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 .
Status of the Application
This final office action is in response to the amendment filed 10/16/2025. Claims 1, 3, 7, 10-12, and 14-15 have been amended. Claims 2 and 5 have been cancelled. Claim 16 has been added. Claims 1, 3-4, and 6-16 are currently pending and have been examined below.
Claim Rejections – 35 U.S.C. 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, 3-4, and 6-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Per step 1 of the eligibility analysis set forth in MPEP § 2106, subsection III, the claims are directed towards a process, machine, or manufacture.
Per step 2A Prong One, independent claim 14 recites specific limitations which fall within at least one of the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2) as follows:
registering a product whose identification information is input by a customer;
accepting necessity of a disposable shopping bag terminal by accepting that a disposable shopping bag is unnecessary in a case where [the customer] refus[es] the disposable shopping bag;
accepting the disposable shopping bag is necessary in a case when [the customer selects a disposable shopping bag];
determining a benefit in response to registration of one or more products in a case where a fact that a disposable shopping bag is unnecessary is accepted;
determining to cancel granting of the benefit determined in response to confirmation of using the disposable shopping bag;
granting the determined benefit in a case where payment for the registered product is made; and
updating sales information including the granted benefit.
As noted above, these limitations fall within at least one of the groupings of abstract ideas enumerated in MPEP 2106.04(a)(2). Specifically, these limitations fall within the group Certain Methods of Organizing Human Activity (i.e., 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). That is, the limitations describe granting benefits to customers who decline using disposable shopping bags which is a commercial interaction / marketing activity and therefore falls within the certain methods of organizing human activities category of abstract ideas. Accordingly claim 14 recites an abstract idea.
Per step 2A Prong 2, the Examiner finds that the judicial exception is not integrated into a practical application. Claim 14 recites the additional limitations of:
[registering a product whose identification information] is input by a customer's operation on a portable terminal operated at a store by the customer, and store the registered product in a registration product list for the customer in a registration product list database storing registration product lists for each customer;
[accepting necessity of a shopping bag in a case] where a button for refusing the disposable shopping bag on the portable terminal is pressed;
[accepting the disposable shopping bag is necessary] in a case where a code attached to the disposable shopping bag is scanned with the portable terminal;
displaying a confirmation screen on the portable terminal in a case where the code attached to the disposable shopping bag is scanned after accepting that the disposable shopping bag is unnecessary, the confirmation screen indicating that granting of the determined benefit will be canceled; and
confirmation of using the disposable shopping bag [on the portable terminal after displaying the confirmation screen]
[updating sales information] by a point-of-sale (POS) server managing identification information of products and sales information.
The additional limitations when viewed individually and when viewed as an ordered combination, and pursuant to the broadest reasonable interpretation, do not integrate the abstract idea into a practical application because each of the additional elements are recited at high level of generality implementing the abstract idea on a computer (i.e. apply it) or generally linking the use of the judicial exception to a particular technological environment. Specifically:
With respect to [registering a product whose identification information] is input by a customer's operation on a portable terminal operated at a store by the customer, and store the registered product in a registration product list for the customer in a registration product list database storing registration product lists for each customer, Examiner notes the receiving user input on a generic POS terminal and storing information in a generic database is recited at a high level of generality and merely generally links the abstract idea to a particular technological environment.
Similarly, with respect to [accepting necessity of a shopping bag in a case] where a button for refusing the disposable shopping bag on the portable terminal is pressed, Examiner notes that a generic user interface that accepts user input is a generic computer component that merely generally links the abstract idea to a particular technological environment or merely uses a computer a tool to perform the abstract idea.
With respect to [accepting the disposable shopping bag is necessary] in a case where a code attached to the disposable shopping bag is scanned with the portable terminal, Examiner notes that scanning a code is recited at ahigh level of generality and merely generally links the abstract idea to a particular technological environment (i.e., generic POS terminal with a scanner), or is at most insignificant extra-solution activity.
With respect to displaying a confirmation screen on the portable terminal in a case where the code attached to the disposable shopping bag is scanned after accepting that the disposable shopping bag is unnecessary, the confirmation screen indicating that granting of the determined benefit will be canceled; and confirmation of using the disposable shopping bag [on the portable terminal after displaying the confirmation screen], Examiner notes that a generic user interface that displays information and accepts user input is a generic computer component that merely generally links the abstract idea to a particular technological environment or merely uses a computer a tool to perform the abstract idea. Here, the interface is merely displaying confirmation information that could be provided manually by the cashier to the customer.
Finally, with respect to [updating sales information] by a point-of-sale (POS) server managing identification information of products and sales information, Examiner notes that a generic POS server (i.e., a computer) to track and store sale information merely generally links the abstract idea to a particular technological environment or merely utilizes a computer as a tool to perform the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements are recited at a high level of generality and only generally link the use of the judicial exception to a particular technological environment. The same analysis applies here in 2B, i.e., mere instructions to apply an exception in a particular technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Additionally, with respect to the limitation [accepting the disposable shopping bag is necessary] in a case where a code attached to the disposable shopping bag is scanned with the portable terminal, was analyzed as extra-solution activity in Step 2A, and thus it is reevaluated in Step 2B to determine if they were more than what is well-understood, routine, conventional activity in the field. As noted above, scanning a code on a shopping bag is recited at a high level of generality and that the courts have held that electronically scanning or extracting data is well-understood routine and conventional when claimed in a merely generic manner as evidenced by MPEP 2106.05(d)(II)(i). See Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014). Accordingly, a conclusion that scanning a code on a shopping bag is well-understood, routine, conventional activity is supported under Berkheimer Option 2. All of the additional elements when considered individually or in combination are not significantly more than the abstract idea. Therefore, the independent claims are not patent eligible.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent system claim 1 and recording medium claim 15 are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as independent method claim 14. The additional limitations in claim 1 (i.e., at least one memory and at least one processor) and the additional limitations in claim 15 (i.e., a recording medium and computer) add nothing of substance to the underlying abstract idea. The components are merely providing a particular technological environment to implement the abstract idea.
Dependent claims 3, 4, and 6-14 are rejected on a similar rational to the claims upon which they depend. Specifically:
With regard to claims 3, 4, and 6-13, the additional limitations are recited at a high level of generality and merely generally link the abstract idea to a particular technological environment (a generic computer with a generic display) or merely further describes the abstract idea.
With regard to new dependent claim 14, Examiner has reviewed Applicant’s specification and notes that the use of camera and image of the bag to determine the capacity of the bag is recited in the claims and described in the specification at a very high level of generality. Specifically, the claims simply recite estimating a capacity of the bag using the image which is a task that can be performed mentally by a human. Further, Examiner notes that Applicant’s published specification paragraph [0134] states that “the decision unit may specify the type of the bag from the image using an existing image recognition technology. Then, the decision unit acquires the volume of the bag stored in advance according to the type of the bag.” Even if claimed, Examiner notes that using generic image technology to determine the size of the bag merely generally links the abstract idea to a particular technological environment. Moreover, Examiner notes that the recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). Here, simply estimating the bag’s capacity based on an image covers any technological method to estimate capacity without providing a specific technological solution or restriction on how the result is accomplished. Therefore, these limitations do not integrate the abstract idea into a practical application.
Response to Arguments
35 U.S.C. 101 – Abstract Idea
Applicant's arguments, see pages 9-10, filed 10/16/2025, with respect to the rejection(s) of claims 1-14 under 35 U.S.C. 101 have been fully considered but are not persuasive.
Applicant argues that “[t]These features clearly demonstrate that the claims provide a specific technical solution through coordinated operation among multiple computer systems, rather than merely being a business method or automation of commercial rules” (remarks page 10). Examiner respectfully disagrees and refers Applicant to the updated 35 U.S.C. 101 rejection above.
Specifically, the additional limitations when viewed individually and when viewed as an ordered combination, and pursuant to the broadest reasonable interpretation, do not integrate the abstract idea into a practical application because each of the additional elements are recited at high level of generality implementing the abstract idea on a computer (i.e. apply it) or generally linking the use of the judicial exception to a particular technological environment.
With respect to [registering a product whose identification information] is input by a customer's operation on a portable terminal operated at a store by the customer, and store the registered product in a registration product list for the customer in a registration product list database storing registration product lists for each customer, Examiner notes the receiving user input on a generic POS terminal and storing information in a generic database is recited at a high level of generality and merely generally links the abstract idea to a particular technological environment.
Similarly, with respect to [accepting necessity of a shopping bag in a case] where a button for refusing the disposable shopping bag on the portable terminal is pressed, Examiner notes that a generic user interface that accepts user input is a generic computer component that merely generally links the abstract idea to a particular technological environment or merely uses a computer a tool to perform the abstract idea.
With respect to [accepting the disposable shopping bag is necessary] in a case where a code attached to the disposable shopping bag is scanned with the portable terminal, Examiner notes that scanning a code is recited at ahigh level of generality and merely generally links the abstract idea to a particular technological environment (i.e., generic POS terminal with a scanner), or is at most insignificant extra-solution activity.
With respect to displaying a confirmation screen on the portable terminal in a case where the code attached to the disposable shopping bag is scanned after accepting that the disposable shopping bag is unnecessary, the confirmation screen indicating that granting of the determined benefit will be canceled; and confirmation of using the disposable shopping bag [on the portable terminal after displaying the confirmation screen], Examiner notes that a generic user interface that displays information and accepts user input is a generic computer component that merely generally links the abstract idea to a particular technological environment or merely uses a computer a tool to perform the abstract idea. Here, the interface is merely displaying confirmation information that could be provided manually by the cashier to the customer.
Finally, with respect to [updating sales information] by a point-of-sale (POS) server managing identification information of products and sales information, Examiner notes that a generic POS server (i.e., a computer) to track and store sale information merely generally links the abstract idea to a particular technological environment or merely utilizes a computer as a tool to perform the abstract idea.
35 U.S.C. 103
Applicant's arguments, see pages 9-10 filed 10/28/2025, with respect to the rejection(s) of claims 1-8 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore the rejections have been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent Application Publication Number 20200342487 (“Greenberger”) discloses providing customer loyalty incentives for using reuseable grocery store bags
US Patent Application Publication Number 20210061564 (“Ibe”) discloses determine customer benefits based on member ranking
US Patent Application Publication Number 20110248083 (“Bonner”) discloses calculating the smallest container an item will fit inside of
US Patent Application Publication Number 20180004779 (“Moore”) discloses determining a container of appropriate dimensions to fit selected products
US Patent Application Publication Number 20210081909 (“Wittek”) discloses providing rewards to customers to keep and us containers.
However, the prior art fails to teach each and every limitation as claimed, and would involve hindsight reasoning to arrive at the claimed invention. Therefore, the claims are considered allowable over the prior art.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLAN J WOODWORTH, II whose telephone number is (571)272-6904. The examiner can normally be reached Mon-Fri 9:00-5:30.
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/ALLAN J WOODWORTH, II/
Primary Examiner, Art Unit 3622
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