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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/20/2025 has been entered.
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 and 4-22 are rejected under 35 U.S.C. 101 because, while the claims herein are directed to a method and/or system, which could be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes), the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Regarding claims 1, 15, and 16, the claims recite, in part, acquiring position information on a position of a first store at which payment of a user has been executed; acquiring payment target information on one of a first article or a first service being a target of the payment; acquiring balance information on a balance of payment method that has been used in the payment; acquiring advertisement information on an advertisement for one of a second article or a second service dealt in at a second store based on the position information, wherein the advertisement information is acquired based on the payment target information for one of the second article or the second service which tends to be purchased with one of the first article or the first service as complementary product; filter advertisements by comparing price information of the second article or the second service with a threshold range based on the balance information; determining priority criteria for the filtered advertisements, the priority criteria including at least one of: a number of times of display, or a date and time of registration of the advertisement information; selecting advertisement information having a high priority based on the priority criteria; generating display data on a payment completion screen based on an execution result of the payment and the advertisement information acquired, wherein the display data is in a data format which a payment application supports; and displaying a payment completion screen that relates to completion of the payment and includes the filtered advertisement indicated by the advertisement information; wherein the acquisition, filtering, and generation are configured to execute between receipt of a payment request and display of the payment completion screen; wherein the filtering is configured to narrow down a plurality of second stores to at least one second store being the display target of the advertisement based on the position information, payment target information or the balance information; wherein the number of second stores being the display targets of the advertisement is determined in accordance with a predetermined number.
The limitations, as drafted and detailed above, is directed towards targeting of advertisements to consumers based on payment and position information, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and more specifically advertising, marketing or sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of display control system (claim 1), processor (claims 1, 15), memory (claim 1), program code (claim 1, merely software identified by various titles throughout the claim language), store terminal (claims 1, 15, 16), GPS reception (claims 1, 15, 16, not actively claimed structure, merely claimed as a process performed on the store terminal) user terminal (claims 1, 15, 16), and non-transitory computer readable storage medium (claim 16). The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of acquiring, filtering, determining, selecting, generating, and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. There are no additional functional limitations to be considered under prong two.
Accordingly, the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) 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).
Rather, the limitations merely add 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)), or generally link the use of the
judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using display control system (claim 1), processor (claims 1, 15), memory (claim 1), program code (claim 1, merely software identified by various titles throughout the claim language), store terminal (claims 1, 15, 16), GPS reception (claims 1, 15, 16, not actively claimed structure, merely claimed as a process performed on the store terminal) user terminal (claims 1, 15, 16), and non-transitory computer readable storage medium (claim 16) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent- eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat' l Ass' n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computer (see Applicant specification Page 5 Line 1 – Page 6 Line 1); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
The dependent claims 2-14 appear to merely limit other information that is acquired and used to further target the advertising, prioritizing ads based on collaborative filtering based on prior interactions, displaying ads based on reaction metrics, and specifying multiple forms of payment, identifying a second store at a distance from the first store, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The display control system (claim 1), processor (claims 1, 15), memory (claim 1), program code (claim 1, merely software identified by various titles throughout the claim language), store terminal (claims 1, 15, 16), GPS reception (claims 1, 15, 16, not actively claimed structure, merely claimed as a process performed on the store terminal) user terminal (claims 1, 15, 16), and non-transitory computer readable storage medium (claim 16) are each functional generic computer components that perform the generic functions of acquiring, filtering, determining, selecting, generating, and displaying, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the display control system (claim 1), processor (claims 1, 15), memory (claim 1), program code (claim 1, merely software identified by various titles throughout the claim language), store terminal (claims 1, 15, 16), GPS reception (claims 1, 15, 16, not actively claimed structure, merely claimed as a process performed on the store terminal) user terminal (claims 1, 15, 16), and non-transitory computer readable storage medium (claim 16) are anything other than generic, off-the-shelf computer components. Therefore, the claims do not amount to significantly more than the abstract idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1 and 4-22 are not patent eligible.
Allowable Subject Matter
Claims 1 and 4-22 as currently written are allowable over prior art. However, the rejection under 35 U.S.C. 101 is currently pending and represents a barrier to allowability. Examiner notes that any amendments made to the claims in an attempt to correct pending rejections could drastically alter the claim scope and could open up the possibility of prior art being applied in a future action.
Ghosh (U.S. Pub No. 2018/0349889) teaches that the new language “wherein the store terminal detects the position information on the first store based on GPS reception performed on the store terminal” (Paragraph 0027) is old and well known.
Strand (U.S. Patent No. 9,613,360) teaches that the new language “wherein the advertisement information is acquired based on the payment target information for one of the second article or the second service which tends to be purchased with one of the first article or the first service as complementary product” (Column 3 Lines 14-32) is old and well known.
Ramesh (U.S. Pub No. 2015/0317687) teaches that the new language “determining priority criteria for the filtered advertisements, the priority criteria including at least one of: a number of times of display, or a date and time of registration of the advertisement information; selecting advertisement information having a high priority based on the priority criteria” (Paragraphs 0024, 0026) is old and well known.
None of the prior art of record, alone or in combination, teaches each and every limitation of the claimed invention. Specifically, none of the previously applied references teaches “wherein the store terminal detects the position information on the first store based on GPS reception performed on the store terminal, wherein the advertisement information is acquired based on the payment target information for one of the second article or the second service which tends to be purchased with one of the first article or the first service as complementary product, determining priority criteria for the filtered advertisements, the priority criteria including at least one of: a number of times of display, or a date and time of registration of the advertisement information; selecting advertisement information having a high priority based on the priority criteria; generating display data on a payment completion screen based on an execution result of the payment and the advertisement information acquired, wherein the display data is in a data format which a payment application supports”. While such features on their own would not normally be an allowable feature (references for the new language have been cited above, and any display presented to a user would naturally be in a format supported by the executing application), it would simply not be obvious to apply all of the above prior art references to the other references already applied to arrive at the currently claimed invention and the order of steps currently taken by the currently claimed invention. There is no prior art that teaches each and every limitation of the invention as a whole in combination with one another. Therefore Examiner finds the independent claims to be allowable over the prior art of record.
Response to Arguments
Applicant cites numerous portions of the specification and argues improvements including “This narrowing operation directly reduces the computational burden by limiting the dataset from potentially numerous stores to a "predetermined number," thereby reducing both processing requirements and data transmission overhead”, “This two-level filtering-first at the store level, then at the advertisement level-represents a structured approach to reducing computational complexity from potentially thousands of advertisements to a manageable predetermined number”, “This demonstrates that the system generates a single, consolidated data transmission combining payment confirmation and filtered advertisements, rather than requiring multiple server-client communications, thereby reducing network overhead and improving response time”, “This creates a technical problem of how to process multiple data factors and deliver targeted content within the constrained payment transaction window without causing transaction delays”, “These operations, performed within the payment transaction window, represent a non-conventional arrangement that solves the technical problem of delivering targeted content without disrupting payment processing”, “The technical improvements include reducing the dataset through systematic filtering, processing multiple data factors within timing constraints, and generating display data in a format compatible with payment applications”, “These passages demonstrate that the filtering mechanisms serve the technical purpose of reducing unnecessary data processing by eliminating advertisements for products that do not meet specific criteria, thereby preventing the system from processing and transmitting irrelevant advertisement data”, “This pre-filtering based on balance information eliminates the need to process advertisements for items the user cannot afford, reducing both the computational load and improving the relevance of the final dataset”, and “This dynamic adjustment of search parameters based on area characteristics represents an optimization technique that prevents unnecessary processing in sparse areas while ensuring adequate results in dense urban environments, thereby optimizing computational resources based on the specific context of each transaction”. Applicant cites paragraphs 0050, 0051, 0054, 0064-0065, 0077, 0091, 0104, and 0148 of the specification in support of these assertions. However, the paragraphs cited merely show support for the claimed features, not for any technical improvements. The specification does not have any discussion relating to any of the alleged technical improvements discussed by Applicant. There is no evidence in the specification that Applicant had considered any of these technical improvements at the effective filing date of the invention. The only information that Examiner has found in the specification relating to improvements is “One object of the present disclosure is to effectively urge a user who has used a first store to use a second store” (See Page 2 Lines 18-19), which as previously explained, is an improvement to ineligible subject matter. Further, none of the improvements outlined by Applicant actually result in a technical improvement, as none of the computer elements are actually functionally improved through the process. Rather, the computer elements function as general purpose computing elements would normally function, and it’s all in service to the abstract idea of advertising.
Applicant argues “the present claims are distinguishable from SAP America because the improvements here are not merely to the abstract idea itself but to the technical operation of the payment system” and “Unlike the mathematical algorithms in SAP America that operated entirely in the abstract realm, the present claims require specific interactions between physical components (store terminals with GPS reception, user terminals, payment systems) operating under real-time constraints. The filtering and narrowing operations are not abstract concepts but concrete data processing steps that reduce the computational burden to ensure timely display of the payment completion screen”. However, as explained above, there is nothing in the specification that describes any alleged improvements to the technical operation of a payment system. The physical components are addressed in the analysis separate from the abstract idea, but those components are merely general purpose computer components that operate in a conventional way. Further, in the BASCOM court decision, filtering and narrowing were found to be abstract concepts, and not “concrete data processing steps”. Likewise, in BASCOM, the computing elements were also determined to be merely generic computer, network, and internet components. The eligibility of BASCOM was in the non-conventional non-generic arrangement of those components, as outlined by the specification. Unlike BASCOM, the present disclosure does not explain how the generic computer components form an unconventional arrangement and how the abstract concept of filtering is anything other than conventional filtering.
Conclusion
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/MICHAEL BEKERMAN/ Primary Examiner, Art Unit 3621