DETAILED ACTION
Status of Claims
Claims 1-18 are pending. Objections and rejection are recited below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application, filed 29 May 2025, is a continuation of, inter alia, application 18/467,956, now US Patent No. 12,361,462, which has priority from provisional application 60/681,567, filed 16 May 2005. Accordingly, this application is given priority from 16 May 2005.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11 and 13-17, drawn to systems and methods for processing credit, debit or prepaid card transactions where a physical credit/debit card is not present, classified in CPC G06Q, subclass 30/0611. The utility of this invention is directed to adjusting a bid price.
II. Claims 12 and 18, drawn to method for transmitting bid initiating data, classified in CPC G06Q, subclass 30/0611. The utility of this invention is directed to selecting a bid result.
The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as sub combinations disclosed as usable together in a single combination. The sub combinations are distinct from each other if they are shown to be separately usable. In the instant case, a utility of invention I is adjusting a bid price, whereas a utility of invention II is selecting a bid result. It is evident from the features of the two inventions that the inventions are different in scope and utility. See MPEP § 806.05(d). Because these inventions are independent or distinct for the reasons given above, there would be a serious burden on the examiner if restriction were not required because the inventions require a different field of search including non-patent databases, electronic resources, and employing different search queries.
Applicant’s Attorney Tsz Lung Yeung, Registration No. 66,189, elected Group II, without traverse, in a telephone call made on 24 July 2026. Applicant is requested to cancel non-elected claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 12 recites a “the arbitrated price”. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination the term “the arbitrated price” will be interpreted as “an arbitrated price”. Correction is required.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are related to determining “an arbitrated price”.
For purposes of examination, the above claims will be interpreted to the best of the Examiner’s ability unless specified differently above. Appropriate correction is required.
Claim 18 is rejected by way of dependency on a rejected independent claim.
The art rejections below are in view of the 112(b) rejections stated above.
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 12 and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 12 and 18 are directed to a “method” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of receiving data related to a bid which is a fundamental economic practice grouped under a method of organizing human activity.
in prong one of step 2A (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]). Claims recite:
generating a bid initiation data set comprising one or more bid parameters specifying a product or service;
transmitting the bid initiation data set to a remote “system”; and
receiving, from the remote “system”, data relative to the arbitrated price that satisfies the bid initiation data set.
Accordingly, the claim recites an abstract idea (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04(d) Integration of a Judicial Exception Into A Practical Application [R-07.2022]), the additional element of the claim such as:
a customer input device, and
remote computer system over a cellular communication network simultaneously sending and receiving data
represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than apply a computerized system to the method steps corresponding to automating the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See MPEP 2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More [R-07.2022]), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of receiving data related to a bid using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claim 18 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
In claim 18, the features:
a desktop computer,
a mobile device, and
a scanner
add technology to the abstract idea of the independent claim. However, these components are generic technological components, and their use is in its normal, expected, and routine manner. The components are recited at a high level of generality which do not improve another technology or technical field nor the functioning of the computer itself.
Accordingly, none of the dependent claims add a technological solution to the method of organizing human activity in the independent claim.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
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.
Claims 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Cofino et al (US Pub. No. 20040015415 A1) in view of Gathman et al (US Pub. No. 20030069829 A1).
Regarding claim 12, Cofino teaches system and method for shopping for products over a network that provides dynamic pricing of products while allowing the user to select any Web site as a starting point [0016]. He teaches:
a method performed by a customer input device for participating in bid brokering – [0040],
(a) generating a bid initiation data set comprising one or more bid parameters specifying a product or service – [0037], [0040] and [0052];
(b) transmitting the bid initiation data set to a remote computer system … - [0036]; and
(c) receiving, from the remote computer system …, data relative to the arbitrated price that satisfies the bid initiation data set – [0039].
Cofino does not explicitly disclose:
transmitting and receiving the bid initiation data set to and from a remote computer system over a cellular communication network capable of simultaneously sending and receiving data.
However, Gathman teaches a system and method for operating an auction involving a plurality of public-facility patrons using virtual ticket devices [0010]. He teaches the virtual ticket device is an existing smart telephone or cellular communication-enabled personal digital assistant (PDA) [0016]. He teaches an auction control program sending of messages relating to particular auction events so that each person in a targeted facility area receives the message simultaneously [0069].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Cofino’s disclosure to include sending and receiving messages simultaneously over a cellular communication network as taught by Gathman because it automates the system and makes the system cost effective.
Regarding claim 8, Cofino teaches the customer input device being a desktop computer – [0055].
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
WILLNER et al: “METHOD AND SYSTEM FOR LOCAL WIRELESS COMMERCE”, (Canadian Patent Application No. CA 2 326 688 A1),
Jung et al: “Brokerage between buyer and seller agents using Constraint Satisfaction Problem models”, Decisions Support Systems, Volume 28, Issue 4, June 2000, pages 293-304.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692
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