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 .
2. This nonfinal office action is in response to Application No. 19/309,240 filed on August 25, 2025. Claims 27-51 are pending and under examination.
Double Patenting
3. The non-statutory 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 time-wise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
4. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 27, 30-31, 33-38, 42-44, and 48-49 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 8 and 18 of U.S. Patent No. 10/360,571. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963.
Claims 27-31, 35, 38, 40-41 and 49 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 5, 21 and 23 of U.S. Patent No. 12/354,121. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963.
.
Claims 27-32, 34-35, 38 and 40-41 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 2, 3 and 12 of U.S. Patent No. 12/423,718. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963.
Claims 27, 29-31, 35, 38, 40-45 and 48-51 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 3, 7, 12-15 and 17-18 of U.S. Patent No. 12/026,731. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963.
Claims 27-29, 31-39, 42-44 and 49 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 2, 13 and 22 of U.S. Patent No. 10/813,825. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963.
Claims 27-31 and 34-38 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1 and 16 of U.S. Patent No. 11/301,880. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963.
Claims 27, 29, 31-33, 36-37, 42-44, and 48-49 and are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 3, 5, 9-11 and 19 of U.S. Patent No. 12/039,550. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963.
Claims 27, 29, 31-35, and 40-44 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 3, 6, 8, 10, 12 and 14 of U.S. Patent No. 12/175,484. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before". in re Karlson, 136 USPQ 184 (CCPA 1963.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 27-51 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.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C.101, 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.
Specifically, claim 27 is directed to a method. The claim falls under one of the four
statutory classes of invention.
If the claim does fall within one of the statutory categories, it must then be
determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
Claim 27 recites the abstract idea in non-boldface and the additional elements in boldface.
(a) obtaining an information analysis about the consumer activities of the person, wherein,
(i) the information analysis is an analysis of gathered information by one or more information monitoring devices about activities of the person,
(ii) the gathered information comprises gathered product information of the person, wherein
(A) the gathered product information comprises product information gathered by at least one of the one or more information monitoring devices, and
(B) the product interaction information is based upon one or more first products selected from the group consisting of
(I) first products that are identified by tracking the position of the first person relative to the first products,
(II) first products that are identified by tracking the eye movements of the first person utilizing the at least one of the one or more first information monitoring devices, and
(III) first products that are identified interactively with the at least one of the first information monitoring devices, wherein the at least one of the one or more first information monitoring device is a first interactive device,(b) tracking the person using at least one of the one or more information monitoring devices to determine the location of the person;
(c) based upon the determined location of the person, providing the person, via a second interactive device, a communication, wherein the communication comprises
(i) a location communication comprising a store location at which the person can purchase a product, wherein the product relates to at least one of the one or more first products, and
(ii) a product communication that is directed to the person based upon the information analysis and that is selected from the group consisting of
(A) a product communication of a price regarding the product at the retail store,
(B) a product communication of placement regarding the product within the retail store,
(C) a product communication of marketing or advertising information regarding the product,
(D) a product communication of a coupon regarding the product, wherein the coupon is received by the person either as a printed out coupon or as a digital coupon,
(E) a product communication regarding a purchase option for the product, wherein the purchase option comprises an option to ship the product to the person or an option for the person to pick-up the product, and
(F) a product communication regarding a purchase option for the product, wherein the purchase option comprises an option to purchase the product at a reduced price during a limited period of time.
Claim 27 is similar to the functions of providing a fundamental economic practice such as concepts related to agreements between people of the performance of financial transactions and concepts related to fundamental economic principles or practices (including hedging, insurance, mitigating risk).
The function of “obtaining” is similar to data gathering function. The step or
function of “tracking” and “providing” data are typical or generic functions of a generic computer.
Thus, these claimed limitations under a broadest reasonable interpretation, cover
functions of mental processes which include concepts performed in the human mind (including an observation, evaluation, judgment or opinion).
Dependent claims 28-51 recite a Mental Process because the claimed elements
describe a process for assessing, evaluating a target business to provide strategy recommendations to optimize the performance of the target business. As a result, claims 28-51 recite an abstract idea under Step 2A Prong One.
If so, it must additionally be determined whether the claim is a patent-eligible application of the exception. 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.
With respect to Step 2A Prong Two, claim 27 does not include additional elements
that integrate the abstract idea into a practical application. Claim 27 includes additional elements that do not recite an abstract idea. The additional elements of claim 1 include
"monitoring devices". When considered in view of the claims as a whole, the recited computer elements do not integrate the abstract idea into a practical application because the computer elements are generic computer elements that are merely used as a tool to perform the recited abstract idea. As a result, claim 27 does not include additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
Dependent claims 28-51 do not include additional elements beyond those recited
by independent claim 27. As a result, claims 28-46 do not include additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
With respect to Step 2B, claim 27 does not include additional elements amounting to significantly more than the abstract idea. As noted above, claim 27 includes additional elements that do not recite an abstract idea. The additional elements of claim 27 include "monitoring devices". The claimed steps of “obtaining”, “tracking”, and “providing” do not amount to significantly more than the abstract idea because "providing" is well-understood, routine, and conventional computer function in view of MPEP 2106.05(d)(ll). The recited computer elements do not amount to significantly more than the abstract idea because the computer elements are generic computer elements that are merely used as a tool to perform the recited abstract idea. As a result, claim 1 does not include additional elements that amount to significantly more than the abstract idea under Step 2B. As a result, claims 28-46 do not include additional elements that amount to significantly more than the abstract idea under Step 2B.
Claims 28-51 do not include any additional elements beyond those recited by independent claim 27. As a result, claims 27-51 do not include additional elements that amount to significantly more than the abstract idea under Step 2B.
Dependent claims 28-51 include additional elements beyond those recited by independent claim 27. The claimed steps do not amount to significantly more than the abstract idea, because they are well-understood, routine, and conventional computer functions in view of MPEP 2106 .05( d )(11). The recited computer elements do not amount to significantly more than the abstract idea because the computer elements are generic computer elements that are merely used as a tool to perform the recited abstract idea. As a result, claims 27-51 do not include additional elements that amount to significantly more than the abstract idea under Step 2B.
Therefore, the claims are directed to an abstract idea without additional elements
amounting to significantly more than the abstract idea. Accordingly, claims 27-51 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
7. Prior art of record fail to teach or suggest:
“tracking the person using at least one of the one or more information monitoring devices to determine the location of the person;(c) based upon the determined location of the person, providing the person, via a second interactive device, a communication, wherein the communication comprises (i) a location communication comprising a store location at which the person can purchase a product, wherein the product relates to at least one of the one or more first products, and(ii) a product communication that is directed to the person based upon the information analysis and that is selected from the group consisting of (A) a product communication of a price regarding the product at the retail store,(B) a product communication of placement regarding the product within the retail store,(C) a product communication of marketing or advertising information regarding the product,(D) a product communication of a coupon regarding the product, wherein the coupon is received by the person either as a printed out coupon or as a digital coupon,(E) a product communication regarding a purchase option for the product, wherein the purchase option comprises an option to ship the product to the person or an option for the person to pick-up the product, and(F) a product communication regarding a purchase option for the product, wherein the purchase option comprises an option to purchase the product at a reduced price during a limited period of time”.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. As per attached PTO 892 form.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to ROMAIN JEANTY whose telephone number is (571)272-6732. The examiner can normally be reached M-F 9AM to 5:30PM.
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/ROMAIN JEANTY/Primary Examiner, Art Unit 3624