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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a listing medium information acquisition section” in claim 1.
“a bid price information acquisition section” in claim 1.
“an immediate decision condition acquisition section” in claim 1.
“a status information acquisition section” in claim 1.
“an immediate decision instruction information acquisition section” in claim 1.
“an immediate decision management section” that in claim 1.
“a successful bid user determination section” in claim 1.
“a rank information acquisition section” in claim 7.
“an automated bidding management section” in claim 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
1. Claims 1-8 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1
Each of the claims limitations “a listing medium information acquisition section”, “a bid price information acquisition section”, “an immediate decision condition acquisition section”, “a status information acquisition section”, “an immediate decision instruction information acquisition section”, “an immediate decision management section”, and “a successful bid user determination section” in claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. While the specification generally associates “sections” with a memory and processor, the structure of a “section” is not described, nor is the link between these “sections” and the disclosed hardware defined. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Regarding Claims 2-8
Claims 2-8 inherit the deficiencies of claim 1, and are rejected on similar grounds. Additionally, with regard to claim 7:
Each of the claims limitations “a rank information acquisition section” and “an automated bidding management section” in claim 7 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. While the specification generally associates “sections” with a memory and processor, the structure of a “section” is not described, nor is the link between these “sections” and the disclosed hardware defined. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
2. Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claims do not fall within at least one of the four categories of patent eligible subject matter because, as noted above, the structure and nature of the claimed “sections” is not defined by the disclosure, other than a loose association with computer processing. Accordingly, the Examiner asserts that it is within the scope of the disclosure that these “sections” amount to sections of a computer program. Therefore, claims 1-8, which comprise only a series of these “sections” and are directed to a computer program per se. A computer program per se does not fall within one of the four statutory categories of invention. (see Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972))
3. Claims 9-10 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.
Claims 9-10 are directed to facilitating an auction, which is considered a commercial interaction. Commercial interactions fall within a subject matter grouping of abstract ideas which the Courts have considered ineligible (Certain methods of organizing human activity). The claims do not integrate the abstract idea into a practical application, and do not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea).
Under step 1 of the Alice/Mayo framework, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claims 9 recites a method with at least one step. Claim 10 recites a non-transitory storage medium. Therefore, the claims are each directed to one of the four statutory categories of invention (process, manufacture).
Under step 2A of the Alice/Mayo framework, it must be considered whether the claims are “directed to” an abstract idea. That is, whether the claims recite an abstract idea and fail to integrate the abstract idea into a practical application.
Regarding independent claim 9, the claim sets forth a process in which an auction is facilitated, in the following limitations:
a listing medium information acquisition step of acquiring, from a listing user who lists at least one listing medium which is listed in an auction, listing medium information indicating the at least one listing medium;
a bid price information acquisition step of acquiring bid price information indicating a bid price of at least one bid user who bids in the auction;
an immediate decision condition acquisition step of acquiring immediate decision condition information indicating an immediate decision condition for determining a successful bid user who successfully bids for the at least one listing medium before a deadline set in advance as a bidding deadline for the auction expires;
a status information acquisition step of acquiring status information indicating a status of the auction;
an immediate decision instruction information acquisition step of acquiring immediate decision instruction information indicating an immediate decision instruction to, in a case where the status information has specific content set in advance, execute a bid which satisfies the immediate decision condition;
an immediate decision management step of, in a case where the status information has the specific content set in advance, executing, on the basis of the immediate decision instruction information, the bid which satisfies the immediate decision condition; and
a successful bid user determination step of, on the basis of the bid which has been executed by the immediate decision management step and which satisfies the immediate decision condition, determining, as a successful bid user who successfully bids for the at least one listing medium, the at least one bid user who is associated with the immediate decision instruction information.
The above-recited limitations establish a commercial interaction between bidders and a seller to facilitate an auction. This arrangement amounts to a sales activity or behavior. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See MPEP 2106.04(a)).
Claim 9 does recite additional elements:
carried out by at least one computer.
These additional elements merely amount to the general application of the abstract idea to a technological environment. The specification makes clear the general-purpose nature of the technological environment. Paragraphs [0173]-[0178] indicate that while exemplary general purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). As indicated above, considered both individually and as an ordered combination, the additional elements do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim, do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea
Further, the additional elements (recited above) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Communicating information (i.e., receiving or transmitting data over a network) has been repeatedly considered well-understood, routine, and conventional activity by the Courts (See MPEP 2106.05(d)). Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Independent Claim 10 is parallel in scope to claim 9 and ineligible for similar reasons.
EXAMINER NOTE: Independent claim 1, and it’s dependent claims 2-8 would similarly be found to be ineligible if amended to fall into one of the statutory categories.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
4. Claims 1-7, 9, 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stuart (US 20060293994 A1).
Regarding Claim 1
Stuart discloses a system comprising:
a listing medium information acquisition section that acquires, from a listing user who lists at least one listing medium which is listed in an auction, listing medium information indicating the at least one listing medium (Stuart: see at least fig. 6, ¶38)
a bid price information acquisition section that acquires bid price information indicating a bid price of at least one bid user who bids in the auction; (Stuart: see at least fig. 9, ¶41)
an immediate decision condition acquisition section that acquires immediate decision condition information indicating an immediate decision condition for determining a successful bid user who successfully bids for the at least one listing medium before a deadline set in advance as a bidding deadline for the auction expires (Stuart: see at least fig. 6, ¶42: Buy-It-Now price can be set)
a status information acquisition section that acquires status information indicating a status of the auction; (Stuart: see at least fig. 8, ¶40)
an immediate decision instruction information acquisition section that acquires immediate decision instruction information indicating an immediate decision instruction to, in a case where the status information has specific content set in advance, execute a bid which satisfies the immediate decision condition; (Stuart: see at least fig. 9, ¶41: bidder may select Buy-It-Now fixed price purchase option)
an immediate decision management section that, in a case where the status information has the specific content set in advance, executes, on the basis of the immediate decision instruction information, the bid which satisfies the immediate decision condition (Stuart: see at least ¶45-47: threshold set for accepting BIN price bid; accepts BIN bids until quantity falls below pre-set threshold)
a successful bid user determination section that, on the basis of the bid which has been executed by the immediate decision management section and which satisfies the immediate decision condition, determines, as a successful bid user who successfully bids for the at least one listing medium, the at least one bid user who is associated with the immediate decision instruction information (Stuart: see at least fig. 9: user ID for BIN bidder)
Regarding Claims 9, 10
Claims 9, 10 are parallel in scope to claim 1 and rejected on similar grounds.
Regarding Claim 2
Stuart further discloses:
the listing medium information acquisition section acquires, from the listing user, the listing medium information indicating a plurality of listing media which the at least one listing medium comprises, which have an identical type, and which are listed in one auction (Stuart: see at least ¶43-47: BIN available in multi-unit auctions)
the bid price information acquisition section acquires the bid price information indicating the bid price of each of a plurality of bid users which the at least one bid user comprises, (Stuart: see at least ¶43-47: bids and BIN offers of all bidders in auction acquired)
the successful bid user determination section determines, among the plurality of bid users, a plurality of successful bid users who successfully bid for at least some of the plurality of listing media (Stuart: see at least ¶33, 37: highest bidder)
the status information includes information indicating a remaining number obtained by subtracting, from the number of the plurality of listing media, the number of listing media for which a successful bid has been made (Stuart: see at least ¶43-48: status of unit quantity tracked based on BIN bids)
the immediate decision instruction information is information indicating an instruction to, in a case where the remaining number is not more than a prescribed number, execute the bid which satisfies the immediate decision condition (Stuart: see at least ¶43-48: status of unit quantity tracked; BIN bids allowed until quantity falls below threshold)
Regarding Claim 3
Stuart further discloses:
wherein the status information includes information indicating a bid price of another bid user, and the immediate decision instruction information is information indicating an instruction to, in a case where the bid price is not less than a prescribed amount, execute the bid which satisfies the immediate decision condition (Stuart: see at least ¶54)
Regarding Claim 4
Stuart further discloses:
wherein the status information includes information indicating the number of the at least one bid user who bids in the auction, and the immediate decision instruction information is information indicating an instruction to, in a case where the number of the at least one bid user is not less than a prescribed number, execute the bid which satisfies the immediate decision condition (Stuart: see at least ¶43-48: status of unit quantity tracked; BIN bids allowed until quantity falls below threshold)
Regarding Claim 5
Stuart further discloses:
wherein the status information includes information indicating remaining time until the deadline set in advance expires, and the immediate decision instruction information is information indicating an instruction to, in a case where the remaining time is not more than a prescribed time, execute the bid which satisfies the immediate decision condition. (Stuart: see at least fig. 8, ¶47: preset end time of auction set and displayed; BIN available for duration of auction)
Regarding Claim 6
Stuart further discloses:
the listing medium information acquisition section acquires, from the listing user, the listing medium information indicating a plurality of listing media which the at least one listing medium comprises, which have an identical type, and which are listed in one auction, (Stuart: see at least ¶43-47: BIN available in multi-unit auctions)
the bid price information acquisition section acquires the bid price information indicating the bid price of each of a plurality of bid users which the at least one bid user comprises, (Stuart: see at least ¶43-47: bids and BIN offers of all bidders in auction acquired)
the successful bid user determination section determines, among the plurality of bid users, a plurality of successful bid users who successfully bid for at least some of the plurality of listing media (Stuart: see at least ¶33, 37: highest bidder)
Regarding Claim 7
Stuart further discloses:
a rank information acquisition section that acquires rank information indicating a rank of the bid price information in descending order of the bid price; (Stuart: see at least ¶33, 37, 44, 57: system determines highest, winning, and losing bidders)
an automated bidding management section that, until a termination condition under which a bidding period for the auction ends is satisfied, (i) determines, on the basis of advance setting by the at least one bid user who is associated with the bid price information, whether it is possible to update the bid price indicated by the bid price information whose rank is outside a successful bid range set on the basis of the number of the at least one listing medium to a bid price for the rank to be within the successful bid range, and (ii) updates the bid price in a case where the bid price is determined to be updatable (Stuart: see at least ¶57: bidder determined to be losing auction may re-bid)
Claim Rejections - 35 USC § 103
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.
5. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over McCoy et al. (US 20220366486 A1, hereinafter McCoy).
Stuart discloses the system set forth in claim 1, as above. Stuart does not explicitly disclose, but McCoy teaches, in a similar environment:
wherein the at least one listing medium is an electronic medium with which a non-fungible token whose owner is managed on a blockchain is associated (McCoy: see at least ¶32, 181)
It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Stuart to have included the features of McCoy, since such a modification would have helped to facilitate the control of user access to digital content items. (McCoy: see at least ¶33)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miller (US 11625768 B2) discloses an internet auction with dynamic dual-changing pricing, including an option for a bidder to submit an immediately-effective offer to purchase a lot of goods.
Kim et al. (US 20140162763 A1) disclose a game item auction, including functionality to set pre-determined criteria for bidding on a digital item.
Henderson (US 20240303647 A1) discloses a nonfungible token and digital item trading infrastructure and distributed ledger, including allowing for facilitation of auctions for digital items maintained in NFTs.
The Impact of Discounting on an Auction with a Buyout Option: a Theoretical Analysis Motivated by eBay’s Buy-It-Now Feature. (PTO-892 Reference U) discusses how auction outcomes change with an immediate decision feature and a dynamic pricing scheme.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A MISIASZEK whose telephone number is (571)272-6961. The examiner can normally be reached Monday-Thursday. 8:00 AM - 5:30 PM.
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, Marissa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL MISIASZEK/Primary Examiner, Art Unit 3688
