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 .
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 18 September 2025. Claim 3 has been cancelled. Claims 1, 8, 10 and 11 have been amended. Claim 12 has been added. Claims 1-2 and 4-12 are currently pending. The rejections are as stated below.
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 1-2 and 4-12 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.
Claim 1 (exemplary) recites a series of steps for guiding a customer who intends to use a payment device to a payment device available to a customer in a retail store.
The claim is directed to a machine, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of acquire, from a terminal device via communication interface, customer information selected on the terminal device by a customer, the customer information including at least one of information indicating a payment method used by the customer from a plurality of payment devices via the communication interface a status of the plurality of payment devices including at least one of information indicating a payment method available in each of the plurality of payment devices and information indicating a registration method of a product available in each of the plurality of payment devices and an operation status each of the plurality of payment devices; and output, to the terminal device via the communication interface, guidance information indicating a payment device to be used by the customer, wherein the payment device, among the plurality of payment devices, uses the payment method and the registration method indicated in the customer information and is in operation and vacant based on
The claimed system simply describes series of steps for guiding a customer who intends to use a payment device to a payment device available to a customer in a retail store. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performances and concepts relating to fundamental economic principles or practices that enhance customer experience with credit card and/or cash transactions (see Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577, 580 (D. Del. 2015), aff'd, 627 F. App’x 925 (Fed. Cir. 2016) (Rule 36)), and, therefore, fall within the certain methods of organizing human activity category of the USPTO’s Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. These limitations are directed to an abstract idea because they are managing transactions and/or activities that fall within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG. See MPEP § 2106.04(a)(2).
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitation of one or more processors, a memory, a terminal device via communication interface and a plurality of payment devices to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data (see Applicant’s specification, pages 16 and 17). This generic processor limitations are no more than mere instructions to apply the exception using generic computer component. Merely adding generic computer components to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to implement an abstract idea on a computer” as an example of when an abstract idea has not been integrated into a practical application). Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea. See MPEP 2106.05(h).
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(h).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1, 10 and 11. Furthermore, the dependent claims 2, 4-9 and 12 do not resolve the issues raised in the independent claims.
The dependent claims do not add limitations that meaningfully limit the abstract idea. Dependent claims 2, 4-9 and 12, recite additional limitations and steps. However, as mentioned above with respect to the independent claims, the claimed limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a device, and is considered to amount to nothing more than requiring a generic device to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application or amounts to significantly more than the abstract idea itself.
Accordingly, claims 1-2 and 4-12 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Rambler et al. (US 2020/0409449 A1), hereinafter “Rambler” in view of Fukuda et al. (US 20150193668 A1) hereinafter, “Fukuda”.
Regarding claims 1, 10 and 11, Rambler discloses an information processing apparatus and corresponding method comprising:
a memory storing instructions; and
one or more processors (figure 2) configured to execute the instructions to:
acquire from a plurality of payment devices via the communication interface a status of the plurality of payment devices including at least one of information indicating a payment method available in each of the plurality of payment devices and information indicating a registration method of a product available in each of the plurality of payment devices and an operation status each of the plurality of payment devices (abstract and ¶¶ [0043-0044]); and
output, to the terminal device via the communication interface, guidance information indicating a payment device to be used by the customer, wherein the payment device, among the plurality of payment devices, uses the payment method and the registration method indicated in the customer information and is in operation and vacant based on the status (abstract and ¶¶ [0043-0044]).
Rambler fails to explicitly teach, acquire, from a terminal device via communication interface, customer information selected on the terminal device by a customer, the customer information including at least one of information indicating a payment method used by the customer and information indicating a registration method of a product of the customer.
Fukuda teaches the step of acquiring, from a terminal device via communication interface, customer information selected on the terminal device by a customer, the customer information including at least one of information indicating a payment method used by the customer and information indicating a registration method of a product of the customer (¶ [0144]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify the system of Rambler to incorporate the step of acquiring, from a terminal device via communication interface, customer information selected on the terminal device by a customer, the customer information including at least one of information indicating a payment method used by the customer and information indicating a registration method of a product of the customer, as taught by Fukuda, since both systems are concerned with “providing customers with a guidance for the operation of the self-checkout” (see Fukuda ¶ [0144]) that will enhance the efficiency of the system and provide a system that is user friendly.
Regarding claim 2, Rambler discloses output the guidance information and information indicating the status of each payment device to a display device (abstract and ¶¶ [0043-0044]).
Regarding claim 4, Rambler discloses acquire information indicating the payment method associated with identification information for identifying the customer (abstract and ¶¶ [0043-0044]).
Regarding claims 5 and 6, Rambler discloses the identification information is a face image/identification number of the customer, and the one or more processors are further configured to execute the instructions to: acquire information indicating the payment method associated with the customer information authenticated by the face image/identification number (abstract and ¶¶ [0043-0044]).
Regarding claim 7, Rambler discloses specify the registration method of the product of the customer based on an image obtained by photographing the customer (abstract and ¶¶ [0013 and 0044]).
Regarding claim 8, Rambler discloses output, the guidance information indicating a payment device conforming to the customer information according to a distance to the payment device conforming to the customer information (abstract and ¶¶ [0013 and 0044]).
Regarding claim 9, Rambler discloses output a route to a payment device conforming to the customer information (abstract and ¶¶ [0013 and 0044]).
Regarding claim 12, Rambler discloses that the terminal device is installed at a place where the customer waits for availability of the payment device (figure 1 and ¶ [0016]).
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter have been fully considered but they are not persuasive. Applicant’s arguments with respect to 35 USC § 102 have been considered, but are moot in view of the new grounds of rejection.
Examiner respectfully disagrees. Claims 1-2 and 4-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include the above underlined claim limitations. The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations and new claim 12 as discussed above and in the previous office action rejections.
The claims generally link the abstract idea and the gathering of information and determining an output based on analyzing the gathered information. The claims apply the abstract idea on the computer system at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims are directed to an abstract idea.
Applicant argues in substance that the claims integrate the abstract idea into a practical application and would amount to significantly more …
Examiner respectfully disagrees, the claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem/internet-centric problem. Limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
The focus of the claims in the present case is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem.
The courts found that “… if a patent’s recitation of a computer amounts to a mere instruction to ‘implement[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot impart patent eligibility.” Alice Corp., 134 S.Ct. at 2358. The claimed invention does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer [] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are 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). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and displayed does not make it less abstract. The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Dependent claims 2, 4-9 and 12 do not resolve the issues raised in the independent claims. The dependent claims do not add limitations that meaningfully limit the abstract idea.
The dependent claims 2, 4-9 and 12 do not impart patent eligibility to the abstract idea of the independent claims. The claims merely amount to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as significantly more than the abstract idea.
Accordingly, claims 1-2 and 4-12 are rejected as ineligible for patenting under 35 U.S.C. 101.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Applicant’s arguments with respect to 35 U.S.C. 102 are addressed above. Applicant has amended the independent claims and added claim 12. The combination of references teaches the newly added claimed limitations and newly added claims (see above rejection under 35 U.S.C. 103).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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 Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691