DETAILED ACTION
1. 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. Status of Application and Claims
Claims 1-5, 7-12 and 20-28 are pending.
Claims 1, 10, 11, 20, 21, 24, 25 and 28 were amended or newly added in the Applicant’s filing(s) on 2/26/2026.
This office action is being issued in response to the Applicant's filing(s) on 2/26/2026 and 3/12/2026.
3. Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/26/2026 has been entered.
4. Minor Informalities
Claim 28 is objected to because of the following informalities: typographical error.
Claim 28 recites “[t]he method of claim 28, further comprising, upon determining that there is no known merchant symbol matching the other one or more merchant symbols, de-activating the camera and re-activating the camera for detecting merchant symbols.
Claim 28 is dependent upon itself, Claim 28.
Examiner assumes that Claim 28 is supposed to be dependent upon the previous claim, Claim 27.
Appropriate correction is requested.
5. 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 1-5, 7-12 and 20-28 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a system configured to perform a method and/or computer-readable medium containing instructions, when executed, causes a computer to perform a method comprising:
detecting, …, one or more merchant symbols associated with one or more merchants;
generating, upon detecting one or more merchant symbols …, a prompt … wherein the prompt asks the user to confirm which merchant symbol to process;
receiving, …, one or more selections of the one or more merchant symbols;
determining whether the one or more selected merchant symbols match one or more known merchant symbols;
identifying a merchant based on a match between the one or more merchant symbols and the one or more known merchant symbols, determining whether the identified merchant accepts one or more predetermined payment methods;
retrieving one or more geolocation data …;
determining a geolocation of the identified merchant based upon the geolocation …;
determining whether the identified merchant at the geolocation accepts one or more predetermined payment methods;
generating a determination message, wherein:
the determination message states at least whether the one or more merchants accepts any one of the one or more predetermined payment methods, and …
displaying the determination message …
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to determine payment methods accepted for a merchant transaction which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that processing payments is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017).
These limitations, as drafted, under its broadest interpretation, covers a series of steps that can be practically performed in the human mind (e.g., observations, evaluations, judgments and opinions) which are mental process, a second enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(III).
Examiner notes that “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” is a court-provided example of a mental process. See MPEP §2106.04(a)(2)(III)(A) citing Electric Power Group v. Alstom, SA. (Fed. Cir. 2016).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a camera (Claim(s) 1, 20 and 21), a user device (Claim(s) 1, 20 and 21) an augmented reality enabled display (Claim(s) 1, 20 and 21), and a user device application (Claim(s) 1, 20 and 21).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, 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
Dependent Claim(s) 2-5, 7-12, 13 and 22-28 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 20 and 21. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of a server (Claim(s) 2), a mobile device, augmented reality glasses and smart watch (Claim(s) 12), digital photograph or video (Claim(s) 26)
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Claims 1-5 and 7-12 are also rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
The preamble of Claim 1 indicates that the claims pertain to a system. However, Claim 1 recites a system “comprising a user device application” which, in the broadest reasonable interpretation, denotes software or a computer program. Software and computer programs are not physical "things." They are neither computer components nor statutory processes, as they are not "acts" being performed. Such claimed computer programs do not define any structural and functional interrelationships between the computer program and other claimed elements of a computer which permit the computer program's functionality to be realized.
Examiner notes that, while the application comprises instructions to interact with a camera, user device and/or display, the claims do not recite that those elements are component elements of the system. Under the broadest reasonable interpretation, the camera, user device and/or display are elements outside the claimed system. In other words, the system has no hardware elements. Thus, Claims 1-5 and 7-12 are deemed to be non-statutory.
Appropriate correction is requested.
6. Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 28 is 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.
Claim 28 recites a method comprising:
upon determining that there is no known merchant symbol matching the other one or more merchant symbols, turning off the camera and turning on the camera for detecting merchant symbols.
What is meant by turning off and turning on the camera?
If the Applicant means turning on and turning off the camera, as in the camera was turned off/powered off or turned off/powered off, how can the camera be turned on?
The camera has to be turned on/powered on to perform the recited method steps (i.e., activating the camera and detecting by the camera – see Claim 21). There is no recitation that the camera has been turned off/powered off after performance of those recited steps, so the camera, under the broadest reasonable interpretation, the camera has always been turned on/powered on.
If the Applicant means turning on and turning off the camera, as in the camera’s shutter has been activated or not activated, the camera’s shutter is only turned on/shutter activated when the camera is in the midst of capturing an image. As such, whenever a camera is not actively taking a picture (i.e., the shutter is not activated), the camera has, by definition, turned off (i.e., the shutter has not been activated).
Appropriate correction is requested.
7. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5, 7-8, 10-12 and 20-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ahmad Athsani (US PG Pub. 2013/0057585) in view of Singh (US PG Pub. 2022/0335452) and Perez (US PG Pub. 2015/0198446).
Regarding Claim 1, Ahmad Athsani discloses a system comprising:
a user device application configured to:
activate a camera associated with a user device (user augmented reality (UAR) enabled mobile device). (see para. 35);
detect, via the camera, one or more merchant symbols (image of restaurant, image containing objects) associated with one or more merchants. (see para. 35 and 43);
determine whether the one or more merchant symbols (objects) matches (matches) one or more known merchant symbols (objects). (see para. 43);
identify a merchant (restaurant) based on a match between the one or more merchant symbols and the one or more known merchant symbols. (see para. 43);
retrieve on or more geolocation data (location or GPS data) associated with the user device. (see para. 30 and 60);
determine a geolocation data (building location) of the identified merchant based upon the geolocation (location or GPS data) associated with the user device. (see para. 7, 32 and 35);
determine information pertaining to the identified merchant (metadata, e.g., price list, hours of operation, dress code, reviews) at the specific geolocation (housed in the building). (see para. 4, 7-8, 32-33 and 35).
generate a determination message (displayed metadata). (see para. 4), wherein:
the determination message indicates information (metadata, e.g., price list, hours of operation, dress code, reviews) pertaining to the one or more merchants. (see para. 4, 7-8 and 32-33), and
the determination message is a first virtual object (displayed metadata). (see para. 4); and
display the determination message on an augmented reality enabled display. (see para. 3); and
position (overlay) the determination message (the search results) based upon at least one selected from the group of a location of the identified merchant or merchant symbols (viewed scene) displayed on the augmented reality enabled display. (see para. 66).
Ahmad Athsani does not teach a system configured to generate, upon detecting one or more merchant symbols via the camera, a prompt on an augmented reality enabled display associated with the user device wherein the prompt confirms the merchant symbol to process; or receive, from the augmented reality enabled display via the user device, one or more selections of the one or more merchant symbols.
Singh discloses a system comprising:
a user device application configured to:
activate a camera associated with a user device. (see fig. 3; para. 30);
detect, via the camera, one or more merchant symbols (objects) associated with one or more merchants (retail facility). (see fig. 3; para. 30);
generate, upon detecting one or more merchant symbols (objects) via the camera, a prompt on an augmented reality enabled display associated with the user device wherein the prompt asks the user the merchant symbol (object) to process. (see fig. 1 and 3; para. 13); and
receive, from the augmented reality enabled display via the user device, one or more selections of the one or more merchant symbols (objects). (see fig. 3; para. 31).
Ahmad Athsani does not teach a system wherein the information is whether the one or more merchants accepts one or more predetermined payment methods.
Perez discloses a system configured to:
determine whether the identified merchant (vendor) accepts one or more predetermined payment methods. (see para. 32);
generate a determination message, wherein:
the determination message indicates whether the one or more merchants accepts at least one of the one or more predetermined payment methods (desired merchant information), and the determination message (desired merchant information) is a first virtual object (see fig., 43, item 4018; para. 56); and
display the determination message on an augmented reality enabled display. (see fig., 4, item 4018; para. 56).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahmad Athsani to incorporate a selection process, as disclosed by Singh, thereby only processing and retrieving data pertaining to the selected symbol, rather than every symbol captured by the camera.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified Ahmad Athsani and Singh to incorporate provision of information pertaining to accepted payment methods, as disclosed by Perez, as identification of accepted payment methods is critical information required by a user for a user to complete a potential transaction with the merchant.
Regarding Claim 2, Ahmad Athsani discloses a system of wherein the system further comprises a server (UAR server – see fig. 1, item 101), wherein the server is configured to:
receive a merchant symbol from the user device application. (see para. 43);
retrieve a merchant list from a data storage unit (object feature database). (see para. 43);
determine whether the one or more merchant symbols matches (best match) one or more known merchant symbols from the merchant list. (see para. 43);
identify (via best match) a merchant based on a match between the one or more merchant symbols and the one or more known merchant symbols. (see para. 43), and
transmit a verification message to the user device application. (see para. 3).
Regarding Claim 3, such claim recites substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 4, Ahmad Athsani discloses a system wherein the user device application is further configured to display multiple determination messages overlaid on top of the augmented reality enabled display. (see para. 5-6).
Regarding Claim 5, Ahmad Athsani discloses a system wherein the merchant symbols (object) comprise at least one selected from the group of a name, logo, and unique signifier (sign). (see para. 30).
Regarding Claim 7, Ahmad Athsani does not teach a system wherein the user device application is further configured to open a first communication field, and receive, over the first communication field from a merchant tag, a merchant datum, wherein the datum is associated at least with the payment methods accepted at the merchant.
Singh discloses a system wherein the user device application is further configured to open a first communication field (RFID), and receive, over the first communication field from a merchant tag (RFID tag), a merchant datum (information pertaining to a retail facility). (see abstract; para. 45).
Perez discloses a system wherein the datum is associated at least with the payment methods accepted at the merchant. (see para. 32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ahmad Athsani, Singh and Perez to incorporate provision of information to the user via a merchant tag, as disclosed by Singh, as storage of merchant data in a tag (e.g., such as a tag attached to merchant merchandise) is standard and conventional.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified Ahmad Athsani, Singh and Perez to incorporate provision of information pertaining to accepted payment methods, as disclosed by Perez, as identification of accepted payment methods is critical information required by a user for a user to complete a potential transaction with the merchant.
Regarding Claim 8, Ahmad Athsani discloses a system wherein the user device application is further configured to detect the one or more merchant symbols through a digital photograph or video of the merchant symbol. (see abstract).
Regarding Claim 10, such claim recites substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 11, Ahmad Athsani discloses a system configured to:
detect other one more merchant symbols (other objects) associated with another merchant. (see para. 4).
Ahmad Athsani does not explicitly teach a system configured to retrieve alternative information associated with the another merchants.
However, it would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to have modified Ahmad Athsani, Singh and Perez by duplicating claim elements contained in Ahmad Athsani (e.g., the first iteration of retrieving a first information about a first merchant) to create additional claim elements (e.g., a second iteration of retrieving a second information about a second merchant) wherein each additional claim element would serve the same function as the original claim element. In the combination each element, original element and additional element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the combination were predictable. see MPEP §2144.04 (VI)(B).
Ahmad Athsani does not teach a system wherein the alternative information is alternative payment information comprising at least one selected from the group of acceptance of credit cards, acceptance of debit cards, or acceptance of cash.
Perez discloses a system wherein the user device application is further configured to:
retrieve, one or more alternative payment information associated with the another merchant, wherein the alternative payment information comprises at least one selected from the group of acceptance of credit cards, acceptance of debit cards, or acceptance of cash (payment cards, such as credit cards, debit cards and charge cards). (see para. 4 and 37).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified Ahmad Athsani, Singh and Perez to incorporate provision of information pertaining to accepted payment methods, as disclosed by Perez, as identification of accepted payment methods is critical information required by a user for a user to complete a potential transaction with the merchant.
Regarding Claim 12, Ahmad Athsani discloses a system wherein the user device comprises at least one selected from the group of a mobile device, augmented reality glasses, and smart watch. (see abstract).
Regarding Claim 20-27, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 28, Ahmad Athsani discloses a method comprising:
determining that there is no known merchant symbol matching the one or more merchant symbols (unknown object). (see para. 43);
turning off (turn off or deactivated) the camera and turning on (activate) the camera for detecting merchant symbols. (see para. 35, 41 and 48).
Ahmad Athsani does not explicitly teach a method wherein the camera is turned on/turned off based upon the determination that is no known merchant symbol matching the other one or more merchant symbols. Ahmad Athsani allows for the camera to be turned on and off at any time. (see para. 35, 41 and 48).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified Ahmad Athsani, Singh and Perez to condition turning off the camera, as disclosed by Amhad Athsani, when a determination that no known merchant symbol matches, as the inability to match has completed the method performed.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ahmad Athsani, Singh and Perez, as applied to Claim 1 above, and further in view of Rathod (US PG Pub. 2021/0042724).
Regarding Claim 9, Ahmad Athsani does not teach a system wherein the user device application is further configured to initiate, upon determining whether the merchant accepts one or more payment methods, a haptic feedback on the user device.
Rathod disclose a system wherein the user device application is further configured to initiate, upon determining whether the merchant accepts one or more payment methods, a haptic feedback on the user device. (see para. 54-57).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified Ahmad Athsani, Singh and Perez to incorporate haptic feedback, as disclosed by Rathod, thereby providing an alternative means to communicate information to the user.
8. Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered. Some arguments have been rendered moot based upon new references utilized in the current rejection. However, some arguments remain relevant, as they apply to a reference and/or rejection still utilized in the current rejection. Such arguments have been fully considered but are not persuasive and are addressed below.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 14-17.
Specifically, the Applicant argues:
MPEP § 2106.04(a)(2) provides that if a claim, under the broadest reasonable interpretation, covers concepts that can be performed in the human mind, or by a human using a pen and paper, including observation, evaluation, judgment, or opinion, it will be considered as falling within the "mental processes" grouping of abstract ideas. Applicant respectfully disagrees that the pending claims are directed to mental processes. See Arguments, p. 16 – emphasis added.
The Examiner respectfully disagrees.
First, “directed to” is not the proper standard for analysis under Step 2A Prong One of the §101 Guidelines.
MPEP §2106.04(a) recites:
Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above. The groupings of abstract ideas, and their relationship to the body of judicial precedent, are further discussed in MPEP § 2106.04(a)(2).
The proper standard under Step 2A Prong One of the §101 Guidelines is whether the claims recite an abstract idea. The claims recite an abstract idea, specifically the claims recite an abstract idea under (i) a fundamental economic practice and (ii) a mental process.
Second, a mental process is a process that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. See MPEP §2106.04(a)(2)(III)(A).
Additionally, mental processes include processes that would require “the use of a physical aid, such as pen and paper.” See MPEP §2106.04(a)(2)(III)(B). And processes that utilize a computer. See MPEP §2106.04(a)(2)(III)(C).
The claimed invention recites a system for identifying an acceptable payment method. The claimed invention detects (i.e., observes) one or more merchant symbols (e.g., a merchant name or merchant location) associated with one or more merchants, and determines (i.e., evaluates) whether the one or more merchant symbols matches one or more known merchant symbols. The claimed invention then identifies (i.e., issues a judgment) a merchant based on a match between the one or more merchant symbols and the one or more known merchant symbols. The claimed invention then determines (i.e., evaluates) a geolocation of the identified merchant based upon the geolocation associated the user, and determines (i.e., issues a judgment) whether the identified merchant at the specific geolocation accepts one or more predetermined payment methods.
The claimed invention recites a mental process.
Admittedly, the mental process is performed utilizing a camera, a user device and a user device application. However, those are additional claim elements (i.e., computer elements) are analyzed under Step 2A Prong Two, not Step 2A Prong One, to determine whether any additional elements in the claim integrate the abstract idea into a practical application. See MPEP §2106.05(f)(2).
Examiner notes that the Applicant has not addressed the classification of claimed invention as reciting a fundamental economic practice, a subcategory of certain methods of organizing human activity.
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 18-20.
Specifically, Applicant argues:
Contrary to the assertions in the Final Office Action and as discussed above, the claimed subject matter includes additional elements that improve the function of an augmented reality enabled display and the overlay of the determination message on the display by clearly associating the message with the merchant or merchant symbol so the user can readily identify which merchant or storefront the message is addressing, as shown in, e.g., FIG. 7B and described in paragraphs [0077] and [0079] of the present application. For example, claim 1 recites "positioning the determination message on the augmented reality enabled display based upon at least one selected from the group of a location of the identified merchant and the detected one or more merchant symbols displayed on the augmented reality enabled display." See Arguments, p. 19.
The Examiner respectfully disagrees.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
However, the specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, an improvement to conventional technology or technological processes, or is addressing a technology-based problem.
Additionally, the specification does not provide any evidence that there is even a technical (i.e., technology-based) problem to be solved. For example, the specification does not provide any evidence that existing technology was incapable of performing the claimed functions (i.e., positioning the determination message based upon the location of the identified merchant or the detected merchant symbols displayed on the display) but for the claimed technical solution.
Examiner notes that the improvement has to be an improvement to technology, not an improvement to abstract idea. Better user comprehension of the displayed message (i.e., clearly associating the message with the merchant or merchant symbol so the user can readily identify which merchant or storefront the message is addressing) does not improve the technology.
Additionally, MPEP §2106.05(f)(1) recites:
Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743 – emphasis added.
Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished.
For example, if there was a technical problem (e.g., existing technology was incapable of performing the claimed functions) then the claims should recite the details of the technical solution (e.g., how existing technology was improved to overcome this inability). However, the claims, as written, provide no such details and merely recite that the claimed functions (i.e., the outcome) are being performed. The claims, as written, just recite that there is some undisclosed relationship between determination message and other displayed images (i.e., message positioning based upon the location of the identified merchant or the detected merchant symbols displayed on the display).
Applicant also argues that the claims are similar to Example 37: Relocation of Icons on a Graphical User Interface and tries to establish eligibility through a perceived similarity to Office Examples. See Arguments, pp. 19-20.
These arguments are acknowledged but are not found persuasive. Office Examples are meant to be for training purposes and do not have the force of legal precedent.
As in DDR Holdings, LLC v. Hotels.com (Fed. Cir. 2014), Example 37 was deemed to be a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” See DDR Holdings, LLC v. Hotels.com, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014).
Specifically, Example 37 addressed the technology-based problem of traditional software not automatically organizing icons so that the most used icons are located near the “start” or “home” icon, where they can be easily accessed. See Subject Matter Eligibility Examples: Abstract Ideas, 01/07/2019, p. 1. The technology-based solution was providing a method for rearranging icons on a graphical user interface (GUI), wherein the method moves the most used icons to a position on the GUI, specifically, closest to the “start” icon of the computer system, based on a determined amount of use. See Subject Matter Eligibility Examples: Abstract Ideas, 01/07/2019, p. 1.
This allowed Example 37 to be deemed an improvement to graphic user interface technology by relocating icons on a graphical user interface based upon their usage.
Examples 37 do not demonstrate integration of an abstract idea into a practical application just because they are improvements over the prior art but because they are directed to addressing technological deficiencies in prior art systems (i.e., specifically, the graphic user interface of a computer) thereby improving the functioning of the prior art systems (i.e., computers).
However, the specification in the instant case does not provide evidence that that the claimed invention is directed to solve a technological problem via an improvement to the functioning of a computer or other technology.
Software Per Se
Applicant argues that previously asserted §101 rejection, asserting that Claims 1-5 and 7-12 are directed to non-statutory subject matter is unwarranted. See Arguments, p. 22.
Specifically, Applicant argues:
Claims 1-5 and 7-12 are also rejected under 35 U.S.C. § 101 for being directed to non-statutory subject matter. The Office asserts that "a user device application" denotes software or a computer program. Claim 1 has been amended to recite "a user device application comprising stored instructions that when executed cause the user device application to." Therefore, claims 1-5 and 7-12 are directed to patent-eligible subject matter under 35 U.S.C. § 101. See Arguments, p. 22.
The Examiner respectfully disagrees.
MPEP §2106.03(I) recites:
Non-limiting examples of claims that are not directed to any of the statutory categories include:
Products that do not have a physical or tangible form, such as information (often referred to as "data per se") or a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations.
Claims 1-5 and 7-12 are for a system, a system comprising a user device application. An application is software (i.e., programming instructions) designed to perform specific tasks. A system comprising a user device application, without more, is software per se.
The amended claim language does not resolve this issue. The system, as currently written, is still software per se.
§103 Rejection
Applicant argues that the previously asserted prior art (Ahmad Athsani and Perez) fail to teach or suggest a system configured to “position the determination message on the augmented reality enabled display based upon at least one selected from the group of a location of the identified merchant and the detected one or more merchant symbols displayed on the augmented reality display.” See Arguments, p. 26. methods.” See Arguments, p. 21.
The Examiner respectfully disagrees.
Ahmad Athsani recites:
A user may switch between the different modes and have the corresponding information presented on her mobile device. In a specific application of the present invention, a user named Juanita encounters a restaurant in her old home town. She thought that there was a different store located at the encountered restaurant's site. She activates the camera of her UAR enabled mobile device, holds up her mobile device in front of the restaurant, and selects the encyclopedia mode. The mobile device then presents web links to the restaurant's information, which includes historical information about the building, indicating that the restaurant is new and that a cafe used to be housed in this building. Juanita now realizes that the restaurant opened since she was last in town. See para. 35 – emphasis added.
The search server may then send the search results back to the UAR server 608, which sends the search results to a mobile presentation server 614. The mobile presentation server 614 may also receive the captured image/video 606 from UAR server 608 and operate to overlay the search results over the captured image/video 606. The overlaid image/video may then be sent by the mobile presentation server 614 back to the UAR server 608, which then sends the overlaid image/video to user A's mobile device 604. The overlaid image/video may be presented on the mobile device's display. The overlaid image/video may also be recorded in mobile presentation database 615 for later retrieval by the UAR or by the user. The UAR may also have one or more UAR databases 609 for storing information for facilitating the various modes, e.g., storing associations between specific actions and object type, action references, decision support references, or any suitable information described herein. The UAR database 609 may also be used to record video streams, including imaged objects and meta data, to be re-experienced by a user or for other business reasons, e.g., advertising an establishment by using a particular video stream or image. See para. 66 – emphasis added.
Ahmad Athsani discloses a system wherein the determination message (i.e., the search results) is positioned (i.e., overlaid) on the augmented reality enable display (i.e., the mobile device’s display) on a location of the identified merchant (i.e., the image of the restaurant). See para. 35 and 66.
9. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 April 1, 2026
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