DETAILED ACTION
This communication is a first Office Action Non-Final rejection on the merits. Claims 1-6 as originally filed are currently pending and are considered below.
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 .
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1, line 4 recites “alerting the he”. Appropriate correction is required.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) using a point of sale payment system capable of;
alerting the he financial institution that issued the credit card/debit registering what credit card/debit card users want to have their receipts stored at the financial institution and be available as a copy with statements or available upon request;
registering goods and/or services, comprising the electronic transaction receipt associated with a sale;
communicating with the existing credit approval process and receiving approval;
upon approval for a transaction purchase, the POS payment system will store credit card numbers and a graphical representation of an electronic transaction receipt;
the POS system will send the transactional receipt with the credit card/debit card number for the credit card/debit card used for purchase to the Processing Center associated with the credit card company used by the financial institution that issued the credit card number;
the financial institution associated with the credit card/debit card number and will receive the transactional receipt and store the transaction receipt and its associated credit card number on a server;
the server, either with its own processor, or its connected processor, will retrieve transaction receipts on request, either to attach to a statement or to supply the receipt(s) upon a credit card /debit card holder's request.
The steps of the method, as drafted, provide a process that, under its broadest reasonable
interpretation, covers commercial interactions such as sales activities or behaviors, such as a business relationship between a customer and retailer by describing the storage of transaction receipts,
which would include sending a transactional receipt to a processing center associated with the credit card company used by the financial institution that issued the credit card number (as claimed).
If a claim limitation, under its broadest reasonable interpretation, covers advertising or
marketing or sales activities or a business relationship, then it falls within the “Certain Methods of
Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim does not
recite an additional element. As such, there is nothing recited that can be considered a practical
application or significantly more than the judicial exception.
To the extent that communicating may be interpreted as an additional element (if interpreted as a sending and receiving data), then this additional element would also fail to integrate the abstract idea
into a practical application. If the communicating step is interpreted to include a transceiver or receiver, then this is recited at a high‐level of generality (i.e., as a generic device performing a generic
function of sending and receiving data) such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
Accordingly, this additional element does not integrate the abstract idea into a practical
application because it does not impose any meaningful limits on practicing the abstract idea. Similarly, a
transceiver or receiver would not be sufficient to amount to significantly more than the judicial
exception. As discussed above with respect to integration of the abstract idea into a practical
application, the additional element of a communication element (such as a transceiver or receiver) amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The claim is patent ineligible.
Claim 1 further includes the additional elements of a point of sale payment system and a server with its own processor. However, the point of sale payment system and the server is recited at a high‐level of generality (i.e., as a generic processors performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using generic computer
components.
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 an abstract idea.
Similarly, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of the computer server and computers of the advertiser, publishers, and leads amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception
using a generic computer component cannot provide an inventive concept. When considering the claim
as a whole, the claim is not patent eligible.
Furthermore, the additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the additional elements of claim 1 utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data over a network,
storing or retrieving information from memory,
presenting offers
Even considered as an ordered combination (as a whole), the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
The dependent claims also are patent ineligible. For example, claims 2 further describes generic computer components performing generic computer functions by identifying the number of storage locations of the transactional receipt.
Claim 3 recites a payment device that includes a wireless computing device that is in communication with the point of sale system and server, which is also recited at a high‐level of generality (i.e., as a generic computer components performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using generic computer
components and do not improve the functioning of the point of sale system and server.
Claim 4 recites a memory that further defines a storage location of the transaction receipt and the ability to store the receipt data, also, recited at a high‐level of generality (i.e., as a generic computer components performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using generic computer components and do not improve the functioning of the point of sale system and server.
Claim 5 recites the step of the user indicating the storage of the transaction receipt, further defining the business relationship of the customer and the retailer.
Claim 6 recites an additional element of a point of sales card reader that is capable of reading data on a chip card, utilizing operations that are well-understood, routine, and conventional, such as storing and retrieving information.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 2 recites: “wherein the processor is further configured to store the transaction receipt within each associated receipt-data storage location.”
The specifications ¶ [0032] states the processor is configured to register the payment of the transaction receipt as a function of the credit card number of the credit card holder. However, ¶ [0039] states: the copy of the complete receipt is either sent immediately to the credit card company identified with the credit card number, which forwards it to the financial institution that issued the card, or sends in a bulk electronic transfer either at the end of the day or another chosen time to the credit card processor, where it is stored for retrieval by the credit card processor.
The processor as described in the specification is not capable of storing a transaction receipt within each associated receipt-data storage location as claimed. The specification describes the credit card processor capable of receiving a copy of the complete receipt via a bulk electronic transfer.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the electronic transaction receipt" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the existing credit approval process" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the Processing Center" in line 13. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the credit card company" in lines 13-14. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the card holder" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the wireless computing transaction receipt" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the credit stores" in line 10. There is insufficient antecedent basis for this limitation in the claim.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Freeman et al., U.S. Patent Application Publication 2019/0295183 in view of Troie WO 2020076176 further in view of Phillips U.S. Patent Application Publication 2012/0203644.
As per Claim 1, Freeman et al. discloses a method of:
using a point of sale payment system capable of (Figure 1, Point-of-Sale system 12);
registering goods and/or services, comprising the electronic transaction receipt associated with a sale (pg.2, ¶ [0016] discusses the point-of-sale system 12 is configured to register a plurality of goods and/or services 14 and the plurality of goods and/or services 14 comprises a transaction receipt 16);
communicating with the existing credit approval process and receiving approval (pg.8, ¶ [0087] discusses the Visa or MasterCard, Discover, American Express or like association Processors route the authorization request to the Issuing Bank for approval);
upon approval for a transaction purchase, the POS payment system will store credit card numbers and a graphical representation of an electronic transaction receipt (pg.8, ¶ [0097] discusses The capture of the specific unique ecReceipt identifier may be identified, stored and/or processed under any of the STEPS above);
the POS system will send the transactional receipt with the credit card/debit card number for the credit card/debit card used for purchase to the Processing Center associated with the credit card company used by the financial institution that issued the credit card number (pg.8, ¶ [0094] discusses The Electronic Copy of the Card Receipt ("ecReceipt") is then sent via, e.g., the internet, to the preregistered email or web address of the Cardholder, or is sent via the internet or private network to a database for further review and action);
the financial institution associated with the credit card/debit card number and will receive the transactional receipt and store the transaction receipt and its associated credit card number on a server (pg.9, ¶ [0105] discusses the electronic receipt would not be emailed to the Cardholder, but maintained or sent electronically by the Processor, Issuing Bank or any connected networked party, or a third party service provider who has permission from the appropriate parties, usually including the Cardholder, to gain access to the information processed from a transaction. This information would be maintained in a database which could be accessed by the Cardholder or the Card issuer, with appropriate permission, other parties either connected or involved with the transaction or not).
Freeman teaches a system and method for receiving, sending and managing electronic receipts. However, Freeman fails to explicitly disclose alerting the he financial institution that issued the credit card/debit registering what credit card/debit card users want to have their receipts stored at the financial institution and be available as a copy with statements or available upon request;
the server, either with its own processor, or its connected processor, will retrieve transaction receipts on request, either to attach to a statement or to supply the receipt(s) upon a credit card /debit card holder's request.
Troie teaches alerting the he financial institution that issued the credit card/debit registering what credit card/debit card users want to have their receipts stored at the financial institution and be available as a copy with statements or available upon request (pg.8, lines 23-27 discusses the server address 15 and the electronic receipt account identifier 16 can compound a fully determined electronic address 14 that designates a server and a user’s deposit account for electronic receipts corresponding to the payment instrument 2 used in the respective transaction. The users’ deposit accounts for electronic receipts 12 are managed by the electronic receipt server-application 17 running on a server 18);
the server, either with its own processor, or its connected processor, will retrieve transaction receipts on request, either to attach to a statement or to supply the receipt(s) upon a credit card /debit card holder's request (pg.11, lines 36-38 discusses The electronic receipt account identifier 16 can be implemented in the electronic receipt server application 17 in the form of an electronic mailbox within an e-mail service or as a subdirectory name or as a user index in a database).
Therefore it would have been obvious to one of ordinary skill in the art of digital receipts before the effective filing date of the claimed invention to modify the system of Freeman to include the ability to identify the bank in which the customer is associated and provide electronic receipts upon request as taught by Troie to provide a method for the determination of the electronic addresses of destination and for the transmission of electronic receipts of financial and / or commercial transactions for which payment is performed with payment instruments such as bank cards. Abstract
The Freeman and Troie combination discloses a system and method capable of providing a customer with an electronic receipt at a point of sale.
However, the Freeman-Troie combination fails to disclose storing credit/debit card receipts at a financial institution that issued the credit card for retrieval either with statements, or upon a credit card holder request.
Phillips teaches storing credit/debit card receipts at a financial institution that issued the credit card for retrieval either with statements, or upon a credit card holder request (Figure 4A, depicts a Payment Card Statement 400 with View Receipt link 408).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have the ability to provide electronic receipts within a banking statement as in the improvement discussed in Phillips in the system executing the method of the Freeman-Troie combination. As in Phillips, it is within the capabilities of one of ordinary skill in the art to store and provide electronic receipts to the Freeman-Troie combination with the predicted result of accessing electronic receipts within a banking statement as needed in the Freeman-Troie combination.
As per Claim 2, Freeman he method of claim 1, wherein each credit card/debit card number and transactional receipt has more than one associated receipt-data storage location (pg.4, ¶ [0042] discusses the wireless computing device 36 further includes a memory device 38, the memory device 38 including at least one receipt-data storage location 40, the method further including the step of receiving 68, by the wireless computing device 36, the second unique identifier 24 and storing 70 the transaction receipt 16 within the at least one receipt-data storage location 40),
wherein the processor is further configured to store the transaction receipt within each associated receipt-data storage location (pg.4, ¶ [0041] discusses by having a unique ecReceipt identifier on the card, chip or card/device circuit itself, which is read by the point-of-sale system and processed by the processing software/hardware, the system understands that the Cardholder has selected the option of having all transactions sent to place like a specific email address, or a web location or his/her device).
As per Claim 3, Freeman discloses the method of claim 1, wherein the card holder receiving payment device includes a wireless computing device in communication with the point of sale system and the server (pg.3, ¶ [0028] discusses the user payment device 18 comprises a wireless computing device 36 in communication with the point-of-sale system 12 and the server 26).
As per Claim 4, Freeman discloses the method of claim 3, wherein the wireless computing device further includes a memory device, the memory device including at least one receipt-data storage location, wherein the wireless computing transaction receipt associated with the credit card number can store the transaction receipt within at least one receipt-data storage location (pg.3, ¶ [0028] discusses the wireless computing device 36 further includes a memory device 38, the memory device 38 including at least one receipt-data storage location 40, the method further including the step of receiving 68, by the wireless computing device 36, the second unique identifier 24 and storing 70 the transaction receipt 16 within the at least one receipt-data storage location 40).
As per Claim 5, Freeman discloses the method of claim 1, where the credit card user indicates that the financial institution that issued the credit card/debit cards stores receipt data on a chip on the credit card (pg.13, ¶ [0158] discusses the election of the Cardholder [t]o receive electronic payment receipts would reside in some format on the card itself, whether within the magnetic stripe, a chip or circuit, which would cause, through the existing software and database, and transaction enablement, an electronic copy of the transaction to be sent to the predetermined email or other location selected by the Cardholder).
As per Claim 6, Freeman he method of claim1 where point of sales card readers add the capability or reading on a chip that the credit card/debit card user wants the receipts associated with the credit stores and available either on statements or on-line (pg.11, ¶ [0137] discusses by swiping or reading the card, the terminal, software and database understand that the Cardholder has selected that he/she/it receives an electronic copy of the transaction, which would be electronically and automatically sent to the preregistered address).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Calman et al., U.S. Patent Application Publication 2014/0074675 discusses systems, methods, and computer program products are provided for managing digital receipts. The system includes a computer apparatus including a processor and a memory; and a digital receipt management software module stored in the memory. The software module includes executable instructions that when executed by the processor cause the processor to receive a transaction record including information relating to a transaction. The system then determines a user account associated with the transaction record based on the information; associates the transaction record with a transaction in the user account; and creates a digital receipt based on the transaction record and the account history. The digital receipt is stored in association with the transaction in a digital receipt mailbox and provided to the user when the user accesses the transaction. Special offers, supplemental information, and recommendations may also be provided in the digital receipt. Abstract
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/ASHFORD S HAYLES/ Primary Examiner, Art Unit 3627