DETAILED ACTION
This Final Office action is in response to Applicant’s Amendment on 03/17/2026. Claims 1, 5-11, and 13 are pending. The effective filing date of the claimed invention is 12/22/2020.
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 .
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.
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.
Claims 1, 5-8, 13 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.
Claim 1 recites “in a case where the predetermine application is not present” twice at lines 16 and 24; and “in a case where the predetermined application is present” twice at lines 22 and 29. In each of these instances, the second time this is recited should recite “in the case where the . . . .” It’s unclear to the examiner, based on the lack of proper antecedent basis, if these are the same cases or different cases. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 5-8, and 13 are rejected under 35 U.S.C. 101 because the claims are found to be directed to abstract idea.
Step 1 – Claims 1 and 5-8 are apparatus claims; claim 13 is process claim. Accordingly, step 1 is satisfied.
Step 2A, Prong 1 – Exemplary claim 1 (and similarly claim 13) recites the following abstract idea:
acquire, by an operation by a customer or a store clerk, product information about a product to be purchased by the customer (see e.g. MPEP 2106.04(a)(2)(II)(A-B); MPEP 2106.04(d)(III) citing Solutran associating scanning of items as longstanding commercial practice, abstract idea); and
display, on the touch panel display, a screen configured to receive a presence or an absence of a predetermined application in which settlement information of the customer is set and that operates on a customer mobile terminal device (see e.g. MPEP 2106.04(a)(2)(II)(B) citing Ultramercial);
receive, via the touch panel display, the presence or the absence of the predetermined application (see e.g. MPEP 2106.04(a)(2)(II)(A) fundamental economic practice); and
output payment information based on the product information in such a way that a customer mobile terminal device that makes an electronic settlement using the payment information and settlement information of the customer is configured to read the payment information (see e.g. MPEP 2106.04(a)(2)(III)(A) In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: a claim to “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, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016));
in a case where application is not present, customer device receives a link where settlement can be performed, and settlement is performed by the customer (e.g. MPEP 2106.04(a)(2)(II)(A) fundamental economic practice, customer does not have app so link is presented and clicked so that settlement of transaction can be performed);
in a case where application is present, outputting information includes outputting transaction data to application and electronic settlement occurs on the application (e.g. MPEP 2106.04(a)(2)(II)(A)).
Accordingly, claim 1 (and 13) are found to recite abstract idea.
Step 2A, Prong 2 – Claim 1 (and 13) are not found to integrate the abstract idea with practical application. Claim 1 recites the additional elements of: a touch panel display that presents a question and selectable button(s) to user; a memory storing instructions; and one or more processors configured to execute the instructions to perform the identified abstract idea. Claim 1 tangentially refers to “a customer mobile terminal device” but the customer mobile device is recited such that the output is able to be read by a mobile device, so the system does not necessarily include the mobile device. For the memory storing instructions and the one or more processors, see “apply it” rationale at MPEP 2106.05(f) (For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection). For example, the examiner finds that implementing an abstract idea on a generic computer (such as memory and processor(s), touch screen), does not integrate the abstract idea into a practical application in Step 2A Prong Two or add significantly more in Step 2B, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea (“apply it” rationale) of intermediated settlement on a generic computer. As for the mobile device, this is also not found to be practical application, as shown in MPEP 2106.04(d)(III) citing Solutran (The Federal Circuit then continued with its analysis under part one of the Alice/Mayo test finding that the claims are not directed to an improvement in the functioning of a computer or an improvement to another technology. In particular, the court determined that the claims “did not improve the technical capture of information from a check to create a digital file or the technical step of electronically crediting a bank account” nor did the claims “improve how a check is scanned.” Id. This analysis is equivalent to the Office’s analysis of determining that the exception is not integrated into a practical application at Step 2A Prong Two, and thus that the claims are directed to the judicial exception (Step 2A: YES).).
Accordingly, when viewed alone and in ordered combination, the additional elements are found to be directed to abstract idea.
Step 2B – Claim 1 (and 13) is not found to recite significantly more than the identified abstract idea. The additional element analysis of Step 2A, Prong 2 is equally applied to Step 2B. Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis. See NOEO 2106.05(d). The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition);
Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added)).
For the claimed limitation relating to a touch screen with a selectable button, see e.g. vi. A Web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Accordingly, when these elements are viewed alone and in ordered combination, the examiner maintains the finding that the claims are directed to abstract idea.
Dependent Claims – For claim 2 (and 3, 4, 15), the examiner refers to the recited abstract idea found in MPEP 2106.04(a)(2)(II)(A-B) (in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea.), and the additional element and WURC analysis of claim 1. For claim 4, the concept of having application present/not present scenarios is common fundamental economic practice of determining how to interact with the user, performed in “apply it” manner. For claim 5, see further abstract idea at e.g. MEPP 2106.04(a)(2)(III). For claim 6 (and 8) see MPEP 2106.04(a)(2)(III)(A) In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: a claim to “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, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). Claim 7 recites more abstract idea. MPEP 2106.04(a)(2)(II)(A-B). Claim 16 recites generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
Claim Rejections - 35 USC § 103
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 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, 7, 8, 13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. No. 2015/0248664 to Makhdumi et al. (“Makhdumi”) in view of U.S. Pat. Pub. No. U.S. Pat. Pub. No. 2013/0013499 to Kalgi (“Kalgi”).
With regard to claims 1, 8, and 13, Makhdumi discloses the claimed store mobile terminal device comprising
A touch screen (e.g. [0050] [0063] etc.);
a memory storing instructions; one or more processors (see e.g. [0028] POS terminal in the store; [0029-34]; [0136] [0140-141]) configured to execute the instructions to:
acquire, by an operation by a customer or a store clerk, product information about a product to be purchased by the customer (see e.g. [0028] For example, at a merchant store, the user may scan barcodes for a number of products, e.g., iota, at a point-of-sale ("POS") terminal in the store, e.g., 103a, and then indicate that the user wishes to checkout the scanned items. [0029-34]); and
display on the touch panel display a screen configured to receive a presence or an absence of a predetermined application in which settlement information of the customer is set and that operates on a customer mobile terminal device (see e.g. [0045] where the ability to zoom in and out on the touch screen is a displayed/touch indication of presence/absence of the application on the device, “With reference to FIG. 2D, in some implementations, the user may obtain a snapshot of the QR code displayed on the screen of the secure display or the POS terminal using a smartphone, e.g., 213. For example, the user's smartphone may have an app, e.g., 214, executing on it to detect and capture QR codes, e.g., 216a. For example, the user may utilize registration features, e.g., 215, to align the QR code within the display of the smartphone. The app may, in some implementations, provide the user with the ability to zoom in, e.g., 217, or zoom out, e.g., 218, of the QR code to ensure that the image of the QR code fits within the dimensions of the screen of the smartphone.”);
receive via the touch screen panel display the presence or the absence of the predetermined application (see e.g. [0045] ability to zoom in/out using touch screen);
output payment information based on the product information in such a way that a customer mobile terminal device that makes an electronic settlement using the payment information and settlement information of the customer is configured to read the payment information (see e.g. [0028] the POS terminal may generate a Quick Response ("QR") code, e.g., 105a, including information on the scanned product items, as well as merchant information for processing the purchase transaction via a payment network. The user may capture an image of the QR code generated by the POS terminal using a user device, such as a smartphone. For example, the user device may have executing on it an app for snapping the merchant-product QR code. The user device may utilize the information extracted from the QR code, along with information on a virtual wallet tied to the user device to initiate a purchase transaction. For example, the user device may utilize the product and merchant information extracted from the QR code, and financial payment information from the virtual wallet, to create a purchase transaction request, and submit the request to a payment network (e.g., credit card processing network).)
in a case where the application is present, outputting product information readable by the application, and making the electronic payment/settlement via the app (see e.g. [0047], [0048-50])
Makhdumi does not appear to disclose the situation of having a user select a button to indicate they do not have the app, then proceeding with sending link that allows the user to pay via the link.
For the limitation relating to presence/absence of the predetermined application on the customer mobile device, see Makhdumi discloses at [0045] that the user can provide touch screen indication by zoom in and zoom out within the app, where this is an indication that the user has the app on the phone as it would not be possible for the user to do that without the app. If there is no zoom, then there is no indication that the app is present. Having a simply button “app installed: yes or no” where the user can select one (instead of the automated detection of Kalgi, [0064] Fig. 4), is an obvious modification of the both Makhdumi and Kalgi. This is a predictable result, and design choice of the designing engineer, as the user selects a button and the button is an indication of yes app, or no the user does not have app.
For the limitation relating to different handling depending on whether the application is present or not present, see Kalgi at [0064] which shows client/device data including a “wallet app installed flag=true” in the checkout request sent from the client; see also Fig. 4 if ECP supported=yes, Merchant obtains payment via ECP, and if ECP supported = NO, Merchant prompts user to add ECP support and if the user does not add it “use alternate payment scheme if available”. See also Kalgi [0240-241]. When Kalgi does not appear to have the user make touch screen indication of the app or not, this is an obvious modification. To note, Makhdumi discloses at [0045] that the user can zoom in and zoom out within the app, where this is an indication that the user has the app on the phone as it would not be possible for the user to do that without the app. If there is no zoom, then there is no indication that the app is present. Having a simply button “app installed: yes or no” where the user can select one (instead of the automated detection of Kalgi), is an obvious modification of the both Makhdumi and Kalgi. This is a predictable result, as the user selects a button and the button is an indication of yes app, or no the user does not have app. For the app-not-present path, Kalgi at Fig. 4 shows the different paths:
PNG
media_image1.png
289
520
media_image1.png
Greyscale
For the limitations relating to the no-app case, outputting information for the customer mobile terminal device to receive an input of settlement information, see Kalgi [0064] which states that checkout information may be embodied in an HTML page including product, pricing, tax, shipping, offers, discounts, rewards, etc. and also “input fields to provide payment information to process the purchase transaction,” such as account holder name, account number, billing address, shipping address, etc. See also Fig. 4 showing when ECP NOT supported, and not being added, then customer uses alternate payment scheme if available. The alternate payment scheme is the HTML link process described in Kalgi at [0064]. See Kalgi [0049] If the user does not add EWCP support 430, a non-EWCP payment scheme may be used by the merchant if available. Kalgi [0050] For example, the user may be provided with a receipt and/or redirected to a merchant specified webpage. See FIG. 6 for additional details regarding completing the purchase transaction. See also Kalgi [0064] [0240-241] and [0349-350] where html page with input field for payment information.
Therefore, it would have been obvious to one of ordinary skill in the transaction art before the effective filing date of the claimed invention to modify Makhdumi’s snap mobile payment system with Kalgi’s determination of app present/not present, and then different payment handling depending on whether the application is present or not present, and allowing the user to pay via alternate payment scheme if app not available such as through the linked merchant website, as described throughout Kalgi. The added benefit is that the system can provide many ways for the customer to pay, as this is both beneficial for the flexibility of the customer to be able to pay through multiple means, and beneficial to the merchant as their goal is to process payment for the items to be purchased, and then allows them to do that in different situations where payment may be stopped if not applied. See Kalgi, [0064] and Fig. 4.
With regard to claim 7, Makhdumi further discloses the settlement information includes information for making the electronic settlement by a card (e.g. [0071]).
With regard to claim 16, Makhdumi further discloses the information for the customer mobile terminal device to receive an input of settlement information of the customer is link information accessible to a Web page having an input field in which the settlement information can be input (e.g. [0123] In one implementation, the wallet application may request the user to confirm reallocation of charges for the selected items to another payment account. . . . The receipt 1127 may be generated after the completion of the reallocation process. As discussed, the receipt shows that some charges have been moved from the Visa account to the FSA.).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Makhdumi, Kalgi, in view of U.S. Pat. Pub. No. 2003/0006098 to Wike et al. (“Wike”).
With regard to claim 5, Makhdumi further discloses
the one or more processors are further configured to execute the instructions to:
PNG
media_image2.png
289
562
media_image2.png
Greyscale
acquire the product information by an operation by the store clerk (see [0028] where the “user” scans the product information). Makhdumi is not clear on whether it’s the store employee or customer. Wike teaches at e.g. [0056] Fig. 7 that it would have been obvious to have cashier scan the items. See e.g. Wike, [0056] The checkout station 32 on the right side of FIG. 7 is the same as the checkout station 32 on the left side of FIG. 7 with the exception of the mode into which it has been converted. The checkout station 32 on the right side has been converted into the assisted checkout mode in order for a cashier 100 to assist a customer 95. The scanner 36 is oriented facing toward the side of the cashier bag well 33 so that items on the shelf 38 can be presented across the scanner 36 by the cashier and then bagged in the bag well 33. The terminal display 34 has been oriented to present its display face to the cashier 100 as well as slid partially over the bag well 39 for proper viewing by the cashier 100. Therefore, it would have been obvious to one of ordinary skill in the POS art before the effective filing date to modify Makhdumi’s checkout system to include the ability to have cashier scan the items, as shown in Wike, where the advantage/motivation is that the store clerk can assist a customer who is unable to do the scanning due to, for instance, a disability or having to watch over kids in the store. See Wike “to assist a customer 95.”
With regard to claim 6, Makhdumi further discloses the one or more processors are further configured to execute the instructions to:
receive selection of a cash settlement or selection of the electronic settlement;
when the cash settlement is selected, output cash payment information including information about a purchase price of the product based on the product information; and
when the electronic settlement is selected output the payment information (see e.g. [0004] [0071] presenting various options including such as cash account and credit/debit card).
Response to Arguments
Applicant's arguments filed 03/17/2026 have been fully considered but they are not persuasive.
The 112 rejections have been withdrawn based on the amendments provided.
As discussed during the interview, the examiner does not find that the claims are eligible. Applicant argues “First, one or more example embodiments consistent with claim 1 may address a practical challenge in the specific technological environment of in-store payment transactions, namely, how to accommodate both users who have the payment application installed and those who do not. This is not merely an abstract idea but a solution to a real-world technical problem in retail payment systems.” The examiner has found this, as claimed at least, to be a fundamental economic practice. As for the argument of concrete technological means, the examiner refers to Step 2A, Prong 2; Step 2B, referring to the “apply it” rationale.
For the prior art arguments, the examiner has brought in a new reference to address the added limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Ludwig whose telephone number is (571)270-5599. The examiner can normally be reached Mon-Fri 9-5.
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, Fahd Obeid can be reached at 571-270-3324. 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.
/PETER LUDWIG/Primary Examiner, Art Unit 3627
Prosecution Insights