DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 11, 2025 has been entered.
Claims 1, 8-9, 11, and 18 have been amended.
Claims 5 and 15 have been cancelled.
Claims 21-22 have been added.
Claims 1-4, 6-14, and 16-22 are pending.
The effective filing date of the claimed invention is January 6, 2021.
Response to Amendment
Amendments to Claims 1, 8-9, 11, and 18 are acknowledged. Amendments to Claims 1 and 11 were sufficient to overcome the 38 USC 103 rejection of Claims 1-4, 6-14, and 16-22.
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 1-4, 6-14, and 16-22 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 1-4, 6-10, and 21 are processes and Claims 11-14, 16-20, and 22 are machines). Accordingly, step 1 is satisfied.
Step 2A – Prong 1: was there a Judicial Exception Recited
Claim 1 (and similarly Claim 11) recites the following abstract concepts that are found to include “abstract idea.” Any additional elements will be analyzed under Step 2A-Prong 2 and Step 2B:
a communications module;
one or more processors coupled with the communications module; and
a memory coupled to the one or more processors and storing processor-executable instructions which, when executed by the one or more processors, configure the server to:
generate, by the server, a machine-readable code encoding a terminal identifier in a web address associated with the server, the web address for enabling completion of a transaction using a value-added service (See MPEP 2106.04(a)(2)(II) commercial or legal interaction and thus organizing human activity, processing information through a clearing-house, where the business relation is the relationship between a party submitted a credit application (e.g., a car dealer) and funding sources (e.g., banks) when processing credit applications, Dealertrack v. Huber, 674 F.3d 1315, 1331, 101 USPQ2d 1325, 1339 (Fed. Cir. 2012).);
transmit, by the server and to a point-of-sale terminal processing the transaction and for display by the point-of-sale terminal, the machine-readable code encoding the web address for enabling completion of the transaction using the value-added service (See MPEP 2106.04(a)(2)(II) commercial or legal interaction and thus organizing human activity, processing information through a clearing-house, where the business relation is the relationship between a party submitted a credit application (e.g., a car dealer) and funding sources (e.g., banks) when processing credit applications, Dealertrack v. Huber, 674 F.3d 1315, 1331, 101 USPQ2d 1325, 1339 (Fed. Cir. 2012).);
receive a request from a device that scanned the machine-readable code displayed by the point-of-sale terminal, the request received at the web address encoding the terminal identifier (See MPEP 2106.04(a)(2)(II) commercial or legal interaction and thus organizing human activity, processing information through a clearing-house, where the business relation is the relationship between a party submitted a credit application (e.g., a car dealer) and funding sources (e.g., banks) when processing credit applications, Dealertrack v. Huber, 674 F.3d 1315, 1331, 101 USPQ2d 1325, 1339 (Fed. Cir. 2012).);
in response to receiving the request from the device, determine, based on the terminal identifier encoded in the web address, that the transaction may be processed using a value-added service (See MPEP 2106.04(a)(2)(II) commercial or legal interaction and thus organizing human activity, processing information through a clearing-house, where the business relation is the relationship between a party submitted a credit application (e.g., a car dealer) and funding sources (e.g., banks) when processing credit applications, Dealertrack v. Huber, 674 F.3d 1315, 1331, 101 USPQ2d 1325, 1339 (Fed. Cir. 2012).); and
in response to determining that the transaction may be processed using the value-added service, enable completion of the transaction using the value-added service (See MPEP 2106.04(a)(2)(II) commercial or legal interaction and thus organizing human activity, processing information through a clearing-house, where the business relation is the relationship between a party submitted a credit application (e.g., a car dealer) and funding sources (e.g., banks) when processing credit applications, Dealertrack v. Huber, 674 F.3d 1315, 1331, 101 USPQ2d 1325, 1339 (Fed. Cir. 2012).).
Claim 1 (and similarly Claim 11) is directed to a series of steps for determining that a transaction may be processed using a value-added service, which is a commercial interaction and thus grouped as a certain method of organizing human interactions. The mere nominal recitation of communication module, processors, memory, point-of-sale terminal, and a device, does not take the claim out of the method of organizing human interactions. Thus, Claim 1 (and similarly Claim 11) recites an abstract idea.
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)
The identified abstract idea of exemplary Claim 1 (and similarly Claim 11) is not integrated into a practical application. The additional elements are: communication module, processors, memory, point-of-sale terminal, and a device that implements the underlying abstract idea. These additional elements are broadly recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to merely using a computer as a tool to perform an abstract idea - see MPEP 2106.05(f).
Accordingly, alone and in combination, these additional elements do not integrate the abstract idea into a practical application. Claim 1 (and similarly Claim 11) is directed to an abstract idea.
Step 2B – Significantly More Analysis
Claim 1 (and similarly Claim 11) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and in combination, steps a) generate a machine-readable code encoding a terminal identifier, b) transmit to the point-of-sale terminal to display the machine-readable code, c) receive a request from a device that scanned the machine-readable code, d) determine that the transaction may be processed using a value-added service, and e) enable completion of the transaction using the value-added service, etc., do not add significantly more to the exception because they amount to merely using a computer as a tool to perform an abstract idea - see MPEP 2106.05(f). Claim 1 (and similarly Claim 11) is ineligible.
Claim 2 (and similarly Claim 12) recites the abstract idea of organizing human activity. See MPEP 2106.04(a)(2)(II). For the additional limitation of a transfer token, the examiner refers to the "apply it" rationale of MPEP 2106.05(f).
Claim 3 (and similarly Claim 13) recites the abstract idea of organizing human activity. See MPEP 2106.04(a)(2)(II). For the additional limitation of a value-added service server, the examiner refers to the "apply it" rationale of MPEP 2106.05(f).
Claim 4 (and similarly Claim 14) recites the abstract idea of organizing human activity. See MPEP 2106.04(a)(2)(II).
Claim 6 (and similarly Claim 16) recites the abstract idea of organizing human activity. See MPEP 2106.04(a)(2)(II). For the additional limitation of an interface, the examiner refers to the "apply it" rationale of MPEP 2106.05(f).
Claim 7 (and similarly Claim 17) recites the abstract idea of organizing human activity. See MPEP 2106.04(a)(2)(II).
Claim 8 (and similarly Claim 18) recites the abstract idea of organizing human activity. See MPEP 2106.04(a)(2)(II).
Claim 9 (and similarly Claim 19) recites the abstract idea of organizing human activity. See MPEP 2106.04(a)(2)(II).
Claim 10 (and similarly Claim 20) recites the abstract idea of organizing human activity. See MPEP 2106.04(a)(2)(II).
Claim 21 (and similarly Claim 22) recites the abstract idea of organizing human activity. See MPEP 2106.04(a)(2)(II).
Prior Art
The prior arts of record fail to teach the overall combination as claimed in Claims 1-4, 6-14, and 16-22. Therefore, it would not have been obvious to one of ordinary skill in the art to modify the prior art to meet the combination above without unequivocal hindsight and one of ordinary skill would have no reason to do so. Exemplary claim 1 recites the following:
A server comprising:
a communications module;
one or more processors coupled with the communications module; and
a memory coupled to the one or more processors and storing processor-executable instructions which, when executed by the one or more processors, configure the server to:
generate, by the server, a machine-readable code encoding a terminal identifier in a web address associated with the server, the web address for enabling completion of a transaction using a value-added service;
transmit, by the server and to a point-of-sale terminal processing the transaction and for display by the point-of-sale terminal, the machine-readable code encoding the web address for enabling completion of the transaction using the value-added service;
receive a request from a device that scanned the machine-readable code displayed by the point-of-sale terminal, the request received at the web address encoding the terminal identifier;
in response to receiving the request from the device, determine, based on the terminal identifier encoded in the web address, that the transaction may be processed using a value-added service; and
in response to determining that the transaction may be processed using the value-added service, enable completion of the transaction using the value-added service. (Emphasis added to highlight features that distinguish over the prior art).
US Pat Pub 2015/0248664 “Makhdumi” discloses transforming real-time-generated merchant-product Quick Response codes via SNAP components into virtual wallet card-based transaction purchase notifications. Payment information and VAS data can also be provided based on location. A request for payment information can be received. A location can be determined, and a merchant associated with the location can also be determined. Payment information and/or VAS data can be selected based on the merchant and/or location, and can be provided for a payment transaction. Makhdumi fails to disclose generating a machine-readable code encoding a terminal identifier as a parameter of a web address, the web address for enabling completion of the transaction using a value-added service, and determining based on the terminal identifier encoded in the web address, that the transaction may be processed using the value-added service.
US Pat 9,875,469 “Chin” teaches using the identifier of the sales transaction, the first customer device pays a portion of the itemized list of the goods and services at the merchant device. The second customer device establishes communication between the second customer device and the merchant device. Using the identifier, the second customer device pays a remaining portion of the itemized list of the goods and services at the merchant device. Chin fails to teach generating a machine-readable code encoding a terminal identifier as a parameter of a web address, the web address for enabling completion of the transaction using a value-added service, and determining based on the terminal identifier encoded in the web address, that the transaction may be processed using the value-added service.
US Pat Pub 2017/0140350 “Jamkhedkar” teaches configuring flexible software frameworks for a merchant's point-of-sale device and a user's mobile device. A framework for a merchant's device may allow for user check-in with the merchant, and may utilize multiple different communication protocols to receive tenders and non-tenders from the user's mobile device. Thus, the user's mobile device may communicate with the merchant device to provide tokens that may be resolved by the merchant using the payment provider and/or a payment host to receive payment processing confirmation. Jamkhedkar fails to teach generating a machine-readable code encoding a terminal identifier as a parameter of a web address, the web address for enabling completion of the transaction using a value-added service, and determining based on the terminal identifier encoded in the web address, that the transaction may be processed using the value-added service.
US Pat Pub 2013/0138518 “White” teaches facilitating a wireless transaction by coupling or associating an identifier to a location. The identifier is read, retrieved, or received by a customer's wireless communication device to connect to a POS terminal. Once connected, the wireless communication device sends a location identifier to the POS terminal, so that the POS terminal can associate the wireless communication device with the location. White fails to teach generating a machine-readable code encoding a terminal identifier as a parameter of a web address, the web address for enabling completion of the transaction using a value-added service, and determining based on the terminal identifier encoded in the web address, that the transaction may be processed using the value-added service.
Response to Arguments
35 USC 101
Applicant's arguments filed December 11, 2025 have been fully considered but they are not persuasive.
Step 2A, Prong 1
Applicant argues that the rejection fails to identify specific recitations in the claims that recite abstract ideas, and that merely indicating that almost the entire independent claims are drawn to an abstract idea has led to overlooking aspects of the claim that make the claim patent eligible. Review of the rejection under Step 2A, Prong 1 shows a detailed analysis of each independent claim limitation and appropriately identified abstract idea. Applicant has failed to provide specific details about the alleged overlooked aspects that would make the claim eligible under Step 2A, Prong 1.
Step 2A, Prong 2
Applicant argues that the recited features apply the judicial exception in a meaningful way beyond generally linking the use of the exception to a particular technological environment, such that the claims are more than a drafting exercise aimed at monopolizing the exception MPEP 2106.05(e). Arguing that the following combination of claim features would not effectively monopolize the abstract idea and are more than merely an application of the abstract idea itself: "transmit, by the server and to a point-of-sale terminal processing the transaction and for display by the point-of sale terminal, the machine-readable code encoding the web address for enabling completion of the transaction using the value-added service", "receive a request from a device that scanned the machine-readable code displayed by the point-of-sale terminal, the request received at the web address and encoding the terminal identifier", and "in response to receiving the request from the device, determine, based on the terminal identifier encoded in the web address, that the transaction may be processed using a value-added service". Additionally Applicant argues that the inclusion of claim features such as a "machine-readable code encoding a web address, the web address encoding a terminal identifier identifying the point-of-sale terminal" meaningfully limit the claim beyond generally linking the judicial exception to a technological environment and transforms it into patent-eligible subject matter.
MPEP 2106.05(e) states that the “claim should add meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment to transform the judicial exception into patent-eligible subject matter. The phrase “meaningful limitations” has been used by the courts even before Alice and Mayo in various contexts to describe additional elements that provide an inventive concept to the claim as a whole. The considerations described in MPEP § 2106.05(a)-(d) are meaningful limitations when they amount to significantly more than the judicial exception, or when they integrate a judicial exception into a practical application.” Further in Diamond v. Diehr “The Court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time, and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products.” In this example the abstract idea was applied to patent eligible limitations of molding rubber products. This contrasts with the claims of this case. The claims of this case receive information, encode information, and share the encoded information. These are all features that are capable of being completed by a person using pen and paper or automated through the use of computer. MPEP 2106.04(a)(2)(III) discloses “The courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. “ and “Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, “[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” “
The applicant’s argument is flawed, in that the steps of generating machine-readable code encoding a web address, receiving a request from a device, and determining that a transaction may pe processed are all steps directed to an abstract idea. The abstract idea fails to be implemented to a patent eligible limitation, such as molding rubber.
Step 2B
Applicant argues that, when all features or operations recited in the respective claims are considered as a combination, each claim is directed to significantly more that the abstract idea, and that when the abstract idea is considered together with the additional features, the claims cannot be characterized as "well-understood, routine, conventional activity in the field" as of the priority date, as evidenced at least by the fact that nothing on record in the cited references suggests that these features were well-understood, routine or conventional activity in the field of terminal devices. Applicant fails to distinguish between the abstract idea and the additional elements of the claims when determining what is well-understood, routine, conventional activity in the field. A point-of-sale terminal displaying a machine readable code, a server generating a machine-readable code, receiving a request from a device, and determining that a transaction may be processed based on determined information are all considered well-understood, routine, conventional activity in the field. The abstract ideas of the claims are not causing the additional elements to perform in a way that is not well-understood, routine, conventional activity in the field.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REVA R MOORE whose telephone number is (571)270-7942. The examiner can normally be reached M-Th: 9:00-6:00.
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/REVA R MOORE/Examiner, Art Unit 3627
/PETER LUDWIG/Primary Examiner, Art Unit 3627
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