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
1. This is in response to the applicant's communication filed on 09/16/2025, wherein:
Claims 1, 3-5, 7-8 and 10-11 are pending. Claims 1, 3-5, 7-8 and 10-11 have been amended. Claims 2, 6 and 9 have been canceled by the Applicant.
Examiner Notes
2. The Examiner respectfully notes that the method claim 10 recites “contingent limitations” {alternative limitations such as determine whether there is……, any of only the point service available in the store (option 1) and a plurality of the point services available in the store (option 2); in case where it is determined that there is…only point service available in the store, identifying a member information of the available point service from among a plurality of member information of the point services and associated with the identification information (option 1); and in case where it is determined that there is….., the plurality of the point services available in the store, identifying, based on the priority order, a service to be utilized by the user and identify member information of the service to be utilized by the user (option 2)}. According to MPEP 2111.04, “The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B”. Therefore, in the method claim 10, in light of MPEP 2111.04 regarding “contingent limitations”, the Examiner is not required to address both options 1 and option 2 above using prior art. In other word, under broadest reasonable interpretation, only option 1 or option 2 is need to be addressed using prior art for the method claim 10. Even though under 103 rejection below, the Examiner addresses both options in the system claim 1 (and claim 11), the Examiner respectfully suggests the Applicant to amend the method claim 10 to avoid “contingent limitations”.
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.
3. Rejection under 35 U.S.C. 112 (b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for claim 7 has been withdrawn since Applicant has amended claim 7.
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.
4. The claimed invention (Claims 1, 3-5, 7-8 and 10-11) is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) abstract ideas including “Certain Methods of Organizing Human Activity”, which has/have been identified/found by the courts as abstract ideas in MPEP 2106.04(a). This judicial exception is not integrated into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because It/they is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications:
5. Step 1: Does the Claim Fall within a statutory Category?
Claims 1, 3-5, and 7-8: Yes, these claims are system, which recites an information processing device comprising: one or more memories storing instructions; and one or more processors configured to execute…. ….., and therefore are directed to the statutory class of machine and article of manufacture.
Claim 10: Yes, this claim is method, and therefore are directed to the statutory class of process.
Claim 11: Yes, this claim recites a non-transitory computer-readable recording medium, which is interpreted as a system because it recites a computer to execute…., and therefore are directed to the statutory class of machine.
6. Step 2A prong 1, Step 2A prong 2 and Step 2B:
Independent claim 1 (Step 2A, Prong I): is directed to an abstract idea of “Certain Methods of Organizing Human Activity”:
Limitations 1 and 3-8 of receive, from a user a priority order of each of point services as input by a user (limitation 1); acquire the identification information of a user (limitation 3); identify, as an available point service, a point service available in the store, the point service being one of the point services (limitation 4); determine whether there is, of the point services, any of only the point service available in the store and a plurality of the point services available in the store (limitation 5); in a case where it is determined that there is, of the point services, only the point service available in the store, identify a member information of the available point service from among a plurality of member information of the point services and associated with the identification information (limitation 6); in a case where it is determined that there is, of the point services, the plurality of the point services available in the store, identify, based on the priority order, a service to be utilized by the user and identify member information of the service to be utilized by the user (limitation 7); and processes payment for the store, perform a predetermined process, relating to the point service, based on the member information (part of limitation 8) fall within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps mainly describe the concepts of commercial or legal interactions (include subject matter relating to agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and/or managing personal behavior or relationships or interactions between people (including following rules or instructions).
Independent claim 1, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. In particular, the claim recites underlined additional elements (i.e., an information processing device; one or more memories storing instruction; one or more processors configured to execute the instructions….; one or more memories; a payment terminal) to perform abstract steps/limitations 1 and 3-8 mentioned above. The additional element(s) in all of the steps is/are -recited at a high-level of generality such that it amounts no more than mere instructions to apply the judicial exception(s) using a generic computer component(s) (i.e., an information processing device; one or more memories storing instruction; one or more processors configured to execute the instructions….; one or more memories; a payment terminal…); thus, they do not integrate the identified abstract idea into a practical application. Further, in claim 1, limitations 1-3 and 8 of receive, from a user terminal, a priority order of each of point services as input by a user at the user terminal (limitation 1); register, in the one or more memories, the priority order in association with identification information of the user (limitation 2); acquire, from a store terminal, the identification information of the user (limitation 3); and outputting the member information from the payment terminal (part of limitation 8) merely receiving data/ gathering data; storing date; and sending/transmitting/displaying data, which are considered as “insignificant extra solution activity”; thus, they do not integrate the abstract idea into a practical application. See MPEP 2106.05(g). In addition, the additional elements in limitations 1 and 3 above of (e.g., a user terminal/the user terminal; and a store terminal) are merely sources, where information (e.g., a priority order of each of point services the identification information of the user) are being received from; which are considered as general link to technological environment; thus, do not integrate the abstract idea into a practical application. See MPEP 2106.05(h). Accordingly, this/these additional element(s) above does/do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Again, the claim is directed to an abstract idea. 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 element of using generic computer components (i.e., an information processing device; one or more memories storing instruction; one or more processors configured to execute the instructions….; one or more memories; a payment terminal….) to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. see MPEP 2106.05(f). For the above-mentioned reasons, viewed the claim as a whole, the additional elements/additional limitations individually and in combination do not integrate the identified abstract idea into a practical application. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
Independent claim 1 (step 2B): The additional element in claim 1 (i.e., an information processing device; one or more memories storing instruction; one or more processors configured to execute the instructions….; one or more memories; a payment terminal…….) is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. In other word, the underlined additional elements “i.e., an information processing device; one or more memories storing instruction; one or more processors configured to execute the instructions….; one or more memories; a payment terminal…” is/are amounts no more than mere instructions to apply the judicial exception(s) of steps/limitations 1 and 3-8 mentioned above; thus, they are not significantly more than the identified abstract idea. see MPEP 2106.05(f). Further, in claim 1, limitations 1-3 and 8 of receive, from a user terminal, a priority order of each of point services as input by a user at the user terminal (limitation 1); register, in the one or more memories, the priority order in association with identification information of the user (limitation 2); acquire, from a store terminal, the identification information of the user (limitation 3); and outputting the member information from the payment terminal (part of limitation 8) merely receiving data/ gathering data; storing date; and sending/transmitting/displaying data, which are considered as “insignificant extra solution activity”; thus, are not significantly more than the identified abstract idea. See MPEP 2106.05(g). In addition, the additional elements in limitations 1 and 3 above of (e.g., a user terminal/the user terminal; and a store terminal) are merely sources, where information (e.g., a priority order of each of point services the identification information of the user) are being received from; which are considered as general link to technological environment; thus, are not significantly more than the identified abstract idea. See MPEP 2106.05(h). Again, the claim is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
When revaluating the limitations 1-3 and 8 of receive, from a user terminal, a priority order of each of point services as input by a user at the user terminal (limitation 1); register, in the one or more memories, the priority order in association with identification information of the user (limitation 2); acquire, from a store terminal, the identification information of the user (limitation 3); and outputting the member information from the payment terminal (part of limitation 8) in step 2B here, the receiving data/ gathering data; storing data and sending data/transmitting data/ displaying data are also well-understood, routine and conventional activities. The use of generic computer to store information, transmit/display information/data and receive/gather information/data through an unspecified generic computer does not impose any meaningful limit on the computer implementation of the abstract idea, and is/are considered as well-understood, routine, conventional activity. According to MPEP 2106.05 (d), elements that the Courts have recognized as well-understood, routine, conventional activity in particular fields are e.g., "Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93”.
Thus, evidences has been provided to show these additional elements are well-understood, routine, conventional activity according to MPEP 2106.07 (a) (III). Therefore, for the above mentioned reasons, viewed as a whole, even in combination, the above additional steps/additional elements/additional limitations do not amount to significantly more/do not provide an inventive concept. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
As per independent claims 10 and 11: Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, a method claim 10 and a non-transitory computer-readable recording medium claim 11 are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same/similar reasons as the system claim(s) 16. The underlined components (i.e., a user terminal; one or more memories; a store terminal; a payment terminal; a non-transitory computer-readable recording medium storing an information processing program for causing a computer to execute…….) described in independent claim 10 and/or 11 add nothing of substance to the underlying abstract idea. They are merely using as tools to implement the identified abstract idea and/or are general link to technological environment; and or insignificant extra solution activities. Thus, they do not integrate the identified abstract idea into a practical application, and are not significantly more than the identified abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 3-5, and 7-8 are merely add further details of the abstract steps/elements recited in claim 1 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that in dependent 3, the limitations of “output…… to a payment terminal…” is merely transmitting data/ sending data/ displaying data, which is considered as ““insignificant extra solution activity”, thus, it does not integrate the identified abstract idea into a practical application and is not significantly more than the identified abstract idea. See MPEP 2106.05(g). Therefore, looking at the limitations as an ordered combinations adds nothing that is not already present when looking at the elements taken individually. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself. Therefore, dependent claims 3-5, and 7-8 are also non-statutory subject matter.
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 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.
7. Claims 1, 3, 7-8, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Mo et al; (US 8,396,794 A1), in view of Todd; (US 2013/0254049 A1):
8. Independent claims 1, 10 and 11: Mo teaches an information processing device and method comprising one or more memories storing instructions; and one or more processors {At least figs. 1-2} configured to execute the instructions to:
receive, from a user, a priority order (see data repository 108 in fig. 1 stores general payer data 110, wherein the general payer data 110 includes data that is applicable to all payment options/point services, the general payer data includes e.g., payer’s goals, special payee list and rules such as using a payment option that charges a low transaction fee or a preferred payment option to have a transaction fee that is less than a certain threshold or a the preferred payment option has a rewards program with frequent flyer mile rewards… etc., input by the user/payer as indicated in cl. 4 lines 49-67; cl. 5 lines 1-5 and 24-44; cl. 10 lines 29-45) of each of point services as input by a user (cl. 4 lines 62-67, cl 5 lines 1-5 and 24-44 in context with cl. 10 lines 29-45) (part of step/limitation 1) {At least cl. 4 lines 62-67, cl 5 lines 1-44 in context with fig. 4 cl. 10 lines 29-67, cl. 11 lines 1-50};
register, in the one or more memories (e.g., data repository 108 in fig. 1 stores general payer data 110, wherein the general payer data 110 includes data that is applicable to all payment options/point services, the general payer data includes e.g., payer’s goals, special payee list and rules such as using a payment option that charges a low transaction fee or a preferred payment option to have a transaction fee that is less than a certain threshold or a the preferred payment option has a rewards program with frequent flyer mile rewards… etc., input by the user/payer as indicated in cl. 4 lines 49-67; cl. 5 lines 1-44; cl. 10 lines 29-45) , the priority order in association with identification information of the user (cl. 4 lines 19-67, cl. 5 lines 1-67 and cl. 6 lines 1-38) (step/limitation 2) {At least cl. 4 lines 62-67, cl 5 lines 1-67, cl. 6 lines 1-38 in context with fig. 4 in cl. 10 lines 29-67, cl. 11 lines 1-50};
acquire, from a store terminal, the identification information of the user (step/limitation 3) {At least fig. 2 in cl. 8 lines 30-52, steps 201 and 203 in context with cl. 6 lines 60-67, cl. 7 lines 1-3, see receiving the payer’s purchase payment request via a payment application (122)};
identify, as an available point service, a point service (e.g., the preferred payment option in cl. 6 lines 60-67, cl. 7 lines 1-3 in context with cl. 8 lines 53-65, fig. 4 in cl. 10 and 11 especially cl. 11 lines 40-50) in a store, the point service being one of the point services (e.g., payment options in cl. 6 lines 60-67, cl. 7 lines 1-3 in context with cl. 8 lines 53-65, fig. 4 in cl. 10 and 11 especially cl. 11 lines 40-50 (step/limitation 4) {At least fig. 1 cl. 6 lines 60-67; cl. 7 lines 1-3 in context with fig. 2 cl. 8 lines 53-65, figs. 3 and 4 in cl. 9-10 especially see fig. 4 cl. 11 lines 40-19, see a determination to select the preferred payment option that maximize the payer’s goals for the user/payer to make a purchase};
determine whether there is, of the point services (e.g., payment options in at least cl. 6 lines 60-67, cl. 7 lines 1-3 in context with cl. 8 lines 53-65, fig. 4 in cl. 10 and 11 especially cl. 11 lines 40-50), a plurality of the point services available in the stores (part of step/limitation 5) {At least fig. 4 in cl. 10 lines 25-67, cl. 11 lines 1-50, see a plurality of payment options are determined and ranked based on the payer’s goals and payer’s rules};
a plurality of member information of the point services (e.g., e.g., payment options in at least cl. 6 lines 60-67, cl. 7 lines 1-3 in context with cl. 8 lines 53-65, fig. 4 in cl. 10 and 11 especially cl. 11 lines 40-50) (part of step/limitation 6) {At least least cl. 6 lines 60-67, cl. 7 lines 1-3 in context with cl. 8 lines 53-65, fig. 4 in cl. 10 and 11 especially cl. 11 lines 40-50}
in a case where it is determined that there is, of the point services, the plurality of the point services (e.g., payment options) available in the store, identify, based on the priority order (see data repository 108 in fig. 1 stores general payer data 110, wherein the general payer data 110 includes data that is applicable to all payment options/point services, the general payer data includes e.g., payer’s goals, special payee list and rules such as using a payment option that charges a low transaction fee or a preferred payment option to have a transaction fee that is less than a certain threshold or a the preferred payment option has a rewards program with frequent flyer mile rewards… etc., input by the user/payer as indicated in cl. 4 lines 49-67; cl. 5 lines 1-5 and 24-44; cl. 10 lines 29-45), a service (e.g., a preferred payment option in fig. 4 especially cl.10 lines 25-67 and cl. 11 lines 1-49) to be utilized by the user and identify member information (e.g., information about the selected preferred payment option such as e.g., account number, expiration data, and/or security code in cl. 8 lines 53-65) of the service to be utilized by the user (step/limitation 7) {At least fig. 4 cl. 10 lines 29-67, cl. 11 lines 1-49 in context with fig. 1 in cl. 4 lines 49-67, cl.5 lines 1-67 and cl. 6 lines 1-38, see selecting the preferred payment option from the plurality of payment options that that maximize the payer’s goals and payer’s rules. See Fig. 4 in context with fig. 2 cl. 8 lines 53-67 and cl. 9 lines 1-37, see after the preferred payment option is selected, the information about the selected preferred payment option such as account number, expiration data, and/or security code…etc., is provided it to the user/payer for the user to approve and once the preferred payment option is approved by the user, it is used to process the user purchase transaction};
cause a payment terminal, that at least partly processes payment for the store, to perform a predetermined process, relating to the point service (e.g., the preferred payment option in fig. 2 cl. 8 lines 53-67, cl. 9 lines 1-37) , based on the member information and by outputting the member information from the payment terminal (fig. 2 cl. 8 lines 53-67, cl. 9 lines 1-8) (step/limitation 8) {At least fig. 2 cl. 8 lines 53-67 and cl. 9 lines 1-37 in context with fig. 4 in cl. 10-11}.
However, Mo does not explicitly teach the underlined features: receive, from a user terminal, a priority order of each of point services as input by a user at the user terminal (part of step/ limitation 1); determine whether there is, of the point services, any of only the point service available in the store and a plurality of the point services available in the store (part of step/limitation 5); and in case where it is determined that there is, of the point services, only the point service available in the store, identify a member information of the available point service from among a plurality of member information of the point services and associated with the identification information (part of step/limitation 6).
Todd teaches:
receive, from a user terminal (para 0026-0030), a priority order (para 0030) of each of point services (e.g., financial accounts/ credit cards in paras 0027-0030, 0032) as input by a user at the user terminal (para 0026-0030) {At least fig. 2 paras 0026-0030 especially paras 0026, 0030, steps 201 and 202, see via a computer (step 201) the user/consumer at step 202, may set preferred payment schemes/ rule-sets associated with each of the financial accounts/credit cards in some logical order predetermined by the user/consumer…};
determine whether there is, of the point services (e.g., financial accounts/ credit cards in paras 0027-0030, 0032, 0042-0043, 0045, 0048), only the point service available (e.g., short-term loan from an institution related to one or more of the user financial accounts/ credit cards in para 0048 in context with paras 0030, 0032, 0042-0043, 0045) in the store {At least paras 0030, 0032, 0042-0043, 0045 in context with para 0048}; and
in case where it is determined that there is, of the point services (e.g., financial accounts/ credit cards in paras 0027-0030, 0032, 0042-0043, 0045, 0048), only the point service available (e.g., short-term loan from an institution related to one or more of the user financial accounts/ credit cards in para 0048 in context with paras 0030, 0032, 0042-0043, 0045) in the store, identify a member information (e.g., short-term loan) of the available point service from among a plurality of member information of the point services and associated with the identification information {At least paras 0048 in context with paras 0030, 0032, 0042-0043, 0045}.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify “receive, from a user, a priority order of each of point services as input by a user; determine whether there is, of the point services a plurality of the point services available in the stores; and a plurality of member information of the point services” of Mo to include “receive, from a user terminal, a priority order of each of point services as input by a user at the user terminal; determine whether there is, of the point services, only the point service available in the store; and in case where it is determined that there is, of the point services, only the point service available in the store, identify a member information of the available point service from among a plurality of member information of the point services and associated with the identification information”, taught by Todd. One would be motivated to do this in order to enable a multi-account payment system that allows a user/ consumer to seamlessly draw funds from any number of external financial accounts to perfect payment at a point-of-sale and maximize the utility of the payment methods available to the user/ consumer while simultaneously masking financial difficulties and providing enhanced levels of security against account fraud and identity theft. {Todd: At least paras 0003, 0009}.
9. Claim 3: The combination of Mo and Todd teaches the claimed invention as in claim 2. The combination further teaches wherein the one or more processors are further configured to execute the instructions to: output member identification number (e.g., account number in cl. 8 lines 60-65) of the point service as the member information identified {Mo: At least cl. 8 lines 60-67, cl. 9 lines 1-37, cl. 10 lines 7-11 in context with cl. 4 lines 32-48};
10. Claim 7: The combination of Mo and Todd teaches the claimed invention as in claim 1. The combination further teaches wherein the one or more processors are further configured to execute the instructions to:
identify payment services (e.g., payment options) in a store {Mo: At least fig. 4 cl. 10 lines 25-67 and cl. 11 lines 1-49}; and
identify member information (e.g., information about the selected preferred payment option such as e.g., account number, expiration data, and/or security code in cl. 8 lines 53-65) of a payment service (e.g., the preferred payment option in at least fig. 4 cl. 10 lines 25-67, cl. 11 lines 1-49 especially lines 40-49 in context with fig. 2 cl. 8 lines 53-67, cl. 9 lines 1-37) , associated with the identification information, among the payment services (e.g., payment options) available in the store {Mo: At least fig. 4 cl. 10 lines 25-67, cl. 11 lines 1-49 especially lines 40-49 in context with fig. 2 cl. 8 lines 53-67, cl. 9 lines 1-37}.
11. Claim 8: The combination of Mo and Todd teaches the claimed invention as in claim 1. The combination further teaches wherein the one or more memories further store: the identification information and member information of a plurality of services (e.g., payment option N/112N and payment option M/112M in fig. 1) in association with each other {Mo: At least fig. 1, see data repository 108 in cl. 4 lines 49-67, cl. 5 lines 50-67, cl. 6 lines 1-38}.
12. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Mo et al; (US 8,396,794 A1), in view of Todd; (US 2013/0254049 A1), and further in view of Bigioi; (US 2018/0189767 A1):
13. Claim 4: The combination of Mo and Todd teaches the claimed invention as in claim 1. The combination does not explicitly teach the underlined features: “wherein the identification information is biometric authentication information and wherein the one or more processors configured to execute the instructions to: perform authentication of the user using the biometric authentication information acquired”.
Bigioi teaches an identification information is biometric authentication information and perform authentication of the user using the biometric authentication information acquired {At least fig. 3 paras 0057-0063}.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify “the identification information” of the combination Mo and Todd to include “an identification information is biometric authentication information and perform authentication of the user using the biometric authentication information acquired”, taught by Bigioi. One would be motivated to do this in order to enhanced security and fraud prevention while improving the user experience.
14. Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mo et al; (US 8,396,794 A1), in view of Todd; (US 2013/0254049 A1), and further in view of Postrel; (US 2015/0363767 A1):
15. Claim 5: The combination of Mo and Todd teaches the claimed invention as in claim 1. The combination does not explicitly teach the underlined features: wherein the one or more processors are further configured to execute the instructions to: acquire accounting information of the user in the store, and grant a point based on the accounting information with respect to member information as of a flagged point service of the point services.
Postrel teaches a general concept of:
acquire accounting information (e.g., executes a transaction with the store’s system in para 0058) of the user in the store {At least para 0058};
grant a point (e.g., reward points in para 0058) based on the accounting information with respect to member information as of a flagged point service (e.g., reward account) of the point services {At least para 0058 in context with paras 0031, 0048}.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify “the one or more processors” of the combination of Mo and Todd to include “acquire accounting information of the user in the store; and grant a point based on the accounting information with respect to member information as of a flagged point service of the point services”, taught by Postrel. One would be motivated to do this in order to increase the user’s experience and satisfaction.
Prior Art that is pertinent to Applicant’s disclosure
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chenis; (2019/0050841 A1), wherein teaches A system and computer-implemented method for selecting an optimal payment instrument for a particular purchaser and a particular purchase. Information for several payment instruments, selection preferences provided by the purchaser, and any additional selection information are stored in a database. Artificial intelligence selects the optimal payment instrument based on the selection preferences and the additional selection information. The preferences may be weighted to reflect a level of importance to the purchaser, and may include incentive information about, e.g., reward points, reward miles, or cash back. The additional information may include usage limitations. The selected instrument is verified with an associated payment service, a request for payment using the selected instrument is submitted, and actual payment is verified. Details of the particular purchase and of the selection of the instrument may be stored for future reference. The selection preferences may be changeable, and the additional selection information may be automatically updated.
Kadam; (US 2018/0150829 A1), wherein teaches There is provided a smart card, a system and method for use in performing an electronic transaction between a user and a merchant, whereby the aforementioned aspects rely on use of virtual payment cards to carry out the transaction.
Dogin et al; (US 20150356551 A1), wherein teaches A method includes reading a card number from a payment device at a point of sale (POS) terminal. The method further includes transmitting a message from the POS terminal to a remote host computer, where the message includes the card number. Still further, the method includes receiving wallet data at the POS terminal from the host computer. The wallet data indicates a plurality of payment accounts associated with the card number. In addition, the method includes displaying the wallet data at the POS terminal and receiving a selection indication from a user at the POS terminal, where the selection indication is for selecting one of the payment accounts.
Pomeroy et al; (US 2016/0086166 A1), wherein teaches System and methods for managing value products such as stored value cards are provided. A computer-implemented system comprising: a first value product, wherein a first value product package identifier requires that all of the first value product's digital funds be redeemed in a single transaction; a second value product; and a specially programmed computer server, the methods and system allowing a user to use a portion of the first value product's digital funds in a first transaction and a remainder of the first value product's digital funds in one or more subsequent transactions.
Kohli; (US 2020/0234268), wherein teaches A method and system for recommending financial instruments in a payment processing network in at least fig. 2 paras 0060-0077.
Roskind; (US 2004/0024703), wherein teaches selects, or at least ranks in order, the payment instruments based on value to the customer. The ranking can take into account: a) cash back rates; b) mileage rates for the specific potential purchase; and c) temporal discounts such as shipping or coupon discounts for the specific product type; etc. The act of automatically making a selection of a payment instrument, such as a credit card, in an online environment is analogous to what a human does when buying things at a store. The advantage is that an automatic system can integrate all the discount notices and coupons that are typically mailed to a cardholder. The system preferably presumes that a smart wallet is given information about a transaction, and has collected information about the payment instruments in at least fig. 1 paras 0024-0044}.
Szollar; (US 2017/0032338 A1), wherein teaches select a form of payment from a plurality of forms of payment based upon the payment information by comparison of a benefit received using each of the forms of payment. After selecting the form of payment, the computing device may make the payment via the form of payment in at least Abstract, Figs 3-4 paras 0052-0081.
Further, see additional references cited in PTO-892.
Response to Arguments
17. Regarding 112(b) rejection: Rejection under 112(b) for claim 7 has been withdrawn since Applicant has amended claim 7.
Regarding 101: Applicant’s arguments regarding 101 have been fully considered but are not persuasive. Please see the Office’s responses back to the Applicant’s arguments below.
Regarding 102/103: Applicant’s arguments for the amended independent claims 1, 10 and 11 have been fully considered but are moot in view of new ground rejections {please see additional columns and lines cited from references: Mo et al; (US 8,396,794 A1), and new added reference Todd; (US 2013/0254049 A1)} to the rejection above.
20. Responding back to Applicant regarding 101 on pages 8-13 in the Applicant’s remarks:
On pages 9-11, Applicant mainly argued that the pending claims are not directed to “Certain Methods of Organizing Human Activity” because the claims merely involve an exception/abstract idea but not recite an exception/ abstract idea; and the pending claims are unlike with the listed Examples in MPEP 2106.04(a)(2).
The Office’s response: However, the Office respectfully disagrees with Applicant’s assertion above. As indicated above under 101 rejection, in Step 2(A) Prong 1, claim 1 (the same hold true for claims 10 and 11) recites (but not just “involve” the abstract idea as argued above by the Applicant) the abstract idea/ judicial exception. Again, in claim 1 (the same hold true for claims 10 and 11), the limitation 1 and 3-8 of receive, from a user a priority order of each of point services as input by a user (limitation 1); acquire the identification information of a user (limitation 3); identify, as an available point service, a point service available in the store, the point service being one of the point services (limitation 4); determine whether there is, of the point services, any of only the point service available in the store and a plurality of the point services available in the store (limitation 5); in a case where it is determined that there is, of the point services, only the point service available in the store, identify a member information of the available point service from among a plurality of member information of the point services and associated with the identification information (limitation 6); in a case where it is determined that there is, of the point services, the plurality of the point services available in the store, identify, based on the priority order, a service to be utilized by the user and identify member information of the service to be utilized by the user (limitation 7); and processes payment for the store, perform a predetermined process, relating to the point service, based on the member information (part of limitation 8) fall within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps mainly describe the concepts of commercial or legal interactions (include subject matter relating to agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and/or managing personal behavior or relationships or interactions between people (including following rules or instructions).
Specifically, claim 1 (the same hold true for claims 10 and 11) recites:
receive, a priority order (user preferences) of each of point services (e.g., payment options such as credit card payment, code payment, money payment…etc. in Applicant’s specification US 2025/0095019 A1 para 0096) as input by a user;
acquire the identification information of the user (at the point of sale in the store/retail environment);
identify…. a point service (e.g., payment option such as credit card in Applicant’ specification para 0096) available in the store (retail environment)…..;
determine whether there is…..any of only the point service available (e.g., only one payment option such as credit card) in the store and a plurality of the point services (e.g., a plurality of payment options such as credit card, code payment, money payment…etc.) available in the store (retail environment);
in case where it is determined that there is… only the point service (e.g., only one payment option such as credit card) available in the store, identify a member information (e.g., identification number of the credit card…etc., in Applicant’s specification para 0028) of the available point service from among a plurality of member information of the point services and associated with the user identification information;
in a case where it is determined that there is…… the plurality of the point services (e.g., a plurality of payment options such as credit card, code payment, money payment…etc.) available in the store (retail environment) , identify, based on the priority order (user preferences associated with the point services/payment options), a service (e.g., a payment option) to be utilized by the user and identify member information (e.g., identification number of the credit card/payment option…etc., in Applicant’s specification para 0028) of the service to be utilized by the user;
process payment….; perform a predetermined process, relating the point service (e.g., the selected payment option), based on the member information (e.g., identification number of the credit card/payment option…etc., in Applicant’s specification para 0028) in the store/retail environment
All of the limitations mentioned above falls under the subgroup of “advertising, marketing or sales activities” from the abstract idea group of “commercial or legal interaction”, which belong to “Certain Methods of Organizing Human Activity” because they mainly describe selecting the payment option/ point service from the plurality of payment options/ point services at the point of sale in the store/retail environment based on the user preferences associated of the plurality of payment options; and using the selected payment option to process the payment at the point of sale in the store for the user. Therefore, the Examiner respectfully disagrees with the Applicant’s assertion that “pending claims are not directed to “Certain Methods of Organizing Human Activity” because the claims merely involve an exception/abstract idea but not recite an exception/ abstract idea”.
Further, regarding Applicant’s argument that “the pending claims are unlike with the listed Examples in MPEP 2106.04(a)(2)”, the Office respectfully submits that MPEP 2106.04(a) indicates: “To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types. The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I); 2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and 3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above. The groupings of abstract ideas, and their relationship to the body of judicial precedent, are further discussed in MPEP § 2106.04(a)(2). If the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One. The claim then requires further analysis in Step 2A Prong Two, to determine whether any additional elements in the claim integrate the abstract idea into a practical application, see MPEP § 2106.04(d).” Therefore, since as point out above, the Office has identified the specific limitations in the claimed invention recite abstract idea, which fall within subgroup of “advertising, marketing or sales activities” from the abstract idea group of “commercial or legal interaction” (“Certain Methods of Organizing Human Activity”), it is reasonable to conclude that the claimed invention recites an abstract idea in Step 2A Prong One. As the result, the Office respectfully disagrees with the Applicant’s assertion that “the pending claims are not directed to “Certain Methods of Organizing Human Activity” because the claims merely involve an exception/abstract idea but not recite an exception/ abstract idea; and the pending claims are unlike with the listed Examples in MPEP 2106.04(a)(2)”.
On pages 9-10, Applicant seems to reply on Example 2 “E-Commerce Outsourcing/Generating a Composite Web Page” to argue for 101’s patentability. However, Applicant does not specifically point out which limitations from the claimed invention are similar with Example 2. Therefore, Applicant’s argument is not persuasive. Further, there is no similarity between Example 2 and the claimed invention. In Example 2, claim 19 does not recite an abstract idea because the claim 19 recites a system “useful in outsource provider serving web pages offering commercial opportunities,” but is directed to automatically generating and transmitting a web page in response to activation of a link using data identified with a source web page having certain visually perceptible elements; the claim 19 addresses a business challenge (retaining website visitors that is particular to the internet; and the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks. Compared with claim 19 of Example 2, the claimed invention (e.g., claims 1, 10 and 11) falls under the subgroup of “advertising, marketing or sales activities” from the abstract idea group of “commercial or legal interaction”, which belong to “Certain Methods of Organizing Human Activity” because they mainly describe selecting the payment option/ point service from the plurality of payment options/ point services at the point of sale in the store/retail environment based on the user preferences associated of the plurality of payment options; and using the selected payment option to process the payment at