DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claims 1-20 are pending.
Claim Objections
Claims 3 and 13 objected to because of the following informalities:
“determining that” in line 2 from bottom of claim 3 should read “the determining that” or “the determination that”.
“determining that that” in line 2 from bottom of claim 13 should read “the determining indicating that” or “the determination indicating that”.
Appropriate correction is required.
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 3 and 6-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 3 recites obtaining, based on a token request indicating use of a token to access an item associated with an entity, an entity identifier associated with the entity, wherein the token is bound to one or more entity characteristics; extracting web data, available via one or more computer networks using the entity identifier, to determine one or more item characteristics of items available via the entity, wherein the one or more item characteristics are different than the one or more entity characteristics; determining, via a prediction model's prediction based on (i) the one or more item characteristics and (ii) the one or more entity characteristics, that the entity satisfies the one or more entity characteristics; and validating access to the item associated with the entity based on determining that the entity satisfies the one or more entity characteristics to which the token is bound.
The limitation of obtaining, based on a token request indicating use of a token to access an item associated with an entity, an entity identifier associated with the entity, wherein the token is bound to one or more entity characteristics as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “obtaining” in the context of this claim encompasses the user receiving or finding out an entity identifier associated with the entity based on a token request indicating use of a token to access an item associated with an entity, wherein the token is bound to one or more entity characteristics.
The limitation of extracting web data, available via one or more computer networks using the entity identifier, to determine one or more item characteristics of items available via the entity, wherein the one or more item characteristics are different than the one or more entity characteristics as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “extracting” in the context of this claim encompasses the user looking at a screen displaying web data available via one or more computer networks using the entity identifier and memorizing or writing down one or more item characteristics of items available via the entity, wherein the one or more item characteristics are different than the one or more entity characteristics.
The limitation of determining, via a prediction model's prediction based on (i) the one or more item characteristics and (ii) the one or more entity characteristics, that the entity satisfies the one or more entity characteristics as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “determining” in the context of this claim encompasses the user deciding via a prediction model's prediction based on (i) the one or more item characteristics and (ii) the one or more entity characteristics, that the entity satisfies the one or more entity characteristics.
The limitation of validating access to the item associated with the entity based on determining that the entity satisfies the one or more entity characteristics to which the token is bound as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, “validating” in the context of this claim encompasses the user confirming or authorizing access to the item associated with the entity based on determining that the entity satisfies the one or more entity characteristics to which the token is bound.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because the claim does not recite additional elements that integrate the judicial exception into a practical application. Other than the limitations that cover performance of the limitations in the mind, the claim does not recite any other additional limitation that integrates the judicial exception into a practical application.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, aside from reciting limitations that can be performed in the mind, the claim does not recite additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
Dependent claims 6-12 further clarify the concept recited in claim 3 however this clarification still falls under the concept recited in claim 3 and does not amount to significantly more than the judicial exception. Dependent claims 6-12 are rejected for at least the reasons stated above with respect to claim 3.
Claim 13 although not using the exact claim language, contains similar elements as recited in claim 3 and is also rejected for similar reasons. Claim 13 recites additional elements of one or more non-transitory computer-readable media comprising instructions when executed by one or more processors cause the operations. However, the additional elements are recited at a high level of generality and amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer cannot provide an inventive concept. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claims 14-20 further clarify the concept recited in claim 13 however this clarification still falls under the concept recited in claim 3 and does not amount to significantly more than the judicial exception. Dependent claims 14-20 are rejected for at least the reasons stated above with respect to claim 13. Claim 14 recites the additional element of accessing, via the one or more computer networks based on the address, the item-information of the items available via the entity. However, this step is recited at a high level of generality and amounts to mere data gathering which is a form of insignificant extra-solution activity and thus does not impose any meaningful limits on practicing the abstract idea. This accessing step also amounts to receiving data over a network and is well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II. Even when considered in combination, the additional element represents insignificant extra-solution activity, which does not provide an inventive concept. The claim is not patent eligible.
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 No. 12401649. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the instant claims are included in and/or obvious over the claims of the patent.
Instant application 19278756
Patent No. 12401649
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hart (US 20080243702) discloses techniques for generating a token that can be used to transfer value. The token may be used to transfer value in a value-based transaction with a vendor in a way that is secure and safe and maintains anonymity of the source of the value and preserves secrecy of information that should preferably not be disclosed to an untrusted third party such as a vendor. The token comprises sufficient information that enables value to be transferred from an account associated with the token to a vendor during a value-based transaction. Such a token may be presented by a user to a vendor in a value-based transaction with the purpose of transferring value involved in the transaction to the vendor in order to complete the transaction.
Knudsen (US 20220222704) discloses the data indicative of content may include a URL indicative of content. The data indicative of the content, such as the URL, may analyzed in order to associate the content to one or more contextual categories, such as the content categories 116. If the data indicative of the content is a URL, the webpage may need to be crawled in order to analyze it and associate the webpage to one or more contextual categories.
Unser (US 20150332414) discloses systems and methods for determining a type or category of product purchased as part of a payment card transaction between a customer and a merchant, comprises receiving at a computer processor, payment card transaction record data, where the transaction record omits direct product purchase itemization data. In one embodiment, the payment card transaction record data may include one or more of a customer identifier, a merchant identifier, and a transaction purchase amount corresponding to a product purchase transaction. A predictive model is used to determine a likelihood indicator that a given type or category of product sold by the merchant matches that of the actual product purchased in the payment card transaction. The transaction record data is analyzed in order to generate one or more score indicators that represent different possible product types or categories of product purchased via the payment card transaction.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRONG NGUYEN whose telephone number is (571)270-7312. The examiner can normally be reached on Monday through Thursday 9:00 AM - 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, GELAGAY SHEWAYE can be reached on (571)272-4219. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRONG H NGUYEN/Primary Examiner, Art Unit 2436
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