DETAILED ACTION
This Non-Final Office action is in response to Applicant’s Response on 07/23/2025. Claims 1-19 are pending; claims 8-14 are withdrawn; and, claims 1-7 and 15-19 are examined below. The effective filing date of the claimed invention is 10/05/2022.
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 § 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 1-7 and 15-19 are rejected under 35 U.S.C. 101 because they are found to be directed to abstract idea.
Step 1 – Claims 1-7 are machine claims; claims 15-19 are manufacture claims. Step 1 is satisfied.
Step 2A, Prong 1 – Claim 1 (and similarly claim 15) recites the following abstract idea:
a processor configured to (see step 2A, Prong 2; Step 2B):
register commodity information for commodities in a sales transaction (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));
receive an operator selection designating an item of registered commodity information (see MPEP 2106.04(a)(2)(I) It is important to note that a mathematical concept need not be expressed in mathematical symbols, because “[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula.” In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014) (holding that claims to a ‘‘process of organizing information through mathematical correlations’’ are directed to an abstract idea));
receive editing data for editing the designated item of registered commodity information (see MPEP 2106.04(a)(2)(I) citing Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280, 103 USPQ2d 1425, 1434 (Fed. Cir. 2012) (identifying the concept of ‘‘managing a stable value protected life insurance policy by performing calculations and manipulating the results’’ as an abstract idea); MPEP 2106.04(a)(2)(I)(A) iv. organizing information and manipulating information through mathematical correlations, Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014). The patentee in Digitech claimed methods of generating first and second data by taking existing information, manipulating the data using mathematical functions, and organizing this information into a new form. The court explained that such claims were directed to an abstract idea because they described a process of organizing information through mathematical correlations, like Flook's method of calculating using a mathematical formula. 758 F.3d at 1350, 111 USPQ2d at 1721);
edit the designated item of registered commodity information according to the received editing data (see id., manipulating/editing the results based on mathematical correlations); and
cause a display screen (the display screen itself is addressed in Step 2A, Prong 2; Step 2B) to display the edited item of registered commodity information and the unedited item of registered commodity information together on the display screen (see e.g. MPEP 2106.04(a)(2)(C) citing Interval Licensing LLC, v. AOL, Inc., 896 F.3d 1335, 127 USPQ2d 1553 (Fed. Cir. 2018). The social activity at issue was the social activity of “’providing information to a person without interfering with the person’s primary activity.’” 896 F.3d at 1344, 127 USPQ2d 1553 (citing Interval Licensing LLC v. AOL, Inc., 193 F. Supp.3d 1184, 1188 (W.D. 2014)). The patentee claimed an attention manager for acquiring content from an information source, controlling the timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content. 896 F.3d at 1339-40, 127 USPQ2d at 1555. The Federal Circuit concluded that “[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,” observing that the district court “pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.” 896 F.3d at 1344-45, 127 USPQ2d at 1559.).
Accordingly, when these abstract idea concepts are viewed alone, and in ordered combination as a whole, the examiner finds claim 1 (and similarly claim 15) to recite abstract idea.
Step 2A, Prong 2 – Claim 1 (and similarly claim 15) is not found to integrate the abstract idea into practical application. Claim 1 recites the additional limitations of, “a processor configured to [implement the abstract idea]” and a display screen to display data. For the claimed processor, the examiner refers to the “apply it” rationale. See MPEP 2106.05(f) - As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”). For the claimed display screen, the examiner refers to MPEP 2106.05(h) citing Affinity Labs, In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204. See also MPEP 2106.05(a)(I) Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: vi. Instructions to display two sets of information on a computer display in a non-interfering manner, without any limitations specifying how to achieve the desired result, Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344-45, 127 USPQ2d 1553, 1559-60 (Fed. Cir. 2018).
Accordingly, when these additional limitations are viewed alone, and in ordered combination, the examiner finds that claim 1 (and similarly claim 15) are directed to abstract idea.
Step 2B – The examiner incorporates the findings from Step 2A, Prong 2 into Step 2B. See MPEP 2106.05(d), “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.”
If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility. The term “processor” is only mention 3 times in Applicant’s Specification in [0016] where it is described as “a processor.” This appears to be a generic processor with no written description to determine otherwise. As for the display, this is described in Applicant’s Specification as a simple off the shelf display. Again, there is no description that would point in other direction. See also MPEP 2106.05(d)(II):
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.
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)).
These WURC factors, in combination with the “apply it” finding and technological environment finding from Step 2A, Prong 2, the examiner finds that claim 1 does not include significantly more than the abstract idea, and is therefore directed to abstract idea.
Dependent claims – Claims 2, 16 recite more abstract idea as shown in the analysis for claim 1. Claims 3, 17 recites more abstract idea of selecting a portion of a screen and then translating that into a selection, as shown above. See also MPEP 2106.05(d)(II) 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. 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), where the back and forth button functionality is similar to a keypad in that when the uses clicks a button at a specific spot is causes something to happen. Claims 4, 18 recite more abstract idea as shown above. Claims 5 and 19 recite more abstract idea, MPEP 2106.04(a)(2)(II)(A-B). Claim 6 recites a first and second display, amongst others, which is “apply it” and not found to be a practical application/significantly more. Claim 7 recites more additional limitations that simply generally link the use of the judicial exception to a particular technological environment. This isgenerally not considered sufficient to render the claims eligible. See MPEP 2106.05(f). The claims in Alice Corp. v. CLS Bank International did not meaningfully limit the abstract idea of mitigating settlement risk. 573 U.S. 208, 110 USPQ2d 1976 (2014). In particular, the Court concluded that the additional elements such as the data processing system and communications controllers recited in the system claims did not meaningfully limit the abstract idea because they merely linked the use of the abstract idea to a particular technological environment (i.e., “implementation via computers”) or were well-understood, routine, conventional activity recited at a high level of generality. 573 U.S. at 225-26, 110 USPQ2d at 1984-85.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-7, 15-18 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by U.S. Pat. Pub. No. 2015/0310414 to Itani et al. (“Itani”)
With regard to claims 1 and 15, Itani discloses the claimed sales data processing apparatus, comprising:
a processor (see e.g. [0106] general purpose computer) configured to:
register commodity information for commodities in a sales transaction (see e.g. [0045] [0072]);
receive an operator selection designating an item of registered commodity information (see e.g. [0050] [0052]);
receive editing data for editing the designated item of registered commodity information (see e.g. [0054] [0055]);
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edit the designated item of registered commodity information according to the received editing data (see e.g. [0059] [0061]); and
cause a display screen to display the edited item of registered commodity information and the unedited item of registered commodity information together on the display screen (see e.g. [0053] and Fig. 6).
With regard to claims 2 and 16, Itani further discloses
cause the display screen to display an editing screen for editing items of commodity information (e.g. [0052-53]).
With regard to claims 3 and 17, Itani further discloses wherein the editing screen includes a numeric keypad operation element thereon (see e.g. [0054-55] number buttons).
With regard to claims 4 and 18, Itani further discloses where the edited item of registered commodity information and the unedited item of registered commodity information are side by side with each other on the display screen (see e.g. [0053]).
With regard to claim 6, Itani further discloses (Original) The sales data processing apparatus according to claim 1, further comprising:
a first display facing an operator of the sales data processing apparatus; and a second display facing a customer, wherein the display screen is a part of the first display (see e.g. [0028-29] checker; [0035-37] cashier; [0036] where the display unit 22a displays for example a sales registration screen and a payment screen).
With regard to claim 7, Itani further discloses
a cash drawer to receive payments for settling the sales transaction (see e.g. [0035]);
a receipt printer for printing a transaction receipt for the sales transaction (see e.g. [0105]); and
a product scanner for obtaining the commodity information for the commodities in the sales transaction (see e.g. [0037], [0031-31]).
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.
Claims 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Itani in view of U.S. Pat. Pub. No. 2007/0288256 to Speier (“Speier”).
With regard to claims 5 and 19, Itani discloses POS registration editing flows but does not teach displaying before/after valies in different font formats on the designation-editing screen. However, Speier teaches at e.g. [0067] teaches that it would have been obvious to one of ordinary skill in the editing art to include the ability to render edits with different font, such as being underlined, for insertions and strikethrough font for deletions i.e. different fonts based on edit status, and expressly lists other font format variants (face, size, weight, color) for the same purpose (Speier at [0067]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Itani edit screen with the ability to include different fonts for the various edits, as shown in Speier, where the benefit is the POS designer would be able to see the edits in a track changes format so that the edits and current formatting is shown to the designer, to provide the designer with more information and to ensure what was done was intentionally done so that the designer can review such edits in real time.
Conclusion
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/PETER LUDWIG/ Primary Examiner, Art Unit 3627