Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claims 2-21. Claims dependent from rejected claims are apriori rejected. “The claims”, here, could only mean the pending claims (no other claims exist)
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
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) 1-20 is/are directed to one or more abstract idea(s). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea(s).
The claims are directed to pricing a good for sale/shopping (demander shops for buyer of demander’s device, supplier shops for device to buy), & more specifically user requests device scan, model is ascertained, list of devices is displayed with price to user.
Step 1
The claims 2-21 and their dependents are directed to one of the statutory classes (2 machine 12 process). The claims herein are directed to subject matter which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
Step 2a
Prong 1
The claim(s) is/are directed to CERTAIN METHODS OF ORGANIZING HUMAN BEHAVIOR. The claims are directed to data gathering and arranging content.
[Wingdings font/0x9F] fundamental economic principles or practices (including hedging, insurance, mitigating risk)
[Wingdings font/0x9F] commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
[Wingdings font/0x9F] managing personal behavior or relationships or interactions
Alice
clearinghouse
implemented by computer
Here
buying, selling
implemented by computer
Bilski
hedge
implemented by computer
The claims -- directed to data gathering for buying, selling, shopping.
Human judgement of thing for sale and making an offer are in this claim automated, as a clearinghouse was automated in Alice v CLS Corp, a hedge was automated in Bilski or a survey in Trinity Info Media v Covalent (CAFC 2023).
Collecting info, analyzing it, displaying certain results. Elec. Power Group (CAFC 2016)(EPG).
Creating an index, using it to search, retrieve data (Int. Ventures v. Erie Indemnity I: ‘434 patent).
Collecting, analyzing info to detect a state (e.g. misuse), notify user when state detected (FairWarning).
Claim
2019 Revised Guidance 84 Fed Reg 50
2. A system for evaluating electronic devices, the system comprising:
a kiosk configured to receive one or more electronic devices within an internal inspection area; and one or more processors operably associated with the kiosk and configured to—
Trade-in values are pertinent to fundamental economic practice(e.g. A sale transaction with trade-in credit)
Abstract idea, i.e. mental process and organizing human behavior. E.g. concept performed in the mind including observation, evaluation, judgement Rev. Guid. 52. Additional elements [ electronically, electronic, channel] are generic
determine that a first electronic device has been positioned within the internal inspection area;
Generic element generally applied for Insignificant extra solution activity, e.g. Data gathering via generic element generally applied mpep 2106.05 and USPTO 2019 revised 101 guidance 55, note 31
obtain, via the kiosk, information associated with the first electronic device;
Insignificant extra solution activity, e.g. Data gathering via generic element generally applied mpep 2106.05 and USPTO 2019 revised 101 guidance 55, note 31
evaluate an electrical and/or physical condition of the first electronic device based on the information;
Insignificant extra solution activity, e.g. Data gathering via generic element generally applied mpep 2106.05 and USPTO 2019 revised 101 guidance 55, note 31
present an offer to purchase the first electronic device for a price based at least partially on the evaluation of the electrical and/or physical condition; and
Make an offer to buy. Insignificant extra solution activity, e.g. Data gathering via generic element generally applied MPEP 2106.05 and USPTO 2019 revised 101 guidance 55, note 31
cause data on the first electronic device to be transferred, via the kiosk, to a second electronic device.
Trade-in values are pertinent to fundamental economic practice (e.g. A sale transaction with trade-in credit). Display price is insignificant extra-solution activity MPEP 2106.05d
Applicant’s Specification ¶ 48-63 US PG PUB 20250315885 has inventive concept: selling, buying.
Thus, the claims “recite” an abstract idea (i.e. “PEG” Revised Step 2A Prong 1=Yes).
Additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to: electronic device, target device, communication channel. These are generic elements, MPEP 2106.05.
Other steps do not present significantly more or integrate the idea into a practical application.
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Prong 1 answered “YES”, the next question in Prong 2 is whether there is an integrated practical application. This judicial exception is not integrated into a practical application. In particular, the claim recites additional element – computing device, processor, code set, kiosk to perform the claim steps. The elements are recited at a high-level of generality (e.g. generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component, general linking of idea to generic element. Accordingly, these additional elements do not integrate the abstract idea into a practical application for lack of any meaningful limits on practicing the abstract idea.
FYI
A. Concepts Relating To Data Comparisons That Can Be Performed Mentally Or Are Analogous To Human Mental Work
Anonymous loan SHOPPING, (Mortgage Grader)
Collecting and comparing known information (Classen)
Comparing data to determine a risk level (Perkin-Elmer)
Comparing info regarding a sample or test subject to a control or target data (Ambry/Myriad CAFC)
Comparing new and stored information and using rules to identify options (Smartgene)
Diagnosing an abnormal condition by performing clinical tests and thinking about the results (Grams)
Obtaining and comparing intangible data (CyberSource)
B. Concepts Relating To Organizing Or Analyzing Information In A Way That Can Be Performed Mentally Or Is Analogous To Human Mental Work
•Collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning)
•Collecting, displaying, and manipulating data (Int. Ventures v. Cap One Financial)
•Collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group; West View)
•Collection, storage, and recognition of data (Smart Systems Innovations)
•Creating an index, and using that index to search for and retrieve data (Int. Ventures v. Erie Indemnity I: ‘434 patent)
•Data recognition and storage (Content Extraction)
•Determining a price, using organizational and product group hierarchies (Versata)
•Encoding and decoding image data (RecogniCorp)
•Identification of unwanted files in a particular field (Int. Ventures v. Erie Indemnity II)
•Mental process for logic circuit design (Synopsys)
•Organizing and manipulating information through mathematical correlations (Digitech)
•Relaying mailing address data (Return Mail)
•Retaining information in navigation of online forms (Internet Patents)
•Storing, gathering, and analyzing data (TDE Petroleum)
•Using categories to organize, store and transmit information (Cyberfone)
Dependent claims
CLAIM 3 13
3. The system of claim 2 wherein:
the kiosk includes one or more connectivity devices configured to connect to the first electronic device and/or the second electronic device, and the one or more processors are configured to obtain the information via a first one of the one or more connectivity devices and to cause the data on the first electronic device to be transferred to the second electronic device via the first one of the one or more connectivity devices or via a second one of the one or more connectivity devices.
Examiner
Idea itself and description of a generic device, doesn’t integrate the idea into a practical application or provide significantly more.
CLAIM 4 14
4. The system of claim 3 wherein:
the one or more connectivity devices include a first electrical connector configured to connect to the first electronic device and a second electrical connector configured to connect to the second electronic device, and the one or more processors are configured to obtain the information via the first electrical connector and to cause the data on the first electronic device to be transferred to the second electronic device via the second electrical connector.
Examiner
Idea itself and description of a generic device, doesn’t integrate the idea into a practical application or provide significantly more.
CLAIM 5 16
5. The system of claim 3 wherein:
the one or more connectivity devices include a wireless connectivity device configured to establish a first wireless connection with the first electronic device and a second wireless connection with the second electronic device, and the one or more processors are configured to obtain the information via the first wireless connection and to cause the data on the first electronic device to be transferred to the second electronic device via the second wireless connection.
Examiner
Idea itself and description of a generic device, doesn’t integrate the idea into a practical application or provide significantly more.
CLAIM 6 16
6. The system of claim 2 wherein: the obtained information includes electrical inspection data and one or more images of the first electronic device, the one or more processors are configured to evaluate the electrical condition of the first electronic device based at least partially on the electrical inspection data, the one or more processors are configured to cause the one or more images to be displayed to a remote human operator for an evaluation of the physical condition of the first electronic device, and the price is based at least partially on the electrical condition and the physical condition.
Examiner
Idea itself and description of a generic device, doesn’t integrate the idea into a practical application or provide significantly more.
CLAIM 7 17
7. The system of claim 2 wherein the evaluation of the electrical and/or physical condition of the first electronic device includes an evaluation of the first electronic device's battery, display screen, memory, button functionality, and/or structural integrity.
Examiner
Idea itself and description of a generic device, doesn’t integrate the idea into a practical application or provide significantly more.
CLAIM 8 18
8. The system of claim 2 wherein: the kiosk further includes a storage bin and a binning mechanism, and the one or more processors are configured to cause the binning mechanism to move the first electronic device toward the storage bin once the data transfer to the second electronic device is complete.
CLAIM 9 19
9. The system of claim 2 wherein the kiosk includes an inspection plate within the internal inspection area, and wherein the one or more processors are configured to determine that the first electronic device and the second electronic device have been received on the inspection plate.
Examiner
Idea itself and description of a generic device, doesn’t integrate the idea into a practical application or provide significantly more.
CLAIM 10 20
10. The system of claim 2 wherein, once the data transfer to the second electronic device is complete, the one or more processors are further configured to cause the data to be deleted from the first electronic device.
Examiner
Idea itself and description of a generic device, doesn’t integrate the idea into a practical application or provide significantly more.
CLAIM 11 21
11. The system of claim 2 wherein the first electronic device is a first mobile phone and wherein the second electronic device is a second mobile phone.
Examiner
Idea itself and description of generic devices for shopping, doesn’t integrate the idea into a practical application or provide significantly more.
Step 2b
The additional elements electronic device, target device, communication channel are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they 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.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p.16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers" (citing Bilski 561 US at 610).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, medium do something unconventional such that Applicant has improved computer functionality. Applicant presents an abstract idea for which computers are invoked merely as a tool.
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 claims amount to significantly more than the abstract idea itself. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
The further elements of the claims are merely directed to further abstract ideas (a plurality of exceptions December 16, 2014 Interim Guidance p 74625, Fed Register Vol 79 No 241) and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is conventional (electronic device, target device, communication channel). There is no improvement in these items, but rather they are invoked as a tool to solve a business problem (marketing), not a technical problem.
The additional elements alone or in combination are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond generic linking use of an abstract idea to a particular technological environment. Additionally, the claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are generic activities previously known to the industry. Moreover, these generic limitations do not lead to an integrated practical application because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610). 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 claims amount to an integrated practical application. The claim limitations do not improve upon the technical field that the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of the computer itself.
Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See Alice Corp p 16 of slip op. noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers"(citing Bilski 561 US at 610).
Moreover, mere recitation of a machine or medium in the preamble does not make a claim statutory under 35 U.S.C. 101, as seen in the Board of Patent Appeals Informative Opinion Ex Parte Langemyr (Appeal 2008-1495). Moreover, mere mention of a piece of a computer or processing device does not confer patentability. Alice Corporation Pty. Ltd. v CLS Bank International ("Alice Corp") 573 US __ (2014). Incorporating the two-step test espoused in its recent decision in Mayo v. Prometheus 566 U.S. ___ (2012), the Court describes a first inquiry as to whether the claims at issue are directed to a patent-ineligible concept. If so, the Court requires a second inquiry as to whether the elements, individually or in combination, “transform” the nature of the claims into a patent-eligible invention. The Court described this second step as a search for an inventive concept, “i.e., an element or combination sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”
e claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic elements that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea. The additional element merely instruct that the execution of the abreact idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the generic elements do something to improved hardware functionality.
The further elements of the claims are merely directed to further abstract ideas and in ordered combination pose a list of abstract ideas, and invoke merely as a tool what is generic. Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, in ordered combination the claim limitations spell out the steps of pricing an item for sale, i.e. shopping.
In addition to these indisputably generic features electronic device, target device, communication channel, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces a result that overrides the generic use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). We must thus conclude that the claims fail step two as well.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements merely detail generic computer processors and software that implement the abstract idea. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be generic in any computer implementation. The additional element merely instruct that the execution of the abstract idea occurs on other generic technology, but does not offer any disclosure of any additional technology beyond the abstract idea itself. Moreover, the claim steps as an ordered combination do not present significantly more. The claims are not directed to an improvement in computer functionality like in Enfish v Microsoft, but rather to an abstract idea. The claims "do nothing more than spell out what it means to 'apply it on a computer'”, Intellectual Ventures I 792 F.3d p1371 (citing Alice). Nowhere in the claims or specification is there any indication that the computer, processor, storage do something nongeneric such that Applicant has improved computer functionality. Applicant presents an idea for which computers are invoked as a tool.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. Examples that the courts have indicated may not be sufficient to show an improvement to technology include:
-Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48;
-Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)
Here, the claims neither improve the technological infrastructure nor provide particular solutions to challenges. Rather, they spell out the steps of organizing human behavior implemented with generic technology. In addition to these indisputably conventional features, Applicant did not invent any of those features, and the claims do not recite them in a manner that produces “a result that overrides the routine and conventional” use of these known features. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). When viewed as an ordered combination, the proposed claims recite no more than the sort of “perfectly conventional” generic computer components employed in a customary manner that we have held insufficient to transform the abstract idea into a patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). We must thus conclude that the claims fail step two as well.
Displaying a price does not add significantly more. The claim limitations alone or in ordered combination do not improve upon the technical field to which the abstract idea is applied nor do they improve upon any other technical field. The claimed limitations do not improve upon the functioning of any device itself. Wiley Encyclopedia of Computer Science and Engineering (2009) was already provided to applicant and is a general technical reference with these generic elements, which was already provided to Applicant. The reference is the kind a person of ordinary skill in the art would have “hanging on their wall“, e.g. as a pdf shortcut or icon on wallpaper of one’s computer. Display is mentioned 427 times (Wiley p.2261), memory at p. 2263 (mentioned 1700+times in Wiley), database, server p.125, server 610 times (at least e.g. p.1982), processor 639 times (e.g. p. 1242-1243), database 1728 times (e.g. p.1253), storage medium (e.g. p.131), computer (3553 times, e.g. p.283), network (at least p.1700-1707), interface for signaling (770 times at least p.1700-1707).
See MPEP 2106.05 for applicant’s generic additional elements which are generally applied.
Claims dependent from the independent claims do not cure the deficiencies and are rejected.
Obviousness Double Patenting
The claims (2-21) rejected on double patenting over claims of US Ser 19637929, 19028563.
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.
The claims are rejected on the ground of provisional nonstatutory double patenting as being unpatentable over the claims of US. Co-pending Patent application US Serial No. 19637929, 19028563. Although the claims at other co-pending applications are not identical, they are not patentably distinct from each other because the current application (US Serial No. 19028465) and the above co-pending applications all are directed to recycling kiosk.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Although the claims at other co-pending applications are not identical, they are not patentably distinct from each other since the claims here are obvious given the claims there.
CONCLUSION
Pertinent prior art cited but not relied upon
US 20130311318
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BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/Primary Examiner, Art Unit 3621
Prosecution Insights