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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “visit history storage unit”, “calculation unit”, and “store derivation unit” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-10 are rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claims are directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of the USPTO, applies to all statutory categories, and is explained in detail below.
When considering subject matter eligibility under 35 U.S.C. §101, (1) 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. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), which is a two-prong inquiry. In prong 1, it must be determined whether the claim recites an abstract idea, a law of nature, or a natural phenomenon, and if so, in prong 2, it must be determined whether the claim recites additional elements that integrate the judicial exception into a practical application. If the claim is determined to be directed to an abstract idea in step 2a, it must additionally be determined in step 2b whether the claim amounts to significantly more than the abstract idea. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. MPEP §2106.04.
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a device to recommend a store, as in independent claim 1 and in the claims that depend therefrom. Such devices fall under the statutory category of “apparatus”. Therefore, the claims are directed to a statutory eligibility category.
Step 2A, prong 1. The invention is directed to a device to recommend a store, which is a sales method and, hence, a Certain Method of Organizing Human Activities. MPEP § 2106.04(a). As such, the claims include an abstract idea. When considering the limitations individually and as a whole the limitations directed to the abstract idea are:
“A store derivation device comprising”:
“a … configured to store an action history of a user”;
“a … configured to calculate a degree of familiarity of the user with a store on the basis of the action history”; and
“a … configured to derive a candidate store that the user is recommended to visit, on the basis of the degree of familiarity”.
This judicial exception is not integrated into a practical application. The elements are recited at a high level of generality, i.e. a generic computing system performing generic functions including generic processing of data. Accordingly, the additional elements do not integrate the abstract into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea. MPEP §2106.04. Thus, under Step 2A, prong 2 of the Mayo framework, the examiner holds that the claims are directed to concepts identified as abstract.
STEP 2B. Because the claims include one or more abstract ideas, the examiner now proceeds to Step 2B of the analysis, in which the examiner considers if the claims include individually or as an ordered combination limitations that are "significantly more" than the abstract idea itself. This includes analysis as to whether there is an improvement to either the "computer itself," "another technology," the "technical field," or significantly more than what is "well-understood, routine, or conventional" in the related arts.
The instant application includes in claim 1 additional limitations to those deemed to be abstract ideas. When taken individually, these limitations are
“visit history storage unit”;
“calculation unit”; and
“store derivation unit”.
In the instant case, claim 1 is directed to above mentioned abstract idea. Technical functions such as sending, receiving, displaying and processing data are common and basic functions in computer technology. The individual limitations are recited at a high level and do not provide any specific technology or techniques to perform the functions claimed.
Looking to MPEP §2106.05(d), based on court decisions well understood, routine and conventional computer functions or mere instruction and/or insignificant activity have been identified to include: Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321,120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TU Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); O/P Techs., /no., v. Amazon.com, Inc., 788 F,3d 1359, 1363, 115 USPQ2d 1090,1093 (Fed. Cir, 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPG2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink," (emphasis added)}; Insignificant intermediate or post solution activity -See Bilski v. Kappos, 581 U.S. 593, 611 -12, 95 USPQ2d 1001,1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity); In Bilski referring to Flook, where Flook determined that an insignificant post-solution activity does not makes an otherwise patent ineligible claim patent eligible. In Bilski, the court added to Flook that pre-solution (such as data gathering) and insignificant step in the middle of a process (such as receiving user input) to be equally ineffective. The specification and Claim does not provide any specific process with respect to the display output that would transform the function beyond what is well understood. Like as found in Electric Power Group, Bilski, the technical process to implement the input and display functions are conventional and well understood.
In addition, when the claims are taken as a whole, as an ordered combination, the combination of steps does not add "significantly more" by virtue of considering the steps as a whole, as an ordered combination. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments using what is well-understood, routine, and conventional in the related arts. The steps are still a combination made to the abstract idea. The additional steps only add to those abstract ideas using well-understood and conventional functions, and the claims do not show improved ways of, for example, an unconventional non-routine functions for authorizing the timing of a payment and to activate a display screen based on a trigger or camera functions that could then be pointed to as being "significantly more" than the abstract ideas themselves. Moreover, examiner was not able to identify any "unconventional" steps, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is well-understood, routine, and conventional in the related arts.
Further, note that the limitations, in the instant claims, are done by the generically recited computing devices. The limitations are merely instructions to implement the abstract idea on a computing device and require no more than a generic computing devices to perform generic functions.
CONCLUSION. It is therefore determined that the instant application not only represents an abstract idea identified as such based on criteria defined by the Courts and on USPTO examination guidelines, but also lacks the capability to bring about "Improvements to another technology or technical field" (Alice), bring about "Improvements to the functioning of the computer itself" (Alice), "Apply the judicial exception with, or by use of, a particular machine" (Bilski), "Effect a transformation or reduction of a particular article to a different state or thing" (Diehr), "Add a specific limitation other than what is well-understood, routine and conventional in the field" (Mayo), "Add unconventional steps that confine the claim to a particular useful application" (Mayo), or contain "Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment" (Alice), transformed a traditionally subjective process performed by humans into a mathematically automated process executed on computers (McRO), or limitations directed to improvements in computer related technology, including claims directed to software (Enfish).
Dependent claims 2-10, which impose additional limitations, also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 2-10, these dependent claims have also been reviewed with the same analysis as independent claim 1. The dependent claims have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1; where all claims are directed to the same abstract idea, "addressing each claim of the asserted patents [is] unnecessary." Content Extraction &. Transmission LLC v, Wells Fargo Bank, Natl Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims are directed towards patent eligible subject matter, applicant is invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 11,605,117 B1 (hereinafter “Zavaleta”) in view of U.S. Patent Number 11,372,876 B1 (hereinafter “Drozd”).
With respect to claim 1, Zavaleta discloses
“A store derivation device comprising”: Zavaleta, abstract;
“a visit history storage unit configured to store an action history of a user”; Zavaleta 4:62-5:5 (user content consumption history, transaction history, and time and location history are stored);
“a calculation unit configured to calculate a degree of familiarity of the user with a store on the basis of the action history”; Zavaleta 2:24-37, 4:62-5:5 (familiarity score is calculated);
“a … [content] derivation unit configured to derive a candidate … [content] that the user is recommended to … [purchase], on the basis of the degree of familiarity”. Zavaleta 2:24-37, 4:62-5:5 (content is recommended based on familiarity score).
Zavaleta does not explicitly disclose recommending a store to visit. Drozd discloses
“a store derivation unit configured to derive a candidate store that the user is recommended to visit, on the basis of the degree of familiarity”. Drozd 1:39-2:22 (business is recommended based on familiarity and location).
Both Zavaleta and Drozd relate to providing recommendations to consumers. Zavaleta, abstract; Drozd, abstract. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the store recommendation feature as taught by Drozd in the method of Zavaleta with the motivation of providing consumers with useful recommendations to unfamiliar businesses. Drozd 2:47-54.
With respect to claim 2, Zavaleta discloses
“wherein the calculation unit is configured to calculate a degree of familiarity on the basis of the number of actions and the number of elapsed days after an action for each store indicated in the visit history, and derive the candidate store on the basis of the degree of familiarity”. Zavaleta 2:24-37, 4:62-5:5 (familiarity is calculated based on number of times content consumed, as well as time data).
With respect to claim 3, Zavaleta discloses
“wherein the degree of familiarity is calculated such that an evaluation becomes lower as the number of elapsed days becomes greater”. Zavaleta 2:24-37, 4:62-5:5 (if content is rarely consumed it will have a lower familiarity score).
With respect to claim 4, Drozd discloses
“wherein the store derivation unit is configured to derive a nearby store near the candidate store as a candidate store”. Drozd 1:60-2:22 (nearby businesses can be recommended).
With respect to claim 5, Zavaleta discloses
wherein the … [content] derivation unit is configured to set a value obtained by multiplying the degree of familiarity with the candidate … [content] by a prescribed coefficient as a degree of familiarity with the … [content] and derive … [content] as a candidate … [content] on the basis of the degree of familiarity”. Zavaleta 2:24-37, 4:62-5:5 (familiarity score is multiplied by other factors to calculate recommendation).
Drozd discloses
“… degree of familiarity with the nearby store and derive several stores among nearby stores as a candidate store on the basis of the degree of familiarity”. Drozd 1:60-2:22 (nearby businesses can be recommended).
With respect to claim 6, Drozd discloses
“wherein the action of the user is a visit to a store or browsing of store information”. Drozd 6:51-7:6 (visit to store).
With respect to claim 8, Zavaleta discloses
“wherein the action of the user is a visit to a store and browsing of store information, and the degree of familiarity is calculated on the basis of the visit to the store and the browsing of the store information”. Zavaleta 2:24-37, 4:62-5:5 (familiarity is calculated based on browsing and purchasing of content, such as in an online or physical store).
With respect to claim 9, Drozd discloses
“wherein the degree of familiarity is calculated such that a value is greater for a store that user has visited”. Drozd 1:39-2:22 (familiarity is based on number of visits to a store’s location; each visit increases that familiarity).
With respect to claim 10, Zavaleta discloses
“wherein the degree of familiarity is calculated on the basis of a value based on the browsing of the store information equal to or greater than a prescribed value”. Zavaleta 3:22-40 (familiarity is based on consumption of content, which is a form of browsing; a minimum threshold can optionally be utilized).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zavaleta in view of Drozd as applied to claims 1-6 and 8-10 above, and further in view of Yusheng, Li, et al., "User Familiar Degree-Aware Recommender System", 2015 IEEE Int'l Conf. on Web Services pp. 385-91, 978-1-4673-7272-5/15 (Year: 2015) (hereinafter “Yusheng”).
With respect to claim 7, Zavaleta discloses calculating the degree of familiarity. Zavaleta 2:24-37, 4:62-5:5 (familiarity is calculated based on number of times content consumed, as well as time data).
Zavaleta and Drozd do not explicitly disclose evaluating recommendations to users. Yusheng discloses evaluating recommendations based on the identity of the recommender. Yusheng, page 385. Zavaleta in view of Drozd and further in view of Yusheng therefore suggests “wherein, when the action of the user is browsing of store information, the degree of familiarity with the store is calculated according to whether the browsing is browsing for a store that has been recommended to the user”.
Zavaleta, Drozd, and Yusheng all relate to providing recommendations to consumers. Zavaleta, abstract; Drozd, abstract; Yusheng, abstract. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the recommender identity feature as taught by Yusheng in the method of Zavaleta/Drozd with the motivation of improving recommendation accuracy. Yusheng, abstract.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Application Publication 2023/0099665 A1 (hereinafter “Furukawa”) discloses calculating customer familiarity with items. Furukawa ¶¶ 0041, 0051.
U.S. Patent Application Publication 2017/0337613 A1 (hereinafter “Sonoda”) discloses calculating customer familiarity with items. Sonoda, equations 1, 2, 5.
U.S. Patent Application Publication 2016/0275546 A1 (hereinafter “Kitigishi”) discloses basing the content of a recommendation on the familiarity score. Kitigishi ¶ 0070.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN D CIVAN whose telephone number is (571)270-3402. The examiner can normally be reached Monday-Thursday 8-6:30.
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, Jeffrey A Smith can be reached at (571) 272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ETHAN D. CIVAN
Primary Examiner
Art Unit 3688
/ETHAN D CIVAN/Primary Examiner, Art Unit 3688
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