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 . 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 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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 is unclear because while providing for “an intermediary” it then shifts to “intermediaries” in listing “wholesalers and retailers.” It is therefore unclear whether the claim is directed to multiple intermediaries. Normally “including wholesalers and retailers” would be interpreted to mean both were included in the claimed subject matter but here where the claim is directed to “an intermediary” this would not be possible. The disagreement between singular and plural intermediaries therefore renders the claim unclear.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, 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) (step 1). If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (step 2A), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception (step 2B). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 189 L. Ed. 2d 296, 2014 U.S. LEXIS 4303, 110 U.S.P.Q.2D (BNA) 1976, 82 U.S.L.W. 4508, 24 Fla. L. Weekly Fed. S 870, 2014 WL 2765283 (U.S. 2014); MPEP 2106.
In the instant case claims 1-5 are directed to a machine. All claims are therefore within statutory categories. See MPEP 2106.03, Eligibility Step 1.
Step 2A, Prong 1:
These claims also recite, inter alia, instructing the machine to
“display an intermediary module user interface to an intermediary …, including an intermediary item sales platform user interface and an intermediary inventory management platform user interface, wherein data for the intermediary item sales platform user interface is stored in a product database and data for the intermediary inventory management platform user interface is stored in an inventory database for intermediaries, wherein intermediaries include wholesalers and retailers; and display an end-user module user interface to an end-user…, including a first end-user item sales platform associated with a system operator and a second end-user item sales platform associated with an intermediary.” Claim 1.
With recited additional elements reserved for consideration under step 2A prong two, a careful analysis of the above limitations, each on its own and all together combined, results in the conclusion that each on its own recites an abstract idea and in combination they altogether simply recite a more detailed abstract idea. This is because they fall within the grouping of abstract ideas described as certain methods of organizing human activity, for example commercial interactions including advertising, marketing or sales activities or behaviors, business relations, and managing personal behavior or relationships or interactions between people. See MPEP 2106.04(a); Eligibility Step 2A1. The claims must therefore be analyzed under the second prong of Eligibility Step 2 (Step 2A2; MPEP 2106.04(d)).
Step 2A, Prong 2:
In order to address prong 2 (MPEP 2106.04(d), Eligibility Step2A2) we must identify whether there are any additional elements beyond the abstract ideas and determine whether those additional elements (if there are any) integrate the abstract idea into a practical application. MPEP 2106.04(d), Eligibility Step 2A2. The additional elements in the present claims are a server communicatively coupled to a network, instructions in non-transitory memory, and a processor of the server. These additional elements have been considered individually, in combination, and altogether as a whole together with the functions they perform, e.g., the “memory,” “processor,” “network,” and “server,” are recited at a high level of generality with the processor all alone broadly and generally recited as performing all steps in terms of the intended results of functionally nonspecific activities. The additional elements cannot integrate the judicial exception into a practical application because they lack sufficient substance and specificity to indicate anything to which the abstract elements could be practically applied. They do not improve the functioning of any computer or other technology or technical field, they do not apply the judicial exception with or by use of a particular machine, they do not transform or reduce a particular article to a different state or thing, and they fail to apply or use the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP 2106.05.
The disclosure does not describe any improvements to the functioning of a computer or to any other technology or technical field. This improvement would further need to be identifiable as the subject matter appearing in the claims. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies technical improvements realized by the claim over the prior art. The disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. MPEP 2106.05(a).
Claim limitations can integrate a judicial exception into a practical application by implementing the judicial exception with or using it in conjunction with a particular machine or manufacture that is integral to the claim. A general purpose computer that applies a judicial exception by use of generic computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, (Fed. Cir. 2014); MPEP 2106.05(b),(f). There are no particular machines or manufactures identified in the present claims. Any claimed elements that are not abstract are identified broadly and generally as applying the method, and the method itself is described only by way of the intended functional results of unidentified activities, without reference to any particular functional acts or specific functions performed by any particularly identified machines, and without reference to its use in conjunction with any particular item of manufacture.
The claims do not effect the transformation or reduction of a particular article to a different state or thing. Changing to a different state or thing means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Purely mental processes in which data, thoughts, impressions, or human based actions are "changed" are not considered a transformation. MPEP 2106.05(c).
The claims do not apply or use the judicial exception in any other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. As a result the claim as a whole appears to be a drafting effort designed to monopolize the exception. MPEP 2106.05(e),(h).
The additional elements have not been found to integrate the abstract idea into a practical application.
Step 2B:
Although the additional elements have not been found to integrate the abstract idea into a practical application the claims could still be eligible if they recite additional elements that amount to an inventive concept (“significantly more” than the judicial exception). MPEP 2106.05, Eligibility Step 2B.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the sparse additional elements of the claim are mere props supporting instructions to implement an abstract idea or other exception on a computer. MPEP 2106.05(f). The claims invoke computers or other machinery merely as tools to perform an abstract process. Simply adding a general purpose computer or computer components after the fact to an abstract idea does not provide significantly more. Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 2015 U.S. App. LEXIS 9721, 115 U.S.P.Q.2D (BNA) 1090 (Fed. Cir. 2015) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”); MPEP 2106.05(f)(2). The elements are recited at a high level of generality, merely implement abstract ideas using generic computers, and fail to present a technical solution to a technical problem created by the use of the surrounding technology. Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself. See Ret. Capital Access Mgmt. Co. v. U.S. Bancorp, 611 Fed. Appx. 1007, 2015 U.S. App. LEXIS 14351 (Fed. Cir. 2015) (“It may be very clever; it may be very useful in a commercial context, but they are still abstract ideas,” said Circuit Judge Alan Lourie.). MPEP 2106.05(h).
No technical problem is indicated and the claims are not directed to a technical solution to such a problem. The method claimed is a nontechnical series of steps taken to practice an entrepreneurial activity. This conclusion is supported by applicant's disclosure, which elaborates upon the performance of the presently claimed method at length by describing the certain methods of organizing human activity (commercial interactions including advertising, marketing or sales activities or behaviors, business relations, and managing personal behavior or relationships or interactions between people) in great detail while only incidentally or tangentially explaining the preexisting (prior art) computer equipment, without identifying any technical problem that arises within said equipment and without offering a technical solution to any such problem. It ultimately only describes the abstract idea while indicating the intention to “apply it.” The claimed subject matter merely takes advantage of an opportunity created by computers to use them as a tool for implementing a business plan, rather than solving a problem created by the computers. An equivalent business plan could be implemented without a computer (though it might be more cumbersome), and in any case merely confining the abstract idea to a particular field is insufficient to render it eligible subject matter. The claimed invention is patent ineligible because the innovative aspect (if there is one) is an entrepreneurial rather than a technological one. Bilski v. Kappos, 130 S. Ct. 3218, 3245; 177 L. Ed. 2d 792, 822; 2010 U.S. LEXIS 5521, 73; 95 U.S.P.Q.20 (BNA) 1001 (2010) (citing Merges, Property Rights for Business Concepts and Patent System Reform, 14 Berkeley Tech. L. J. 577, 585 (1999)); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. Nov. 14, 2014) (“A rule holding that claims are impermissibly abstract if they are directed to an entrepreneurial objective, such as methods for increasing revenue, minimizing economic risk, or structuring commercial transactions, rather than a technological one, would comport with the guidance provided in both Alice and Bilski.” Mayer, J, concurring).
Finally, dependent claims 2-5 do not add "significantly more" to establish eligibility because they merely recite additional abstract ideas further describing the various data and manipulations thereof used in implementing the abstract idea. A more detailed abstract idea is still abstract. PricePlay.com, Inc. v. AOL Adver., Inc., 627 Fed. Appx. 925, 2016 U.S. App. LEXIS 611, 2016 WL 80002 (Fed. Cir. Jan. 7, 2016) (in addressing a bundle of abstract ideas stacked together during oral argument, U.S. Circuit Judge Kimberly Moore said, "All of these ideas are abstract…. It’s like you want a patent because you combined two abstract ideas and say two is better than one.").
All of the above leads to the conclusion that additional claim elements do not provide meaningful limitations to transform the claimed subject matter into significantly more than an abstract idea. MPEP 2106.05; Eligibility Step 2B. As a result the claims are rejected under 35 USC 101 as being directed to non-statutory subject matter because they recite an abstract idea without being directed to a practical application, and they do not amount to significantly more than the abstract idea. MPEP 2106.05, supra.
The preceding analysis applies to all statutory categories of invention. Accordingly, claims 1-5 are rejected as ineligible for patenting under 35 USC 101 based upon the same analysis.
Claim Rejections - 35 USC § 102
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Henriques et al. (US Pub. No. 2004/0139001 A1).
Henriques teaches all the limitations of claims 1-5. Among other things Henriques discloses:
Claim 1. A network connected system for inventory management including:
● a server communicatively coupled to the network and having instructions stored in non-transitory memory (claim 1; see at least abstract “Electronic Marketplace Solution (EMS) which may be embodied, in part or in whole, as a method, system or computer readable medium of instructions. … provision of a single system to sell, buy and pay for goods/services and manage their business … providing them access to improved network management, … FMCG Manufacturers in the areas of secondary supply chain efficiencies, … Wholesalers/Logistics Providers,” ¶0036 “information source may be a server,” ¶0110 “access to the computer network portal occurs via a proxy server”) which, when executed by a processor of the server (claim 1; see at least ¶¶0035-0036 “[0035] In a networked data communications system, …. In such a system a terminal may be any type of computer or computerised device, … with associated devices, for example an information storage device such as a hard disk drive. [0036] In such a system an information source may be a server or any other type of terminal (for example, a PC computer) coupled to an information storage device (for example, a hard disk drive).”), cause the processor to:
● display an intermediary module user interface to an intermediary over the network, including an intermediary item sales platform user interface and an intermediary inventory management platform user interface (see at least fig. 2 “Enhanced Point of Sale features including scanning and inventory management,” ¶0075 “means for Point of Sale (POS) scanning of goods and associated data capture,” ¶0089 “Point of Sale (POS) scanning of goods,” ¶¶2084-2085 (sales platform user interface), and fig. 2, ¶0089 “inventory management and business reporting tools for the Convenience Retailer,” ¶0171 (inventory management platform user interface)), wherein data for the intermediary item sales platform user interface is stored in a product database and data for the intermediary inventory management platform user interface is stored in an inventory database for intermediaries (see at least ¶0193 “supplier provides new products data, if retailer is part of the, Electronic Marketplace Solution POS/BOS installed base---data transmission is done from Electronic Marketplace Solution catalogue to the POS/BOS system using an interface,” ¶¶0273, 0393 “translation tables for Electronic Marketplace Solution and CO supplier/product data,” ¶¶0401, 0411 (product database), and ¶0027 “supplier's inventory database,” ¶¶0059, 0069 (inventory database), wherein intermediaries include wholesalers and retailers (see at least abstract “invention is an Internet portal which assists: Independent Convenience Retailers through the provision of a single system to sell, buy and pay for goods/services and manage their business more effectively; … Wholesalers/Logistics Providers, for reduced costs and improved efficiency and enabling them to expand their customer base,” figs. 1-3, 5-6; ¶0009 “address the needs of key participants in the retail convenience store supply chain. These participants include Convenience Retailers, … Wholesalers/Logistics Providers”);
● display an end-user module user interface to an end-user over the network, including a first end-user item sales platform associated with a system operator and a second end-user item sales platform associated with an intermediary (see at least figs. 2-3, 5, 19, 24-25; ¶0062 “electronic marketplace solution's browse and buy functionality and the supplier's sales systems,” ¶0166 “Customer Management-The Customer Management (CM) module provides users with a consistent user interface, via a single web site, to manage all interactions,” ¶2137 “System Admin can utilize a user interface”. Please note: the specification does not provide a clear distinction between “system operator” and “intermediary,” they appear to be at least potentially interchangeable.).Claim 2. The system of claim 1, wherein displaying the intermediary module user interface further comprises: displaying a wholesale cart for an order which, upon selection of a first item for purchase using a user input by a wholesale user, retrieves first item data from a product database and displays at least one selected, stored secondary item data for inclusion in the order as an item recommendation to the wholesale user at the intermediary module user interface based on system identification that the selected, stored secondary item has a matching characteristic with the first item which is likely to increase sales of the first item, at least one selected, stored secondary item or combination thereof (claim 2; see at least fig. 14, ¶¶0053-0055 “shopping cart… replenishment based on sales,” ¶¶0064-0066, ¶0361 “suggested order list” based on ¶0322 “list/cart,” ¶0549 “User … can develop different saved carts … It may be possible to treat the Frequently Ordered List similar to the suggested order list.” Please note: “which is likely to increase sales of the first item,” appears to be a statement of an intended use or hoped for outcome. In order to patentably distinguish a claimed invention from the prior art, the recited claims must result in a structural difference between the claimed invention and the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Also, the phrase "at least one" recites alternative or optional limitations only one of which is required. Language claiming elements in the alternative is anticipated by the presence of any single alternative. Beyond that it does not result in any further limitation because it merely represents contingencies that are not required. Applicant(s) are reminded that optional or conditional elements do not narrow the claims because they can always be omitted. See e.g. MPEP §2111.04 "Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure."; and In re Johnston, 435 F.3d 1381,77 USPQ2d 1788, 1790 (Fed. Cir. 2006) ("As a matter of linguistic precision, optional elements do not narrow the claim because they can always be omitted.").).Claim 3. The system of claim 1, wherein displaying the intermediary module user interface further comprises: displaying a sales representative communication interface to the intermediary, whereby the intermediary can interact with a sales representative of the system using one or more of audio, visual, audio-visual and textual interfaces in real-time (claim 3; see at least fig. 2 (“functions,” “news communication… intergroup communication”), fig. 3 (“news communication… effective communication to a customised group of retailers), ¶¶0101-0107 describing communication among and between the various parties, ¶1508 “Messaging is used within the Electronic Marketplace Solution system for communication between all participants (suppliers, retailers, service providers, Electronic Marketplace Solution, etc.).” Please note: it is unknown how communication could take place in the art without using audio, visual, audio-visual, or textual interfaces. In other words, although disclosed in the reference, “one or more of audio, visual, audio-visual and textual interfaces,” would otherwise be inherent.).Claim 4. The system of claim 1, wherein displaying the intermediary module user interface further comprises:
● creating the second end-user item sales platform associated with an intermediary for a first intermediary after the processor determines that the first intermediary has reached a sales or purchasing threshold stored in a database, including: for the first intermediary, assigning a unique network address to the second end-user item sales platform associated with the first intermediary (claim 4; see at least abstract “internet portal,” ¶¶0013-0015 describing market share of targeted retailers, ¶0040 describing internet addresses used to find particular intermediaries, ¶0166 “(CM) module provides users with a consistent user interface, via a single web site, to manage all interactions,” ¶¶0496, 2065);
● associating data from the inventory database for intermediaries associated with the first intermediary with the second end-user item sales platform associated with the first intermediary (claim 4; see at least ¶¶0027, 0059, 0069 (inventory database), ¶¶0075, 0089, 2084-2085 (sales platform user interface);
● displaying the second end-user item sales platform associated with the first intermediary upon an end-user accessing the unique network address over the network, wherein the end-user can select and purchase items using an end-user input through the second end-user item sales platform associated with the first intermediary and upon confirmation of a purchase by the end-user, automatically notify the first intermediary of the purchase by sending an electronic communication with data associated with the purchase to the first intermediary over the network (claim 4; see at least figs. 5, 9-13, 19; ¶¶0040, 0043 “Internet Portal,” ¶¶0062, 0073 “the electronic marketplace solution can provide access to this managed information relating to consumer purchases via a business-to-business web portal,” ¶1119 “Upon accepting the allocation, shopping cart becomes a customer order with status of Open. The customer order is split and sent into purchase orders and sent to individual suppliers.”).Claim 5. The system of claim 1, wherein displaying the end-user module user interface further comprises:
● displaying a wardrobe extender platform user interface including upon a self-identified indication that a first item was previously purchased by an end-user selection, retrieving at least one pre-selected wardrobe extending second item from the product database after system identification of at least one matching characteristic between the first item and the second item (claim 5; see at least fig. 14, ¶¶0053-0055 “shopping cart… replenishment based on sales,” ¶¶0064-0066, ¶0361 “suggested order list” based on ¶0322 “list/cart,” ¶0549 “treat the Frequently Ordered List similar to the suggested order list.” Please note: the matching characteristic here would be that both items were previously purchased. Also note: although the prior art discloses this feature or its equivalent applicant should note that the description of the items as “wardrobe” items as claimed is nonfunctional descriptive information because it has no functional role in the claimed method. Descriptive material that has no functional role in the method will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). MPEP 2111.05. The rationale behind the printed matter cases has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists. See In re Kao, 639 F.3d 1057, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011); King Pharmaceuticals Inc. v. Eon Labs Inc., 616 F.3d 1267, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010); MPEP 2111.05.);
● displaying the second item to the end-user at an end-user interface (claim 5; see at least fig. 14, ¶¶0053-0055, 0064-0066, 0322, 0361, 0537, 0549. Please note: as described above the second item is displayed together with the first in the shopping cart/list.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
● Aram, Pub. No. US 2002/0072986 A1: teaches manufacturers and distributors as intermediaries, multiple databases for inventory, product and order information.
● Klein, Pub. No. US 2013/0151381 A1: teaches all of the same functions but with fewer interfaces and describes the product and inventory data.
● Franco, Patent No. US 7,257,552 B1: teaches inventory integration, product detail, inventory management databases, and suggestions based on related items.
● Gambhir, Pub. No. US 2006/0095333 A1: teaches all the same functions and data as the present application with one interface and one database.
This is a continuation of applicant's earlier Application No. 18405924. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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 ADAM LEVINE whose telephone number is (571)272-8122. The examiner can normally be reached Monday - Thursday 9am-7:30pm.
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/ADAM L LEVINE/Primary Examiner, Art Unit 3689 March 31, 2026