DETAILED ACTION
1. This Final Office Action is in response to Applicant’s Amendments filed 7/14/2025. Claims 1-18 are currently pending and claims 16-18 are new. The effective filing date of the present application is 9/26/2022.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
3. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 6 – “[A]n acquisition unit configured to acquire merchandise information.” See MPEP 2181. Underlined is the generic placeholder used by the claim and bolded is the functional language. The generic placeholder is not modified by sufficient structure, material or acts for performing the claim. Therefore, 112(f) is invoked.
Claim 6 (similarly claim 10) – “[A] settlement process unit configured to execute a settlement process.” See MPEP 2181. Underlined is the generic placeholder used by the claim and bolded is the functional language. The generic placeholder is not modified by sufficient structure, material or acts for performing the claim. Therefore, 112(f) is invoked.
Claim 6 (similarly claims 7-10) – “[A] display control unit configured to cause a display screen to display.” See MPEP 2181. Underlined is the generic placeholder used by the claim and bolded is the functional language. The generic placeholder is not modified by sufficient structure, material or acts for performing the claim. Therefore, 112(f) is invoked.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed a judicial exception (i.e., an abstract idea) without significantly more.
Step 1 – Statutory Categories
As indicated in the preamble of the claim, the examiner finds the claim is directed to a process, machine, manufacture, or composition of matter. Claims 1-18 are machines (systems or devices).
Step 2A – Prong 1: was there a Judicial Exception Recited
Claim 1 (similarly claims 6 and 11) recites the following abstract concepts that are found to include “abstract idea”:
1. A checkout device, comprising:
a display screen positioned to face a cashier area;
a storage unit storing a merchandise master;
a product scanner to identify an item being registered for purchase in a transaction; and
a processor configured to:
acquire merchandise information for the item being registered for purchase in the transaction from the merchandise master based on the identity of the item based on operation of the product scanner;
execute a settlement process for the transaction based on the acquired merchandise information for items registered for purchase in the transaction; and
cause the display screen to display at the same time:
a first display area in which a transaction amount for the transaction is displayed,
a second display area in which at least one settlement method to be used for the settlement process is displayed in a selectable manner, and
a third display area in which information related to a selected settlement method that has been selected via the second display area for the transaction is displayed (opinion).
Claim 1 (similarly claims 6 and 11) is directed to a series of steps for performing actions in displaying transaction information, which is a commercial/legal interaction and thus grouped as a certain method of organizing human interactions. Thus, the claim recites an abstract idea. See MPEP §2106.4(a).
Step 2A – Prong 2: Can the Judicial Exception Recited be integrated into a practical application
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond 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 - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
This judicial exception is not integrated into a practical application because the display screen, storage unit, product scanner, processor, display screen, acquisition unit, settlement process unit, display control unit, and non-transitory, computer-readable medium are merely generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply the abstract idea on a generic computer and invoking computers or other machinery merely as a tool to perform an existing process. Accordingly, alone and in combination, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. See Specification [0049] discussing the components as part of a CPU. The claim is directed to an abstract idea.
Step 2B – Significantly More Analysis
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and in combination the display screen, storage unit, product scanner, processor, display screen, acquisition unit, settlement process unit, display control unit, and non-transitory, computer-readable medium amounts to no more than mere instructions to apply the exception using a generic computer component. See 2106.05(f) discussing using of a computer or other machinery (product scanner) in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Thus, claims 1, 6, and 11 are not patent eligible.
Dependent claims 1-5, 7-10, 12-18 fail to provide additional elements that are sufficient to amount to significantly more than the judicial exception. Therefore, claims 1-5, 7-10, 12-18 are rejected for the same reasons as stated in the rejection from independent claim from which they depend.
Claim Rejections - 35 USC § 102
6. 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.
7. Claims 1-18 are rejected under 35 U.S.C. 103 as being anticipated by U.S. Pat. Pub. No. 2011/0073645to Okuma et al. (“Okuma”).
8. With regards to claim 1 (similarly claims 6 and 11), Okuma disclosed the limitations of,
a display screen positioned to face a cashier area (See Fig. 1 scan display (115).);
a storage unit storing a merchandise master (See [0035]-[0036] discussing the hard disk saving data files and programs including article names and pricing.);
a product scanner to identify an item being registered for purchase in a transaction (See [0023] discussing the article code input device.); and
a processor (See [0033]discussing the CPU of the POS terminal.) configured to:
acquire merchandise information for the item being registered for purchase in the transaction from the merchandise master based on the identity of the item based on operation of the product scanner (See [0023] discussing the article sales data processing apparatus the article code input device 111 as an input unit and [0048]-[0049] discussing the scan code comparison with the article files.);
execute a settlement process for the transaction based on the acquired merchandise information for items registered for purchase in the transaction (See [0023] discussing the article sales data processing apparatus 101 including POS terminal 112 as a settlement unit and [0048]-[0049] discussing the scan code comparison with the article files.); and
cause the display screen to display at the same time:
a first display area in which a transaction amount for the transaction is displayed (See [0057] discussing the article information display section 201 displays the total amount 208. See also Fig. 8.),
a second display area in which at least one settlement method to be used for the settlement process is displayed in a selectable manner (See [0064] discussing the request button display section 211, button images are displayed including a credit card settlement declaration button 211e, and a point use declaration button 211f. See also Fig. 8.), and
a third display area in which information related to a selected settlement method that has been selected via the second display area for the transaction is displayed (See [0079] discussing the settlement window 304 displays transaction amount information 307 about the earliest transaction as the first transaction. See also Fig. 8.).
Okuma does not teach only one display, but multiple displays.
Okuma discloses the claimed invention except for a single display screen depicting the information. It would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the information from multiple display screens onto one display screen, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1993). Please note that in the instant application, Spec. [0035], applicant has not disclosed any criticality for the claimed limitations.
9. With regards to claim 2 (similarly claims 7 and 12), Okuma disclosed the limitations of,
wherein an operation element for input of information necessary for performing the selected settlement method is displayed in the third display area as the information about the selected settlement method (See [0071]-[0084] discussing displaying of the settlement process and Fig. 1 scan display (115) depicted facing worker area.).
10. With regards to claim 3 (similarly claims 8 and 13), Okuma disclosed the limitations of,
wherein operation guidance for guiding a cashier in the cashier area operation according to the selected settlement method is displayed in the third display area as the information about the selected settlement method (See [0071]-[0084] discussing displaying of the settlement process.).
11. With regards to claim 4 (similarly claims 9 and 14), Okuma disclosed the limitations of,
wherein the processor is configured to shift screens displayed on the display screen without changing the positions and sizes of the first display area, the second display area, and the third display area (See [0097]-[0101] discussing the reposition of the display during the settlement process into a known position.).
12. With regards to claim 5 (similarly claims 10 and 15), Okuma disclosed the limitations of,
wherein an operation element corresponding to a settlement method is displayed in the second display area (See [0036] discussing the storing of image data files, [0064] discussing button images in the display files, and [0095]-[0096] discussing the displaying of the images in the windows.) , and
an icon indicating information about a subsequent process to be performed when using the corresponding settlement method is displayed in association with the operation element (See [0036] discussing the storing of image data files, [0064] discussing button images in the display files, and [0095]-[0096] discussing the displaying of the images in the windows.).
13. With regards to claim 16 (similarly claims 17 and 18), Okuma disclosed the limitations of,
wherein the third display area is blank until the selected settlement method has been selected via the second display area (See Fig. 8 depicting blank section of the screen as the information is selected and loaded.).
Response to Arguments
14. Applicant's arguments filed 7/14/2025 as §101 have been fully considered but they are not persuasive.
Applicant is arguing that the issues and deficiencies with the prior art represent an improvement to the technical field. The claims are directed to a business problem with a business solution. Any improvement found in the claim is an improvement to the abstract idea itself, rather than a technological improvement. Here, Applicant is merely using computer technologies as tools to implement the functions of the abstract idea, Applicant has not improved the computer or its functioning. Examiner notes MPEP §2106.05 states:
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103) is further discussed in MPEP § 2106.05(d).
Examiner also notes the grouping as a mental process was dropped as Applicant provided limitations that could not be performed in the human mind or with pen and paper. As to Applicant’s comments on the mental process of opinions, Examiner suggest reading Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) discussing the displaying of information as part of the abstract idea.
Examiner maintains position.
15. Applicant’s arguments with respect to the rejection(s) of claim(s) 1-18 under §102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of §103 rejection is made in view of Okuma.
Applicant argues “Okuma shows that various regions (1, 2, 3) shown in Okuma Figs. 6A/B and the like concern different transactions rather than the same transaction. That is, region 1 shows information about the earliest transaction, region 2 shows information about the next earliest transaction, and region 3 shows information about the latest transaction.” Examiner disagrees. Applicant is not evaluating the full reference, especially in view of Fig. 8 showing the processing of 1 transaction with the buttons in a third display area described in the Fig. 6 area of the prior citations.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Notice of References Cited, PTO form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JARED WALKER whose telephone number is (303)297-4407. The examiner can normally be reached Monday-Thursday 9:00 AM -5:00 PM CT.
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/MICHAEL JARED WALKER/Primary Examiner, Art Unit 3627 Michael.walker@uspto.gov