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 1-20 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 system for providing a delivery time estimate, as in independent claim 1 and in the claims that depend therefrom. Such systems fall under the statutory category of “apparatus”. Therefore, the claims are directed to a statutory eligibility category.
Step 2A, prong 1. The invention is directed to a system for providing a delivery time estimate, 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 system comprising”:
“identifying an attribute of an item associated with a present transaction”;
“generating a first delivery time estimate based on the attribute of the item”;
“determining an adjusting factor applicable to the present transaction, the adjusting factor corresponding to a shipping volume of the item associated with a seller of the present transaction”;
“generating a second delivery time estimate based on the first delivery time estimate and the adjusting factor”; and
“causing display of the second delivery time estimate on a …”.
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
“a memory storing instructions”;
“one or more hardware processors communicatively coupled to the memory and configured by the instructions to perform operations comprising”: and
“device”.
In the instant case, claim 1 is directed to above mentioned abstract idea. Technical functions such as sending, receiving, displaying and processing data are common and basic functions in computer technology. The individual limitations are recited at a high level and do not provide any specific technology or techniques to perform the functions claimed.
Looking to MPEP §2106.05(d), based on court decisions well understood, routine and conventional computer functions or mere instruction and/or insignificant activity have been identified to include: Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321,120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TU Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); O/P Techs., /no., v. Amazon.com, Inc., 788 F,3d 1359, 1363, 115 USPQ2d 1090,1093 (Fed. Cir, 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPG2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink," (emphasis added)}; Insignificant intermediate or post solution activity -See Bilski v. Kappos, 581 U.S. 593, 611 -12, 95 USPQ2d 1001,1010 (2010) (well-known random analysis techniques to establish the inputs of an equation were token extra-solution activity); In Bilski referring to Flook, where Flook determined that an insignificant post-solution activity does not makes an otherwise patent ineligible claim patent eligible. In Bilski, the court added to Flook that pre-solution (such as data gathering) and insignificant step in the middle of a process (such as receiving user input) to be equally ineffective. The specification and Claim does not provide any specific process with respect to the display output that would transform the function beyond what is well understood. Like as found in Electric Power Group, Bilski, the technical process to implement the input and display functions are conventional and well understood.
In addition, when the claims are taken as a whole, as an ordered combination, the combination of steps does not add "significantly more" by virtue of considering the steps as a whole, as an ordered combination. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments using what is well-understood, routine, and conventional in the related arts. The steps are still a combination made to the abstract idea. The additional steps only add to those abstract ideas using well-understood and conventional functions, and the claims do not show improved ways of, for example, an unconventional non-routine functions for authorizing the timing of a payment and to activate a display screen based on a trigger or camera functions that could then be pointed to as being "significantly more" than the abstract ideas themselves. Moreover, examiner was not able to identify any "unconventional" steps, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is well-understood, routine, and conventional in the related arts.
Further, note that the limitations, in the instant claims, are done by the generically recited computing devices. The limitations are merely instructions to implement the abstract idea on a computing device and require no more than a generic computing devices to perform generic functions.
CONCLUSION. It is therefore determined that the instant application not only represents an abstract idea identified as such based on criteria defined by the Courts and on USPTO examination guidelines, but also lacks the capability to bring about "Improvements to another technology or technical field" (Alice), bring about "Improvements to the functioning of the computer itself" (Alice), "Apply the judicial exception with, or by use of, a particular machine" (Bilski), "Effect a transformation or reduction of a particular article to a different state or thing" (Diehr), "Add a specific limitation other than what is well-understood, routine and conventional in the field" (Mayo), "Add unconventional steps that confine the claim to a particular useful application" (Mayo), or contain "Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment" (Alice), transformed a traditionally subjective process performed by humans into a mathematically automated process executed on computers (McRO), or limitations directed to improvements in computer related technology, including claims directed to software (Enfish).
Dependent claims 2-10, which impose additional limitations, also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 2-10, these dependent claims have also been reviewed with the same analysis as independent claim 1. The dependent claims have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1; where all claims are directed to the same abstract idea, "addressing each claim of the asserted patents [is] unnecessary." Content Extraction &. Transmission LLC v, Wells Fargo Bank, Natl Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims are directed towards patent eligible subject matter, applicant is invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter. Claim 11 is similar to claim 1 and is rejected for the same reasons. Claims 12-19 depend from claim 11, are similar to claims 2-10, and are rejected for the same reasons. Claim 20 recites a computer-readable storage medium, which is a generic element. Claim 20 is otherwise similar to claim 1 and is 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 4, 5, 9-11, 14, 15, 19 and 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Number 7,996,328 B1 (hereinafter “Lundberg”) in view of U.S. Patent Number 8,429,019 B1 (hereinafter “Yeatts”).
With respect to claims 1 and 11, Lundberg discloses
“A system comprising”: Lundberg, abstract;
“a memory storing instructions”; Lundberg, col. 3, lines 1-19; and
“one or more hardware processors communicatively coupled to the memory and configured by the instructions to perform operations comprising”: Lundberg, col. 3, lines 1-19;
“identifying an attribute of an item associated with a present transaction”; Lundberg, col. 3, lines 43-65 (many shipping attributes are identified);
“generating a first delivery time estimate based on the attribute of the item”; Lundberg, col. 4, lines 35-65; col. 10, line 59 to col. 11, line 51 (estimated delivery date is determined based on numerous factors including historical transactions);
“determining an adjusting factor applicable to the present transaction, the adjusting factor corresponding to a shipping volume of the item associated with a seller of the present transaction”; Lundberg, col. 4, lines 35-65; col. 10, line 59 to col. 11, line 51 (estimated delivery date is determined based on numerous factors including shipping volume); and
“generating a second delivery time estimate based on the first delivery time estimate and the adjusting factor”; Lundberg, col. 4, lines 35-65; col. 10, line 59 to col. 11, line 51 (estimated delivery date is determined based on all factors).
Lundberg does not explicitly disclose displaying a personalized delivery time estimate on a user device. Yeatts discloses
“causing display of the second delivery time estimate on a device”. Yeatts, fig. 4.
Lundberg and Yeatts both relate to providing delivery time estimates. Lundberg, abstract; Yeatts, abstract. It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to include the personalized delivery time estimate as taught by Yeatts in the method of Lundberg with the motivation of permitting a customer to make arrangements to be present for delivery by providing such personalized delivery time estimate. Yeatts, col. 6, lines 4-9.
With respect to claims 4 and 14, Lundberg discloses
“wherein the attribute comprises a shipping attribute that corresponds to one of a shipping origin geographic location, a shipping delivery geographic location, a shipping weight of the item, a shipping dimension of the item, a shipping carrier, or a shipping service of the shipping carrier”. Lundberg, col 4., lines 35-64; col. 8, lines 43-60; col. 9, lines 55-60 (e.g., shipping carriers, shipping address and options).
With respect to claims 5 and 15, Lundberg discloses
“wherein the attribute comprises a shipping dimension of the item. Lundberg, col 4., lines 35-64; col. 8, lines 43-60; col. 9, lines 55-60 (shipping options include dimensions).
Yeatts discloses
“wherein the operations comprise: identifying a picture of the item”. Yeatts, col. 4, lines 31-61.
There are a limited number of known methods of determining the size of an item, including determining the size from an image of the item. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try “determining the shipping dimension of the item based on the picture”.
With respect to claim 9, Lundberg discloses
“wherein the adjusting factor is a first adjusting factor, and wherein the operations comprise: determining a third adjusting factor applicable to the present transaction; and updating the second delivery time estimate based on the third adjusting factor”. Lundberg, col. 4, lines 35-65; col. 10, line 59 to col. 11, line 51 (any number of adjusting factors can be used).
With respect to claim 10, Lundberg discloses
“wherein the third adjusting factor applicable to the present transaction corresponds to one of an event that occurred at a time of the present transaction, the event corresponding to a labor strike, a road condition, a weather condition, a fuel shortage, a total number of items shipped on an online marketplace, a handling time elapsed on the online marketplace, a shipping season, or a shipping carrier performance associated with the present transaction”. Lundberg, col. 4, lines 35-65; col. 10, line 59 to col. 11, line 51 (estimated delivery date is determined based on numerous factors including historical shipping records, which includes number of items shipped).
With respect to claim 19, Lundberg discloses
“wherein the adjusting factor is a first adjusting factor, and wherein the method comprises:
determining a third adjusting factor applicable to the present transaction; and updating the second delivery time estimate based on the third adjusting factor”; Lundberg, col. 4, lines 35-65; col. 10, line 59 to col. 11, line 51 (any number of adjusting factors can be used); and
“wherein the third adjusting factor applicable to the present transaction corresponds to one of an event that occurred at a time of the present transaction, the event corresponding to a labor strike, a road condition, a weather condition, a fuel shortage, a total number of items shipped on an online marketplace, a handling time elapsed on the online marketplace, a shipping season, or a shipping carrier performance associated with the present transaction”. Lundberg, col. 4, lines 35-65; col. 10, line 59 to col. 11, line 51 (estimated delivery date is determined based on numerous factors including historical shipping records, which includes number of items shipped).
With respect to claim 20, Lundberg discloses
“A non-transitory computer-readable storage medium comprising instructions that, when executed by a processing device, cause the processing device to perform operations comprising”: Lundberg, col. 3, lines 1-19.
Claim 20 is otherwise rejected on the same basis as claims 1 and 11.
Claims 2, 3, 12, and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lundberg in view of Yeatts, as applied to claims 1, 4, 5, 9-11, 14, 15, 19 and 20 above, and further in view of U.S. Patent Application Publication 2012/0316990 A1 (hereinafter “Fallows”).
With respect to claims 2 and 12, Lundberg discloses
“wherein the operations comprise: identifying historical transactions that correspond to the attribute of the item associated with the present transaction”; Lundberg, col. 4, lines 35-65; col. 10, line 59 to col. 11, line 51 (estimated delivery date is determined based on numerous factors including historical transactions).
Lundberg and Yeatts do not explicitly disclose a threshold distance. Fallows discloses
“updating the second delivery time estimate based on the historical transactions, the historical transactions being associated with a location within a threshold distance from a location associated with the present transaction”. Fallows, paragraph 0030 (historical geographic destination location is buyer’s location; threshold distance is a user selected distance such as twenty-five miles; trustworthiness is a factor in determining delivery date).
Lundberg, Yeatts, and Fallows all relate to providing delivery time estimates. Lundberg, abstract; Yeatts, abstract; Fallows, abstract. It would have been obvious to one of ordinary skill in the before the effective filing date of the claimed invention to include the threshold distance as taught by Fallows in the method of Lundberg/Yeatts as a design choice of the implementer of a system as taught by Fallows. See Fallows, paragraph 0028 (“increase or decrease the significance of each measure according to the preference of the implementer”).
With respect to claims 3 and 13, Lundberg discloses
“wherein the historical transactions comprise one or more of buyer information, seller information, origin address, shipping address, a historical item shipped, shipping service provider, shipping and handling elapsed time, or shipping duration and time of delivery”. Lundberg, col 4., lines 35-64; col. 8, lines 43-60; col. 9, lines 55-60 (e.g., shipping carriers, shipping address and options).
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 1-19 of U.S. Patent Number 12,373,866 B2 (hereinafter “Hariharan”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the present application are obvious over claims 1-19 of Hariharan. The claims differ primarily in that the independent claims of Hariharan recite a historical transaction within a threshold distance of a location associated with the present transaction, whereas claims 1-20 of the present application do not and are therefore broader.
Allowable Subject Matter
Claims 6-8 and 16-18 are allowable over the prior art of record, subject to the above rejections.
The following is a statement of reasons for the indication of allowable subject matter:
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant’s invention as the noted features amount to more than a predictable use of elements in the prior art. The allowable features include “determining a second adjusting factor applicable to the present transaction, the second adjusting factor corresponding to feedback of the seller of the present transaction; and updating the second delivery time estimate based on the second adjusting factor".
In addition to the above, the Examiner emphasizes the interrelation of the above distinguishing elements with the remainder of each respective claim element, and further notes that it is the interrelation that truly distinguishes Applicant's invention from the evidence at hand. Moreover, none of the evidence at hand teaches or suggests the combination of features claimed, nor does there exist an appropriate rationale for further modification of the evidence at hand.
It is hereby asserted by the Examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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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