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 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 1-20 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 method of recommending products, as in independent claim 1 and in the claims that depend therefrom. Such methods fall under the statutory category of “process”. Therefore, the claims are directed to a statutory eligibility category.
Step 2A, prong 1. The invention is directed to a method of recommending products, 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 method comprising”:
“determining a plurality of parameters, via a …, indicative of individual-specific measurements pertaining to an article”;
“determining at least one fit recommendation for the user based on the plurality of parameters”;
“determining one or more product recommendations for the user based on the at least one fit
recommendation”; and
“outputting, via the …, the at least one fit recommendation and the one or more product recommendations to the …”; and
“training a … to enhance subsequent fit recommendations and subsequent product recommendations”.
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
“graphical user-interface of a user device”; and
“neural network”.
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 2-7, which impose additional limitations, also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. Claim 6 recites a “database”, which is a generic element. In reference to claims 2-7, 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 8 recites a “memory” and a “processor”. These are generic elements. Claim 8 is otherwise similar to claim 1 and is rejected for the same reasons. Claims 9-14 depend from claim 8, are similar to claims 2-7, and are rejected for the same reasons. Claim 15 recites “computer-readable media”. This is a generic element. Claim 15 is otherwise similar to claim 1 and is rejected for the same reasons. Claims 16-20 depend from claim 15, are similar to claims 2-7, and are rejected for the same reasons.
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, 2, 7-9, 14-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2019/0122424 A1 (hereinafter “Moore”) in view of U.S. Patent Number 10,922,616 B1 (hereinafter “Liu”).
With respect to claim 1, Moore discloses
“A method comprising”: Moore, abstract;
“determining a plurality of parameters, via a graphical user-interface of a user device, indicative of individual-specific measurements pertaining to an article”; Moore ¶ 0032 (scanned body images and manually inputted measurements are received);
“determining at least one fit recommendation for the user based on the plurality of parameters”; Moore ¶ 0061 (best fit fiducial map is determined);
“determining one or more product recommendations for the user based on the at least one fit
Recommendation”; Moore ¶ 0061 (products are recommended based on best fit fiducial map); and
“outputting, via the graphical user-interface, the at least one fit recommendation and the one or more product recommendations to the graphical user-interface”. Moore ¶ 0061 (recommended products are output to user).
Moore does not explicitly disclose using a neural network to update recommendations. Liu discloses
“training a neural network to enhance subsequent fit recommendations and subsequent product recommendations”. Liu 2:56-3:40, 3:53-4:10 (neural network is trained and updated with additional data to provide improved fit recommendations).
Moore and Liu both relate to fitting recommendations. Moore, abstract; Liu, 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 neural network feature as taught by Liu in the method of Moore with the motivation of improving clothing size recommendations. Liu 1:7-27.
With respect to claims 2, 9, and 16, Moore discloses
“further comprising: performing an analysis on the plurality of parameters to determine the at least one fit recommendation”. Moore ¶¶ 0047, 0050 (fiducial map of user is constructed using scanned images and inputted measurements; fiducial map is compared to other stored fiducial maps; statistical techniques and machine learning models are then applied).
With respect to claims 7, 14, and 20, Moore discloses
“wherein determining the plurality of parameters comprises: capturing, via the user device, at least one of a photo or a video of an individual associated with the individual-specific measurements”, Moore ¶¶ 0032, 0034 (photo can be captured using user’s smartphone); and
“identifying a bodily shape of the individual using the at least one of the photo or the video, wherein the plurality of parameters are determined based on at least the bodily shape”. Moore ¶ 0033 (best fit body image is selected).
With respect to claim 8, Moore discloses
"one or more memories having computer-readable instructions stored therein"; Moore ¶ 0119; and "one or more processors configured to execute the computer-readable instructions to". Moore ¶ 0118. Claim 8 is otherwise rejected on the same basis as claim 1.
With respect to claim 15, Moore discloses
"One or more non-transitory computer-readable media comprising computer-readable instructions, which when executed by one or more processors of a system, cause the system to". Moore ¶ 0119. Claim 15 is otherwise rejected on the same basis as claim 1.
Claims 3-6, 10-13, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Moore in view of Liu as applied to claims 1, 2, 7-9, 14-16, and 20 above, and further in view of U.S. Patent Application Publication 2017/0039622 A1 (hereinafter “Chen”).
With respect to claims 3, 10, and 17, Moore discloses
"wherein a first of the plurality of numerical analyses comprises"; Moore ¶ 0052 (a plurality of numerical analyses are utilized, such as K-nearest neighbor);
"determining an average of the plurality of numerical values"; Moore ¶ 0052 (values are averaged); and "determining a first fit recommendation for the user based on the average of the plurality of numerical values". Moore ¶ 0052 (best fit is determined based on averaged values).
Moore does not explicitly disclose identifying previous product recommendations. Chen discloses
"identifying product recommendations that have been made previously in response to receiving the plurality of parameters, each of the product recommendations having at least one associated size"; Chen ¶¶ 0012, 0049 (algorithm is updated based on actual sales data; user measurements and clothing sizes are associated and used in recommendations); and
"determining a numerical value associated with the at least one associated size for each of the product recommendations to yield a plurality of numerical values". Chen ¶ 0049 (numerical value such as waist sizes are determined and averaged together using scatter plot).
Both Moore and Chen relate to recommending products. Moore, abstract; Chen, 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 previous product recommendation feature as taught by Chen in the method of Moore/Liu with the motivation of improving recommendation accuracy while decreasing the amount of initial training required. Chen ¶¶ 0004, 0008.
With respect to claims 4, 11, and 18, Chen discloses
“wherein the analysis comprises: performing a multi-neighborhood validation of the first fit recommendation; and determining a second fit recommendation for the user based on the multi-neighborhood validation”; Chen ¶¶ 0012, 0049 (use of scatter plot is multi- neighborhood validation; second recommendation is based on updated algorithm);
“wherein the multi-neighborhood validation comprises: performing a look-up process to identify at least two nearest neighboring fits of a fit associated with the plurality of parameters; determining a numerical value of each of the at least two nearest neighboring fits; determining an average of numerical values of the at least two nearest neighboring fits; and determining the second fit recommendation based on the average of the numerical values of the at least two neighboring fits”. Chen ¶¶ 0012, 0049 (scatter plot is used to look up and average values).
With respect to claims 5, 12, and 19, Chen discloses
“wherein the analysis comprises: determining a numerical power associated with each of the first fit recommendation and the second fit recommendation; and determining at least one third fit recommendation for the user based on the numerical power of at least one of the first fit recommendation and the second fit recommendation, wherein the at least one fit recommendation is determined based on an average of the first fit recommendation, the second fit recommendation, and the third fit recommendation”. Chen ¶¶ 0012, 0049 (multiple values, such as weight and bust measurements are combined to determine numerical power and recommend product).
With respect to claims 6 and 13, Chen discloses
“further comprising: monitoring transaction activity in association with the one or more product
recommendations; collecting a plurality of statistics associated with the transaction; and updating one or more databases of product recommendations using the statistics, the one or more databases of product recommendations being used for the analysis”. Chen ¶¶ 0012-0015, 0049 (live sales activity is tracked with respect to recommendations, including sizes, sales and returns, algorithm is updated; and recommendations are made with updated algorithm).
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Number 12,307,497 B2 (hereinafter “Jones”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the present application differ from claims 1-20 of Jones in that the present claims are broader in lacking the tracking data step recited in the independent claims of Jones. The present claims are therefore broader than and obvious over the claims of Jones.
Conclusion
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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