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 non-final office action is in response to the RCE communication filed on 4/21/2026. Claims 1, 8, 10, 13, 14, 16, 17, and 20 have been amended. Claim 9 has been cancelled. Claim 21 has been added. Claims 1-8 and 10-21 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 1-8 and 10-21 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 the attribute being identified based on an image of the customer;
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 personalized 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:
[the attribute being identified based on an image of the customer] sent from the edge device via an in-store communication network;
[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 personalized sales promotion information from the server device to the edge device via the in-store 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 [the attribute being identified based on an image of the customer] sent from the edge device via an in-store communication network; Examiner respectfully notes that this limitation is recited at a high level of generality specifying that that an attribute is identified based on an image sent from the edge device via an in-store communication network. The transmission of the image from the edge device to the service via the communication device is not positively recited. At this level of generality, specifying that an image was transmitting from a generic edge device (e.g., a user’s smartphone) to a generic service device using a generic network merely generally links the abstract idea to a particular technological environment.
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 the in-store 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) using a network 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 2-8, 10-13, 15-16 and 18-21 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. 101
Applicant's arguments, see pages 8-10, filed 4/21/2026 with respect to the rejection(s) of claims
1-8 and 10-21 under 35 U.S.C. 101 have been fully considered but are not persuasive.
First, Applicant argues that:
Claim 1 recites: "a control unit configured to . . . acquire an attribute of a customer visiting the store and using the edge device, the attribute being identified based on an image of the customer sent from the edge device via the communication unit."
As such, claim 1 clearly recites interactions between tangible components ("an image of the customer sent from the edge device via the communication unit") and cannot be abstract mental processes in view of such interactions (remarks page 8).
Examiner respectfully disagrees and replies that the transmission of the image from the edge device to the service via the communication device is not positively recited. Rather, claim 1 merely recites that the attribute is identified based on the image that was sent from the edge device to the communication unit. At this level of generality, specifying that an image was transmitting from a generic edge device (e.g., a user’s smartphone) to a generic service device using a generic network merely generally links the abstract idea to a particular technological environment.
Second, Applicant argues that:
Furthermore, these interactions between tangible components relate to a providing of non-abstract improvements in a device to "generate personalized sales promotion information for [an] extracted merchandise item based on merchandise information of the extracted merchandise item and the description information about the merchandise item in the generated response." The specification identifies problems in the related art concerning, "the same or similar promotions ... may be provided to all customers similarly." As-filed specification, paragraph [0004]. Further, "there is room for improvement regarding the specific or targeted appeal of a merchandise item in a prepared promotions" in the related art (remarks page 9).
Note here that the "generated response" in the context of the device of claim 1 is a response provided by a "generative Al" after a prompt generated "based on condition information including at least the acquired attribute of the customer." Since such "inquiry prompt for providing the personalized promotional recommendation" is "generated based
on condition information including at least the acquired attribute of the customer'' the appeal of the merchandise items available for sale at the store can be improved since the promotional information is provided based on the customer attribute. See, e.g., as-filed paragraph [0088]. Thus, at least the limitations ("acquire an attribute of a customer ... generate the inquiry prompt ... based on condition information including at least the acquired attribute of the customer" is related to the provision of the identified improvement of better promotional appeal through personalization/tailoring according to customer attributes (remarks page 9).
Examiner respectfully disagrees and replies that to the extent there is a claimed improvement to the targeting of prepared promotions to the user via the high-level use of generative AI, this is an improvement in the abstract idea itself (e.g. generating sales promotion information based on customer attributes) and is not an improvement in technology. The high-level transmission of a personalized promotion and a device merely generally links the abstract idea to a particular technological environment and does not amount to a technological improvement. And, at most using generative AI to provide a response is the mere application of generic machine learning to a new data environment. 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.”
Third, Applicant argues that:
Such a solution (specific personalization via identification and use of customer attributes to generate in-store promotional information) to an identified related art problem (lack of appeal to general promotional efforts) in the technology area of in-store promotional devices, systems, and methods, which is reflected in particular recited limitations of the claims, should be considered as eligible subject matter for this additional reason. See, e.g., Ex Parle Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential) (eligible subject matter when specification identified improvement to existing art is reflected in the claims). See also, commissioner's memorandum to the patent examining corps, "Advance notice of change to the MPEP in light of Ex Parle Desjardins," dated December 5, 2025
Examiner respectfully disagrees and replies that that unlike the claims in Ex Parte Desjardins (which recited an improved way of training a machine learning model to protect the model’s knowledge about previous tasks), the high-level user of generative AI to provide a tailored promotion does not reflect an improvement in the machine learning technology itself. At most this amounts to the application of generic machine learning (i.e., a generic generative model) to a new data environment without providing an improvement to the underlying machine learning model.
Fourth, Applicant argues that:
Claim 21 further recites specific connectivity between components as well as a specific manner of inquiry prompt generation/selection "from a prompt database stored in the memory unit." Such additional limitations highlight the tangible and specific components associated with a particular embodiment of the invention providing a solution (use/selection of personalized inquiry prompts) to identified problems in the related art (non-personalized/generic promotional efforts)
Examiner respectfully disagree and replies that a connection between a generic edge device to display promotions (e.g., a smartphone) and server with a communication unit to transmit information is recited at a high level of generality and merely generally links the abstract idea to a particular technological environment. Further selecting prompts based on customer attributes merely further describes the abstract idea.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on (571) 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLAN J WOODWORTH, II/Primary Examiner, Art Unit 3622
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