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 .
Status of the Application
This final office action is in response to the amendment filed on 11/10/2025. Claims 1, 8, 14, and 17 have been amended. Claims 1-20 are currently pending and have been examined below.
Claim Rejections – 35 U.S.C. 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Per step 1 of the eligibility analysis set forth in MPEP § 2106, subsection III, the claims are directed towards a process, machine, or manufacture.
Per step 2A Prong One, independent claim 17 recites specific limitations which fall within at least one of the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2) as follows:
acquiring an attribute of a customer who is visiting a store;
generating an inquiry prompt for providing a promotional recommendation of merchandise items for sale at the store to the customer, the inquiry prompt being generated based on condition information including at least the acquired attribute of the customer;
based on description information in the generated response, extracting a merchandise item from among the merchandise items available for sale at the store as listed in a merchandise master of the store; and
generating sales promotion information for the extracted merchandise item based on merchandise information of the extracted merchandise item and the description information about the merchandise item in the generated response.
As noted above, these limitations fall within at least one of the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2). Specifically, these limitations fall within the group Certain Methods of Organizing Human Activity (i.e., commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). That is, the limitations recited above describe the process of generating sales promotion information based on customer attributes which is an advertising activity. Additionally, the steps above also fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and opinion. See MPEP 2106.04(a)(2), subsection III. Specifically, a human being can mentally (or with pen and paper) acquire a customer attribute, generate an inquiry prompt, extract a merchandise item, and generate sales promotion information. Accordingly claim 17 recites an abstract idea.
This judicial exception is not integrated into a practical application. The claim recites the additional elements of:
[acquiring] at a server device of an in-store customer product recommendation system, an attribute of a customer from an edge device, the customer using the edge device and who is visiting a store adopting the in-store customer product recommendation system:
[generating], at the service device, [an inquiry prompt];
inputting the inquiry prompt to a generative Al stored in a memory unit of the server device, the generative Al having been functionalized to generate a response to the inquiry prompt and acquire the generated response from the generative Al; and
outputting the generated sales promotion information from the server device to the edge device via a communication network.
The additional limitations when viewed individually and when viewed as an ordered combination, and pursuant to the broadest reasonable interpretation, do not integrate the abstract idea into a practical application because each of the additional elements are recited at high level of generality implementing the abstract idea on a computer (i.e. apply it) or generally linking the use of the judicial exception to a particular technological environment. Specifically,
With respect to the limitation, [acquiring] at a server device of an in-store customer product recommendation system, an attribute of a customer from an edge device, the customer using the edge device and who is visiting a store adopting the in-store customer product recommendation system, Examiner notes that this limitation is recited at a high level of generality and merely generally links the abstract idea to a particular technological environment (i.e., a generic device in a store and a generic server to transmit a recommendation to the device). See spec paragraph [0021] “the edge device 1 may also be a device of various kinds serving as a contact point between a customer visiting a store and the information processing system S or a system incorporating such a device. For example, the edge device 1 may be an information processing device such as a self-service point-of- sale (POS) terminal, a smartphone of the customer, or a tablet terminal provided at the store for customer use.”
With respect to the limitation [generating], at the service device, [an inquiry prompt] and inputting the inquiry prompt to a generative Al stored in a memory unit of the server device, the generative Al having been functionalized to generate a response to the inquiry prompt and acquire the generated response from the generative Al, Examiner has reviewed Applicant’s specification and notes that paragraph [0050] recites “[]n this example embodiment, an LLM is used as generative AI. However, the generative AI may be any other type of generative AI that can generate a text response and is not limited to an LLM”, paragraph [0127] recites “[i]n some embodiments, the additional machine learning model(s) can be supervised machine learning model(s)” and paragraph [0164] recites “the additional machine learning model(s) can be supervised machine learning model(s).” Examiner notes that the claimed recitation of generative artificial intelligence models (such as generic generative AI) is similar to Claim 2 of Example 47 in the July 2024 Subject Matter Eligibility Examples published by the USPTO available at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility where the training a machine learning model using a backpropagation algorithm was not found to integrate the abstract idea into a practical application. Additionally, see Recentive Analytics, Inc. v. Fox Corp. et al., No. 2023-2437, slip op. at 18 (Fed. Cir. Apr. 18, 2025) holding that claims “that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.” Here, Examiner takes the position the use of a generic generative AI model to generate a response based an inquiry prompt is the mere application of generic machine learning to a new data environment. Because no improvement to the underlying machine learning models is disclosed, this limitation does not integrate the abstract idea into a practical application. Examiner adds that specifying that the generative AI is stored in generic memory of a service device merely generally links the abstract idea to a particular technological environment or merely uses a computer as a tool to perform the abstract idea (i.e., a server to run the generative AI model).
Finally, with respect to outputting the generated sales promotion information from the server device to the edge device via a communication network, Examiner notes this limitation is recited at a high level of generality transmitting a promotion from a generic server to a generic device (e.g., a user’s smartphone) where merely generally links the abstract idea to a particular technological environment.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent device claim 1 and independent system claim 14 are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as method claim 17. The additional limitations in claim 1 (i.e., a generic device including a communication unit, memory unit, and control unit) and the additional limitations in claim 14 (i.e., a generic edge unit device – see above, and a generic information processing device including a communication unit, a memory unit, and a control unit) add nothing of substance to the underlying abstract idea. The components are merely providing a particular technological environment to implement the abstract idea.
Dependent claims 2-13, 15-16 and 18-20 are rejected on a similar rational to the claims upon which they depend. Specifically, each of the dependent claims merely further narrows the abstract idea or generally links the abstract idea to a particular technological environment.
Response to Arguments
35 U.S.C. 103
Applicant's arguments, see pages 9-11, filed 11/10/2025 with respect to the rejection(s) of claims
1-20 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore the rejections have been withdrawn.
35 U.S.C. 101
Applicant's arguments, see 8-9, filed 11/10/2025 with respect to the rejection(s) of claims 1-20 under 35 U.S.C. 101 have been fully considered but are not persuasive.
Applicant argues that:
These claims each recite "a memory unit storing a merchandise master and a generative Al that has been functionalized to generate a response to an inquiry prompt for providing a promotional recommendation of merchandise items for sale at a[/the] store." In addition to not being performable as a mental process, the explicit recitation of such aspects prevents the recited device/system from being merely generic computer components since once such aspects are considered the components should be considered specialized and non- generic. That is, one cannot simply go to a retail store and buy a computer off the shelf that includes "a memory unit" configured in the recited manner of claims 1 and 14 as "storing a merchandise master and a generative Al that has been functionalized to generate a response to an inquiry prompt for providing a promotional recommendation of merchandise items for sale at a[/the] store." Similarly, such off-the-shelf computer would have "a control unit" configured in the recited manner of claims 1 and 14. Such configuration would require specialized/non-generic software
The requirement for such component specialization additionally serves to highlight that the pending claims are not directed to the mere idea of developing promotional advertising or the like but rather concern a particular technological solution to identified existing problems in the related art of computer-based, in-store promotional systems. See, e.g., as-filed specification, paragraphs [0003], [0004] and [0015] (remarks page 8-10).
Examiner respectfully disagrees. First, Examiner notes that the limitations identified in step 2A, prong 1 describe the process of generating sales promotion information based on customer attributes which is an advertising activity. Additionally, the steps also fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and opinion. See MPEP 2106.04(a)(2), subsection III. Specifically, a human being can mentally (or with pen and paper) acquire a customer attribute, generate an inquiry prompt, extract a merchandise item, and generate sales promotion information. Examiner notes that storing generative AI functionalized to generate a response to a prompt is an additional limitation that must be analyzed under Step 2A, prong 2 and Step 2B, but the fact that this limitation is recited does not mean no abstract idea is recited in the claims.
With respect to the stored generative AI, Examiner notes that paragraph [0050] of Applicant’s specification recites “[i]n this example embodiment, an LLM is used as generative AI. However, the generative AI may be any other type of generative AI that can generate a text response and is not limited to an LLM”, paragraph [0127] recites “[i]n some embodiments, the additional machine learning model(s) can be supervised machine learning model(s)” and paragraph [0164] recites “the additional machine learning model(s) can be supervised machine learning model(s).” At the level of generality claimed, the claims merely recite a generic generative AI stored on a generic memory unit which receives a prompt as input and generates a response as output. Specifying that the generative AI is stored in a generic memory and “functionalized” to perform the recited function of providing a promotional recommendation does not integrate the abstract idea into a practical application. Additionally, see Recentive Analytics, Inc. v. Fox Corp. et al., No. 2023-2437, slip op. at 18 (Fed. Cir. Apr. 18, 2025) holding that claims “that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.” Here, Examiner takes the position the storing and utilizing a generic generative AI model to generate a response based an inquiry prompt is the mere application of generic machine learning to a new data environment. Because no improvement to the underlying machine learning models is disclosed, this limitation does not integrate the abstract idea into a practical application. Examiner adds that specifying that the generative AI is stored in generic memory of a service device merely generally links the abstract idea to a particular technological environment or merely uses a computer as a tool to perform the abstract idea (i.e., a server to run the generative AI model).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent Application Publication 20250238854 (“Lin”) discloses generating a LLM prompt tailored to product attributes of interest to a customer
US Patent Application Publication Number 20230169539 (“Aleksei”) discloses acquiring customer attributes of customers currently in a shopping environment
US Patent Application Publication Number 20250111280 (“Li”) discloses AI generated advertisements based on user inputs including product descriptions
US Patent Application Publication Number 20250131624 (“Boyd”) discloses a prompt to instruct generative machine learning models to process data including an entire collection of content items a given user has previously captured and/or accessed to obtain interests or preferences of the user.
US Patent Application Publication Number 20250029170 (“Chachek”) discloses using generative AI for customized content creation and personalized in-store tours by using generative AI to create and persistently update personalized branded and non-branded content, such as product recommendations, descriptions, promotions, and shopping suggestions tailored to individual user preferences and behavior patterns.
However, the prior art fails to teach each and every limitation as claimed, and would involve hindsight reasoning to arrive at the claimed invention. Therefore, the claims are considered allowable over the prior art.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ALLAN J WOODWORTH, II whose telephone number is (571)272-6904. The examiner can normally be reached Mon-Fri 9:00-5:30.
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/ALLAN J WOODWORTH, II/
Primary Examiner, Art Unit 3622