevents tracking of the selection by the website (¶ [0024] “the customer using mobile device 202 is anonymous because they have not provided sign-in credentials which would allow retail server 206 to identify the user”); tracking the selection in a user list for the user ... wherein the user list comprises information identifying at least the representation of the product (¶ [0024] “Instead, retail server 206 assigns an anonymous identifier to the user and associates the anonymous identifier with a session ID that is tied to the interactions between mobile device 202 and retail server 206”; ¶ [0025] “Shopping cart user interface 400 shows an electronic shopping cart for an anonymous user that includes a list of items currently in the electronic shopping cart such as items 402 and 404”);selecting an anonymous user flow type in the application for the user as the anonymous user on the website, wherein the anonymous user flow type associates the user device with the user list at the server and limits a requirement for identifying information to be provided at the website (¶ [0024] “Instead, retail server 206 assigns an anonymous identifier to the user and associates the anonymous identifier with a session ID that is tied to the interactions between mobile device 202 and retail server 206”).
However Conchola does not anticipate or render obvious tracking the selection in a user list for the user on a server separate from the website, initiating a guest user flow type on the website of the merchant in the application using an identifier associated with the user; or enabling a use of the guest user flow type on the website of the merchant without requiring a user authentication of the user on the website.
Crespo et al. (US 2007/0271147 A1) discloses tracking the selection in a user list for the user on a server separate from the website in ¶ [0064], and allowing customers to store items from multiple merchants in different domains in a single shopping cart, without providing the customers’ personal data to each merchant in ¶ [0068]. However, Crespo does not anticipate or render obvious initiating a guest user flow type on the website of the merchant in the application using an identifier associated with the user; or enabling a use of the guest user flow type on the website of the merchant without requiring a user authentication of the user on the website.
Yancey et al. (US 2018/0075515 A1) discloses enabling a user of the guest user flow type ... without requiring a user authentication of the user (¶ [0044]). However, Yancey does not anticipate or render obvious initiating a guest user flow type on the website of the merchant in the application using an identifier associated with the user; or enabling a use of the guest user flow type on the website of the merchant without requiring a user authentication of the user on the website.
Moreover, even assuming arguendo that the features of the claims exist individually, the combination of features as claimed would not have been obvious to one of ordinary skill in the art because any combination of the evidence obtained to reach the combination of features as claimed would require substantial reconstruction of Applicant' s claimed invention relying on improper hindsight bias.
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.
Claims 2-3, 5-6, and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, and 6 of U.S. Patent No. 12,086,862.
Although the claims at issue are not identical, the variations in the claim limitations are not patentable distinct. Claim 2, for example, recites the following features corresponding to those recited in claim 1 of the patent:
Application
Patent
Detecting selection via application on a user device of the user
Receiving selection via user list script
Determining that the user is an anonymous user that prevents tracking of the selection by the website
Selecting an anonymous flow type
Track user selections in a user list on a server separate from the website
Update at the transaction server a user list with the user selection wherein the transaction server uses a separate user authentication than the merchant webpage
Selecting an anonymous user flow type wherein the anonymous user flow type associates the user device with the user list and limits a requirement for identifying information to be provided at the website
Selecting an anonymous user flow type for tracking the user as an anonymous user of the merchant webpage, the anonymous user flow type associating the user device with the user list at the transaction server independently of authenticating the user device with the merchant server
Detecting that the identifying information of the user has been provided during the anonymous user flow type
Switching ... based on identifying information of the user provided during the anonymous user flow type
Initiating a guest user flow type on the website of the merchant in the application using an identifier associated with the user
Switching from the anonymous user flow type to a guest user flow type for tracking the user as a guest user of the merchant webpage
Updating the guest user flow type with the user list having at least the representation of the product
Responsive to switching, associating the user as the guest user at the merchant server using an identifier
Enabling a use of the guest user flow type on the website of the merchant without requiring a user authentication of the user on the website
Enabling uses of the guest flow type by the merchant server, wherein the uses are enabled without requiring user authentication
The differences between “detecting ... via an application” vs. “receiving ... via a user list script” are not patently distinct because detecting a selection strongly implies receiving it, and the user script is also an application or software executing on the user device. Furthermore, the difference between “limits a requirement for identifying information to be provided at the website” and “associating the user device with the user list at the transaction server independently of authenticating the user device with the merchant server” are not patentably distinct because the patented claim already establishes that the user is not authenticated at (and thus identifying information is not provided to) the merchant server.
Claim 3 is not patentably distinct from claim 3 of the patent because the patent already uses a guest identifier based on an application session.
Claims 5-6 are not patentably distinct from claim 2 of the patent which already selects an anonymous flow based on the generic representation, and determines a generic user representation based on whether the identifier is associated with the user device.
Claim 9 is not patentably distinct from claim 6 of the patent which already has a first and second merchant (plurality) associated with the user list and a first and second (plurality) of carts for the plurality of merchants.
Claim Rejections- 35 U.S.C. § 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 2-9 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Under Step 1 of the subject matter eligibility (SME) analysis described in MPEP 2106.03, the instant claims fall within the four statutory categories of invention identified by 35 U.S.C. 101. In the instant case, claims 2-9 are directed to a method.
In Step 2A Prong One, it must be considered whether the claims recite a judicial exception. Claim 2 recites abstract concepts including: detecting a selection of a representation of a product associated with a merchant by a user; determining that the user is identified an anonymous user that prevents tracking of the selection; tracking the selection in a user list for the user, wherein the user list comprises information identifying at least the representation of the product; selecting an anonymous user flow type for the user as the anonymous user, wherein the anonymous user flow type associates the user .. with the user list and limits a requirement for identifying information to be provided; detecting that the identifying information of the user has been provided during the anonymous user flow type; initiating a guest user flow type using an identifier associated with the user; updating the guest user flow type with the user list having at least the representation of the product; and enabling a use of the guest user flow type without requiring a user authentication of the user.
These identified limitations recite the abstract idea of “tracking user product selections independently of merchant authentication”, which falls within the “Certain Methods of Organizing Human Activities” grouping of abstract ideas as it relates to commercial interactions of sales activities or behaviors. Accordingly, claims 2-9 recite an abstract idea. See MPEP 2106.04.
In Step 2A Prong Two, 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.
Instant claim 2 recite additional elements including: a website; an application on a user device; a server separate from the website; associate the user device with the user list at the server. The merchant website, application on a user device, and separate server are recited at a high-level of generality (i.e., as a generic device performing generic computer functions of transmitting and storing information) such that these elements, individually and in combination, amount to no more than mere instruction to implement the abstract idea on a computer. Implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. See MPEP 2106.05(f). Claim 2 is therefore directed to the abstract idea.
Under Step 2B of the SME analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) individually and in combination are merely being used to apply the abstract idea to a general computer components. For the same reason, the elements are not sufficient to provide an inventive concept. As explained in MPEP 2106.05(f), implementing an abstract idea with a generic computer does not add significantly more in Step 2B. Therefore, the additional elements, alone or in ordered combination, there is no inventive concept in the claim, and thus claim 2 is not patent eligible.
Dependent claim 3 recites additional elements including: creating the identifier for the guest user flow type based on a software session for the application. This additional elements do not integrate the abstract idea into a practical application because they merely amount to no more than a general link of the use of the abstract idea to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
Dependent claim 4 and 7 recites additional elements including storing a cookie on the user device and logging the user in to an account on the website based on the user authentication. The recited cookie storing and logging in based on user authentication are described in ordinary terms such that these elements amounts to no more invoking a computer as a tool to perform these existing functions. 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. MPEP 2106.05(f).
Dependent claim(s) 5-6, 8, and 9 do not aid in the eligibility of the independent claims. These claims merely further define the abstract idea without reciting any further additional elements, not already address in the previous claims. Thus dependent claims 5-6, 8, and 9 are also ineligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
M. Song, J. Li and X. Wu (NPL Reference U) presents an authentication model based on a third party broker which generates and distributes a session key between a buyer and merchant.
Nack et al. (US 2018/0101889 A1) discusses a procedure to protect the financial account information from being stolen or illegally obtained while still allowing the user to make a purchase and still allowing the retailer to receive assurance from the financial account that valid card data was provided as part of the payment process.
Panwar et al. (US 8,468,271 B1) describes techniques for utilizing anonymous cookies within computer networks to protect customer identities.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNEDY A GIBSON-WYNN whose telephone number is (571)272-8305. The examiner can normally be reached M-F 8:30-5:30 PM.
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/K.G.W./Examiner, Art Unit 3688
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 8/7/2026
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