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 .
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 1-17 are rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claims are directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of the USPTO, applies to all statutory categories, and is explained in detail below.
When considering subject matter eligibility under 35 U.S.C. §101, (1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), which is a two-prong inquiry. In prong 1, it must be determined whether the claim recites an abstract idea, a law of nature, or a natural phenomenon, and if so, in prong 2, it must be determined whether the claim recites additional elements that integrate the judicial exception into a practical application. If the claim is determined to be directed to an abstract idea in step 2a, it must additionally be determined in step 2b whether the claim amounts to significantly more than the abstract idea. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. MPEP §2106.04.
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a method for product recommendation, as in independent claim 1 and in the claims that depend therefrom. Such methods fall under the statutory category of “process”. Therefore, the claims are directed to a statutory eligibility category.
Step 2A, prong 1. The invention is directed to a method for product recommendation, which is a sales method and, hence, a Certain Method of Organizing Human Activities. MPEP § 2106.04(a). As such, the claims include an abstract idea. When considering the limitations individually and as a whole the limitations directed to the abstract idea are:
“A method for product recommendation by a …, the method comprising”:
“receiving a gift recommendation request from a first user … for a second user”;
“checking available basic information of the second user”;
“determining first recommendation information based on the basic information, wherein the first recommendation information comprises a first recommendation reason and at least one product related to the first recommendation reason”;
“determining second recommendation information not based on the basic information, wherein the second recommendation information comprises a second recommendation reason and at least one product related to the second recommendation reason”; and
“providing recommendation information comprising the first recommendation information and the second recommendation information to the first user …, wherein the first recommendation information is prioritized for display over the second recommendation information”.
This judicial exception is not integrated into a practical application. The elements are recited at a high level of generality, i.e. a generic computing system performing generic functions including generic processing of data. Accordingly, the additional elements do not integrate the abstract into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea. MPEP §2106.04. Thus, under Step 2A, prong 2 of the Mayo framework, the examiner holds that the claims are directed to concepts identified as abstract.
STEP 2B. Because the claims include one or more abstract ideas, the examiner now proceeds to Step 2B of the analysis, in which the examiner considers if the claims include individually or as an ordered combination limitations that are "significantly more" than the abstract idea itself. This includes analysis as to whether there is an improvement to either the "computer itself," "another technology," the "technical field," or significantly more than what is "well-understood, routine, or conventional" in the related arts.
The instant application includes in claim 1 additional limitations to those deemed to be abstract ideas. When taken individually, these limitations are
“server”; and
“terminal”.
In the instant case, claim 1 is directed to above mentioned abstract idea. Technical functions such as sending, receiving, displaying and processing data are common and basic functions in computer technology. The individual limitations are recited at a high level and do not provide any specific technology or techniques to perform the functions claimed.
Looking to MPEP §2106.05(d), based on court decisions well understood, routine and conventional computer functions or mere instruction and/or insignificant activity have been identified to include: 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); TU Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); O/P Techs., /no., v. Amazon.com, Inc., 788 F,3d 1359, 1363, 115 USPQ2d 1090,1093 (Fed. Cir, 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPG2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink," (emphasis added)}; Insignificant intermediate or post solution activity -See Bilski v. Kappos, 581 U.S. 593, 611 -12, 95 USPQ2d 1001,1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity); In Bilski referring to Flook, where Flook determined that an insignificant post-solution activity does not makes an otherwise patent ineligible claim patent eligible. In Bilski, the court added to Flook that pre-solution (such as data gathering) and insignificant step in the middle of a process (such as receiving user input) to be equally ineffective. The specification and Claim does not provide any specific process with respect to the display output that would transform the function beyond what is well understood. Like as found in Electric Power Group, Bilski, the technical process to implement the input and display functions are conventional and well understood.
In addition, when the claims are taken as a whole, as an ordered combination, the combination of steps does not add "significantly more" by virtue of considering the steps as a whole, as an ordered combination. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments using what is well-understood, routine, and conventional in the related arts. The steps are still a combination made to the abstract idea. The additional steps only add to those abstract ideas using well-understood and conventional functions, and the claims do not show improved ways of, for example, an unconventional non-routine functions for authorizing the timing of a payment and to activate a display screen based on a trigger or camera functions that could then be pointed to as being "significantly more" than the abstract ideas themselves. Moreover, examiner was not able to identify any "unconventional" steps, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is well-understood, routine, and conventional in the related arts.
Further, note that the limitations, in the instant claims, are done by the generically recited computing devices. The limitations are merely instructions to implement the abstract idea on a computing device and require no more than a generic computing devices to perform generic functions.
CONCLUSION. It is therefore determined that the instant application not only represents an abstract idea identified as such based on criteria defined by the Courts and on USPTO examination guidelines, but also lacks the capability to bring about "Improvements to another technology or technical field" (Alice), bring about "Improvements to the functioning of the computer itself" (Alice), "Apply the judicial exception with, or by use of, a particular machine" (Bilski), "Effect a transformation or reduction of a particular article to a different state or thing" (Diehr), "Add a specific limitation other than what is well-understood, routine and conventional in the field" (Mayo), "Add unconventional steps that confine the claim to a particular useful application" (Mayo), or contain "Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment" (Alice), transformed a traditionally subjective process performed by humans into a mathematically automated process executed on computers (McRO), or limitations directed to improvements in computer related technology, including claims directed to software (Enfish).
Dependent claims 2-15, which impose additional limitations, also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 2-15, these dependent claims have also been reviewed with the same analysis as independent claim 1. The dependent claims have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1; where all claims are directed to the same abstract idea, "addressing each claim of the asserted patents [is] unnecessary." Content Extraction &. Transmission LLC v, Wells Fargo Bank, Natl Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims are directed towards patent eligible subject matter, applicant is invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter. Claim 16 recites a “memory” and a “processor”. These are generic elements. Claim 16 is otherwise similar to claim 1 and is rejected for the same reasons. Claim 17 is similar to claim 1 and is rejected for the same reasons.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2006/0173872 A1 (hereinafter “Koike”) in view of U.S. Patent Application Publication 2016/0055571 A1 (hereinafter “Wouhaybi”).
With respect to claim 1, Koike discloses
“A method for product recommendation by a server, the method comprising”: Koike, abstract;
“receiving a … [product] recommendation request from a first user terminal for a … user”; Koike ¶ 0007 (request is received from a user for a recommendation for a product, which could be a gift for another user);
“checking available basic information of the second user”; Koike ¶ 0037 (e.g., user preferences are checked);
“determining first recommendation information based on the basic information, wherein the first recommendation information comprises a first recommendation reason and at least one product related to the first recommendation reason”; Koike ¶ 0037 (user preferences and product attributes are used to recommend an item based on a first reason, such as wines from a preferred geographic region);
“determining second recommendation information not based on the basic information, wherein the second recommendation information comprises a second recommendation reason and at least one product related to the second recommendation reason”; Koike ¶ 0037 (user preferences and product attributes are used to recommend an item based on a second reason, such as wines with a particular type of aroma); and
“providing recommendation information comprising the first recommendation information and the second recommendation information to the first user terminal, wherein the first recommendation information is prioritized for display over the second recommendation information”. Koike ¶ 0037 (recommendations and reasons are provided; one recommendation reason is prioritized over others and denominated as “common recommendation reason).
Koike does not explicitly disclose a gift recommendation. Wouhaybi discloses
“receiving a gift recommendation request from a first user terminal for a second user”. Wouhaybi ¶ 0007 (gift recommendations for other users are provided).
Koike and Wouhaybi both relate to providing recommendations. Koike, abstract; Wouhaybi, abstract. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the gift recommendation feature as taught by Wouhaybi in the method of Koike with the motivation of providing better recommendations. Wouhaybi ¶¶ 0002-0004.
With respect to claim 2, Wouhaybi discloses
“further comprising, prior to receiving the gift recommendation request, receiving information on a permission status for use of the basic information from the second user's terminal”. Wouhaybi ¶¶ 0007, 0014, 0077-0079 (permissions are determined based on context and on previously configured permissions).
With respect to claim 3, Wouhaybi discloses
“wherein the permission status for use of the basic information is set differently depending on a sender comprising a first user”. Wouhaybi ¶¶ 0007, 0014, 0077-0079 (context depends in part on identity of users).
With respect to claim 4, Wouhaybi discloses
“wherein the basic information is set differently depending on a sender comprising a first user”. Wouhaybi ¶¶ 0007, 0014, 0077-0079 (context depends in part on identity of users).
With respect to claim 5, Wouhaybi discloses
“wherein the basic information comprises: first-type basic information that requires permission from the second user to use; and second-type basic information that does not require permission from the second user to use”. Wouhaybi ¶¶ 0007, 0014, 0077-0079 (context can determine required permissions; e.g., permission may be required to access purchase history but not to access areas of interest, such as tennis).
With respect to claim 6, Koike discloses
“wherein the first recommendation information is based on the first-type basic information, wherein the method further comprises, prior to providing the recommendation information, determining a third recommendation information based on the second- type basic information, the third recommendation information comprising a third recommendation reason and at least one product related to the third recommendation reason, wherein in providing the recommendation information, the recommendation information is provided with the third recommendation information included additionally, and wherein within the recommendation information, the first recommendation information is prioritized for display over the third recommendation information”. Koike ¶¶ 0037, 0038 (third recommendation reason can also be provided; common recommendation reason is prioritized).
With respect to claim 7, Koike discloses
“wherein the first-type basic information comprises at least one of the following: the second user's gender information, age information, birthday information, region information, purchase history information, product viewing information, and information on any gift exchanged with users other than the first user”. Koike ¶ 0037 (region information).
With respect to claim 8, Wouhaybi discloses
“wherein the second-type basic information comprises at least one of a wishlist set by the second user and information on any gift exchanged between the first user and the second user”. Wouhaybi ¶ 0171 (wishlist).
With respect to claim 9, Koike discloses
“wherein priorities for displaying individual recommendation information within the recommendation information are determined based on a number of pieces of basic information on which each of the respective individual recommendation information is based”. Koike ¶ 0037 (priorities are determined based on attributes of items).
With respect to claim 10, Wouhaybi discloses
“wherein the second recommendation reason is related to at least one of the following: sales information about a product, evaluation information about the product, weather information related to the product, or occasion information related to the product”. Wouhaybi ¶¶ 0010, 0015 (evaluations of products).
With respect to claim 11, Koike discloses
“wherein, when the first and second recommendation information are displayed together within the recommendation, the first recommendation information is displayed above the second recommendation information”. Koike ¶ 0037 (recommendations and reasons are provided; the order in which the reasons are provided is a matter of design choice; it would be an obvious choice to provide the common recommendation reason first or above).
With respect to claim 12, Koike discloses
“wherein when the first and second recommendation information are displayed sequentially within the recommendation information, the first recommendation information is displayed before the second recommendation information”. Koike ¶ 0037 (recommendations and reasons are provided; the order in which the reasons are provided is a matter of design choice; it would be an obvious choice to provide the common recommendation reason first or above).
With respect to claim 13, Wouhaybi discloses
“wherein, when there are a plurality of second users, the basic information comprises all available basic information of the plurality of second users”. Wouhaybi ¶ 0007 (crowdsourced information is provided).
With respect to claim 14, Wouhaybi discloses
“wherein, when there are a plurality of second users, the basic information comprises only content that is common among information which each of the plurality of second users has allowed to be used”. Wouhaybi ¶¶ 0007, 0014, 0077-0079 (permissions are determined based on context and on previously configured permissions).
With respect to claim 15, Koike discloses
“further comprising determining priorities for a plurality of products based on the basic information when the plurality of products are included in any one of the first and second recommendation information, wherein, within the recommendation information, the plurality of products are displayed based on the priorities”. Koike ¶ 0037 (priorities are determined based on attributes and reasons).
With respect to claim 16
Koike discloses
“A server for product recommendation, the server comprising”: Koike, abstract;
“a memory storing instructions, and a processor configured to execute the instructions to”: Koike ¶ 0217.
Claim 16 is otherwise rejected on the same basis as claim 1.
With respect to claim 17, Koike discloses
“A method for product recommendation by a user terminal, the method comprising”: Koike, abstact;
“requesting … [product] recommendations for a … [user]t from a server”; Koike ¶ 0007 (request is received from a user for a recommendation for a product, which could be a gift for another user); and
“receiving recommendation information for the gift recipient from the server and displaying the recommendation information, wherein the recommendation information comprises”: Koike ¶ 0037 (recommendations and reasons are provided);
“first recommendation information based on available basic information of the gift recipient, the first recommendation information comprising a first recommendation reason and at least one product related to the first recommendation reason”; Koike ¶ 0037 (user preferences and product attributes are used to recommend an item based on a first reason, such as wines from a preferred geographic region);
and
“second recommendation information not based on the available basic information, the second recommendation information comprising a second recommendation reason and at least one product related to the second recommendation reason”, Koike ¶ 0037 (user preferences and product attributes are used to recommend an item based on a second reason, such as wines with a particular type of aroma);and
“wherein, within the recommendation information, the first recommendation information is prioritized for display over the second recommendation information”. Koike ¶ 0037 (recommendations and reasons are provided; one recommendation reason is prioritized over others and denominated as “common recommendation reason).
Wouhaybi discloses
“requesting gift recommendations for a gift recipient from a server”. Wouhaybi ¶ 0007 (gift recommendations for other users are provided).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Application Publication 2013/0268377 A1 (hereinafter “Jessup”) discloses the use of wish lists and demographic data in suggesting gifts. Jessup ¶ 0077.
U.S. Patent Application Publication 2009/0276284 A1 (hereinafter “Yost”) discloses the use of wish lists in suggesting gifts. Yost ¶ 0029.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN D CIVAN whose telephone number is (571)270-3402. The examiner can normally be reached Monday-Thursday 8-6:30.
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.
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ETHAN D. CIVAN
Primary Examiner
Art Unit 3688
/ETHAN D CIVAN/Primary Examiner, Art Unit 3688