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 .
Status of the Claims
Claims 1, 4-5, 8, 11-12, 15, and 18-19, are presented for examination. Applicant filed a response to non-final Office action on 10/21/2025 amending claims 1, 4-5, 8, 11-12, 15, and 18-19; and canceling claims 2-3, 6-7, 9-10, 13-14, 16-17, and 20. In light of Applicant’s amendments, Examiner has withdrawn the previous § 101 and § 103 rejections. Examiner has, however, established new objection for claims 1, 4, 8, 11, 15, and 18; and new § 101 rejection for claims 1, 4-5, 8, 11-12, 15, and 18-19, in the instant Office action. Since the new § 101 rejection was necessitated by Applicant’s amendments, the instant rejection of claims 1, 4-5, 8, 11-12, 15, and 18-19, is FINAL rejection of the claims.
Foreign Priority
Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) based upon Application No. 2023-026521 filed in Japan (JP) on February 2, 2023. The receipt of the certified copy of this foreign application on February 20, 2024, is acknowledged. The priority claim to the foreign priority document in question was timely made in the application data sheet filed January 25, 2024.
Examiner’s Remarks
Patent Eligibility under § 101:
Applicant argues in pages 8-10 of Applicant’s Remarks:
Under Step 2A, Prong One, the analysis is whether a claim recites a judicial exception. The Office Action asserts that the claims recite a method of organizing human activity. Respectfully, the amended claims are not directed to this abstract idea. Instead, the claims recite a specific, technological solution to a technological problem inherent in modern point-of-sale (POS) systems, a solution that is rooted in computer technology and cannot be practically performed by a human.
Even if the claims were found to recite an abstract idea, they are nevertheless patent-eligible under Step 2A, Prong Two, because the claimed features, analyzed as a whole, integrate the abstract idea into a practical application that amounts to an improvement to the functioning of the POS terminal itself.
The claimed subject matter improves the technical field of POS terminals by providing a specific and particular solution to the problem of inefficient and error-prone refund processing. This is not merely an instruction to "apply it" on a generic computer. The claim recites a particular way to achieve the desired outcome. The processor is specifically configured to first, during the initial settlement, "generate data of the credit card settlement including reading method data indicating the selected reading method, and store the generated data in the memory." This feature of generating and storing a specific data element for a specific future purpose is a technological feature integral to the solution.
Furthermore, during the refund process, the terminal is configured to "generate a screen" providing the operator with an "automatic setting" option. When the operator selects the "automatic setting," the processor executes a specific series of technical steps that are inextricably tied to the POS terminal's hardware and software. It must "search the memory for data of a past credit card settlement," then "identify one of the contactless and contact reading methods that has been used for the past credit card settlement based on reading method data," and finally, "control one of the contactless and contact card readers corresponding to the identified reading method to read a credit card."
Examiner respectfully disagrees.
First, since Examiner placed the recited abstract idea under “certain methods of organizing human activity (i.e., commercial interactions),” the presence of computing device does not move the claim away from abstract idea (note: had examiner placed the recited abstract idea under “mental process” – the situation would be different). Therefore, the argument is moot under Step 2A – Prong 1.
Second, Applicant’s claim limitations are recited in high level of abstraction lacking details and specifics as to how a solution rooted in technology is achieve. It appears that instead of improving the POS terminal, Applicant is using the POS terminal in solving a business problem. As such, Applicant’s claimed steps do not recite a technological solution to a problem that would integrate an abstract idea into a practical application.
Therefore, instant claims 1, 4-5, 8, 11-12, 15, and 18-19, are not patent eligible under 35 U.S.C. § 101.
Prior Art under § 103: The prior art reference Hanley (US 2022/0309483 A1) discloses:
[T]he POS terminal including: a first card reader, configured to read first provided cards when enabled; a second card reader, configured to read second provided cards when enabled; and a dual reader controller, coupled to the first and second card readers.
Another prior art reference Document_775 (JP 2009/517775 A) discloses:
A method is disclosed in which a customer chip card that stores customer transaction records and a merchant POS terminal that stores predetermined data work together to approve the return of purchases from the customer to the merchant. The method includes (a) reading at least a portion of a customer transaction record from a customer chip card, and (b) comparing the data of the customer transaction record read from the customer chip card with predetermined data; (c) issuing a message from the POS terminal to the merchant based on the result of the comparison.
Hanley and Document_775 – alone or in combination with each other or other references – fail to disclose the limitations found in independent claims 1, 8, and 15, as an ordered combination of steps.
Claim Objections
Claims 1, 8, and 15, are objected to because of the following informalities:
in response to selecting the contactless reading method through the screen, control the contactless card reader to read a credit card,
in response to selecting the contact reading method through the screen, control the contact card reader to read a credit card,
in response to selecting the automatic setting through the screen,
search the memory for data of a past credit card settlement,
identify one of the contactless and contact reading methods that has been used for the past credit card settlement based on reading method data included in the data of the past credit card settlement, and
control one of the contactless and contact card readers corresponding to the identified reading method to read a credit card,
There should be definite article “the” in front of all the bolded instances of “credit card,” “data,” and “reading method data” because each of these has appeared in the claims 1, 8, and 15 previously, and there should be a colon “:” after “in response to selecting the automatic setting through the screen.” Further, in claims 1 and 15, each claim limitation should end in semi-colon “;” (here only part of these are pointed to; see claim 8 for the complete use of semi-colon “;”). Applicant could amend claims 1, 8, and 15, to recite:
in response to selecting the contactless reading method through the screen, control the contactless card reader to read [[a]] the credit card[[,]];
in response to selecting the contact reading method through the screen, control the contact card reader to read [[a]] the credit card[[,]];
in response to selecting the automatic setting through the screen[[,]]:
search the memory for the data of a past credit card settlement[[,]];
identify one of the contactless and contact reading methods that has been used for the past credit card settlement based on the reading method data included in the data of the past credit card settlement[[,]]; and
control one of the contactless and contact card readers corresponding to the identified reading method to read [[a]] the credit card[[,]];
Claims 4, 11, and 18, are objected to because of the following informality:
. . . control the first and second displays to display an image indicating the selected or identified reading method for reading a credit card . . .
There should be definite article “the” in front of the bolded “credit card” because it has appeared in the claims 1, 8, and 15 previously. Applicant could amend claims 4, 11, and 18, to recite:
. . . control the first and second displays to display an image indicating the selected or identified reading method for reading [[a]] the credit card . . .
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, 4-5, 8, 11-12, 15, and 18-19, are rejected under 35 USC § 101 because they are directed to non-statutory subject matter. The rationale for this finding is explained below.
The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself or a patent-eligible application of the judicial exception. See Alice Corp., 134 S. Ct. at 2355,110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is referred to as the Mayo test or the Alice/Mayo test (“the test”), is described in detail in Manual of Patent Examining Procedure (”MPEP”) (see MPEP § 2106(III) for further guidance). The step 1 of the test: It need to be determined whether the claims are directed to a patent eligible (i.e., statutory) subject matter under 35 USC § 101. Step 2A of the test: If the claims are found to be directed to a statutory subject matter, the next step is to determine whether the claims are directed to a judicial exception i.e., law of nature, natural phenomenon, and abstract idea (Prong 1). If the claims are found to be directed to an abstract idea, it needs to be determined whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong 2). Step 2B of the test: If the claims are directed to a judicial exception, the next and final step is to determine whether the claims recite additional elements that amount to significantly more than the judicial exception.
Step 1 of the Test:
When considering subject matter eligibility under 35 USC § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. Here, the claimed invention of claims 1, 4-5, 15, and 18-19, is a system, and thus, one of the statutory categories of invention. Further, the claimed invention of claims 8 and 11-12 is a series of steps, which is method (i.e., a process), which is also one of the statutory categories of invention.
Conclusion of Step 1 Analysis: Therefore, claims 1, 4-5, 8, 11-12, 15, and 18-19, are statutory under 35 USC § 101 in view of step 1 of the test.
Step 2A of the Test:
Prong 1: Claims 1-20, however, recite an abstract idea of performing refund processing on the past credit card settlement using the information of the past credit card settlement. The creation of performing refund processing on the past credit card settlement using the information of the past credit card settlement, as recited in the independent claims 1, 8, and 15, belongs to certain methods of organizing human activity (i.e., commercial interactions) that are found by the courts to be abstract ideas. The limitations in independent claims 1, 8, and 15, which set forth or describe the recited abstract idea, are found in the following steps:
“executing registration processing for registering one or more items for purchase” (claims 1, 8, and 15);
“performing a credit card settlement using one of the contactless and contact card readers corresponding to the selected reading method upon selection of one of a contactless reading method and a contact reading method after completing the registration processing” (claims 1, 8, and 15);
“generating data of the credit card settlement including reading method data indicating the selected reading method” (claims 1, 8, and 15);
“generating a screen through which the contactless reading method, the contact reading method, and an automatic setting can be selected for refund processing” (claims 1, 8, and 15);
“controlling the first display to display the generated screen” (claims 1, 8, and 15);
“controlling the contactless card reader to read a credit card in response to selecting the contactless reading method through the screen” (claims 1, 8, and 15);
“controlling the contact card reader to read a credit card in response to selecting the contact reading method through the screen” (claims 1, 8, and 15);
“searching the memory for data of a past credit card settlement in response to selecting the automatic setting through the screen” (claims 1 and 8);
“identifying one of the contactless and contact reading methods that has been used for the past credit card settlement based on reading method data included in the data of the past credit card settlement” (claims 1, 8, and 15);
“controlling one of the contactless and contact card readers corresponding to the identified reading method to read a credit card” (claims 1, 8, and 15); and
“performing refund processing on the past credit card settlement using the information upon receipt of information read from the credit card” (claims 1, 8, and 15).
Prong 2: In addition to abstract steps recited above in Prong 1, independent claims 1, 8, and 15, recite additional elements:
“a first display” (claims 1, 8, and 15);
“a memory” (claims 1, 8);
“a plurality of card readers, the card readers including a contactless card reader and a contact card reader” (claims 1, 8, and 15);
“a processor” (claims 1 and 15); and
“a POS server” (claim 15).
These additional elements are recited at a high level of generality (e.g., as a generic processor performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using a generic computer components. Further, the following limitations recite insignificant extra solution activity (for example, data gathering):
“reading information from a credit card” (claims 1, 8, and 15);
“storing the generated data in the memory” (claims 1 and 8);
“receiving a selection of one of a contactless reading method and a contact reading method” (claim 8);
“receiving information read from the credit card” (claim 1 and 8);
“storing data of sales transactions performed in a store” (claim 15);
“storing the generated data of the credit card settlement in the POS server” (claim 15); and
“acquiring data of the past credit card settlement in response to selecting the automatic setting through the screen” (claim 15).
These additional limitations do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception. The additional elements/limitations of independent claims 1, 8, and 15, here do not render improvements to the functioning of a computer or to any other technology or technical field (see MPEP § 2106.05(a)), nor do they integrate the abstract idea into a practical application under MPEP § 2106.05(b) (particular machine); MPEP § 2106.05(c) (particular transformations); or MPEP § 2106.05(e) (other meaningful limitations). Further, the combination of these additional elements/limitations is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements/limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Conclusion of Step 2A Analysis: Therefore, independent claims 1, 8, and 15, are non-statutory under 35 USC § 101 in view of step 2A of the test.
Step 2B of the Test: The additional elements of independent claims 1, 8, and 15, (see above under Step 2A - Prong 2) are described by Applicant’s Specification in following terms:
[0019] FIG. 1 is a block diagram showing a schematic configuration of a POS system 1 including a POS terminal device 100 and a POS server 200 according to an embodiment.
[0020] The POS system 1 includes the POS terminal device 100 and the POS server 200 configured to be able to communicate with each other via a communication network 2. As the communication network 2, a LAN (local area network) is typically used. However, as the communication network 2, one or a suitable combination of the internet, a VPN (virtual private network), a public communication network, a mobile communication network, and the like can be used other than a LAN.
[0021] The POS terminal device 100 performs processing for sales of merchandise items for a customer of a store. That is, the POS terminal device 100 is a transaction processing device that performs processing in connection with a transaction for merchandise sales. The POS terminal device 100 is also configured to execute a settlement as will be described later, as a part of the processing for a transaction, and also has a function as a settlement device.
[0022] The POS terminal device 100 is operated mainly by a salesclerk. The POS terminal device 100 is installed in a store or the like in the state of facing a work space for the salesclerk. A customer normally waits in a waiting space separately from the work space.
[0023] The POS terminal device 100 includes a processor 101, a main memory unit 102, an auxiliary memory unit 103, a salesclerk-side touch panel 104, a keyboard 105, a fixed scanner 106, a handheld scanner 107, a settlement terminal 108, a change unit 109, a receipt printer 110, a customer-side touch panel 111, a customer-side display unit 112, a communication unit 113, and a transmission path 114. The processor 101, the main memory unit 102, the auxiliary memory unit 103, the salesclerk-side touch panel 104, the keyboard 105, the fixed scanner 106, the handheld scanner 107, the settlement terminal 108, the change unit 109, the receipt printer 110, the customer-side touch panel 111, the customer-side display unit 112, and the communication unit 113 are connected to the transmission path 114. A part or all of the salesclerk-side touch panel 104, the keyboard 105, the fixed scanner 106, the handheld scanner 107, the settlement terminal 108, the change unit 109, the receipt printer 110, the customer-side touch panel 111, and the customer-side display unit 112 may be provided as a separate unit from a main unit including the processor 101, the main memory unit 102, the auxiliary memory unit 103, the communication unit 113, and the transmission path 114, and may be externally attached to the main unit.
[0024] The processor 101, the main memory unit 102, and the auxiliary memory unit 103 are coupled together via the transmission path 114 and together form a controller to execute information processing in connection with the control of the POS terminal device 100.
[0025] The processor 101 is a core component of the controller. The processor 101 executes information processing based on an information processing program such as an operating system, middleware, and/or an application program stored in the main memory unit 102 and the auxiliary memory unit 103, and thus controls each part of the POS terminal device 100 in order to perform various functions of the POS terminal device 100.
[0026] The main memory unit 102 includes a read-only memory area and a rewritable memory area. The read-only memory area of the main memory unit 102 stores a part of the foregoing information processing program. In some cases, the read-only memory area or the rewritable memory area of the main memory unit 102 may store necessary data for the processor 101 to execute processing to control each part. In the main memory unit 102, the rewritable memory area is used as a work area of the processor 101.
This is a description of general-purpose computing system. Thus, individually, the additional elements of independent claims 1, 8, and 15, are well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. Further, the additional limitations of “reading,” “acquiring,” “receiving,” and “storing” information amount to no more than mere instructions to apply the exception using generic computer components. For the same reason these additional limitations are not sufficient to provide an inventive concept. The additional limitations of “reading,” “acquiring,” “receiving,” and “storing” information were considered as insignificant extra-solution activity in Step 2A - Prong 2. Re-evaluating here in Step 2B, they are also determined to be well-understood, routine, and conventional activity in the field. Similarly to OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network), and 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), the additional elements of independent claims 1, 8, and 15, “read,” “acquire,” and “receive” information over a network in a merely generic manner. Further, similarly to Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93, the additional elements of independent claim 15 “store” information in memory. The courts have recognized “reading,” “acquiring,” “receiving,” and “storing” information functions as well-understood, routine and conventional when claimed in a merely generic manner. Therefore, the additional limitations of independent claims 1, 8, and 15, are well-understood, routine, and conventional. Further, taken as combination, the additional elements/limitations add nothing more than what is present when the additional elements/limitations are considered individually. There is no indication that the combination provides any effect regarding the functioning of the computer or any improvement to another technology.
Conclusion of Step 2B Analysis: Therefore, independent claims 1, 8, and 15, are non-statutory under 35 USC § 101 in view of step 2B of the test.
Dependent Claims: Dependent claims 4-5 depend on independent claim 1; dependent claims 11-12 depend on independent claim 8; and dependent claims 18-19 depend on independent claim 15. The elements in dependent claims 4-5, 11-12, and 18-19, which set forth or describe the abstract idea, are:
“a second display disposed on a first side on which the contactless and contact card readers are disposed, wherein the first display is disposed on a second side opposite to the first side, and the processor is configured to control the first and second displays to display an image indicating the selected or identified reading method for reading a credit card” (claim 4: further narrowing the recited abstract idea);
"a first hardware key by which the contactless reading method is selected; a second hardware key by which the contact reading method is selected; and a touch panel, wherein the screen shows a software key by which the automatic setting is selected through the touch panel" (claim 5: further narrowing the recited abstract idea);
“controlling the first display and a second display to display an image indicating the selected or identified reading method for reading a credit card, wherein the second display is disposed on a first side on which the contactless and contact card readers are disposed, and the first display is disposed on a second side opposite to the first side” (claim 11: further narrowing the recited abstract idea);
“the contactless reading method can be selected through a first hardware key of the POS terminal, the contact reading method can be selected through a second hardware key of the POS terminal, and the screen shows a software key by which the automatic setting can be selected through a touch panel of the POS terminal” (claim 12: further narrowing the recited abstract idea);
“a second display disposed on a first side on which the contactless and contact card readers are disposed in the store, wherein the first display is disposed on a second side opposite to the first side, and the processor is configured to control the first and second displays to display an image indicating the selected or identified one of the plurality of reading methods for reading a credit card” (claim 18: further narrowing the recited abstract idea); and
“a first hardware key by which the contactless reading method is selected; a second hardware key by which the contact reading method is selected; and a touch panel, wherein the screen shows a software key by which the automatic setting is selected through the touch panel” (claim 19: further narrowing the recited abstract idea); and
Conclusion of Dependent Claims Analysis: Dependent claims 4-5, 11-12, and 18-19, do not correct the deficiencies of independent claims 1, 8, and 15, and they are, thus, rejected on the same basis.
Conclusion of the 35 USC § 101 Analysis: Therefore, claims 1, 4-5, 8, 11-12, 15, and 18-19, are rejected as directed to an abstract idea without “significantly more” under 35 USC § 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Haddad (WO 2007/078431 A2) discloses: “The method involves reading a part of a customer transaction history from a customer chip card. The part of the customer transaction history read from the customer chip card is compared with the predetermined data that comprises merchant policy rules. A message is issued to the merchant from the point of sale (POS) terminal based upon the outcome of the comparison. The customer transaction history is stored on a microprocessor chip of the customer chip card, for each merchant outlet at which the customer has performed a transaction.”
Hill (WO 2005/104725 A2) discloses: “[0027] In one embodiment of the invention, the data repository (108) may be implemented as a set of files, a spreadsheet, a hierarchical and/or a relational database, a transactional database, or any other storage mechanism for data. In an embodiment of the invention, the data repository (108) contains archival data (114) as well as current data. The archival data (114) is used to keep track of past transactions, ensure the system stability, and return funds to a user in the case of a refund results from a past transaction.”
M. Bellare et al., "Design, implementation, and deployment of the iKP secure electronic payment system," in IEEE Journal on Selected Areas in Communications, vol. 18, no. 4, pp. 611-627, April 2000.
Applicant's amendment necessitated the new grounds 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRPI H. KANERVO whose telephone number is 571-272-9818. The examiner can normally be reached on Monday – Friday, 10 am – 6 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIRPI H KANERVO/ Primary Examiner, Art Unit 3691