DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prosecutorial Standing
2. This communication is in response to the Application filed on 01.17.2025. Claim 1 is currently pending in this application. Claim 1 will be subject to further examination and evaluation in due course, and will be presented for examination, as detailed below.
Oath/Declaration
3. The Applicant’s oath/declaration has been reviewed by the Examiner and is found to conform to the requirements prescribed in 37 C.F.R. 1.63.
Double Patenting
4. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
5. Claim 1 is rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,023,989. Although the claims at issue are not identical, they are not patentably distinct from each other because the clams are directed to the same invention.
The mapping of independent claim 1 of the immediate application to the independent claim 1 of the patent follows:
Immediate Application
Patent No.: 11,023,989
Claim 1: An apparatus comprising: a computing device; and a non-transitory medium having stored thereon a plurality of instruction that when executed by the computing device cause the apparatus to: open an account for a merchant with a delivery/referral service; receive from the merchant an indication of a plurality of orders for which respective customers have requested delivery; facilitate respective delivery of such a plurality of orders to respective customers; pay respective delivery agents for performing the respective deliveries of the orders to the respective customers; record a respective delivery cost for each of the plurality of orders; and determine a consolidated bill for a merchant for the respective deliveries of the plurality of orders to the respective customers based on the recorded costs.
Claim 1: An apparatus comprising: a first computing device configured to control: opening a first account for a first merchant with a delivery/referral service; ……..; facilitating respective delivery of the first plurality of orders to the respective first customers; receiving, over the communication network, from the second merchant an indication of a second plurality of orders for which respective second customers have requested delivery, …..; paying respective delivery agents for performing the respective first and second deliveries of the first and second plurality of orders to the respective first and second customers; recording a respective delivery cost for each of the plurality of orders; determining a first consolidated bill for the first merchant for the respective deliveries of the first plurality of orders to the respective first customers based on the recorded costs; and determining a second consolidated bill for the second merchant for the respective deliveries of the second plurality of orders to the respective second customers based on the recorded costs.
Claim Rejections - 35 USC § 101
6. 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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea), an abstract idea without significantly more.
Claim 1 is directed to systems and methods that may relate to referral and/or delivery services. Independent claim 1 has been identified as the claim that represents the claimed invention for analysis. Claim 1 is directed to an apparatus comprising the steps of:
open an account for a merchant;
receive from the merchant an indication of a plurality of orders;
facilitate respective delivery of such a plurality of orders;
pay respective delivery agents for performing the respective deliveries of the orders;
record a respective delivery cost for each of the plurality of orders; and
determine a consolidated bill for a merchant for the respective deliveries of the plurality of orders.
In the instant case, the claim is directed towards "delivery and/or referral services". However, "billing merchants for delivery services" is a fundamental economic practice and a method of organizing commercial interactions. The claims do not include limitations that are "significantly more" than the abstract idea because the claim does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. (See Alice Corporation Pty. Ltd. V. CLS Bank International et al., 573 U.S._(2014) (slip op., at 7-10)). Accordingly, claim 1 recites an abstract idea.
The claim does not recite additional elements integrate the abstract idea into a practical application. In particular, the claim recites the additional elements of: “a computing device; and a non-transitory medium”.
Note that the limitations, in the instant claim, are done by the generically recited "a computing device; and a non-transitory medium having stored thereon a plurality of instruction that when executed by the computing device cause the apparatus to: “open an account for a merchant; receive from the merchant an indication of a plurality of orders; facilitate respective delivery of such a plurality of orders; pay respective delivery agents for performing the respective deliveries of the orders; record a respective delivery cost for each of the plurality of orders; and determine a consolidated bill for a merchant for the respective deliveries of the plurality of orders". The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Alice Corporation Pty. Ltd. V. CLS Bank International, et al., 573 U.S. _(2014).
Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claim integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself. Therefore, the claim is rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter (see Alice Corp v CLS).
The Examiner therefore concludes that the individual technological elements recited by the claim are not special purposes devices and are merely directed to generic computer devices, components, and functions, and do not amount to significantly more than the abstract idea.
Claim Rejections - 35 USC § 102
7. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claim 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lutnick et al., Pub. No.: US 2015/0142594. The applied reference has a common Assignee/Inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
As per claim 1, Lutnick discloses an apparatus [see at least ¶0005 (e.g., apparatus comprising: a computing device; and a non-transitory medium having stored thereon a plurality of instruction that when executed by the computing device cause the apparatus), and ¶0006 (e.g., apparatus comprising: a computing device; and a non-transitory medium having stored thereon a plurality of instruction that when executed by the computing device cause the apparatus)] and comprising:
a computing device [see at least ¶0005 (e.g., apparatus comprising: a computing device; and a non-transitory medium having stored thereon a plurality of instruction that when executed by the computing device cause the apparatus), and ¶0006 (e.g., apparatus comprising: a computing device; and a non-transitory medium having stored thereon a plurality of instruction that when executed by the computing device cause the apparatus)]; and
a non-transitory medium having stored thereon a plurality of instruction that when executed by the computing device cause the apparatus [see at least ¶0005 (e.g., apparatus comprising: a computing device; and a non-transitory medium having stored thereon a plurality of instruction that when executed by the computing device cause the apparatus), and ¶0006 (e.g., apparatus comprising: a computing device; and a non-transitory medium having stored thereon a plurality of instruction that when executed by the computing device cause the apparatus)] to: open an account for a merchant with a delivery/referral service [see at least ¶0005 (e.g., open an account for a merchant with a delivery/referral service)];
receive from the merchant an indication of a plurality of orders for which respective customers have requested delivery [see at least ¶0005 (e.g., receive from the merchant an indication of a plurality of orders for which respective customers have requested delivery)];
facilitate respective delivery of such a plurality of orders to respective customers [see at least ¶0005 (e.g., facilitate respective delivery of such a plurality of orders to respective customers)]; pay respective delivery agents for performing the respective deliveries of the orders to the respective customers [see at least ¶0005 (e.g., pay respective delivery agents for performing the respective deliveries of the orders to the respective customers)];
record a respective delivery cost for each of the plurality of orders; and determine a consolidated bill for a merchant for the respective deliveries of the plurality of orders to the respective customers based on the recorded costs [see at least ¶0005 (e.g., record a respective delivery cost for each of the plurality of orders; and determine a consolidated bill for a merchant for the respective deliveries of the plurality of orders to the respective customers based on the recorded costs), and as illustrated in FIG. 2 below].
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Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2025/0078026, Kleckner: discloses communication networks and order systems.
US 2013/0179344, Georgoulas: discloses method allowing a customer having registered payment account details with a service or product provider to place a purchase order and pay for a product or a service using a networked device such as a mobile phone.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Garcia Ade whose telephone number is (571)272-5586. The examiner can normally be reached on Monday - Friday.
11. 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, Florian Zeender can be reached on 517-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
12. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Garcia Ade/Primary Examiner, Art Unit 3627
GARCIA ADE
Primary Examiner
Art Unit 3687
/GA/Primary Examiner, Art Unit 3627
Prosecution Insights