DETAILED ACTION
Status of Claims
Applicant has amended claims 1, 7, 8, 15 and 18. Claims 21-24 have been added. Claims 3, 10 and 17 have been canceled. Claims 2, 5, 6, 9, 12, 13, 16, 19 and 20 were canceled prior to previous office action. Thus, claims 1, 4, 7, 8, 11, 14, 15, 18 and 21-24 remain pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments and amendments filed on 17 December 2025 with respect to:
objection to claims 7 and 18,
rejections of claims 1, 3, 4, 7, 8, 10, 11, 14, 15, 17 and 18 under U.S.C. § 112(b),
rejection to claims 1, 3, 4, 7, 8, 10, 11, 14, 15, 17 and 18 under U.S.C. § 101,
rejections of claims 1, 4, 7, 8, 11, 14, 15 and 18 under 35 U.S.C. § 103 as being unpatentable over Tatara et al (US Pub. No. 20170046685 A1) in view of Hameed et al (US Pub. No. 20200264766 A1), in further view of Kim et al (US Pub. No. 20170103382 A1), and
rejections of claims 3, 10 and 17 under 35 U.S.C. § 103 as being unpatentable over Tatara in view of Hameed, in further view of Kim, in further view of Narasimhan et al (US Pub. No. 20160342991 A1)
have been fully considered. Amendments to claims, have been entered.
Examiner acknowledges amendments to claims to overcome claim objections and 35 U.S.C. § 112(b) rejections and, in turn, withdraws objections and rejections.
Examiner acknowledges amendments to, and arguments regarding claims to overcome 35 U.S.C. § 101 rejection. However, arguments are not persuasive.
Applicant argues subject matter eligibility under Step 2A – Prong One contending that the claims do not recite a judicial exception in that the claims are directed to the specific operation and control of a payment device's hardware components including the coordinated control of a display device and multiple distinct card readers, including an NFC reader, a magnetic stripe reader, and a contact IC reader [remarks page 11]. Examiner disagrees in that although the claims recite these technological components, there is not improvement to technology. The claims recite, inter alia, terms such as control hardware states, which is, based on the broadest reasonable interpretation, merely indicating “displaying data”. Similarly, “activating” components are also broad recitations which, as such does not convey an improvement to technology.
Although Applicant’s claims describe using user interfaces and reading data via these interfaces, Applicant’s claims still describe performing a transaction.
Applicant argues subject matter eligibility under Step 2A – Prong Two contending that the claims integrate the exception into a practical application in that, inter alia, the method "decreases” the time required to complete checkout, vis-à-vis paragraphs [0004] and [0005] of Applicant’s specification [remarks page 12]. Examiner respectfully disagrees citing MPEP 2106.05(a) which notes that accelerating an analyzing process, where the increased speed comes solely from the capabilities of a general purpose computer, has been found to be insufficient to show an improvement in computer-functionality.
Applicant further argues subject matter eligibility under Step 2A – Prong Two due to
specific features that improve the operation of the payment device: (i) displaying a specific guidance message (i.e., the processor generates a second guide screen "showing a message indicating that the wireless reading is not available as a reading method") (ii) active hardware control (i.e., the processor is configured to "activate all of the NFC reader, the magnetic stripe card reader, and the contact IC card reader to await input of card information" even when the transaction amount exceeds the threshold and wireless reading is prohibited), and (iii) targeted error feedback (i.e., in response to the wireless reading of card information during this state, the processor does not merely fail but is configured to "control the display device to display an error indicating that the wireless reading is not available for the acquired transaction amount") (Examiner’s emphasis added)[remarks page 12]. Examiner respectfully disagrees.
In view of Prong Two of Step 2A– i.e. practical application to a judicial exception – 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
Examiner maintains that the claimed invention does not contain any of these aforementioned limitations.
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).
Examiner maintains that the claimed invention are merely uses a computer as a tool to perform an abstract idea. Citing Examiner’s emphasis in the above text, “displaying / showing” messages is indicative of such use. “Activating” reading devices is recited at a high level of generality which does not convey an improvement to technology nor anything beyond well-understood, routine, conventional activities previously known to the industry.
Rejections have been clarified herein in view of the claim amendments and the January 2019 Patent Subject Matter Eligibility Guidance – 2019 PEG.
Applicant's arguments filed with respect to claims 1, 4, 7, 8, 11, 14, 15 and 18 regarding the 35 U.S.C. § 103 rejections have been fully considered but they are not persuasive.
Applicant argues Tatara does not teach the feature of activating all of the readers, including the NFC reader, to await input of card information specifically when the transaction amount exceeds the threshold and wireless reading is prohibited [remarks page 14]. Although Tatara does not teach the feature of activating all of the readers (emphasis added), Hameed teaches this.
Hammad discloses:
[0034] Some of the aspects of the transaction processing may be defined by the partner's customization rules. For instance, the partner may define a customization rule that requires additional authentication (e.g., for every customer, for customers from a certain location, for transaction initiated at a certain time or for a transaction amount above a threshold). The partner may further define how the authentication is to proceed to direct the customer to input additional authentication details. The partner may define a customization rule that defines how a “payment successful” webpage is to be displayed, or where to direct a customer if a payment is unsuccessful (e.g., to a customer service page). In some embodiments, the partner hosting the webpage may define one or more rules for how a transaction is to be processed, even though the partner is not directly involved in the transaction processing. For example, the partner may input customization rules defining which transaction processors should be used, what types or brands of payment cards to accept, and other such rules. Certain rules may also be automatically implemented based on a particular partner's relationships with acquirers or transaction processing networks.
In as much as Hameed teaches customization rules defining how a “payment successful” webpage is to be displayed and rules on accepting payment cards, Examiner maintains that Hammad teaches the activating all of the readers. The term “activating”, based on the broadest reasonable interpretation, means to make (all of the readers) available for processing a payment. Tatara apparatus is configured to include a magnet stripe card reader, contact IC card reader, non-contact IC card reader [0109].
Applicant argues, inter alia, that Tatara does not teach controlling the display device to display an error … [remarks page 14]. However, Examiner maintains the Hameed teach this at [0036] as discussed in the rejection herein.
Applicant argues the combination of Tatara and Hameed is improper because the proposed modification would alter or negate the fundamental operating principle of the
prior art [remarks page 15]. Examiner respectfully disagrees.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Tatara and Hameed both involve payment systems. Tatara teaches a transaction processing apparatus [0012], wherein Hameed teaches an “embedded” payment interface integrated into an existing webpage [0017]. Accordingly, Tatara and Hameed are analogous art.
New claims 21-23 are rejected under 35 U.S.C. § 103 as conveyed below.
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
Priority
This application filed on 09 November 2023, claims foreign priority to Japanese Application 2023-014206, filed 01 February 2023. Accordingly, this application is given priority from 01 February 2023.
Claim Interpretation
Regarding claims 1, 8 and 15, in limitations such as:
in response to the magnetic stripe reading or the contact reading of card information during the display of the second guide screen, control the display device to display an error indicating that the wireless reading is not available for the acquired transaction amount.
terminology such as “indicating that the wireless reading is not available for the acquired transaction amount” is given limited patentable weight beyond “displaying an error” . Also, in limitations such as:
control the display device to display the second guide screen, and then activate all of the NFC reader, the magnetic stripe card reader, and the contact IC card reader to await input of card information;
terminology such as “to await input of card information” is given limited patentable weight in that it is a statement of intended use which does not further limit the claim.
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, 7, 8, 11, 14, 15, 18 and 21-24 are rejected under 35 U.S.C. 101 because 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.
In the instant case, claims 1, 4, 7 and 21-24 are directed to a “device” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of performing a transaction which is grouped under fundamental business practice as well as a method of organizing human activity.
in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p.p. 50-57 (Jan. 7, 2019))). Claims recite:
acquire a transaction amount of one or more items to be purchased from the POS terminal,
determine whether the acquired transaction amount is less than or equal to a threshold,
when the acquired transaction amount is less than or equal to the threshold, “display a first set icons”;
when card information is read …, perform a payment process for the one or more items using the card information; and
when the transaction amount is greater than the threshold, display a message and “display a second set icons”;
when card information is read …, perform a payment process for the one or more items using the card information; and
when card information is read …. control the display device to display an error.
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as:
a point-of-sale (POS) terminal;
a near field communication (NFC) reader;
a magnetic stripe card reader;
a contact IC card reader; and
a processor
represent the use of a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of performing a transaction using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 3, 4, 7 and 21-24 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 3, 4, 21 and 23-24 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of performing a transaction.
In claims 7 and 22, the features:
a server configured to communicate with the POS terminal, and
upon detecting an operation of the clerk call button, activate a notification device
add technology to the abstract idea of the independent claim. However, these components – i.e. servers and a notification device – are generic technological components, and their use is in their normal, expected, and routine manner. The components are recited at a high level of generality which do not improve another technology or technical field nor the functioning of the computer itself.
Accordingly, none of the dependent claims add a technological solution to the fundamental business practice or method of organizing human activity in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claims 8, 10, 11 and 14 otherwise styled as a method, and claims 15, 17 and 18 styled as a system would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 4, 7, 8, 11, 14, 15, 18, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Tatara et al (US Pub. No. 20170046685 A1) in view of Hameed et al (US Pub. No. 20200264766 A1), in further view of Kim et al (US Pub. No. 20170103382 A1).
Regarding claims 1, 8 and 15, Tatara teaches a transaction processing system, a transaction processing method, a transaction processing apparatus, and a transaction communication terminal used for performing a procedure of a settlement process in a transaction [0001]. He teaches:
a near field communication (NFC) reader – [0091], “non-contact IC card reader/writer”, [0095] and [0109];
a magnetic stripe card reader - [0091] “magnet stripe card reader”, [0093] and [0109];
a contact IC card reader – [0091] “contact IC card reader/writer”, [0094], [0109] and [0112];
a display device – [0012] “transaction communication terminal”; and
a processor configured to:
acquire a transaction amount of one or more items to be purchased from the POS terminal – [0012] “transaction processing apparatus”, [0089] “process sales registration”, and [0148] “transaction settlement information”,
determine whether the acquired transaction amount is less than or equal to a threshold – [0081] “settlement using the magnetic credit card function is restrained by the predetermined upper limit of a transaction sum”, [0138] “CPU 22 sends a settlement request including the transaction settlement information… to transaction processing apparatus 1 in a case where the transaction sum is determined not to exceed the transaction sum upper limit (S7)”, and [0148], and
when the acquired transaction amount is less than or equal to the threshold,
generate a first guide screen showing a first set of icons respectively corresponding to reading methods that are available for reading card information of credit cards presented for credit card payment, the first set of icons including a first icon indicative of wireless reading by the NFC reader, a second icon indicative of magnetic stripe reading by the magnetic stripe card reader, and a third icon indicative of contact reading by the contact IC card reader, and control the display device to display the first guide screen – [0091] “configured to include central processing unit (CPU), magnet stripe card reader, contact IC card reader/writer, non-contact IC card reader/writer”, [0135] “performs a reading operation on the IC credit card held by the customer, contact IC card reader 26 or non-contact IC card reader/writer 28 reads information recorded in the contact IC credit card or the non-contact IC credit card (S2)”, and [0137], and
in response to the wireless reading, the magnetic stripe reading, or the contact reading of card information during the display of the first guide screen, perform a payment process for the one or more items using the card information – [0012], [0013], [0022] and [0025].
Tatara teaches displaying a card brand of a contact IC credit card or a non-contact IC credit card, and selecting it by an input operation of a staff member using the transaction processing apparatus [0144]. Tatara does not explicitly disclose:
when the transaction amount is greater than the threshold,
generate a second guide screen showing a message indicating that the wireless reading is not available as a reading method for reading card information of credit cards presented for credit card payment and a second set of icons respectively corresponding to reading methods that are available for reading card information of credit cards presented for credit card payment, the second set of icons including the second icon indicative of the magnetic stripe reading and the third icon indicative of the contact reading,
control the display device to display the second guide screen, and then activate all of the NFC reader, the magnetic stripe card reader, and the contact IC card reader to await input of card information;
in response to the magnetic stripe reading or the contact reading of card information during the display of the second guide screen, perform a payment process for the one or more items using the card information, and
in response to the magnetic stripe reading or the contact reading of card information during the display of the second guide screen, control the display device to display an error indicating that the wireless reading is not available for the acquired transaction amount.
However, Hameed teaches a computer-based method for dynamically generating an embedded payment interface to enable integration of the embedded payment interface with a webpage into which the embedded payment interface is embedded upon loading of the webpage [0006]. He teaches transaction processing being defined by the partner's customization rules [0034]. For instance, the partner may define a customization rule that requires additional authentication (e.g., for every customer, for customers from a certain location, for transaction initiated at a certain time or for a transaction amount above a threshold). The partner may further define how the authentication is to proceed to direct the customer to input additional authentication details. The partner may define a customization rule that defines how a “payment successful” webpage is to be displayed, or where to direct a customer if a payment is unsuccessful (e.g., to a customer service page) [Id.]. A rules engine may override merchant-input rules in cases where the acquirer has a rule set that contradicts a rule the merchant partner is trying to input, or may display an error message [0036].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Tatara’s disclosure to include payment interface displaying customization rules for transaction amounts above a threshold as taught by Hameed because it provides a technical solution to improve the dynamic and customized nature of generating web-based payment interfaces both to serve merchant needs and improve the customer user experience. - Hameed [0005].
Neither Tatara nor Hameed explicitly discloses displaying payment icons.
However, Kim teaches a method and an electronic device for providing a payment service in an electronic device [0007]. He teaches user selecting (or touching) a payment application displayed, in an icon form, on the display, wherein an execution module may execute the payment application [0100].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Tatara’s disclosure to include a payment application displayed in an icon form as taught by Kim because one would have recognized that the use of icons improves the system and makes the system cost effective.
Regarding claims 4 and 18, Tatara teaches:
determining whether a selected payment method is the credit card payment – [0028] and [0078], and
upon determining that a selected payment method is the credit card payment, determining whether the transaction amount is less than or equal to the threshold- [0077] and [0081].
Regarding claims 7 and 14, Tatara teaches acquiring transaction information including the transaction amount from a server configured to communicate with the POS terminal – [0090] and [0091].
Regarding claim 11, Tatara teaches determining whether a selected payment method is the credit card payment, wherein whether the transaction amount is less than or equal to the threshold is determined after determining that the selected payment method is the credit card payment - [0077] and [0079]. Examiner interprets “after determining that the selected payment method is the credit card payment” as a design choice which does not further limit the claim.
Regarding claim 21, the limitation:
the second guide screen as including the second icon and the third icon but does not include the first icon indicative of the wireless reading.
is not further limiting of claim 1, the claim upon which it depends, in that it is a statement of design choice.
Regarding claim 23, neither Tatara nor Hameed explicitly discloses these other limitations. However, Kim teaches:
the payment device is one of a plurality of payment devices communicatively connected to the POS terminal – [0030] and [0032]; and
the processor acquires the transaction amount in response to the POS terminal selecting the payment device from the plurality of payment devices as a transfer destination for transaction information – [0102].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Tatara’s disclosure to include selecting one or more resources required for payment as taught by Kim because one would have recognized that the use of icons improves the system and makes the system cost effective.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Tatara in view of Hameed, in view of Kim, in further view of Rathod (US Pub. No. 20210042724 A1).
Regarding claim 22, neither Tatara, Hameed nor Kim explicitly discloses the first guide screen and the second guide screen further as including a clerk call button, and the processor is further configured to, upon detecting an operation of the clerk call button, activate a notification device included in the payment device or located in the store to output a notification.
However, Rathod teaches identifying and displaying current location of user mobile device related places or nearby places including current place or enabling user to search location or places based on one or more types of search queries or selections and enable to view each searched or particular place surround information [0019]. He teaches the use of a “Need Assistant” button [0358].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Tatara’s disclosure to include a “Need Assistant” button as taught by Rathod because one would have recognized that the use of icons improves the system and makes the system cost effective.
Additional Comments
Regarding claim 24, in view of pending rejections, the Examiner is unable to locate prior art references that anticipate the claimed invention or renders it obvious.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
SHIMODE et al: “INFORMATION PROCESSING APPARATUS AND INFORMATION PROCESSING METHOD”, (US Pub. No. 20210272090 A1).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692