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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`17/062,941
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`10/05/2020
`
`Marcel VAN OS
`
`P22848USC8/77770000362208
`
`2314
`
`nee
`
`LLP(U
`DLA Piper
`DLAPiper LLP (US) - Apple
`555 MissionStreet
`Suite 2400
`San Francisco, CA 94105
`
`OYEBISI, OJO O
`
`3697
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/24/2023
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`Thetime period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
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`PatentDocketing @us.dlapiper.com
`
`PTOL-90A (Rev. 04/07)
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`

`

`
`
`Disposition of Claims*
`2-40 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 2-40is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1) ([] Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`11/17/23,11/09/23,11/09/23.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mail Date 20231118
`
`Application No.
`Applicant(s)
`17/062,941
`VAN OS, Marcel
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`OJO O OYEBISI
`3697
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1) Responsive to communication(s) filed on 11/09/23.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`

`

`Application/Control Number: 17/062,941
`Art Unit: 3697
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`Page 2
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`Notice ofPre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventorto file provisions of the AIA.
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`Continued Examination Under 37 CFR 1.114
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`2.
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`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR 1.17(e), wasfiled in this application after final rejection. Since this application is
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`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
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`has been timely paid, the finality of the previous Office action has been withdrawn pursuantto
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`37 CFR 1.114. Applicant's submission filed on 11/09/23 has been entered. The notice of
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`allowance mailed on 08/11/23 has been withdrawn in view of new ground ofrejection.
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`Cisim Reiections - 38 USC Siar
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`3. 355.0. 104 reads as follows:
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`Whoever invents or discovers any new and useful process, machine, manufacture, or
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`composition of matter, or any newand usefel miprovement thereat, may obtam a patent therefor,
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`subject to the conditions and requarements of this title.
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`4. Claims 2-40 are rejected under 35 U.S.C. 10] because the claimed invention is directed to
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`non-statitiory subject matter.
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`Subject Matter Eligibiliiy Sarndared
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`53. The examiner contends that, under the judicial exceptions onurneraicd in the 2019 PEG, ta
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`determine the patent-eligibility of an application, a two- part analysis has to be conducted.
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`

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`Application/Control Number: 17/062,941
`Art Unit: 3697
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`Page 3
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`Part 9: it must be determined whether the claimis directed to one ofthe four statutory categories
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`of invention, Le., process, machine, manufactare, or composition ofmatter.
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`Part 24; Preng i: (1) Determine if the claims are directed to an abstract uiea or one of the
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`qudicialexceptions. Examples of abstract ideas referenced m Alice Corp. inchide:
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`1. Certain methodof organizing human activity such as Fundamental Hoonomic Practices,
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`Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or
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`inferactions Between People.
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`2.A mental process,
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`fa . Mathernatical relationships/formuilas,
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`Part 2A: Prong 2: determine ifthe claim as a whole integrates the judicial exception mio a
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`practical application,
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`Part 2B: determine if the claim provides an inventive concept.
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`Asmitysis
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`4, Under Step i of the analysis, itis foundthat the claim indeedrecites a series of steps and
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`therefore, is a process - one of the statutory categorics.
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`Under Step 2A (Prong 1), using claim 2 as the representative claim,it is determined that apart
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`from generic hardware and exira-solution aciivitics discussedin Step 2A, Prong 2 below, the
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`claim asa whole recites a method of organwing human activity. Por instance, the claim langnage
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`“while displaying the affordance associated with the payment transaction, detecting activation of
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`

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`Application/Control Number: 17/062,941
`Art Unit: 3697
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`Page 4
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`the affordance associated with the paymenttransaction, andin response to detecting activation of
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`the affordance associated with the payment transaction, initiating a process for authorizing the
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`%
`payment transaction of the suggested product...” is a fundamental economic practice.
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`Fundamental economic practices fall into the category of certain methods of organizimg human
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`activity. Thus, the claimrecites a judicial exception, ..¢., an abstract idea.
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`Under Step 2A (Prong 2), The examiner further contends that the claim recites a cormbination of
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`additional slernents including “obtaining a history of payment transactions associated with one or
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`more payment accounts linked to the electromc device; determining a current location of the
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`electronic device; determining...a suggested product for purchase from 4 retailer, displaying an
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`indication of the suggested product for purchase: displaying an affordance associated with a
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`payment transaction of the suggested product” These additional elements, considered in
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`the contextof claim 2 as a whole. do not miegrate the abstract wea into a practical application
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`because they simply recite the stops of inputting data, processing data, transmitting and outputime
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`data using a generic computer system. In other words, these additional hmitations are recited
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`funchonally without technical or technological details on how, Le., by what algorithmor on what
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`basis/method, the one or more processors is caused to performthese steps. The recited processors
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`are simply being applied to carry out the abstract idea. Purther, the recited additional limitations
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`can be reasonably charactorized as reciting a patent-inecligible mental process, insignificant ex tra-
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`sohition and post-sohition activities. Por instance, the limiulation “obtaming a history of payment
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`transactions associated with one or more payment accounts linked to the electronic device”is a
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`mere data gathering step consideredto be insignificanioxtra solution activity. See fn re Bilski, 345
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`Pd at 963 (characterizing data gathering steps as insignificant extra-sohition activity). Also, the
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`limitations “displaying an indication of the suggested product for purchase; displaying an
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`Application/Control Number: 17/062,941
`Art Unit: 3697
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`Page 5
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`affordance associated with a payment transaction of the suggested product” are directed to the
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`insignificant post-solution activity of ontputting data (see Apple, inc. v. Ameranih, Inc., 842 F.3d
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`£229, (244-42 (Fed, Cir. 2016}. In addition, the limitations “determining a current locationof the
`>
`electronic device; determining...a suggested product for purchase from a retailer.” are directed to
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`the analysis of data, which is nothing but the automation of mental tasks. See Benson, Bancarm
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`and Cyberphone. Also see Electric Power, 830 F.3d at 1334 (TWle have treated analyzing
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`information by steps people go through in their minds, or by mathematical algorithms, without
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`more, as essentially mental processes”). Lastly, the aforementionedsteps merely describe an
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`ilangible property of the data that does affect the examiner's charactenzation ofthe additional
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`Urolations as insignificant extra-solotion acuvilies and the automation of mental tasks, Thus, itis
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`determined that claim 2 is not directed to a specific asserted improvement in computer technology
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`or otherwise integrated into a practical apphcation and thus is directed to a judicial exception.
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`Under Step 2B, itis determined that, taken alone, the additional clements in the claim amounts to
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`no more than mere instructions to apply the exception using a generic computer processor-—-that
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`is, Mere instructions to apply a generic computerto the abstract idea. The only hardware or
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`additional elements beyond the abstract idea of claim 2 are the generically recited “electronic
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`device,” and “processor.” The specification does not show that any of these components are
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`anything other than well-understood, routine, and conventional, hardware components or
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`systemsbeing used in their ordinary manner. Thus, apphying an exception using a genenc
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`computer cannot integrate a pudicial exception into a practical application or provide an inventive
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`concept. And locking at the linmilations as an ordered combination of elements add nothing that is
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`notalready present when looking at the elements taken individually.
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`

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`Application/Control Number: 17/062,941
`Art Unit: 3697
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`Page 6
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`The examiner contendsthat the ‘novelty’ of any elementor steps in a process, or even of
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`the process itself, is of no relevance in determining whether the subject matter of a claim falls
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`within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450U.S.
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`175, 188— 89 (1981).” A novel and nonobviousclaim directed to a purely abstract ideais,
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`nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvementto an
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`abstract idea cannot be a basis for determining that the claim recites significantly more than an
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`abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or
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`more accurately is insufficient to render a claim patenteligible.” OJP Techs., Inc. v.
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`Amazon.com,Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes
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`that the claim does notrecite additional elements that amountto significantly more than the
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`judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to
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`all statutory categones of invention. As such, the independent claims otherwise styled asa
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`computer-readable mediumencodedto perform specific tasks, machine or mannfacture, for
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`example, would be subject to the same analysis. Parthermore, the linitations in the dependent
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`claims are thus subject to the same analysts as in claim 2 and are rejected using the same
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`rationale as inciaira | above. More specifically, dependent claims 4-8, 18-22, 20-34 do not recite
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`additional elements but merely further narrowthe scope of the absiractidea, Further, dependent
`oy
`claims 3,4-14, 16-17, 23-29 and 35-40)recite additional clements, but these additional elements
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`are mere data gathering steps and automation of mental tasks considered to be insignificant
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`extra-sohition activities.
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`

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`Application/Control Number: 17/062,941
`Art Unit: 3697
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`Page 7
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`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the examiner
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`should be directed to OJO O OYEBISI whose telephone numberis (571)272-8298. The
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`examiner can normally be reached on Monday-Friday, 9am-7pm. Examinerinterviewsare
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`available via telephone, in-person, and video conferencing using a USPTO supplied web-based
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`collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO
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`Automated Interview Request (AIR)at http://www.uspto.gov/interviewpractice. If attempts to
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`reach the examinerby telephone are unsuccessful, the examiner’s supervisor, Christine Behncke
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`can be reached at 571-272-8103. The fax phone numberfor the organization wherethis
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`application or proceedingis assigned is 571-273-8300. Information regarding the status of an
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`application may be obtained from the Patent Application Information Retrieval (PAIR) system.
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`Status information for published applications may be obtained from either Private PAIR or
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`Public PAIR. Status information for unpublished applicationsis available through Private PAIR
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`only. For more information about the PAIR system,see https://ppair-
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`my.uspto. gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system,
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`contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
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`information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/OJO O OYEBISI/
`
`Primary Examiner, Art Unit 3697
`
`