Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Status of Claims
This action is in reply to the application filed on 16th of September 2024.
Claim 1 was cancelled by preliminary amendment.
Claims 2-21 were newly added.
Claims 2-21 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed 06/25/2024 has been considered. Initialed copy of the Form 1449 is enclosed herewith.
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claims recite abstract idea of organizing human activities. This judicial exception is not integrated into a practical application and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
First of all, claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter. For claim 2, the claim recites an abstract idea of
“…accessing, at least in part based on a decoding of the machine-readable data, a first type of information that uniquely identifies a product or a service; determining, based on the first type of information, a second type of information that is associated with the product or the service, or a provider of the product or the service; causing the second type of information to be displayed via a user interface; receiving a user input via the user interface; and facilitating a transaction based on the received user input.” This is an abstract idea of a certain method of organizing human activity, since it recites a commercial or legal interactions, namely facilitating a transaction based on the received user input. Besides reciting the abstract idea, the remaining claim limitations recite generic computer components/processes (e.g. machine-readable data, user interface, scanner to decode the machine-readable data). “We conclude that claim 1 is “directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery” rather than “a specific means or method that improves the relevant technology.” Smart Sys. Innovations, LLC v. Chi. Transit Authority, 873 F.3d 1364, 1371
This recited abstract idea is not integrated into a practical application. In particular, the claim only recites generic computer components/processes (e.g., machine-readable data, user interface, scanner to decode the machine-readable data) to receive/transmit/access data (extra-solution activities) and perform the abstract idea mentioned above. (See at least MPEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); buySafe, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3D 709, 715 (Fed. Cir. 2014); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29 (Fed. Cir. 2017); Ameranth, 842 F.3d at 1245, 120 USPQ2d at 1857; Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019)). The additional elements (e.g. machine-readable data, user interface, scanner to decode the machine-readable data) are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components or merely uses a computer as a tool to perform an abstract idea. 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. Therefore, 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 elements - (e.g. machine-readable medium, user interface, scanner to decode the machine-readable data) amount to no more than mere instructions to apply the abstract idea using generic computer components or merely uses a computer as a tool to perform an abstract idea. In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claim is not patent eligible under 35 USC 101.
Again, the insignificant extra-solution activities mentioned above were re-evaluated in step 2B. The limitations do not amount to significantly more than the abstract idea because the courts found sending/receiving/accessing of data to be well understood, routine, and conventional activities. (See at least MPEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); buySafe, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3D 709, 715 (Fed. Cir. 2014); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29 (Fed. Cir. 2017); Ameranth, 842 F.3d at 1245, 120 USPQ2d at 1857; Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019)). Thus again, claims were not patent eligible under 35 USC 101.
Similar arguments can be extended to independent claims 13 and 19.
Dependent claims 3-12, 14-18, and 20-21 have been given the full two-part analysis, analyzing the additional limitations both individually and in combination. The dependent claims when analyzed individually and in combination, are also held be patent ineligible under 35 U.S.C. 101.
For claim 3, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…wherein: the first type of information comprises a payment tag that is usable to uniquely identify the product or the service in a database; and the second type of information comprises information that at least partially describes the product, the service, or the provider of the product or the service.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 3, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…wherein: the first type of information comprises a payment tag that is usable to uniquely identify the product or the service in a database; and the second type of information comprises information that at least partially describes the product, the service, or the provider of the product or the service.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claims 4 and 16, the recited limitations of these claims merely further narrow the abstract idea discussed above. These claims further add, “…wherein the payment tag comprises an alphanumeric character string.” The limitations of these claims fail to integrate the abstract idea into a practical application because these claims do not introduce additional elements other than the generic components discussed above. These dependent claims, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitations of these dependent claims fail to establish that the claims provide an inventive concept because claims that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 5, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…the image is captured via a camera module of a mobile device of a user; the user interface is displayable on the mobile device; and the causing comprises causing a description of the product or the service to be displayed via the user interface on the mobile device.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 6, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…wherein the user input comprises payment account credentials usable to authenticate a user or conduct the transaction for the product or the service.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 7, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…wherein the image is captured from a website.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claims 8 and 18, the recited limitations of these claims merely further narrow the abstract idea discussed above. These claims further add, “…wherein: the image comprises a button displayed on the website; a click of the button causes the user interface to overlay a window over a portion of a rest of the website; the second type of information is displayed within the window; and the user input is received via the window.” The limitations of these claims fail to integrate the abstract idea into a practical application because these claims do not introduce additional elements other than the generic components discussed above. These dependent claims, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitations of these dependent claims fail to establish that the claims provide an inventive concept because claims that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 9, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…wherein the image is captured from a physical advertisement.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 10, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…wherein the image is captured via a manual entry, into the user interface, of a plurality of characters that are associated with the machine-readable data.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claims 11 and 15, the recited limitations of these claims merely further narrow the abstract idea discussed above. These claims further add, “…wherein the machine-readable code comprises a Universal Product Code (UPC), an International Article Number (EAN), or a Quick Response (QR) code.” The limitations of these claims fail to integrate the abstract idea into a practical application because these claims do not introduce additional elements other than the generic components discussed above. These dependent claims, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitations of these dependent claims fail to establish that the claims provide an inventive concept because claims that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 12, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…wherein one or more of the accessing the image, the accessing the first type of information, the determining, the causing, the receiving, or the facilitating is performed by a mobile application executing on a mobile device, and wherein the user interface is a part of a user interface of the mobile application.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 14, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…wherein: the image contains a machine-readable code; and the image is scanned via a camera module of mobile device on which the user interface is displayed.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 17, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…the user authentication credentials are usable to authenticate the user with a payment provider; and at least one of the accessing, the decoding, the causing, the receiving, or the processing is performed by a computer of the payment provider.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
For claim 21, the recited limitations of this claim merely further narrow the abstract idea discussed above. This claim further adds, “…wherein: the description of the product, the service, or the merchant is displayed via a window as a part of the user interface; and the user payment account information is received through the window.” The limitations of this claim fail to integrate the abstract idea into a practical application because this claim does not introduce additional elements other than the generic components discussed above. This dependent claim, therefore, also amounts to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Finally, the additional recited limitation of this dependent claim fails to establish that the claim provides an inventive concept because claim that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) 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 of this title, 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 2-6, 10-17, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Lovett (US 2008/0210754 A1) in view of Badharudeen et al. (hereinafter "Badharudeen"); (US 2011/0311164 A1).
As per Claims 2, 13, and 19:
Lovett as shown discloses the following limitations:
accessing an image that contains machine-readable data; accessing, at least in part based on a decoding of the machine-readable data, a first type of information that uniquely identifies a product or a service; determining, based on the first type of information, a second type of information that is associated with the product or the service, or a provider of the product or the service; causing the second type of information to be displayed via a user interface; receiving a user input via the user interface; and facilitating a transaction based on the received user input. (See at least Paragraph 0008, “…The display encodes account number and other information for the transaction. The merchant’s optical reader also includes a display, which can be read by the computing device by using the cell phone camera. The merchant’s display includes transaction amount and other information…....")
However, Lovett specifically does not mention the following limitation. But Badharudeen discloses the following limitations:
causing the second type of information to be displayed via a user interface; (See at least Fig. 3a, Items 308 and 310, “Display the at least one product detail of the least one selected product…”)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to include the barcode transaction system of Lovett the ability to display the second transaction detail describing the product as taught by Badharudeen since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per Claim 3:
Lovett discloses the limitations as shown in the rejections above. Furthermore, Lovett disclose the following limitation:
wherein: the first type of information comprises a payment tag that is usable to uniquely identify the product or the service in a database; (See at least Paragraph 0008, “…The merchant’s display includes transaction amount and other information…....")
However, Lovett specifically does not mention the following limitation. But Badharudeen discloses the following limitations:
and the second type of information comprises information that at least partially describes the product, the service, or the provider of the product or the service. (See at least Fig. 3a, Items 308 and 310, “Display the at least one product detail of the least one selected product…” it is obvious that other information like, name of the product)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to include the barcode transaction system of Lovett the ability to display the second transaction detail describing the product as taught by Badharudeen since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per Claims 4 and 16:
Furthermore, Lovett disclose the following limitation:
wherein the payment tag comprises an alphanumeric character string. (See at least Fig. 1A, Item 112)
As per Claim 5:
Furthermore, Lovett disclose the following limitation:
the image is captured via a camera module of a mobile device of a user; the user interface is displayable on the mobile device; and the causing comprises causing a description of the product or the service to be displayed via the user interface on the mobile device. (See at least Paragraph 0008, “…The display encodes account number and other information for the transaction. The merchant’s optical reader also includes a display, which can be read by the computing device by using the cell phone camera. The merchant’s display includes transaction amount and other information…....")
As per Claim 6:
Furthermore, Lovett disclose the following limitation:
wherein the user input comprises payment account credentials usable to authenticate a user or conduct the transaction for the product or the service. (See at least Fig. 1A and 1B)
As per Claim 10:
Furthermore, Lovett disclose the following limitation:
wherein the image is captured via a manual entry, into the user interface, of a plurality of characters that are associated with the machine-readable data. (See at least Paragraph 0038, “…validating the amount entered by the merchant…....")
As per Claims 11, 15:
Furthermore, Badharudeen disclose the following limitation:
comprises a Universal Product Code (UPC), an International Article Number (EAN), or a Quick Response (QR) code. (See at least Fig. 5a)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to include the barcode transaction system of Lovett the ability to also include QR codes as taught by Badharudeen since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per Claim 12:
Furthermore, Lovett disclose the following limitation:
wherein one or more of the accessing the image, the accessing the first type of information, the determining, the causing, the receiving, or the facilitating is performed by a mobile application executing on a mobile device, and wherein the user interface is a part of a user interface of the mobile application. (See at least Paragraph 0108, “…display used for normal cell phone applications. The software may also manage account information...")
As per Claim 14:
Furthermore, Lovett disclose the following limitation:
wherein: the image contains a machine-readable code; and the image is scanned via a camera module of mobile device on which the user interface is displayed. (See at least Paragraph 0008, “…The display encodes account number and other information for the transaction. The merchant’s optical reader also includes a display, which can be read by the computing device by using the cell phone camera...")
As per Claim 17:
Furthermore, Lovett disclose the following limitation:
the user authentication credentials are usable to authenticate the user with a payment provider; and at least one of the accessing, the decoding, the causing, the receiving, or the processing is performed by a computer of the payment provider. (See at least Fig. 4, Item 410 (bank), 424 and 428)
As per Claim 21:
Furthermore, Lovett disclose the following limitation:
and the user payment account information is received through the window. (See at least Paragraph 0008, “…The merchant’s display includes transaction amount and other information…....", Fig. 1B)
However, Lovett specifically does not mention the following limitation. But Badharudeen discloses the following limitations:
wherein: the description of the product, the service, or the merchant is displayed via a window as a part of the user interface; (See at least Fig. 3a, Items 308 and 310, “Display the at least one product detail of the least one selected product…” it is obvious that other information like, name of the product)
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to include the barcode transaction system of Lovett the ability to display the description of the product as taught by Badharudeen since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claims 7 and 9 are rejected under 35 U.S.C. 103 (a) as being unpatentable over Lovett and Badharudeen in further view of Fitzpatrick et al. (hereinafter “Fitzpatrick”); (US 2010/0306318 A1).
As per Claim 7:
Combination of Lovett and Badharudeen discloses the limitations as shown in the rejections above. However, combination of Lovett and Badharudeen does not disclose the following limitation. But, Fitzpatrick discloses the following limitations:
wherein the image is captured from a website. (See at least Paragraph 0042, “…scan codes found…on website…....")
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to include the barcode transaction system of Lovett the ability to scan code from the website as taught by Fitzpatrick since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per Claim 9:
Combination of Lovett and Badharudeen discloses the limitations as shown in the rejections above. However, combination of Lovett and Badharudeen does not disclose the following limitation. But, Fitzpatrick discloses the following limitations:
wherein the image is captured from a physical advertisement. (See at least Paragraph 0042, “…scan codes found…on billboards…....")
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to include the barcode transaction system of Lovett the ability to scan code from the billboards as taught by Fitzpatrick since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD CHANG whose telephone number is (571)270-3092. The examiner can normally be reached M - F, 9-5.
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/EDWARD CHANG/Primary Examiner, Art Unit 3696 02/07/2026