DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 is rejected under 35 U.S.C. 101. Claim(s) 1 is directed to a statutory method under Step 1 of the eligibility analysis. However, the claims are further directed toward a judicial exception under Step 2A Prong One of the eligibility analysis, namely an abstract idea. Under Step 2A Prong Two of the eligibility analysis, the claim(s) does/do not include additional elements to integrate the exception into a practical application of that exception. Under Step 2B of the eligibility analysis, the claims are not sufficient to amount to significantly more than the judicial exception because nothing in the asserted claim purports to improve the functioning of the computer itself or effect an improvement in any other technology or technical field. The claim(s) is/are directed to the abstract idea of determining a location of the user; identifying at least two providers located near the user; computing for each of the at least two providers a total cost of delivery; receiving a request for one of the at least two providers to deliver; and facilitating delivery, which is considered to be a mental process. The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011), (see MPEP 2106.04(a)(2) III. MENTAL PROCESSES). Claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016).
In this case a human would obviously select the provider with a lower total delivery cost. This is similar to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011). Claims to "comparing BRCA sequences and determining the existence of alterations," where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 763, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014) (see MPEP 2106.04(a)(2).
The additional element(s) or combination of elements in the claim(s) other than the abstract
idea per se include: an interface, computing device, remote computing device, network, unique identifier, etc. This amounts to no more than implementing the abstract idea on a generic computer system, (see MPEP 2106.04(a)(2)(III)(C)(1)). The additional elements in the claim do not meaningfully limit the abstract idea because they merely link the use of the abstract idea to a particular technological environment (i.e. "implementation via computer networks") and appear to recite well-understood, routine, and conventional activity recited at a high level of generality. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) in order 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10032210 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because “identifying at least two providers located near the user” is substantially similar to “identifying at least two providers located within a radius of the user”. The differences in claim language would be obvious to one of ordinary skill in the art.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to disclose, inter alia, a method comprising:
receiving, via an interface of a computing device, from an interface of a remote computing device of a user, an order for delivery of a plurality of items, in which each item comprises a unique identifier, in which the computing device and the remote computing device are in electronic communication over a network; determining a location of the user; identifying at least two providers located near the user to allow each provider to deliver the requested plurality of items; after receiving the order, computing for each of the at least two providers a total cost of delivery of the requested plurality of items; after identifying the at least two providers, receiving a request for one of the at least two providers to deliver the requested plurality of items; and facilitating delivery of the requested plurality of items pursuant to the order.
The closes prior art of record discloses:
CN 101730891 A, user location and bidding: [0035] “exemplary parameters may include latitude/longitude coordinates defined by country, state, postal code, such as a global positioning system (Global Positioning System, GPS) or other geographical identification symbol, or associated with (one or more) user location.”; [0118] For example, in some embodiments, consumer negotiation agent 12 comprises an auction agent machine auction advertisement to one or more suppliers. In such embodiments, vendor negotiation agent 10 may include auction bidding agent. when is configured to proxy auction, consumer negotiation agent 12 may be to one or more providers provide advertising opportunity to exchange economic reward. The consumer and provider preferences, the reward may comprise any suitable value transfer or service, including but not limited to from a merchant payment, discount, or free items or content. economic reward desired may be included proxy 12 when implementing the auction and evaluating bidding for the factors specified by the consumer.
TW 200935324 A, shipping physical goods: “The transaction matching principle is used to perform transaction matching (step SU0). The logistics management platform 13 can automatically find the geographical location information of the delivery vehicle 15 that meets the needs of the goods to be delivered within a certain distance from the owner of the goods or the distribution center… the logistics management platform automatically dispatches the delivery vehicle to carry out the goods delivery”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 20020007353 A1, US-12354154-B2, US-7177825-B1, US-20030120608-A1, and US-20060041481-A.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL S GLASS whose telephone number is (571)272-7285. The examiner can normally be reached M-F, 9-5.
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/RUSSELL S GLASS/ Primary Examiner, Art Unit 3627
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