DETAILED ACTION
Status of Claims
• The following is an office action in response to the communication filed 09/09/2026.
• Claims 1 and 20have been amended.
• Claims 3-7, 10, and 12-19 have been canceled.
• Claims 1-2, 8-9, 11, and 20-32 are currently pending and have been examined.
Response to Amendment
In light of Applicant’s amendments, filed on 09/09/2026, the 112(b) rejections have been withdrawn.
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 .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 1-2, 8-9, 11, and 20-32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1-2, 8-9, 11, and 21-26 are directed to a process, and claims 20 and 27-32 are directed to a machine. Therefore, claims 1-2, 8-9, 11, and 20-32 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
receiving a file comprising a list of items, wherein the file comprises a receipt, an image of an in-store receipt, an image of a handwritten note, a capture, or a text file, and wherein the file is received based on a user-selected existing file that is saved to reduce time for obtaining the list of items;
processing, using a first model, the file to extract a first search term for each item in the list of items based on a prompt, wherein the first search term for each item in the list of items comprises an extracted product name for each respective item in the list of items;
implementing the extracted product name as a seed for generating a second prompt;
prompting, using the second prompt, a model to generate a second search term for each respective item in the list of items by generating a simplified version of the extracted product name for each respective item in the list of items, wherein the second search term comprises the simplified version of the extracted product name without branding words when the extracted product name includes branding words, and wherein the second search term corresponds to a category with which items searchable are tagged;
searching, for each item of the list of items, for at least one identical or similar item based on the second search term for each respective item in the list of items, wherein the search processes the searched for the items in the list of items as a batch containing all of the items and returns data comprising a set of results;
sending for each item of the list of items, the data for displaying the at least one identical or similar item within a ranked list of items, wherein the data is associated with the at least one identical or similar item for each item in the list of items based on the searching using the second search term;
receiving at least one selection of the at least one identical or similar item; and
adding items corresponding to the at least one selection of the at least one identical or similar item to an order for a system for conducting a data transaction, wherein the processing, prompting, and searching are performed in response to the file.
The above limitations recite the concept of determining items to add to an order based on a list of items. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Specifically, determining items from a list of items, in order to find identical or similar items, and add them to an order for a transaction is a sales activity. This is further illustrated in paragraph [0002] of the Specification, describing the invention relates to shopping. Additionally, the claims fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. Specifically, receiving a list, determining similar or identical items, and adding those items to an order are observations and evaluations that can be performed in the human mind or by a human using pen and paper. Independent claim 20 recites similar limitations as claim 1 and as such, claim 20 falls within the same identified grouping of abstract ideas. Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claims 1 and 20 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claims 1 and 20 recite additional elements, such as a computer-implemented method, a first device, a network, an uploaded file, an online receipt, a screen capture, a plain text file, an existing file for upload that is saved on the first device to reduce processing time, a second device, a first trained model, a second trained model, batch searching, an ecommerce platform, a batch search function, wherein the processing, prompting, and searching are performed at the second device in response to the uploaded file such that the first device avoids transmitting separate search queries for the respective items, thereby reducing client-side processing and network communications between the first device and the second device, a user interface, a system, an electronic data transaction, and a processing system comprising: one or more memories comprising computer-executable instructions; and one or more processors configured to execute the computer-executable instructions and cause the processing system to perform steps. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 1 and 20 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 1 and 20 merely recite a commonplace business method (i.e., determining items to add to an order based on a list of items) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims 1 and 20 generally link the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claims 1 and 20 specifying that the abstract idea of determining items to add to an order based on a list of items is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 1 and 20 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1 and 20 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1 and 20 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 1 and 20, these claims recite additional elements, such as a computer-implemented method, a first device, a network, an uploaded file, an online receipt, a screen capture, a plain text file, an existing file for upload that is saved on the first device to reduce processing time, a second device, a first trained model, a second trained model, batch searching, an ecommerce platform, a batch search function, wherein the processing, prompting, and searching are performed at the second device in response to the uploaded file such that the first device avoids transmitting separate search queries for the respective items, thereby reducing client-side processing and network communications between the first device and the second device, a user interface, a system, an electronic data transaction, and a processing system comprising: one or more memories comprising computer-executable instructions; and one or more processors configured to execute the computer-executable instructions and cause the processing system to perform steps. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 1 and 20 are manual processes, e.g., receiving information, analyzing information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 1 and 20 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims specifying that the abstract idea of determining items to add to an order based on a list of items is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 1 and 20 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 1 and 20 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 2, 8-9, 11, and 21-32, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they recite an abstract idea, are not integrated into a practical application, and do not add “significantly more” to the abstract idea. More specifically, dependent claims 2, 8-9, 11, and 21-32 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they further recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors and managing personal behavior or relationships or interactions between people. Dependent claims 2, 8-9, 11, and 21-32 additionally fall within the “Mental Processes” grouping of abstract ideas, enumerated in the MPEP, in that they recite concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. Dependent claims 8, 22-26, and 28-32 fail to identify additional elements and as such, are not indicative of integration into a practical application. Dependent claims 2, 9, 21, and 27 further identify additional elements, such as a first language model, an electronic basket or cart or trolley, and a JavasScript Object Notation (JSON) format. Similar to discussion above the with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). As such, under Step 2A, dependent claims 2, 8-9, 11, and 21-32 are “directed to” an abstract idea. Similar to the discussion above with respect to claims 1 and 20, dependent claims 2, 8-9, 11, and 21-32 analyzed individually and as an ordered combination, invoke such additional elements as a tool to perform the abstract idea and merely indicate a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, and therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Accordingly, under the Alice/Mayo test, claims 1-2, 8-9, 11, and 20-32 are ineligible.
Allowable Subject Matter
Claims 1-2, 8-9, 11, and 20-32 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101, set forth in this Office action.
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant’s invention as the noted features amount to more than a predictable use of elements in the prior art.
The most relevant prior art made of record includes previously cited Ruhter (US 20240232985 A1), hereinafter Ruhter, previously cited Finkielsztein et al. (US 20250078139 A1), hereinafter Finkielsztein, previously cited Bentley et al. (US 10636074 B1), hereinafter Bentley, previously cited Baviskar (US 20250117838 A1), hereinafter Baviskar, and previously cited NPL reference U, initially cited in the Office action dated 01/30/2025.
Although individually the references teach concepts such as uploading and processing a file, utilizing machine learning, simplified searches, and generating a list, none of the references teach nor render obvious uploading and processing a file to generate a seed search term which is used to generate a second prompt which is used by a second machine learning model to generate an item, which is searched and used to generate a list of items selectable for a transaction.
Previously cited Ruhter discloses a method of creating a list (Ruhter: [0008]). A text entry field is provided for entry of a shopping list. The text is processed to identify grocery items in inventory (Ruhter: [0008]). Strong parsing and text matching may be used, including natural language processing (Ruhter: [0032]). Items from the list may be replaced with available inventory items, which is determined by interfacing with a grocery store (Ruhter: [0029]; [0032]). All items from the list may be added to the cart and inventory may be subsequently (Ruhter: [0030]; [0035]). Yet Ruhter does not explicitly disclose all of the limitations pertaining to the type of file input, prompts, the second search term, or the specific two machine learning models.
Previously cited Finkielsztein teaches a shopping list method (Finkielsztein: [abstract]). Finkielsztein further teaches a mobile application where a user may capture an image of a physical receipt (Finkielsztein: [0038]). Finkielsztein further teaches a list of ingredients may be generated from raw text using a prompt for an LLM (Finkielsztein: [0004]). However, Finkielsztein does not explicitly teach all of the limitations regarding the specific machine learning models and the second search terms.
Previously cited Bentley teaches a cart generation method. A user may handwrite a shopping list on a screen. The handwriting may be processed and used to create an online shopping cart comprising items on the list (Bentley: Col. 5, Ln. 52 – Col. 6, Ln. 6). However, Bentley does not teach the limitations pertaining to the type of file input, prompts, the second search term, or the specific two machine learning models.
Previously cited Baviskar teaches a method of product classification (Baviskar: [abstract]). Baviskar further teaches that a prompt may be generated in order to determine a product classification (Baviskar: [abstract]). Baviskar further teaches determining a list of products (Baviskar: [0057]). Baviskar further teaches that follow up prompts may be generated based on output closeness to some category in the taxonomy, in order to broaden the search where obscure items are encountered (Baviskar: [0038]). However, Baviskar does not explicitly teach the limitations regarding the file or the list of items that can be selected for purchase.
Previously cited NPL reference U, initially cited in the Office action dated 01/30/2025, teaches a shopping cart creation. A user may send a text regarding an item to be added to a cart. Items a customer needs and sends a text regarding may be automatically added to their cart. However, U does not explicitly teach all of the limitations regarding the specific machine learning models and the second search terms.
While these references arguably teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Accordingly, claims 1 and 20, taken as a whole, are indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims allowable over the prior art/additional art. Claims 2, 8-9, 11, and 21-32 depend from claims 1 and 20, and therefore the dependent claims are also indicated as containing allowable subject matter.
The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of the Applicant's claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, filed 09/09/2026, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims do not recite a mental process because “[a] human mind is not practically performing the claimed interaction between trained-model output, prompt generation, category-tagged ecommerce inventory, and batch search processing”. Remarks pages 8-9. The examiner disagrees. Initially, the examiner notes the claims are directed to Certain Methods of Organizing Human Activity, in addition to Mental Processes. As shown in the rejection of claims under 35 U.S.C. 101 above, the limitations directed to the abstract idea are directly quoted and concepts within the identified as belonging to the Certain Methods of Organizing Human Activity and Mental Processes groupings of abstract ideas. With respect to the instant claims, a computer-implemented method, a first device, a network, an uploaded file, an online receipt, a screen capture, a plain text file, an existing file for upload that is saved on the first device to reduce processing time, a second device, a first trained model, a second trained model, batch searching, an ecommerce platform, a batch search function, wherein the processing, prompting, and searching are performed at the second device in response to the uploaded file such that the first device avoids transmitting separate search queries for the respective items, thereby reducing client-side processing and network communications between the first device and the second device, a user interface, a system, an electronic data transaction, and a processing system comprising: one or more memories comprising computer-executable instructions; and one or more processors configured to execute the computer-executable instructions and cause the processing system to perform steps have been analyzed as additional elements and accordingly are not analyzed under Step 2A, Prong 1. The claims further recite determining items to add to an order based on a list of items that is searched using broadened search terms. These claims fall into the Methods of Organizing Human Activity grouping, which includes activity that falls within the enumerated sub-grouping of commercial or legal interactions, including subject matter relating to advertising, marketing or sales activities or behaviors. Specifically, these claims recite sales activities. These claims further fall within the Mental Processes grouping of abstract ideas. Specifically, receiving a list, determining similar or identical items, and adding those items to an order are observations and evaluations that can be performed in the human mind or by a human using pen and paper. The examiner notes that a human could broaden a search term, provide prompts, and perform searches in batches. Furthermore the limitations recite the Mental Process of collecting information, analyzing information, and displaying certain results of the collection and analysis. Accordingly, these claims recite an abstract idea.
Applicant argues the claims are patent eligible because the claims provide a technical solution and “address the operation of the computerized search process itself” (Remarks page 10). The examiner disagrees. The MPEP provides guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, the MPEP states “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” The MPEP further states that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art,” and that, “conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…the examiner should not determine the claim improves technology” (see MPEP 2106.04). That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
While the examiner acknowledges that improvements to the functioning of a computer or to any other technology or technical field may constitute integration into a practical application (see MPEP 2106.05(a)), the instant claims do not provide a technical improvement. Rather, the claims provide an improvement to the abstract idea of determining items to add to an order based on a list of items. This is further illustrated in paragraph [0002] of the Specification, describing the invention relates to helping a user find products. While the Examiner acknowledges Applicant’s assertions regarding the specification, the Examiner notes that simplifying product search terms is not a technical improvement, but rather an improvement to the abstract idea.
Although the claims include computer technology such as a computer-implemented method, a first device, a network, an uploaded file, an online receipt, a screen capture, a plain text file, an existing file for upload that is saved on the first device to reduce processing time, a second device, a first trained model, a second trained model, batch searching, an ecommerce platform, a batch search function, wherein the processing, prompting, and searching are performed at the second device in response to the uploaded file such that the first device avoids transmitting separate search queries for the respective items, thereby reducing client-side processing and network communications between the first device and the second device, a user interface, a system, an electronic data transaction, and a processing system comprising: one or more memories comprising computer-executable instructions; and one or more processors configured to execute the computer-executable instructions and cause the processing system to perform steps, such elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of determining items to add to an order based on a list of items in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO. Unlike precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to technological improvements but are directed to improving the business method of determining items to add to an order based on a list of items. The claimed process, while arguably resulting in a better process for determining items to add to an order based on a list of items, is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the server and/or computer components that operate the system. Rather, the claimed process is utilizing data sets related to items and shopping while still employing the same server and/or computer components used in conventional systems to improve determining items to add to an order based on a list of items, e.g. a business method, and therefore is merely applying the abstract idea using generic computing components. As such, the claims are not integrated into practical application.
Applicant argues that the claims are eligible because “the claimed improvement lies in their ordered interrelationship” (Remarks pages 11). The examiner disagrees. As discussed in the 101 rejection above, the claim limitations, viewed as a whole, simply convey the abstract idea itself facilitated by generic computing components. The claims were analyzed to determine whether they integrated the abstract idea into a practical application or provided significantly more, and this analysis included an analysis of whether they provided a technical solution to a technical problem. The claims do not provide any improvement to technology or a technical field, for the reasons discussed in the paragraphs above.
Applicant argues that the claims are patent eligible because the claims “recite a particular mechanism” (Remarks pages 11-12). The examiner disagrees. Claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly (see MPEP 2106.05(f)). Limitations that confine the judicial exception to a particular, practical application of the judicial exception may amount to significantly more or integrate the judicial exception into a practical application. For example, in BASCOM, the combination of additional elements, and specifically "the installation of a filtering tool at a specific location, remote from the end‐users, with customizable filtering features specific to each end user" where the filtering tool at the ISP was able to "identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account," were held to be meaningful limitations because they confined the abstract idea of content filtering to a particular, practical application of the abstract idea. However, recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it" (see MPEP 2106.05(f)). Applicant's claims do not describe how the particular arrangement of elements is a technical improvement and the claims, in fact, only merely recite the abstract idea of determining items to add to an order based on a list of items along with the requirement to perform it on a set of generic computer components. For example, Applicant's claims merely recite steps of a method with generic computer components being recited in a generic manner. While additional elements are claimed, they are claimed in a generic manner and merely perform generic functions. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements are particularly arranged in order to provide a technical improvement. As such, the claims are not patent eligible.
Applicant argues the claims are patent eligible in light of Desjardins because “Desjardins is relevant because it confirms the proper method of analysis” (Remarks page 12). The examiner disagrees. Consistent with both Desjardins and the MPEP, the examiner has analyzed the claims to determine whether they recite an abstract idea, integrate the abstract idea into a practical application, and provide significantly more. The examiner has determined from the specification whether an improvement to computer functionality or another technology or technical field is disclosed, and then to determine whether the claims themselves reflect the components or steps providing that improvement. The claims were not found to provide a technical improvement for the reasons discussed in the response to remarks paragraphs above.
Applicant argues the claims are patent eligible because “the amended claims cannot properly be reduced to automation of a manual purchasing decision” (Remarks pages 12-13). The examiner disagrees. The claims at issue only merely recite the abstract idea of determining items to add to an order based on a list of items along with the requirement to perform it on a set of generic computer components. For example, Applicant's claims merely recite steps of determining items to add to an order based on a list of items with generic computer components being recited in a generic manner. The specificity of the claims is directed toward the abstract idea of determining items to add to an order based on a list of items and not toward any technology, and accordingly, is insufficient to integrate the abstract idea into a practical application. While additional elements are included within the claims, they are claimed in a generic manner and merely perform generic functions. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality. As such, the claims represent mere instructions to apply an abstract idea to a general purpose computer.
Applicant argues the claims provide significantly more because the examiner’s findings of subject matter allowable over the prior art “bear on whether this particular ordered arrangement may properly be dismissed as nothing more than ordinary, generic implementation” (Remarks page 13). The examiner disagrees. Again, the examiner emphasizes "[t]he inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016). Additionally, the MPEP sets forth that if a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, Applicant's claims merely recite steps of a method with generic computer components being recited in a generic manner. While additional elements are included within the claims, they are claimed in a generic manner and merely perform generic functions. The additional elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of determining items to add to an order based on a list of items in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. Applicant’s disclosure does not articulate or suggest how these additional elements function, individually or in combination, in any manner other than using generic functionality nor does the disclosure articulate how the elements provide a technical improvement. Accordingly, the additional elements do not amount to significantly more because they merely amount to using the additional elements as a tool to perform the abstract idea. Accordingly, the claims do not provide significantly more.
Applicant argues the dependent claims are allowable for the same reasons as the independent claims (Remarks page 14). The examiner disagrees. The rejections to the independent claims have been maintained for the reasons discussed in the paragraphs above and the rejections to the dependent claims are maintained for the same reasons.
Applicant argues the claims are patent eligible because “[t]he Examiner's allowable-subject-matter findings support allowance once the statutory rejections are overcome” Remarks page 14. The examiner disagrees. The question of whether a particular claimed invention is novel or obvious is "fully apart" from the question of whether it is eligible. Diamond v. Diehr, 450 U.S. 175, 190, 209 USPQ 1, 9 (1981). As made clear by the courts, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. See MPEP 2106.05(I). Accordingly, non-obviousness under 35 U.S.C, 103 has no bearing on the eligibility of the claims over 35 U.S.C. 101.
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 ANNA MAE MITROS whose telephone number is (571)272-3969. The examiner can normally be reached Monday-Friday from 9:30-6.
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/ANNA MAE MITROS/Examiner, Art Unit 3689
