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 107-126 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 non-transitory computer-readable medium for displaying items on an electronic display, as in independent claim 107 and in the claims that depend therefrom. Such non-transitory computer-readable media fall under the statutory category of “machine”. Therefore, the claims are directed to a statutory eligibility category. Claim 125 is determined to include a method for displaying items on an electronic display. Such a method falls under the statutory category of “process”. Therefore, the claim is directed to a statutory eligibility category. Claim 126 is determined to include a system for displaying items on an electronic display. Such a system falls under the statutory category of “machine”. Therefore, the claim is directed to a statutory eligibility category.
Step 2A, prong 1. The invention is directed to a non-transitory computer-readable medium for displaying items on an electronic display, 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 customized presentation of items on … in retail stores, the method comprising”:
“obtaining an image of products in a retail store captured using at least one …”;
“analyzing, using a …, the captured image to determine a condition of products of a particular product type”;
“based on the determined condition of the products of the particular product type, selecting at least one display parameter for a particular item”; and
“using the selected at least one display parameter to display the particular item on an … in the retail store”.
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 107 additional limitations to those deemed to be abstract ideas. When taken individually, these limitations are
“A non-transitory computer-readable medium including instructions that when executed by a
processor cause the processor to perform …”;
“electronic visual displays”;
“image sensor”; and
“trained machine learning model”.
In the instant case, claim 107 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 108-124, which impose additional limitations, also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. Claims 120 and 121 recite a “personal device”, which is a generic element. In reference to claims 108-124, these dependent claims have also been reviewed with the same analysis as independent claim 107. 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 126 recites a “processor”, which is a generic element. Claims 125 and 126 are otherwise similar to claim 107 and are 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 107, 114-117, 120, 121, and 123-126 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2019/0272580 A1 (hereinafter “Kawamura”) in view of U.S. Patent Application Publication 2017/0219276 A1 (hereinafter “Wang”).
With respect to claims 107, 125, and 126, Kawamura discloses
“A non-transitory computer-readable medium including instructions that when executed by a processor cause the processor to perform a method for customized presentation of items on electronic visual displays in retail stores, the method comprising”: Kawamua, abstract, ¶ 0127;
“obtaining an image of products in a retail store captured using at least one image sensor”; Kawamua ¶ 0019 (camera captures image of a consumable item; venue is a retail store);
“analyzing, …, the captured image to determine a condition of products of a particular product type”; Kawamua ¶ 0019 (images are analyzed to determine whether particular consumable is available at a first time);
“based on the determined condition of the products of the particular product type, selecting at least one display parameter for a particular item”; Kawamura ¶ 0019 (based on image data, quantity remaining of particular consumable is selected); and
“using the selected at least one display parameter to display the particular item on an electronic visual display in the retail store”. Kawamura ¶ 0019 (quantity remaining of particular consumable is displayed).
Kawamura does not explicitly disclose a machine learning model. Wang discloses “using a trained machine learning model”. Wang ¶¶ 0041, 0043 (neural network is trained and used to identify images in refrigerator).
Both Kawamura and Wang relate to providing information about food products. Kawamura, abstract; Wang, 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 machine learning feature as taught by Wang in the method of Kawamura with the motivation of better identifying food item inventory in order to minimize waste. Wang ¶¶ 0004-0007.
With respect to claim 114, Kawamura discloses
“wherein the selection of the at least one display parameter for the particular item is further based on information related to a person in a vicinity of the electronic visual display”. Kawamua ¶ 0019 (display parameter is based on amount of consumable consumed by a person).
With respect to claim 115, Kawamura discloses
“obtaining a preceding image of products in a retail store captured using the at least one image sensor at a preceding point in time before the capturing time of the image; analyzing the preceding image to determine a preceding condition of the products of the particular product type at the preceding point in time; and further basing the selection of the at least one display parameter for the particular item on the determined preceding condition”. Kawamua ¶ 0019 (images are analyzed to determine whether particular consumable are available at a first and a second time).
With respect to claim 116, Kawamura discloses
“wherein the method further comprises: comparing the determined preceding condition with the determined condition; and basing the selection of the at least one display parameter for the particular item on a result of the comparison”. Kawamura ¶ 0019 (based on image data, quantity remaining of particular consumable is selected).
With respect to claim 117, Kawamura discloses
“wherein the method further comprises: using the determined preceding condition and the determined condition to predict a future condition of products of the particular product type at a later point in time after the capturing time of the image; and basing the selection of the at least one display parameter for the particular item on the predicted future condition”. Kawamura ¶ 0019, 0064, 0070, 0080 (based on image data, system predicts consumption of remaining quantity; status is changed to provide additional food items).
With respect to claim 120, Kawamura discloses
“wherein the electronic visual display is part of a personal device of a store associate”. Kawamura ¶ 0027 (a tablet is a personal device).
With respect to claim 121, Kawamura discloses
“wherein the electronic visual display is part of a personal device of a customer”. Kawamura ¶ 0027 (a tablet is a personal device; tablet can belong to customer).
With respect to claim 123, Kawamura discloses
“wherein the determined condition of the products of the particular product type is a condition that requires maintenance, and the method further comprises: analyzing the image to determine an indicator of urgency of the required maintenance; and basing the selection of the at least one display parameter for the particular item on the determined indicator of urgency”. Kawamura ¶ 0019, 0064, 0070, 0080 (based on image data, system predicts consumption of remaining quantity; amount of remaining food indicates urgency of providing more food).
With respect to claim 124, Kawamura discloses
“wherein the method further comprises: analyzing the image to determine a condition of the products of a second product type, the second product type differs from the particular product type; and further basing the selection of the at least one display parameter for the particular item on the determined condition of the products of the second product type”. Kawamura ¶ 0019, 0064, 0070, 0080 (both food and beverages are monitored; item that is low in quantity can be replenished).
Claims 108-113 and 118 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura in view of Wang, as applied to claims 107, 114-117, 120, 121, and 123-126 above, and further in view of U.S. Patent Application Publication 2015/0199942 A1 (hereinafter “Mochizuki”).
With respect to claim 108, Kawamura does not explicitly disclose a display size. Mochizuki discloses
“wherein the at least one display parameter includes a display size for the particular item”. Mochizuki ¶¶ 0027, 0028 (display size is based on size of display and number of portions into which it is divided).
Both Kawamura and Mochizuki relate to displays regarding products for sale. Kawamura, abstract; Mochizuki, 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 display organization feature as taught by Mochzuki in the method of Kawamura/Wang with the motivation of enhancing the ability of users to view display text. Mochizuki ¶ 0033.
With respect to claim 109, Mochizuki discloses
“wherein the at least one display parameter includes a motion pattern for the particular item”. Mochizuki ¶ 0021 (portions of display are displayed in a sequential temporal pattern).
With respect to claim 110, Mochizuki discloses
“wherein the at least one display parameter includes a display position on the electronic visual display for the particular item”. Mochizuki ¶ 0021 (display position is the location of the portion of the display on which text is displayed).
With respect to claim 111, Mochizuki discloses
“wherein the at least one display parameter includes a color scheme for the particular item”. Mochizuki ¶¶ 0003-0005 (items are necessarily displayed in a color scheme). It would have been obvious to one of ordinary skill in the art at the time of filing to choose the particular color scheme for an item to maximize visibility to users. Mochizuki ¶ 0033.
With respect to claim 112, Mochizuki discloses
“wherein the selection of the at least one display parameter for the particular item is further based on an elapsed time since the capturing of the image”. Mochizuki ¶ 0021 (text and location parameters are based on elapsed time).
With respect to claim 113, Mochizuki discloses
“wherein the selection of the at least one display parameter for the particular item is further based on a time of day”. Mochizuki ¶ 0034 (display is based in part on time of day).
With respect to claim 118, Mochizuki discloses
“wherein the electronic visual display is connected to a shelf in the retail store”. Mochizuki ¶¶ 0026-0028 (one skilled in the art would understand an electronic shelf label to be connected to a shelf).
Claims 119 and 122 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura in view of Wang, as applied to claims 107, 114-117, 120, 121, and 123-126 above, and further in view of U.S. Patent Application Publication 2016/0328813 A1 (hereinafter “Montgomery”).
With respect to claim 119, Kawamura and Wang do not explicitly disclose a retail storage container. Montgomery discloses
“wherein the electronic visual display is connected to a door of a retail storage container in the retail store”. Montgomery, abstract, fig. 1 (consumable items are stored in retail storage container which can be closed).
Both Kawamura and Montgomery relate to monitoring consumption of consumables. Kawamura, abstract; Montgomery, 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 retail storage container as taught by Montgomery in the method of Kawamura/Wang with the motivation of assisting in the monitoring of consumption of consumables. Montgomery ¶¶ 0003-0008.
With respect to claim 122, Montgomery discloses
“wherein the method further comprises: obtaining data captured using a plurality of sensors positioned on a shelf in the retail store and configured to be positioned between the shelf and products positioned on the shelf; and basing the determination of the condition of the products of the particular product type on an analysis of the data captured using the plurality of sensors”. Montgomery ¶¶ 0020-0024 (sensors disclose changes in weight revealing what items have been taken).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 107-126 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent Number 12,154,459 B2 (hereinafter “Adato”). Although the claims at issue are not identical, they are not patentably distinct from each other because while claims 107-126 of the present application are broader than claims 1-19 of Adato, claims 107-126 of the present application are anticipated by claims 1-19 of Adato.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Halverson, R., "Shelf Pricing Catches on at Chains", Discount Store News 28 n.3: p5(2), Lebhar-Friedman, Feb. 6, 1989 (hereinafter "Shelf Pricing") discloses electronic shelf labels. Shelf Pricing, page 2.
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.
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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