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 .
Claims 22-44 were rejected under 35 U.S.C. § 101 and for double patenting. Claims 22-28, 31-39, and 42-44 were rejected under 35 U.S.C. § 102. Claims 29, 30, 40, and 41 were rejected under 35 U.S.C. § 103. Claims 22-44 are now pending.
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 22-44 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 of updating shopping carts, as in independent claim 22 and in the claims that depend therefrom. Such methods fall under the statutory category of “process”. Therefore, claims 22-33 are directed to a statutory eligibility category. Claim 34 recites a “system” comprising an “application”. Such a system does not fall within any of the statutory categories. Claims 35-44 depend from claim 34 and are similarly directed to such a system. Claims 34-44 are therefore directed to non-statutory subject matter.
Step 2A, prong 1. The invention is directed to a method of updating shopping carts, 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, wherein the method comprises”:
“via a first …”:
“generating a first shopping cart configured to store items selected by a user of the first … and items selected by a remote entity”;
“updating the first shopping cart in response to a change in a second shopping cart”; and
“notifying a second … that the first shopping cart has been updated”.
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 22 additional limitations to those deemed to be abstract ideas. When taken individually, these limitations are
“communication device”.
In the instant case, claim 22 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 23-33, which impose additional limitations, also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. Claim 25 recites “websites’ and “online shopping”. These are generic elements. Claim 27 recites a “network”. This is a generic element.
In reference to claims 23-33, these dependent claims have also been reviewed with the same analysis as independent claim 22. 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 34 recites an “application”, which is a generic element. Claim 34 is otherwise similar to claim 22 and is rejected for the same reasons. Claims 35-44 depend form claim 34, are similar to claims 23-33, and are rejected for the same reasons.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 22-28, 31-39, and 42-44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication 2012/0185355 A1 (hereinafter “Kilroy”).
With respect to claim 22, Kilroy discloses
“A method, wherein the method comprises”: Kilroy, abstract;
“via a first communication device”: Kilroy ¶¶ 0023, 0024;
“generating a first shopping cart configured to store items selected by a user of the first communication device and items selected by a remote entity”; Kilroy ¶¶ 0023, 0024 (multiple users can be authorized to add items to shared cart);
“updating the first shopping cart in response to a change in a second shopping cart”; Kilroy ¶ 0032 (when a user pays part of the cost of the items in the shared cart from a second shopping cart, the shared cart is updated with respect to payment information); and
“notifying a second communication device that the first shopping cart has been updated”. Kilroy ¶ 0032 (communication devices of all users using shared cart are notified).
With respect to claims 23 and 35, Kilroy discloses
“wherein the updating comprises at least one of: adding information to the first shopping cart, and
removing information from the first shopping cart”. Kilroy ¶ 0032 (payment information is added).
With respect to claims 24 and 36, Kilroy discloses
“wherein the method comprises managing access, by the remote entity, to the first shopping cart according to permissions provided by the user”. Kilroy ¶¶ 0011, 0012 (e.g., online store manages permissions granted by a user to other users).
With respect to claim 25, Kilroy discloses
“wherein the first communication device is communicatively coupled to one or more websites of a merchant that supports online shopping”. Kilroy ¶¶ 0010, 0011.
With respect to claims 26 and 38, Kilroy discloses
“wherein the method comprises sending a notification of the updating to a second user”. Kilroy ¶ 0032 (communication devices of all users using shared cart are notified).
With respect to claim 27, Kilroy discloses
“wherein sending the notification of the updating to a second user comprises sending to a user account of the second user via a network”. Kilroy ¶ 0019 (message is sent to each user over a network).
With respect to claims 28 and 39, Kilroy discloses
“wherein the network comprises an online social network”. Kilroy ¶¶ 0086, 0095, 0131 (e.g., Facebook).
With respect to claims 31 and 42, Kilroy discloses
“wherein the method comprises sending an invitation to follow the first shopping cart to a second user”. Kilroy ¶ 0019 (first user sends invitations to follow shared cart to one or more other users).
With respect to claims 32 and 43, Kilroy discloses
“wherein the method comprises receiving a request to provide product information for the items from the first shopping cart to another shopping cart of the user”. Kilroy ¶¶ 0019, 0020 (e.g., user who receives invitation can transfer items from personal shopping cart to shared shopping cart).
With respect to claims 33 and 44, Kilroy discloses
“wherein the method comprises managing one or more shopping carts that are shared with other users and one or more shopping carts that are followed by the user”. Kilroy ¶¶ 0010-0021 (each user can be manager of one shared shopping cart while following other shared shopping carts).
With respect to claim 34, Kilroy discloses
“A system, wherein the system comprises: an application operable to”. Kilroy, abstract. Claim 34 is otherwise rejected on the same basis as claim 22.
With respect to claim 37, Kilroy discloses
“wherein the application is provided by a merchant”. Kilroy ¶¶ 0010, 0011.
Claim Rejections - 35 USC § 103
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 29, 30, 40, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Kilroy in view of U.S. Patent Application Publication 2014/0025601 A1 (hereinafter “Wouhaybi’).
With respect to claims 29 and 40, Kilroy discloses
“wherein the method comprises maintaining one or more personal reviews of product items and …”. Kilroy ¶ 0203 and fig. 8F (ratings and reviews of product items of end-users are provided).
Kilroy does not explicitly disclose whether the identities of the end-users submitting the reviews and ratings are tracked and provided to other end-users. However, the database (fig. 2, item 12) could easily store such data. Wouhaybi discloses
“… information identifying a particular user that submitted the one or more personal reviews”. Wouhaybi ¶ 0018 (product reviews identifying reviewer by name are stored).
Both Kilroy and Wouhaybi relate to electronic commerce. Kilroy, 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 reviewer identification feature as taught by Wouhaybi with the motivation of providing more useful reviews of products by identifying trustworthy and untrustworthy reviewers. Wouhaybi ¶¶ 0002, 0003.
With respect to claims 30 and 41, Wouhaybi discloses
“wherein the method comprises providing, to the user, personal reviews of product items submitted by particular users”. Wouhaybi ¶ 0018 (set of product reviews identifying reviewer by name are provided to end-user in response to query).
Remarks
The double patenting rejection is withdrawn in light of applicant’s terminal disclaimer.
With respect to the rejections under 35 U.S.C. § 101, applicant argues that the limitations of the claim define a network-based synchronization process that is not an abstract idea, integrates any abstract idea into a practical application, and is more than any abstract idea. Amendment, pages 5-6. However, the claims do not recite any synchronization, any automatic updating, or any network-based updating. Rather, the claims recite a single on- time update of one cart in response to a change in another cart. Even if there are hundreds of changes in the second shopping cart, the limitations of the claim are met if the first cart is updated in response to one of such changes.
With respect to the rejections under 35 U.S.C.§ 102, applicant similarly argues that Kilroy does not disclose the claimed updating because Kilroy does not disclose inter-cart synchronization with update propagation. Amendment, pages 6-7. However, the claims do not recite nter-cart synchronization with update propagation, but merely a single one-time update that need not be automatic.
With respect to the rejections under 35 U.S.C.§ 103, applicant argues that the cited references do not disclose “maintaining personal reviews of product items within a shared shopping cart architecture in which reviews are associated with particular identified users and provided in the context of shared and followed shopping carts”. Amendment, page 7. However, Wouhaybi discloses maintaining personal reviews of product items in which reviews are associated with particular identified users. Wouhaybi ¶ 0018. Kilroy discloses the shared shopping cart architecture provided in the context of shared and followed shopping carts. Kilroy ¶¶ 0023, 0024.
Applicant argues that there is no motivation to combine Wouhaybi with Kilroy and that Wouhaybi and Kilroy operate in different contexts. Amendment, page 7. However, Wouhaybi and Kilroy are both in the context of the sale of products to consumers. Kilroy, abstract; Wouhaybi, abstract. Moreover, Wouhaybi offers the motivation of providing useful reviews of products by identifying trustworthy and untrustworthy reviewers, Wouhaybi ¶¶ 0002, 0003, which is useful to someone shopping for products using Kilroy’s method.
Accordingly, applicant’s arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 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