DETAILED ACTION
This action is in reply to the submission filed on 12/10/2025.
Status of Claims
Applicant’s cancellation of claims 18-20, amendments to claims 1, 2, 4, 8, 9, 11, 15 and 16, and addition of claims 21-23 are acknowledged.
Claims 1-17 and 21-23 are currently pending and have been examined.
Response to Remarks
Applicant's remarks filed 12/10/2025 have been fully considered and have been found not persuasive in full. Regarding the prior art rejections, Applicant’s characterizations of the art of record is helpful. Additional search was conducted, and new art is cited to teach the newly added limitations.
Regarding pages 6 and 7 of remarks, controlling the scanner to scan is seen as data collecting by computing technology in its ordinary capacity, and encoding information into symbols for optical reading is seen as including in its scope mental processes such as visualizing the written language. Similarly, the claim scope includes a relatively broad application of computing technology in its ordinary capacity, instead of Applicant’s discussion of a portion of the claim scope dedicated to “specific data transmission mechanism between two electronic devices that cannot communicate via a network”.
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.
Claims 4 is rejected under 35 U.S.C. 112(b) for lack of an antecedent basis. “The transaction item file” is being considered equivalent to “the transaction file” in claims 1, 2 and 11.
If this is the first time a transaction item file is mentioned in the claims, it must be acknowledged properly.
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 1-17 and 21-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: the claims fall under statutory categories of processes and/or machines.
Step 2A Prong 1: the claims recite: scan a first symbol and obtain an item code from the first symbol, accumulate in a transaction file transaction item data corresponding to the obtained codes, and generate a second symbol encoding the transaction item data accumulated in the transaction file into a format readable via optical reading by the POS terminal. These limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers mental processes, including an observation, evaluation, judgement, and/or opinion. Scanning, obtaining information from scan, and generating a symbol can be done by the human mind, and/or pen and paper.
Step 2A Prong 2: Said judicial exception is not integrated into a practical application because the claims as a whole, looking at the additional elements: a mobile terminal, memory, scanner, display, printer, processor configured to control the mobile terminal to operate as a standalone mobile terminal disconnected from a network, and output symbol by printer; and a non-transitory computer readable medium with code, individually and in combination, merely use a computer or other machinery as a tool to perform the abstract idea (see MPEP 2106.05f.) The claims use these machines in their ordinary capacity for the purpose of applying the abstract idea(s). Therefore, these limitations are invoking computers or other machinery merely as a tool to perform an existing process, such that it amounts to no more than mere instructions to apply the exception. Then, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea, and the claim is directed to an abstract idea.
Step 2B: Said claims recite additional elements as listed above, which are not sufficient to amount to significantly more than the judicial exception because, as mentioned in Step 2A Prong 2, they use computers or other machinery to perform an abstract idea in such a way that amounts to no more than mere instructions to apply the exception using computers or other machinery. Mere instructions to apply an exception using computers or other machinery cannot provide an inventive concept. Therefore, the claim is not patent eligible.
Claims 2, 9 and 16 recite deleting information after second symbol output. This can be accomplished as a mental process, and utilizing computer memory is seen as said “apply it” reasoning. Claims 3, 10 and 17 recite an input device. Combining said input device for user operation of terminal is seen as technology in its ordinary capacity. Claims 4 and 11 recite performing payment process based on item information. This is seen as fundamental economic activity and technology in its ordinary capacity used to apply said activity/abstract idea. Claims 5 and 12 recite said printer printing receipt. Using a printer to output data is seen as “apply it” level of technology, alone and in combination with claim 1. Claims 6 and 13 recites said output receipt includes certain information identifying the mobile terminal. Data output is seen as part of said mental process. Claims 7 and 14 recite said second symbol is a two-dimensional code. This can be accomplished using pen and paper. Examiner notes preamble “for obtaining and temporarily storing information about an item to be purchased before the item is registered using a point of sale (POS) terminal” is seen as intended use and the claimed scope is limited to the functionality of the claimed hardware; said POS terminal is not positively claimed.
Claim 21 recites determine a size of the transaction file data and generate more than one symbol when the data size is above an amount. Claim 22 recites the symbol including terminal identification. This is seen as mental processes.
Claim 23 recites an additional limitation of a connection interface the processor controls to transmit the transaction item data to a payment processing terminal to execute a payment. This is seen as using computing technology, i.e. data transmission between two computing devices, to perform the abstract idea of commercial interactions and sales activities.
For these reasons the claims are not subject matter eligible.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 3-8, 10-15, 17, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kelly, US 2019/0279181 in view of Beltramino (US 2017/0032370).
Regarding Claims 1, 8 and 15, Kelly discloses a mobile terminal (Kelly paragraph 224 showing mobile device for ordering.) for obtaining and temporarily storing information about one or more items to be purchased before the one or more items are registered using a point of sale (POS) terminal (Examiner notes this “for” clause is interpreted as being intended use of the mobile terminal. Kelly paragraph 230 showing registering sale with second machine.), the mobile terminal comprising:
a memory; (para. 124 showing memory)
a scanner; (para. 219 showing device with scanner and printer)
a display; (para. 125 showing display)
a printer; and (para. 219 showing device with scanner and printer)
a processor, wherein: (para. 18 showing processor)
the processor is further configured to;
control the scanner to scan one or more first symbols and obtain one or more item codes from the one or more first symbols, (para. 151 showing license plate scan for obtaining item order information))
accumulate, in a transaction file stored in the memory, transaction item data corresponding to the obtained item codes, (para. 101 showing system recording said information)
generate a second symbol encoding transaction item data into a format readable via optical reading by the POS terminal, and (para. 102 showing receipt with label for scanning at second machine)
control the display or the printer to output the second symbol. (para. 102 showing printing said receipt)
Kelly does not, but Beltramino teaches:
a processor configured to control the mobile terminal to operate as a standalone mobile terminal disconnected from a network, (para. 25 showing offline mobile terminal)
the processor is further configured to, while controlling the mobile terminal to operate as the standalone mobile terminal:
generate a second symbol encoding the transaction item data accumulated in the transaction file into a format readable via optical reading by the POS terminal. (paragraphs 26-29 using transaction data for QR code generation for reading to POS terminal)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the system of two-step transactions, with the known technique of offline payments, because applying the known technique would have yielded predictable results and resulted in an improved system by allowing for the ability to pay for transaction when there is no network connectivity. (See para. 22 of Beltramino.)
Claim 15 additionally: a non-transitory computer readable medium storing a program causing a computer to execute a method. (para. 124 showing RAM)
Claims 3, 10 and 17. Kelly as modified by Beltramino teaches the mobile terminal according to claim 1, further comprising:
an input device, wherein (Kelly para. 123 showing terminal input)
the processor generates the second symbol upon input of a user operation via the input device. (Kelly para. 102 showing receipt after input of order information)
Claims 4 and 11. Kelly as modified by Beltramino teaches the mobile terminal according to claim 1, wherein the processor is configured to perform a payment process based on the transaction item file stored in the memory. (Kelly para. 90 showing processing payment)
Claims 5 and 12. Kelly as modified by Beltramino teaches the mobile terminal according to claim 4, wherein the processor is configured to, after the payment process is performed, control the printer to print a receipt showing the second symbol. (Kelly para. 102 showing receipt printing with scan code for scanning at second machine.)
Claims 6 and 13. Kelly as modified by Beltramino teaches the mobile terminal according to claim 5. Kelly does not, but Beltramino teaches wherein the receipt shows information that identifies the mobile terminal. (para. 26 showing transaction data including wallet ID of mobile device included in QR code)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the system of two-step transactions, with the known technique of including identifiers, because applying the known technique would have yielded predictable results and resulted in an improved system by allowing for the ability to verify transactions. (See para. 29 of Beltramino for value matching.)
Claims 7 and 14. Kelly as modified by Beltramino teaches the mobile terminal according to claim 1, wherein the second symbol is a two-dimensional code. (Kelly para. 153 showing QR/bar codes)
Claim 22. Kelly as modified by Beltramino teaches the mobile terminal according to claim 1. Kelly does not, but Beltramino teaches wherein the second symbol further encodes terminal identification information that identifies the mobile terminal. (para. 26 showing transaction data including wallet ID of mobile device included in QR code)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the system of two-step transactions, with the known technique of including identifiers, because applying the known technique would have yielded predictable results and resulted in an improved system by allowing for the ability to verify transactions. (See para. 29 of Beltramino for value matching.)
Claim 23. Kelly as modified by Beltramino teaches the mobile terminal according to claim 1. Kelly teaches further comprising: a connection interface connectable to a payment processing terminal, wherein the processor is configured to control the connection interface to transmit the transaction item data to the payment processing terminal to execute a payment for the one or more items. (para. 95 showing mobile device connected through a network to a payment processing service for paying for the transaction, using the transaction data)
Claims 2, 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kelly in view of Beltramino, and in further view of Hamasako (US 2021/0110369).
Claims 2, 9 and 16. Kelly teaches the mobile terminal according to claim 1. It does not, but Hamasako teaches wherein the processor is configured to delete the transaction file stored in the memory after the second symbol is output. (Hamasako paragraphs 338 and 560 showing deletion of transaction data at POS after payment verification/receipt is performed)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the system of two-step transactions, with the known technique of data hygiene because applying the known technique would have yielded predictable results and resulted in an improved system by allowing for the ability to load the next transaction information. (Hamasako para. 560 showing clearing information after transaction.)
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Kelly in view of Beltramino, and in further view of Kang (US 2012/0330845).
Claim 21. Kelly as modified by Beltramino teaches the mobile terminal according to claim 1. Said Kelly does not, but Kang teaches wherein the processor is configured to determine a data size of the transaction file and generate a plurality of second symbols encoding the transaction file when the data size exceeds a predetermined threshold. (para. 35 showing transaction payment data encoded into a symbol, or multiple symbols, based on data size and size limit of symbol architecture)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the system of two-step transactions, with the known technique of computer size limits because applying the known technique would have yielded predictable results and resulted in an improved system by allowing for proper data translation. See para. 35 of Kang.)
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 mailing date of this final action.
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/AARON TUTOR/Primary Examiner, Art Unit 3627