DETAILED ACTION
Status of the Claims
This Office Action is in response to the Application filed 04 November 2024.
Claims 1-20 are pending and have been examined in this Office 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 .
Drawings
The drawings as submitted by Applicant on 11/29/2024 have been accepted.
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.
9. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without “significantly more.” Claim(s) 1-20 are directed to a method and system of automated integration and display of invoices, which is considered an abstract idea. Further, the claim(s) as a whole, when examined on a limitation-by-limitation basis and in ordered combination do not include an inventive concept.
Step 1 – Statutory Categories
As indicated in the preamble of the claim, the examiner finds the claim is directed to a process, machine, manufacture or composition of matter.
Step 2A (prongs 1 and 2) - Abstract Idea Analysis
Exemplary claim 1 recites the following abstract concepts that are found to include “abstract idea”:
Limitation 1- analyzing a web page to identify a unique bill identifier;
Limitation 2- obtaining, from the accounting software application, additional information about a bill identified by the unique bill identifier;
Limitation 3- causing a web browser to display the additional information about the bill;
Limitation 4- receiving, from a user, an instruction to pay the bill identified by the unique bill identifier; and
Limitation 5- in response to receiving the instruction to pay the bill identified by the unique invoice identifier, causing the accounting software application to initiate a payment of the bill identified by the unique bill identifier.
The Federal Circuit has repeatedly emphasized that “the key question is ‘whether the focus of the claims is on the specific asserted improvement . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Visual Memory LLC v. Nvidia Corp., No. 2016-2254 (Fed. Cir. Aug. 15, 2017) (referring to Enfish LLC v. Microsoft Corp. et al., Appeal No. 2015-1244 (Fed. Cir. 2016)). “In this regard, [examiners] must articulate with specificity what the claims are directed to.” Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1347 (Fed. Cir. 2017). Moreover, the Federal Circuit has held that “[a]dding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., Ltd., 885 F.3d 1322, 1327 (Fed. Cir. 2017). Importantly, “[w]e [] assume that the techniques claimed are ‘[g]oundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.” SAP Inc. v. InvestPic, LLC, Appeal No. 2017-2081 (Fed. Cir. 2018) citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 *2013).
Furthermore, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). “The fact that an identifier [or utilization of the underlying abstract idea] can be used to make a process more efficient . . . does not necessarily render an abstract idea less abstract.” Secured Mail Solutions, LLC v. Universal Wilde, Inc., Appeal No. 2016-1728 (Fed. Cir. Oct. 16, 2017). Importantly, the CAFC “ha[s] held that speed and accuracy increases stemming from the ordinary capabilities of a general purpose computer ‘do[] not materially alter the patent eligibility of the claimed subject matter.’” Intellectual Ventures I v. Erie Indemnity, Appeal No. 2017-1147 (Fed. Cir. 2017) citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). However, “some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as chip architecture, an LED display, and the like.” Enfish, 822 F.3d at 1355.
Here, the examiner finds the claims are not directed to “an improvement to computer technology," such as found in Enfish, but to the abstract idea itself.1 Examiners have been instructed to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract. Accordingly, the examiner refers to the following cases (and their associated judicial descriptor(s)) that relate to concepts similar to the claimed concepts:
Versata2(precedential—ineligible) – abstract idea found to be using organizational and product group hierarchies to determine a price, where this was found to be a method of organizing human activity;
Downing3 (non-precedential—ineligible) – abstract idea found to be the concept of personal management, resource planning, and forecasting including a “resource planning forecast product” that collects and analyzes “non-business or business information relative to the end user,” where this was found to be a method of organizing human activity; and
SAP Inc. v. InvestPic4 (precedential—ineligible) – abstract idea found to be selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis, where this was found to be a certain method of organizing human activity.
As indicated above, the claims are directed to similar concepts.5 Therefore, the claims are found to be directed to abstract idea. Similar to the case law cited above, the examiner finds the abstract idea to include at least the judicial descriptor(s) of: certain methods of organizing human activity.6
Regarding preemption, the examiner notes that “[w]hile preemption may signal ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this [application], preemption concerns are fully addressed and made moot.” Id.
Step 2B - Significantly More Analysis
“[A]fter determining that a claim is directed to a judicial exception, ‘we then ask, [w]hat else is there in the claims before us?’” MPEP 2106.05 (emphasis in MPEP) citing Mayo, 566 U.S. at 78. “What is needed is an inventive concept in the non-abstract application realm.” SAP Inc. v. InvestPic, LLV, Appeal No. 2017-2081 (Fed. Cir. 2018). For step two, the examiner must “determine whether the claims do significantly more than simply describe [the] abstract method” and thus transform the abstract idea into patent-eligible subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
A primary consideration when determining whether a claim recites “significantly more” than abstract idea is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. See MPEP 2106.05(d). “If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.” Id.
The Federal Circuit has held that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Bahr, Robert (April 19, 2018). Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) citing Berkheimer at 1369. “As set forth in MPEP 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. This memo[] clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III [of the memo].” Berkheimer Memo at 3 (emphasis in memo).
Generally, “[i]f a patent uses generic computer components to implement an invention, it fails to recite an inventive concept under Alice step two.” West View Research v. Audi, CAFC Appeal Nos. 2016-1947-51 (Fed. Cir. 04/19/2017) citing Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (explaining that “generic computer components such as an ‘interface,’ ‘network,’ and ‘database’ . . . do not satisfy the inventive concept requirement”; but see Bascom (finding that an inventive concept may be found in the non-conventional and non-generic arrangement of the generic computer components, i.e., the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user).
In accordance with the above guidance, the examiner has searched the claim(s) to determine whether there are any “additional elements” in the claims that constitute “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. 2347 (2014). Those “additional features” must be more than “well understood, routine, conventional activity.” See Alice. To note, “under the Mayo/Alice framework, a claim directed to a newly discovered . . . abstract idea[] cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016); Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
As an example, the Federal Circuit has indicated that “inventive concept” can be found where the claims indicate the technological steps that are undertaken to overcome the stated problem(s) identified in Applicant’s originally-filed Specification. See Trading Techs. Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017); but see IV v. Erie Indemnity, No. 2016-1128 (Fed. Cir. March 7, 2017)(“The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in technology of computer databases, as in Enfish.”)(emphasis in original) and IV. v. Capital One, Nos. 2016-1077 (Fed. Cir. March 7, 2017)(“Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more. See Elec. Power Grp., 830 F.3d 1356 (Fed. Cir. 2016) (cautioning against claims ‘so result focused, so functional, as to effectively cover any solution to an identified problem.’)”). Furthermore, “[a]bstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole.” Trading Techs. Int’l, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017) (emphasis added).
In the search for inventive concept, the Berkheimer Memo describes “an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
Accordingly, the examiner refers to the following generically-recited computer elements with their associated functions (and associated factual finding(s)), which are considered, individually and in combination, to be routine, conventional, and well-understood:
Additional Element 1 – computer configured to perform the method outlined above
In sum, the examiner finds that the claims "are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.” In re TLI Communications LLC, No. 2015-1372 (May 17, 2016). Similar to the claims in SAP v. InvestPic, “[t]he claims here are ineligible because their innovation is an innovation in ineligible subject matter.” Appeal No. 2017-2081 (Fed. Cir. 2018). In other words, “the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” Id. Accordingly, when considered individually and in ordered combination, the examiner finds the claims to be directed to in-eligible subject matter. Claims 10-16 suffer from similar deficiencies as the claim from which they depend, and therefore fails to remedy the deficiency of the independent claims they depend therefrom.
In addition, the examiner has fully considered each of similarly recited independent claims 1 and 11, and the dependent claims that depend therefrom. Unless otherwise noted below, the dependent claims are directed to the identified abstract idea above. Similar to the independent claim(s) above, the examiner refers to generically-recited computer elements with their associated functions (and associated factual finding(s)), which are considered, individually and in combination, to be routine, conventional, and well-understood, and therefore fails to remedy the deficiency of the independent claims they depend therefrom.
For the reasons stated, the examiner does not find the claims to recite eligible subject matter under 35 U.S.C. § 101.
Double Patenting
The non-statutory 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 non-statutory double patenting rejection is appropriate where the claims at issue 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); and 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 a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-28 of US Patent Number 12,100,057. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to systems and methods for the autonomous loading and unloading of pallets, as outlined below:
Application number 18/936734
US Patent Number 12,100,057
1. A computer-implemented method for managing outstanding bills in an accounting software application, the method comprising: (a) analyzing a web page to identify a unique bill identifier; (b) obtaining, from the accounting software application, additional information about a bill identified by the unique bill identifier; (c) causing a web browser to display the additional information about the bill; (d) receiving, from a user, an instruction to pay the bill identified by the unique bill identifier; and (e) in response to receiving the instruction to pay the bill identified by the unique invoice identifier, causing the accounting software application to initiate a payment of the bill identified by the unique bill identifier.
2. The method of claim 1, wherein the web page comprises a web page currently displayed by the web browser.
3. The method of claim 1, wherein the web page comprises an image of a web page previously displayed by the web browser.
4. The method of claim 1, wherein (a) comprises analyzing a user interface element of the current web page to identify the unique bill identifier.
5. The method of claim 1, wherein (a) comprises analyzing content of the web page to identify the unique bill identifier.
6. The method of claim 1, wherein (a) comprises analyzing an image of a rendering of the web page to identify the unique bill identifier.
7. The method of claim 1, wherein (a), (b), (c), (d), and (e) are performed by a plugin installed in the web browser.
8. The method of claim 1, further comprising: before (c), receiving input from the user in connection with a rendering of the unique bill identifier within a rendering of the web page; and wherein (c) comprises causing the web browser to display the additional information about the bill in response to receiving the input from the user in connection with the rendering of the unique bill identifier.
9. The method of claim 1, further comprising: before (c), receiving input from the user in connection with a rendering of the unique bill identifier within a rendering of the web page; in response to receiving the input from the user in connection with the rendering of the unique bill identifier, displaying a menu comprising a plurality of menu items; receiving, from the user, input selecting a payment triggering menu item within the plurality of menu items; and wherein (c) comprises causing the web browser to display the additional information about the bill in response to receiving the input selecting the payment triggering menu item from the user.
10. The method of claim 1, wherein (b) comprises making a request to the accounting software application via an Application Program Interface (API) and receiving the additional information via the API.
1. A computer-implemented method for managing outstanding invoices in an accounting software application, the method comprising: (a) analyzing a current web page displayed by a web browser to identify a unique invoice identifier, comprising analyzing a URL of the current web page to identify the unique invoice identifier; (b) obtaining, from the accounting software application, additional information about an invoice identified by the unique invoice identifier; (c) causing the web browser to display the additional information about the invoice; (d) receiving, from a user, an instruction to pay the invoice identified by the unique invoice identifier; and (e) in response to receiving the instruction to pay the invoice identified by the unique invoice identifier, causing the accounting software application to record a payment of the invoice identified by the unique invoice identifier.
2. The method of claim 1, wherein (a) comprises analyzing the URL of the current web page to identify the unique invoice identifier within the URL of the current web page based on a predetermined pattern associated with the accounting software application.
3. The method of claim 1, wherein (a) comprises analyzing a user interface element of the current web page to identify the unique invoice identifier.
4. The method of claim 1, wherein (a), (b), (c), (d), and (e) are performed by a plugin installed in the web browser.
5. The method of claim 1, wherein the additional information includes at least one of customer details, invoice amount, invoice due date, and invoice payment status.
6. The method of claim 1, wherein (b) comprises making a request to the accounting software application via an Application Program Interface (API) and receiving the additional information via the API.
7. The method of claim 6, wherein the request includes the unique invoice identifier.
8. The method of claim 1: wherein the current web page is displayed by the web browser in a first user interface element; and wherein causing the web browser to display the additional information about the invoice comprises causing the web browser to display the additional information about the invoice in a second user interface element that is distinct from the first user interface element.
9. The method of claim 8, wherein the first user interface element comprises a first window, and wherein the second user interface element comprises a second window.
10. The method of claim 1: wherein the additional information about the invoice comprises information about a payment method associated with a customer associated with the invoice; and wherein causing the web browser to display the additional information about the invoice comprises causing the web browser to display the information about the payment method associated with the customer associated with the invoice.
The examiner submits that the language as recited in the pending application is similar to that as recited in US Patent Number 12,100,057 as shown in the table above, which shows exemplary claims 1-10 of the pending application in view of claims 1-10 of US Patent Number 12,100,057.
Claims 11-20 each contain recitations substantially similar to those addressed above and, therefore, are likewise rejected.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoang et al., US Patent Application Publication 2018/0158116 A1 (“Hoang”).
Regarding claim 1, the prior art discloses a computer-implemented method for managing outstanding bills in an accounting software application, the method comprising: (a) analyzing a web page to identify a unique bill identifier (see at least paragraphs [0026] and [0027] to Hoang et al); (b) obtaining, from the accounting software application, additional information about a bill identified by the unique bill identifier (see at least paragraph [0028] to Hoang et al); (c) causing a web browser to display the additional information about the bill (see at least paragraph [0050] to Hoang et al); (d) receiving, from a user, an instruction to pay the bill identified by the unique bill identifier (see at least paragraphs [0077] and [0088] to Hoang et al); and (e) in response to receiving the instruction to pay the bill identified by the unique invoice identifier, causing the accounting software application to initiate a payment of the bill identified by the unique bill identifier (see at least paragraphs [0056] and [0064] to Hoang et al).
Regarding claim 2, the prior art discloses the method of claim 1, wherein the web page comprises a web page currently displayed by the web browser (see at least paragraph [0050] to Hoang et al).
Regarding claim 3, the prior art discloses the method of claim 1, wherein the web page comprises an image of a web page previously displayed by the web browser (see at least paragraph [0050] to Hoang et al).
Regarding claim 4, the prior art discloses the method of claim 1, wherein (a) comprises analyzing a user interface element of the current web page to identify the unique bill identifier (see at least paragraph [0049] to Hoang et al).
Regarding claim 5, the prior art discloses the method of claim 1, wherein (a) comprises analyzing content of the web page to identify the unique bill identifier (see at least paragraph [0020] to Hoang).
Regarding claim 6, the prior art discloses the method of claim 1, wherein (a) comprises analyzing an image of a rendering of the web page to identify the unique bill identifier (see at least paragraph [0050] to Hoang et al).
Regarding claim 7, the prior art discloses the method of claim 1, wherein (a), (b), (c), (d), and (e) are performed by a plugin installed in the web browser (see at least paragraph [0019] to Hoang et al).
Regarding claim 8, the prior art discloses the method of claim 1, further comprising: before (c), receiving input from the user in connection with a rendering of the unique bill identifier within a rendering of the web page; and wherein (c) comprises causing the web browser to display the additional information about the bill in response to receiving the input from the user in connection with the rendering of the unique bill identifier (see at least paragraph [0035] to Hoang et al).
Regarding claim 9, the prior art discloses the method of claim 1, further comprising: before (c), receiving input from the user in connection with a rendering of the unique bill identifier within a rendering of the web page (see at least paragraph [0064] to Hoang et al); in response to receiving the input from the user in connection with the rendering of the unique bill identifier, displaying a menu comprising a plurality of menu items (see at least paragraph [0031] to Hoang et al); receiving, from the user, input selecting a payment triggering menu item within the plurality of menu items (see at least paragraph [0035]to Hoang et al); and wherein (c) comprises causing the web browser to display the additional information about the bill in response to receiving the input selecting the payment triggering menu item from the user (see at least paragraph [0031] to Hoang et al).
Regarding claim 10, the prior art discloses the method of claim 1, wherein (b) comprises making a request to the accounting software application via an Application Program Interface (API) and receiving the additional information via the API (see at least paragraph [0021] to Hoang).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 PM EST.
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, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a). Proper use of this procedure will result in such communication being considered as timely if the established date is within the required period for reply. The Certificate should be signed by the individual actually depositing or transmitting the correspondence or by an individual who, upon information and belief, expects the correspondence to be mailed or transmitted in the normal course of business by another no later than the date indicated.
Certificate of Mailing
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
on __________.
(Date)
Typed or printed name of person signing this certificate:
________________________________________________________
Signature: ______________________________________
Certificate of Transmission by Facsimile
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No. (___)_____ -_________ on _____________. (Date)
Typed or printed name of person signing this certificate:
_________________________________________
Signature: ________________________________________
Certificate of Transmission via USPTO Patent Electronic Filing System
I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office (USPTO) patent electronic filing system to the USPTO
on _____________.
(Date)
Typed or printed name of person signing this certificate:
_________________________________________
Signature: ________________________________________
Please refer to 37 CFR 1.6(a)(4), 1.6(d) and 1.8(a)(2) for filing limitations concerning transmissions via the USPTO patent electronic filing system, facsimile transmissions and mailing, respectively.
/TALIA F CRAWLEY/ Primary Examiner, Art Unit 3627
1 See Electric Power Group, LLC. V. Alstom, case no. 2015-1778 (Fed. Cir. August 1, 2016) (“The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independent abstract ideas that use computers as tools.”).
2 793 F.3d 1306 (Fed. Cir. 2015)(The court also stated that “[u]sing organizational and product group hierarchies to determine a price is an abstract idea that has no particular concrete or tangible form or application. It is a building block, a basic conceptual framework for organizing information.”).
3 Appeal No 2018-1795 (Fed. Cir. 2018).
4 Appeal No. 2017-2081 (Fed. Cir. 2018).
5 “[The examiner] need not define the outer limits of ‘abstract idea,’ or at this stage exclude the possibility that any particular inventive means are to be found somewhere in the claims, to conclude that these claims focus on an abstract idea—and hence require stage two analysis under § 101.” Electric Power Group, LLC. V. Alstom, case no. 2015-1778 (Fed. Cir. August 1, 2016).
6 As stated in the July 2015 Update: Subject Matter Eligibility, “These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.”
Prosecution Insights