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 .
1. Claims 1-20 filed 08/29/2024 are pending for examination.
2. Continuity: This application filed 08/29/2024 is a Continuation of 18139038 , filed 04/25/2023 ,now U.S. Patent # 12100036, 18139038 is a Continuation of 17357292 , filed 06/24/2021 ,now U.S. Patent # 11669885, 17357292 is a Continuation of 16407621 , filed 05/09/2019 ,now U.S. Patent # 11074638, 16407621 is a Continuation of 14191798 , filed 02/27/2014 ,now U.S. Patent # 10373233.
Claim Rejections - 35 USC § 101
3. 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 11-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more, when analyzed as per MPEP 2106.
Step 1 analysis:
Claims 11-19 are to a process comprising a series of steps, which are statutory (Step 1: Yes).
Step 2A Analysis:
Claim 11 recites:
1. A method comprising:
identifying a first account based on an indication of purchase of a first item;
identifying a second account associated with the first account, the second account including an online container that includes a second item, the first item and the second item belonging to an item category;
determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category;
in response to determining that the purchase price of the second item exceeds the monetary threshold value configured for the item category, removing the second item from the online container; and
causing display of an indication of the second item being removed from the online container on a device associated with the second account.
Step 2A Prong 1 analysis: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Claims 11-19 recite abstract idea.
The highlighted limitations comprising, “ identifying a first account based on an indication of purchase of a first item; identifying a second account associated with the first account, the second account including an online container that includes a second item, the first item and the second item belonging to an item category; determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category; in response to determining that the purchase price of the second item exceeds the monetary threshold value configured for the item category, removing the second item from the online container; and causing display of an indication of the second item being removed from the online container on a device associated with the second account.”, as drafted, do not recite engagement f a computing device implementing them. Under their broadest reasonable interpretation, these limitations represent merely a planned scheme which can be presented on a paper with a pen falling within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and writing it on a paper with a pen.. See MPEP 2106.04(a)(2), subsection III.
Further, the limitations, “identifying a first account based on an indication of purchase of a first item; identifying a second account associated with the first account, the second account including an online container that includes a second item, the first item and the second item belonging to an item category; determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category; “, under their broadest reasonable interpretation, cover performance in mind. For example, a human operator can indicate to which account the purchase of an item is related to, can further determine an account associated with an online container/online wish list which include list of items from a number of accounts available, and can compare the items associated with the two accounts as what differences are there, between their prices and characteristics. Thus, the claim 11 and its dependent claims 12-19 recite a mental process.
Thus claim 11 and its dependent claims 12-19 recite an abstract idea.
Step 2A Prong 2 analysis: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
Since the claim 11 , as drafted, does not recite additional elements besides the abstract idea discussed above, the judicial exception is not integrated into a practical application.
Dependent claims 12-19, as drafted, similar to their base claim do not recite engagement of any device executing the steps, they do not recite any additional elements and thus do not integrate the abstract idea into a practical application.
Even when viewed individually and in combination, since claims 11-19 do not recite additional elements, the recited judicial exception is not integrated into a practical application (Step 2A, Prong Two: NO), and the claims 11-19 are directed to the judicial exception. (Step 2A: YES).
Step 2B analysis: This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
As already analyzed under Step 2A, Prong Two, the claims 11-19 do not recite any additional elements, and as such do not provide an inventive concept. (Step 2B: NO).
Thus claims 11-19 are patent ineligible.
Note: Examiner suggests amending the independent claim 11 to include a computing device/one or more processors executing the recited steps to overcome this rejection.
4. Claims 1-10 and 20:
Subject Matter Eligibility Analysis:
Step 1 analysis:
Claims 1-10 are to a system and claim 20 to manufacture, which are statutory (Step 1: Yes).
Step 2A Analysis:
Claim 1 recites:
1. A system comprising:
one or more processors; and executable instructions accessible on a computer-readable medium that, when executed, cause the one or more processors to perform operations comprising:
(i) identifying a first account based on an indication of purchase of a first item;
(ii) identifying a second account associated with the first account, the second account including an online container that includes a second item, the first item and the second item belonging to an item category;
(iii) determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category;
(iv) in response to determining that the purchase price of the second item exceeds the monetary threshold value configured for the item category, removing the second item from the online container; and
(v) causing display of an indication of the second item being removed from the online container on a device associated with the second account.
Yes. The highlighted limitations of claim 1 comprising “identifying a first account based on an indication of purchase of a first item; identifying a second account associated with the first account, the second account including an online container that includes a second item, the first item and the second item belonging to an item category; determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category.”, under their broadest reasonable interpretation, fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and opinion. See MPEP 2106.04(a)(2), subsection III. That is, other than reciting “by a processor” nothing in the claim elements precludes the steps from practically being performed in the mind. For example, a human operator can indicate to which account the purchase of an item is related to, can further determine an account associated with an online container/online wish list which include list of items from a number of accounts available, and can compare the items associated with the two accounts as what differences are there, between their prices and characteristics. The mere nominal recitation of by a processor does not take the claim limitations out of the mental process grouping. Thus, the claim 1 and its dependent claims 2-10 recite a mental process.
Since the other independent claim 20 recites similar limitations, it is analyzed on the same reciting an abstract idea within “Mental Processes”.
Thus claims 1-10, and 20 recite “Mental Processes”.
Step 2A, prong 2 analysis:
The claim 1 recites the additional elements comprising one or more processors implementing the steps of: (i) identifying a first account based on an indication of purchase of a first item; (ii) identifying a second account associated with the first account, the second account including an online container that includes a second item, the first item and the second item belonging to an item category; (iii) determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category; (iv) in response to determining that the purchase price of the second item exceeds the monetary threshold value configured for the item category, removing the second item from the online container; and (v) causing display of an indication of the second item being removed from the online container on a device associated with the second account.
In limitations, “( i) identifying a first account based on an indication of purchase of a first item; (ii) identifying a second account associated with the first account, the second account including an online container that includes a second item, the first item and the second item belonging to an item category; (iii) determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category;”, the computer/processor is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f).
Although claims 1-10 and 20 recite an abstract idea, as analyzed above, they are not directed to an abstract idea because the abstract idea is integrated into a practical application. The additional elements recited in claims 1 and 20 comprising, one or more processors implementing the steps “ (iv) in response to determining that the purchase price of the second item exceeds the monetary threshold value configured for the item category, removing the second item from the online container; and (v) causing display of an indication of the second item being removed from the online container on a device associated with the second account.”, apply or use the abstract idea in an online transaction in some other meaningful way beyond linking the use of the abstract idea to a particular technological environment. As such, the claims 1-10 and 20 recite eligible subject matter.
Double Patenting
5. 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.
3.1. Claims 1-2, 9-10, 11-12, 18-19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-12, 17-18, 1-2, 7-8 and 20 respectively of U.S. Patent No. 12100036, hereinafter Patent’ 036. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to the same inventive concept of finding a difference between the purchased item and the second item in the container and then removing the second item from the container. An exemplary comparison between the limitations of claim 1 of the instant application with the claims 11, 12 and 14 is given below:
Claim 1 of the instant application:
1. A system comprising:
one or more processors; and executable instructions accessible on a computer-readable medium that, when executed, cause the one or more processors to perform operations comprising:
identifying a first account based on an indication of purchase of a first item; identifying a second account associated with the first account, the second account including an online container that includes a second item, the first item and the second item belonging to an item category;
determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category;
in response to determining that the purchase price of the second item exceeds the monetary threshold value configured for the item category, removing the second item from the online container; and
causing display of an indication of the second item being removed from the online container on a device associated with the second account.
The other two independent claims 11 and 20 of the instant application are rejected based on the same grounds as claim 1 , because the limitations of the claims 11 and 20 are similar to claim 1. Dependent claims 2, 9-10, 12, 18-19 of the instant application are similar and covered by the limitations of the dependent claims 12, 17-18, 2, 7-8 of the Patent’ 036.
6. Prior art discussion:
Reference claims 1, 11, and 20, the prior art of record, alone or combined, neither teaches nor renders obvious, at least the limitations comprising, as a whole, the steps of “determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category, in response to determining that the purchase price of the second item exceeds the monetary threshold value configured for the item category, removing the second item from the online container, and causing display of an indication of the second item being removed from the online container on a device associated with the second account.”
Claims 2-10 depend from claim 1 and claims 12-19 depend from claim 11.
7 Allowability:
If a proper Terminal Disclaimer is filed to overcome the double patenting rejection, of claims 1-20 and claim 11 is amended to overcome the 35 USC 101 rejection of claims 11-19, as suggested by the Examiner, the Application can be placed in condition for allowance.
8. Best prior art of record but not considered:
(i) The best prior art of record Edward [US Patent# 8612312 cited in the parent Application 17357292, now US Patent# 11669885] discloses identifying a first user account based on an indication of purchase of a first item; (Edwards 2:39-54 discloses an attribution module that identifies a purchased item in an order, note that the purchase system is external to the attribution module), identifying a second account associated with the first account, the second account including an online container that includes a second item; determining that a degree of similarity between the first item and the second item exceeds a threshold value [Edwards 2:39-54 discloses matching the purchased product to a product on a wish list and Edwards 13:25-55 identifies a second account e.g. Jill Wu’s account] and causing display of an indication of the second item being removed from the online container based on the indication of purchase of the first item. (Edwards 13:25-55 displays that the item will be removed unless “do not remove” is checked, thus, it is an indication that the item will be removed based on the purchase of the first item) but fails to teach or render obvious determining that a purchase price of the second item exceeds a monetary threshold value configured for the item category, in response to determining that the purchase price of the second item exceeds the monetary threshold value configured for the item category, removing the second item from the online container, and causing display of an indication of the second item being removed from the online container on a device associated with the second account.
(ii) Causey [US 20090216549 A1; see para 0005] describes that if a gift item is purchased and identified then it is removed from a gift list.
(iii) Fisher [US 20090144161 A1; see para 0020 and Fig.2 ] describes a mobile application 200 maintains a shopping list 202 for a consumer, and the consumers have the ability to store their shopping list in their mobile wallet and add, delete, or change items on their shopping list either in offline or online mode.
(iv) Agarwal [US Patent# 6999941 B1; see col.2, lines 49-51] describes that Web sites track the items that gift givers purchase for the recipient, and automatically remove those items from the wish list when they are purchased.
NPL references:
(v) Article, “ System and Method for “Wish List” Actualization and Use”, IP. Com Publication date 2003—July 24, publishing venue IBM , The IP. Com journal; retrieved from IP. Com on 02272026 describes use of online wish lists, wherein the items on wish lists become actualized as either purchased products (e.g. and charged to a credit card and shipped) or as shopping cart inclusions based on one of several criteria.
(vi) Article, “PayPal (PYPL) issued patent titled "Triggering in-application currency transfer"; News Bites US - NASDAQ [Melbourne] 08 Apr 2021 retrieved from Dialog on 01/19/2023 cited in the IDS filed 10/27/2025 and in the parent Application # 18139038, now US Patent# 12100036 describes detecting, via a network interface first game application, an in-game balance of a second user account of a second user is below a threshold for purchase of a virtual item, determining a plurality of game account balances for the first user with one or more additional game applications, transmitting first game information for the first game application with the plurality of game account balances to the device , wherein the first game information comprises an option for a transfer to the second user account of the second user associated with the first game application and the plurality of game account balances, receiving a second selection of the option from the interface, and a second request to process the transfer to the second user through the interface, and processing the transfer through a payment service provider.
Foreign reference:
(vii) KR 20060049936 A [see Figs 25B, 26A and 26B and associated text] describes a system when a “wish list screen” is clicked , and a purchase button is pressed for a specific item in the wish list, the server detects this step and displays a purchase screen. After the user has requested the purchase, the server detects this step and removes the purchased item from the wish list.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOGESH C GARG whose telephone number is (571)272-6756. The examiner can normally be reached Max-Flex.
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/YOGESH C GARG/Primary Examiner, Art Unit 3688