DETAILED ACTION
Status of Claims
• The following is an office action in response to the communication filed 12/29/2025.
• Claims 3 and 5 have been amended.
• Claims 1-8 are currently pending and have been examined.
Information Disclosure Statement
Information Disclosure Statements received 04/30/2025 has been reviewed and considered.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of Application No. JP2016-147137, filed on 07/27/2016 has been received.
The examiner acknowledges that the instant application is a national stage entry of PCT/JP2017/022125, filed 06/15/2017 and that the instant application is a continuation of US Patent No. 11625766, filed 01/18/2019 and US Patent No. 12299734, filed 02/23/2023.
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 .
Double Patenting
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.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 15 of U.S. Patent No. 11625766 B2 (referred to as “‘766”).
‘766 teaches:
Claim 1
‘766 [Claim 1]
An electronic apparatus comprising:
An electronic apparatus comprising:
an input means for receiving an operational instruction from a user; and
receiving an operational instruction from a user…user activation of the first, second, or third operational instruction input areas
a display means for selectively displaying a first image in which information about a product registered in a first classification by a server is displayed, a second image in which information about a product registered in a second classification by the user is displayed, or a third image in which information about a product registered in a third classification by the user is displayed,
a first screen in which information about a product registered in a first classification, which is a classification of a product recommended by a server, is displayed, a second screen in which information about a product registered in a second classification, which is a classification of a product under purchase consideration by the user, is displayed, a third screen in which information about a product registered in a third classification, which is a classification of a product purchased by the user, is displayed…selectively displaying the first, second, or third screens in response to user activation of the first, second, or third operational instruction input areas
for, when a first product registered in the first classification is newly registered in the second classification on a basis of an operational instruction via the input means from the user, displaying the first image in which information about the first product is included, and the second image in which information about the first product is added,
selectively displaying the first, second, or third screens in response to user activation of the first, second, or third operational instruction input areas…upon selection of the first registering operation instruction input area, to register a first product registered in the first classification as newly registered in the second classification, wherein the first registering operation instruction input area is displayed
and for, when a second product registered in the second classification is newly registered in the third classification, displaying the second image in which information about the second product is deleted, and the third image in which information about the second product is added
selectively displaying the first, second, or third screens in response to user activation of the first, second, or third operational instruction input areas… a first purchased operation instruction input area and the processor is further caused, upon selection of the first purchased operation instruction input area, to register a second product in the second classification as newly registered in the third classification different than the first classification and the second classification and to unregister the second product from the second classification
Dependent claims 2-6 are anticipated by ‘766 as follows:
Instant claims
‘766
Claim 2
Claims 1 and 2
Claim 3
Claims 1 and 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 1
In regards to claim 7, claim 7 is directed to a method. Claim 7 recites limitations that are substantially parallel in nature to those addressed above for claim 1 which is directed towards an apparatus. The combined method of ‘766/Cohen teaches the limitations of claim 1 as noted above. ‘766 further teaches a display method (‘766: [Claim 15]). Claim 7 is therefore rejected for the reasons set forth above in claim 1 and in this paragraph.
In regards to claim 8, claim 8 is directed to a medium. Claim 8 recites limitations that are substantially parallel in nature to those addressed above for claim 1 which is directed towards an apparatus. The combined method of ‘766/Cohen teaches the limitations of claim 1 as noted above. ‘766 further teaches a program that is executed by an electronic apparatus having an input unit and a display unit (‘766: [Claim 1]). Claim 8 is therefore rejected for the reasons set forth above in claim 1 and in this paragraph.
Claim Interpretation
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. Such claim limitations are: “input means…” and “display means…” (claims 1-3) with the functional language “configured to,” which are not preceded by a structural modifier. 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.
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. In light of Specification [0031-0032], the means are interpreted to be software operating on hardware, where the input means may be an input touch panel or equivalent and the display means may be a graphical display unit of a computing device.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1-6 are directed to a machine, claim 7 is directed to a process, and claim 8 is directed to a manufacture. Therefore, claims 1-8 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
receiving an operational instruction from a user; and
selectively displaying a first image in which information about a product registered in a first classification is displayed, a second image in which information about a product registered in a second classification by the user is displayed, or a third image in which information about a product registered in a third classification by the user is displayed,
for, when a first product registered in the first classification is newly registered in the second classification on a basis of an operational instruction from the user, displaying the first image in which information about the first product is included, and the second image in which information about the first product is added, and
for, when a second product registered in the second classification is newly registered in the third classification, displaying the second image in which information about the second product is deleted, and the third image in which information about the second product is added.
The above limitations recite the concept of tracking and displaying registration information. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Specifically, tracking registration is for the purposes of purchase management of products and is a sales activity. This is further illustrated in paragraph [0001] of the Specification, describing that the invention allows a user to perform purchase management of products. Independent claims 7-8 recite similar limitations as claim 1 and, as such, fall within the same identified grouping of abstract ideas. Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claims 1 and 7-8 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claims 1 and 7-8 recite additional elements, such as an electronic apparatus, an input means, a display means, a server, and a program that is executed by an electronic apparatus having an input unit and a display unit. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claims 1 and 7-8 merely invoke such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claims 1 and 7-8 merely recite a commonplace business method (i.e., tracking and displaying registration information) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claims 1 and 7-8 generally link the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claims 1 and 7-8 specifying that the abstract idea of tracking and managing registration information is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claims 1 and 7-8 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1 and 7-8 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1 and 7-8 are “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claims 1 and 7-8, these claims recite additional elements, such as an electronic apparatus, an input means, a display means, a server, and a program that is executed by an electronic apparatus having an input unit and a display unit. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claims 1 and 7-8 are manual processes, e.g., receiving information, analyzing information, sending information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claims 1 and 7-8 merely recite the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claims specifying that the abstract idea of tracking and displaying registration information is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claims 1 and 7-8 simply convey the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claims 1 and 7-8 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 2-6, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they recite an abstract idea, are not integrated into a practical application, and do not add “significantly more” to the abstract idea. More specifically, dependent claims 2-6 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they further recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Dependent claims 2-6 fail to identify additional elements and as such, are not indicative of integration into a practical application. As such, under Step 2A, dependent claims 2-6 are “directed to” an abstract idea. Similar to the discussion above with respect to claims 1 and 7-8, dependent claims 2-6 analyzed individually and as an ordered combination, invoke such additional elements as a tool to perform the abstract idea and merely indicate a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, and therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Accordingly, under the Alice/Mayo test, claims 1-8 are ineligible.
Claim Rejections - 35 USC § 102
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 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. 102 that forms the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless —
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Cohen et al. (US 8195529 B1), hereinafter Cohen.
In regards to claim 1, Cohen discloses an electronic apparatus (Cohen: [abstract]) comprising:
an input means for receiving an operational instruction from a user (Cohen: Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user;” Col. 9, Ln. 48-Col. 10, Ln. 5 – “controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”);
a display means for selectively displaying a first image in which information about a product registered in a first classification by a server is displayed, a second image in which information about a product registered in a second classification by the user is displayed, or a third image in which information about a product registered in a third classification by the user is displayed (Cohen: Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user”; Col. 8, Ln. 63-65 and Fig. 6c – “displayed are system-supplied recommendations, such as recommendations 626 and 628, based on user-provided information regarding the targeted person”; Col. 9, Ln. 48-Col. 10, Ln. 5 – “controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”; Col. 2, Ln. 64-64 and Fig. 3 – “a gift list server suitable for use in the networked environment”; Col. 9, Ln. 48-Col. 10, Ln. 5 and Fig. 9 – “FIG. 9 is a pictorial diagram of an illustrative gift list manager 900 for managing a user's gift lists as displayed by a browser 920…The illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift)…each gift list created by the user is displayed, as indicated by gift lists 910-914, and controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”; (Examiner Note: the recommendations on the gift list are the first image, the gift list is the second image, and the purchase history is the third image);
for, when a first product registered in the first classification is newly registered in the second classification on a basis of an operational instruction via the input means from the user, displaying the first image in which information about the first product is included, and the second image in which information about the first product is added (Cohen: Col. 8, Ln. 2-13 – “as part of presenting information to a user in regard to one or more gift lists that the user has created, and in addition to listing those items that have been placed on the gift list by the user, the network shopping service 110 may also evaluate the gift list information 500 to identify additional items that the user might want to purchase for the targeted person. These recommended items may or may not be stored with the gift list, though if a user likes one of the recommendations, an actionable control is typically provided to store the recommended item on the gift list as a gift list item”), and
for, when a second product registered in the second classification is newly registered in the third classification, displaying the second image in which information about the second product is deleted, and the third image in which information about the second product is added (Cohen: Col. 8, Ln. 65-Col. 9, Ln. 3 and Fig. 6c – “In this illustrative display, the user can add the gift item 606 to an electronic cart via control 622, which will take the item off the gift list and place it in the user's purchase history, remove the gift item from the gift list via control 624”; Col. 9, Ln. 53-56 and Fig. 9 – “illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift) and includes a link 903 to associate purchased items to gift lists”).
In regards to claim 7, Cohen discloses a display method comprising (Cohen: [abstract]; Col. 8, Ln. 15-20):
selectively displaying a first image in which information about a product registered in a first classification by a server is displayed, a second image in which information about a product registered in a second classification by a user is displayed, or a third image in which information about a product registered in a third classification by the user is displayed (Cohen: Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user”; Col. 8, Ln. 63-65 and Fig. 6c – “displayed are system-supplied recommendations, such as recommendations 626 and 628, based on user-provided information regarding the targeted person”; Col. 9, Ln. 48-Col. 10, Ln. 5 – “controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”; Col. 2, Ln. 64-64 and Fig. 3 – “a gift list server suitable for use in the networked environment”; Col. 9, Ln. 48-Col. 10, Ln. 5 and Fig. 9 – “FIG. 9 is a pictorial diagram of an illustrative gift list manager 900 for managing a user's gift lists as displayed by a browser 920…The illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift)…each gift list created by the user is displayed, as indicated by gift lists 910-914, and controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”; (Examiner Note: the recommendations on the gift list are the first image, the gift list is the second image, and the purchase history is the third image);
when a first product registered in the first classification is newly registered in the second classification on a basis of an operational instruction from the user, displaying the first image in which information about the first product is included, and the second image in which information about the first product is added (Cohen: Col. 8, Ln. 2-13 – “as part of presenting information to a user in regard to one or more gift lists that the user has created, and in addition to listing those items that have been placed on the gift list by the user, the network shopping service 110 may also evaluate the gift list information 500 to identify additional items that the user might want to purchase for the targeted person. These recommended items may or may not be stored with the gift list, though if a user likes one of the recommendations, an actionable control is typically provided to store the recommended item on the gift list as a gift list item”; Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user;” Col. 9, Ln. 48-Col. 10, Ln. 5 – “controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”), and
when a second product registered in the second classification is newly registered in the third classification on a basis of an operational instruction from the user, displaying the second image in which information about the second product is deleted, and the third image in which information about the second product is added (Cohen: Col. 8, Ln. 65-Col. 9, Ln. 3 and Fig. 6c – “In this illustrative display, the user can add the gift item 606 to an electronic cart via control 622, which will take the item off the gift list and place it in the user's purchase history, remove the gift item from the gift list via control 624”; Col. 9, Ln. 53-56 and Fig. 9 – “illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift) and includes a link 903 to associate purchased items to gift lists”).
In regards to claim 8, Cohen discloses a program that is executed by an electronic apparatus having an input unit and a display unit, the program comprising (Cohen: Col. 5, Ln. 36-51; Col. 8, Ln. 15-20):
causing the display unit to selectively display a first image in which information about a product registered in a first classification by a server is displayed, a second image in which information about a product registered in a second classification by a user is displayed, or a third image in which information about a product registered in a third classification by the user is displayed (Cohen: Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user”; Col. 8, Ln. 63-65 and Fig. 6c – “displayed are system-supplied recommendations, such as recommendations 626 and 628, based on user-provided information regarding the targeted person”; Col. 9, Ln. 48-Col. 10, Ln. 5 – “controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”; Col. 2, Ln. 64-64 and Fig. 3 – “a gift list server suitable for use in the networked environment”; Col. 9, Ln. 48-Col. 10, Ln. 5 and Fig. 9 – “FIG. 9 is a pictorial diagram of an illustrative gift list manager 900 for managing a user's gift lists as displayed by a browser 920…The illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift)…each gift list created by the user is displayed, as indicated by gift lists 910-914, and controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”; (Examiner Note: the recommendations on the gift list are the first image, the gift list is the second image, and the purchase history is the third image);
causing the display unit to, when a first product registered in the first classification is newly registered in the second classification on a basis of an operational instruction via the input unit from the user, display the first image in which information about the first product is included, and the second image in which information about the first product is added (Cohen: Col. 8, Ln. 2-13 – “as part of presenting information to a user in regard to one or more gift lists that the user has created, and in addition to listing those items that have been placed on the gift list by the user, the network shopping service 110 may also evaluate the gift list information 500 to identify additional items that the user might want to purchase for the targeted person. These recommended items may or may not be stored with the gift list, though if a user likes one of the recommendations, an actionable control is typically provided to store the recommended item on the gift list as a gift list item”; Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user;” Col. 9, Ln. 48-Col. 10, Ln. 5 – “controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”); and
causing the display unit to, when a second product registered in the second classification is newly registered in the third classification on a basis of an operational instruction via the input unit from the user, display the second image in which information about the second product is deleted, and the third image in which information about the second product is added (Cohen: Col. 8, Ln. 65-Col. 9, Ln. 3 and Fig. 6c – “In this illustrative display, the user can add the gift item 606 to an electronic cart via control 622, which will take the item off the gift list and place it in the user's purchase history, remove the gift item from the gift list via control 624”; Col. 9, Ln. 53-56 and Fig. 9 – “illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift) and includes a link 903 to associate purchased items to gift lists”).
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen, in view of Lawrence et al. (US 20150154686 A1), hereinafter Lawrence.
In regards to claim 2, Cohen discloses the apparatus of claim 1. Cohen further discloses wherein the display means displays the first image, the second image, and the third image (Cohen: Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user”; Col. 8, Ln. 63-65 and Fig. 6c – “displayed are system-supplied recommendations, such as recommendations 626 and 628, based on user-provided information regarding the targeted person”; Col. 9, Ln. 48-Col. 10, Ln. 5 – “controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”; Col. 2, Ln. 64-64 and Fig. 3 – “a gift list server suitable for use in the networked environment”; Col. 9, Ln. 48-Col. 10, Ln. 5 and Fig. 9 – “FIG. 9 is a pictorial diagram of an illustrative gift list manager 900 for managing a user's gift lists as displayed by a browser 920…The illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift)…each gift list created by the user is displayed, as indicated by gift lists 910-914, and controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”; (Examiner Note: the recommendations on the gift list are the first image, the gift list is the second image, and the purchase history is the third image; the operational instruction on the first area is addition of an item to a gift list which causes recommendation display, second area is “saved gifts” link in Fig. 9, and third area is “History” link in Fig. 9),
yet Cohen does not explicitly disclose displaying in such a way that switching among the images can be performed by using a tab display. However, Lawrence teaches a shopping list interface (Lawrence: [abstract]), including displaying in such a way that switching among the images can be performed by using a tab display (Lawrence: [0034] and Fig. 3 – “In addition to building a gift registry through the "registry builder" tab 310b, in some implementations, the user selects the "what's new" tab 310a to review new baby products available for purchase or the "my items" tab 310c…products presented upon selection of the "my items" tab 310c include…other user data such as previous purchase behavior” (Examiner note: 310a, , and 310c are all tabs in Fig. 3).
It would have been obvious to one of ordinary skill in the art to include in the shopping list apparatus, as taught by Cohen, the ability for displaying in such a way that switching among the images can be performed by using a tab display, as taught by Lawrence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. It further would have been obvious to one of ordinary skill in the art at the time of filing to modify Cohen, to include the teachings of Lawrence, in order to review products that are new or purchased (Lawrence: [0034]).
In regards to claim 3, Cohen/Lawrence teaches the apparatus of claim 2. Cohen further discloses wherein the display means displays a fourth image in which detailed information about each of products registered in the first classification is displayed, a fifth image in which detailed information about each of products registered in the second classification is displayed, and a sixth image in which detailed information about each of products registered in the third classification is displayed (Cohen: Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user. FIG. 6C illustrates an illustrative gift list… displayed are system-supplied recommendations, such as recommendations 626 and 628, based on user-provided information regarding the targeted person;” Col. 9, Ln. 1-3 – “control 624, or simply return to shopping via control 630;” Col. 9, Ln. 48-Col. 10, Ln. 5 – “FIG. 9 is a pictorial diagram of an illustrative gift list manager 900 for managing a user's gift lists as displayed by a browser 920…The illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift) and includes a link 903 to associate purchased items to gift lists”; Col. 5, Ln. 57-65 – “the network shopping service 110 may comprise one or multiple servers;” Col. 9, Ln. 48-Col. 10, Ln. 5 – “FIG. 9 is a pictorial diagram of an illustrative gift list manager 900 for managing a user's gift lists as displayed by a browser 920…The illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift)…each gift list created by the user is displayed, as indicated by gift lists 910-914, and controls are provided to…view gifts/items on the list…and view a purchase history of items related to this gift list”; Col. 8, Ln. 16-20 and Fig. 6B – “FIGS. 6A and 6B are pictorial diagrams illustrating browser displays 602 showing an item 606 offered for sale by a typical vendor via e-commerce activities. Moreover, FIGS. 6A and 6B further illustrate at least one path for how a user might add the browsed item to a gift list”).
In regards to claim 4, Cohen/Lawrence teaches the apparatus of claim 3. Cohen further discloses wherein in each of the fifth and sixth images, information which is not included in the fourth image and which the user can input is included (Cohen: Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user. FIG. 6C illustrates an illustrative gift list;” Col. 9, Ln. 1-3 – “control 624, or simply return to shopping via control 630;” Col. 9, Ln. 48-Col. 10, Ln. 5 – “FIG. 9 is a pictorial diagram of an illustrative gift list manager 900 for managing a user's gift lists as displayed by a browser 920…The illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift) and includes a link 903 to associate purchased items to gift lists” (Examiner Note: 624 and 603 are the additional information in the fifth image; 903 is the additional information in the sixth image. The fourth screen does not have, in the case of the fifth image, 624 and 603, and in the case of the sixth image, 903, and accordingly these components are not included in the fourth screen)).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen, in view of Lawrence, in view of Szulczewski et al. (US 20160328727 A1), hereinafter Szulczewski.
In regards to claim 5, Cohen/Lawrence teaches the apparatus of claim 4. Cohen further discloses wherein the number of items of information in the sixth image which the user can input and the number of items of information in the fifth image which the user can input (Cohen: Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user. FIG. 6C illustrates an illustrative gift list;” Col. 9, Ln. 1-3 – “control 624, or simply return to shopping via control 630;” Col. 9, Ln. 48-Col. 10, Ln. 5 – “FIG. 9 is a pictorial diagram of an illustrative gift list manager 900 for managing a user's gift lists as displayed by a browser 920…The illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift) and includes a link 903 to associate purchased items to gift lists”),
yet Cohen does not explicitly disclose the number of items of information in the sixth image is larger than the number of items in the fifth image.
However, Szulczewski teaches shopping interfaces (Szulczewski: [0048]), including the number of items of information in the sixth image is larger than the number of items in the fifth image (Szulczewski: [0048] and Fig. 7A – “FIGS. 7A-7D illustrate user interfaces through which users can submit or view ratings of items (e.g., products) the users purchased through the online marketplace implemented by the server system 122. In some embodiments, the user interfaces illustrated in FIGS. 7A-7D may be presented to the user as part of method for submitting or viewing ratings of items. FIG. 7A illustrates an example item order history page (e.g., product order history page) 701 presented by the client application 152. In response to user selection of an "Edit Rating" icon 705, the client application 152 presents a rating page 711, as illustrated in FIG. 7B” (Examiner note: Fig. 7A displays 4 information items the user may input, compare this to Fig. 6C, for example, which has fewer information items the user may input).
It would have been obvious to one of ordinary skill in the art to include in the shopping list apparatus, as taught by Cohen/Lawrence, the ability that the number of items of information in the sixth image is larger than the number of items in the fifth image, as taught by Szulczewski, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. It further would have been obvious to one of ordinary skill in the art at the time of filing to modify Cohen/Lawrence, to include the teachings of Szulczewski, in order to allow another user to view reviews (Szulczewski: [0049]).
In regards to claim 6, Cohen/Lawrence/Szulczewski teaches the apparatus of claim 5. Cohen further discloses wherein a relative position on the fourth image of an image element which is included in the fourth image and which can be selected by the user in order to allow the user to newly register a product registered in the first classification in the second classification differs from a relative position on the fifth image of an image element which is included in the fifth image and which can be selected by the user in order to allow the user to newly register a product registered in the second classification in the third classification (Cohen: Col. 8, Ln. 16-20 and Fig. 6B – “FIGS. 6A and 6B are pictorial diagrams illustrating browser displays 602 showing an item 606 offered for sale by a typical vendor via e-commerce activities. Moreover, FIGS. 6A and 6B further illustrate at least one path for how a user might add the browsed item to a gift list” Col. 8, Ln. 57-67 and Fig. 6c – “once an item is added to an existing gift list, that gift list is displayed to the user. FIG. 6C illustrates an illustrative gift list;” Col. 9, Ln. 1-3 – “control 624, or simply return to shopping via control 630;” Col. 9, Ln. 48-Col. 10, Ln. 5 – “FIG. 9 is a pictorial diagram of an illustrative gift list manager 900 for managing a user's gift lists as displayed by a browser 920…The illustrative gift list manager 900 includes an area 902 for associating purchased items with a gift list (or not purchased as a gift) and includes a link 903 to associate purchased items to gift lists” (Examiner Note: the image element of adding an item to a registry/wish list/gift list of Fig. 6A is the image element of the fourth screen and the image element of the fifth image is 622, which differs in relative position)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vallery et al. (US 20140046794 A1) teaches a shopping interface. A user may receive product recommendations. A user may also drag products into a shopping wish list. The wishlist contains product information.
Kim (US 20150120417 A1) teaches a shopping interface. The interface includes a “purchased shop” representing a shop from which an item is purchased and an “interest shop.” The different shop classifications are selectively displayed upon selection of a tab.
NPL reference U teaches wishlist tools. A user can add a button to a browser toolbar to add items to a wish list from any website. Items can be dragged and dropped into lists.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA MAE MITROS whose telephone number is (571)272-3969. The examiner can normally be reached Monday-Friday from 9:30-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA MAE MITROS/Examiner, Art Unit 3689
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