DETAILED ACTION
Acknowledgements
This action is in response to Applicant’s filing on Jul. 5, 2024, and is made Non-Final. This action is being examined by James H. Miller, who is in the eastern time zone (EST), and who can be reached by email at James.Miller1@uspto.gov or by telephone at (469) 295-9082.
Interviews
Examiner interviews are available by telephone or, preferably, by video conferencing using the USPTO’s web-based collaboration platform. Applicants are strongly encouraged to schedule via the USPTO Automated Interview Request (AIR) portal at http://www.uspto.gov/interviewpractice. Interviews conducted solely for the purpose of “sounding out” the examiner, including by local counsel acting only as a conduit for another practitioner, are not permitted under MPEP § 713.03. The Office is strictly enforcing established interview practice, and applicants should ensure that every interview request is directed toward advancing prosecution on the merits in compliance with MPEP §§ 713 and 713.03.
For after-final Interview requests, supervisory approval is required before an interview may be granted. Each AIR should specifically explain how the After-Final Interview request will advance prosecution—for example, by identifying targeted arguments responsive to the rejection of record, alleged defects in the examiner’s analysis, proposed claim amendments, or another concrete basis for discussion. See MPEP § 713. If the AIR form’s character limits prevent inclusion of all pertinent details, Applicants may send a contemporaneous email to the examiner at James.Miller1@uspto.gov.
The examiner is generally available Monday through Friday, 10:00 a.m. to 4:00 p.m. EST.
For any GRANTED Interview Request, Applicant can expect an email within 24 hours confirming an interview slot from the dates/times proposed and providing collaboration tool access instructions. For any DENIED Interview Request, the record will include a communication explaining the reason for the denial.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Jul. 5, 2024, was filed before the mailing of a first office action on the merits and therefore, is in compliance with the provisions of 37 CFR 1.97(b)(3). Accordingly, the IDS has been considered.
Claim Status
The status of claims is as follows:
Claims 1 is pending and examined with Claim 1 in independent form.
This is a first action on the merits.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 11,526,893 [“Conflicting Patent-1”].
The obviousness-type double patenting analysis involves two steps: First, differences between the claim(s) in the earlier filed patent and the claim(s) in the later patent are determined. Second, a determination is made whether the differences render the pending claims patentable distinct. A later claim that is not patentably distinct from, i.e., is obvious over or anticipated by, an earlier claim is invalid for obviousness-type double patenting.
For the reasons below, the Examiner finds the pending claims are not identical with the Conflicting Patent-1 but are not patentably distinct.
Same Inventive Entities and Commonly Assigned
Examiner finds the current application and the Conflicting Patent-1 name the same inventive entities, Thomas S. Poole, and are commonly assigned to Capital One Services, LLC.
Identification of Differences
Line numbers are added for clarity in describing the claim limitations below. Bold limitations are identified differences. Italics limitations are interpreted as intended use.1 Underline is used, as needed, in further describing the limitations. Bracketed lower case letters in the Pending Application correspond to limitations in the Conflicting Patent-1 as a visual tool to explain apparent differences.
Line No.
Claim #
Pending Application
Claim #
Conflicting Patent
A
1
A system, comprising:
1
A system, comprising:
B
1
a transaction server; a price monitoring server; a price adjustment server; and an authentication server;
C
1
one or more processors; and a memory in communication with the one or more processors and storing instructions that, when executed by the one or more processors,
are configured to cause the system to:
1
wherein the authentication server
is configured to:
D
1
receive first transaction data,
sent from a data extraction processor that extracts the first
transaction data from an electronic image of a paper receipt
associated with a transaction
that is captured by an image capture system of a user device associated with a user;
1
receive first customer transaction data,
sent from a data extraction processor that extracts the first customer
transaction data from an electronic image of a paper
receipt
associated with a customer transaction
that is captured by an image capture system of a dynamic
customer client device,
wherein the first customer transaction data comprises
a first transaction identifier associated with the
customer transaction;
E
1
generate a unique key based on receiving the first transaction data;
1
generate a unique key
based on receiving the first
customer transaction data;
F
1
compare the unique key to a stored transaction record associated with the transaction;
1
compare the unique key to a stored transaction record
associated with the customer transaction;
G
1
responsive to determining
the unique key corresponds to the stored transaction record,
authenticate the transaction;
1
responsive to determining
the unique key and the stored transaction record match,
authenticate the customer transaction; and
H
1
wherein the price adjustment server is configured to:
I
1
receive a first location of the user device;
1
receive a first location of the dynamic customer client
device;
J
1
determine that the first location corresponds to a second location associated with a merchant location for which price matching has been identified;
1
determine that the first location matches a second
location associated with a merchant location for
which price matching has been identified;
K
1
responsive to determining the first location corresponds to the second location,
generate and transmit
a first notification to the user device
identifying a price change for a purchased item; and
1
responsive to determining the first and second locations
match,
generate and transmit,
via a mobile wallet application,
a first electronic notification to the dynamic customer client device
identifying a price change for a purchased item,
based on a first determination that the purchased item has not been returned, and a second determination that an original purchase price and a current price are different, wherein a price adjustment amount is a difference between the original purchase price and the current price;
L
1
1
generate and transmit, in real-time and via the mobile wallet application, a second electronic notification to the dynamic customer client device indicating that a price adjustment for the price adjustment amount may be completed electronically or at the merchant location;
M
1
1
cause the dynamic customer client device to display, via the mobile wallet application, a first user object configured to facilitate the price adjustment;
N
1
1
receive, from a user of the dynamic customer client
device via the mobile wallet application, a first user selection of the first user object, the first user selection indicating a preference to complete the price adjustment; and
O
1
transmit a second notification to a merchant system requesting the price change be credited back to the user.
1
in response to receiving the first user selection, automatically
transmit a third electronic notification to a merchant system requesting the price adjustment be credited back to an account of the user.
Differences not patentably distinct
“The claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by the reference claim(s). This type of nonstatutory double patenting situation arises when the claim being examined is, for example, generic to a species or sub-genus claimed in a conflicting patent or application, i.e., the entire scope of the reference claim falls within the scope of the examined claim. In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. In this type of nonstatutory double patenting situation, an obviousness analysis is not required for the nonstatutory double patenting rejection.” MPEP § 804(II)(B)(2) (emphasis added).
Here, the following differences identified in bold in the Conflicting Patent-1 and pending application are indicated in the Table below. The species or sub-genus claimed in the Conflicting Patent-1 anticipates the claimed genus in the pending application. MPEP § 804(II)(B)(2). For example:
Line No.
Conflicting Patent
(species)
Pending Application
(genus)
G, J, K
“match(es)”
“corresponds to”
Thus, “a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus.” MPEP § 804(II)(B)(2).
Regarding Lines B, D, H, K, L, M, N, and O, all of the identified differences in bold are limitations contained in the Conflicting Patent that have been omitted in the claims under examination. Thus, the species or sub-genus claimed in the Conflicting Patent-1 anticipates the claimed genus in the claims under examination. MPEP § 804(II)(B)(2). Accordingly, “a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus.” MPEP § 804(II)(B)(2).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 12,056,661 [“Conflicting Patent-2”].
For the reasons below, the Examiner finds the pending claims are not identical with the Conflicting Patent-2 but are not patentably distinct.
Same Inventive Entities and Commonly Assigned
Examiner finds the current application and the Conflicting Patent-2 name the same inventive entities, Thomas S. Poole, and are commonly assigned to Capital One Services, LLC.
Identification of Differences
Line numbers are added for clarity in describing the claim limitations below. Bold limitations are identified differences. Italics limitations are interpreted as intended use.2 Underline is used, as needed, in further describing the limitations. Bracketed lower case letters in the Pending Application correspond to limitations in the Conflicting Patent-2 as a visual tool to explain apparent differences.
Line No.
Claim #
Pending Application
Claim #
Conflicting Patent
A
1
A system, comprising:
1
A system, comprising:
B
1
one or more processors; and a memory in communication with the one or more processors and storing instructions that, when executed by the one or more processors,
are configured to cause the system to:
1
a memory in communication with the one or more processors and storing instructions that, when executed by the one or more processors,
are configured to cause the system to:
C
1
receive first transaction data, sent from a data extraction processor that extracts the first transaction data from an electronic image of a paper receipt associated with a transaction that is captured by an image capture system of a user device associated with a user;
1
receive first transaction data, sent from a data extraction
processor that extracts the first transaction data from an electronic image of a paper receipt associated with a transaction that is captured by an image capture system of a user device associated with a user;
D
1
generate a unique key based on receiving the first transaction data;
1
generate a unique key based on receiving the first
transaction data;
E
1
compare the unique key to a stored transaction record associated with the transaction;
1
compare the unique key to a stored transaction record
associated with the transaction;
F
1
responsive to determining
the unique key corresponds to the stored transaction record, authenticate the transaction;
1
responsive to determining the unique key corresponds
to the stored transaction record, authenticate the transaction;
G
1
receive a first location of the user device;
1
receive a first location of the user device;
H
1
determine that the first location corresponds to a second location associated with a merchant location for which price matching has been identified;
1
determine that the first location matches a
second location associated with a merchant location for
which price matching has been identified;
I
1
responsive to determining the first location corresponds to the second location,
generate and transmit
a first notification to the user device identifying a price change for a purchased item; and
1
responsive to determining the first location
matches the second location,
dynamically generate and transmit,
via a mobile wallet application,
a first notification to the user device identifying a price change for a purchased item,
based on a first determination that
the purchased item has not been returned and a
second determination that an original purchase price
and current price are different;
J
1
1
determine whether a price adjustment can be completed electronically at the user device; and
K
transmit a second notification to a merchant system requesting the price change be credited back to the user.
1
in response to determining the price adjustment can be completed electronically at the user device, automatically
and dynamically
transmit a second
notification to a merchant system requesting the price
change be credited back to the user.
Differences not patentably distinct
“The claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by the reference claim(s). This type of nonstatutory double patenting situation arises when the claim being examined is, for example, generic to a species or sub-genus claimed in a conflicting patent or application, i.e., the entire scope of the reference claim falls within the scope of the examined claim. In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. In this type of nonstatutory double patenting situation, an obviousness analysis is not required for the nonstatutory double patenting rejection.” MPEP § 804(II)(B)(2) (emphasis added).
Here, the following differences identified in bold in the Conflicting Patent-2 and pending application are indicated in the Table below. The species or sub-genus claimed in the Conflicting Patent-2 anticipates the claimed genus in the pending application. MPEP § 804(II)(B)(2). For example:
Line No.
Conflicting Patent
(species)
Pending Application
(genus)
H, I
“matches”
“corresponds to”
Thus, “a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus.” MPEP § 804(II)(B)(2).
Regarding Lines I, J, and K, all of the identified differences in bold are limitations contained in the Conflicting Patent-2 that have been omitted in the claims under examination. Thus, the species or sub-genus claimed in the Conflicting Patent-2 anticipates the claimed genus in the claims under examination. MPEP § 804(II)(B)(2). Accordingly, “a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus.” MPEP § 804(II)(B)(2).
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Analysis
Step 1: Claim 1 is directed to a statutory category. Claim 1 recites a “system” and is therefore, directed to the statutory category of a “machine.”
Representative Claim
Claim 1 is representative [“Rep. Claim 1”] of the subject matter under examination and recites, in part, emphasis added by Examiner to identify limitations with normal font indicating the abstract idea exception, bold limitations indicating additional elements. Each limitation is identified by a letter for later use as a shorthand notation in referencing/describing each limitation. Portions of the claim use italics to identify intended use limitations3 and underline, as needed, in further describing the abstract idea exception:
[A] 1. A system, comprising: one or more processors; and a memory in communication with the one or more processors and storing instructions that, when executed by the one or more processors, are configured to cause the system to:
[B] receive first transaction data,
[C] sent from a data extraction processor that extracts the first transaction data from an electronic image of a paper receipt associated with a transaction that is captured by an image capture system of a user device associated with a user;
[D] generate a unique key based on receiving the first transaction data;
[E] compare the unique key to a stored transaction record associated with the transaction;
[F] responsive to determining the unique key corresponds to the stored transaction record, authenticate the transaction;
[G] receive a first location of the user device;
[H] determine that the first location corresponds to a second location associated with a merchant location for which price matching has been identified;
[I] responsive to determining the first location corresponds to the second location, generate and transmit a first notification to the user device identifying a price change for a purchased item; and
[J] transmit a second notification to a merchant system requesting the price change be credited back to the user.
Claims are directed to an abstract idea exception.
Step 2A, Prong One: Rep. Claim 1 recites “transmit a second notification … requesting the price change be credited back to the user, in Limitation J, which recites commercial or legal interactions under the organizing human activity exception because “requesting the price change be credited back to the user,” recites “sales activities or behaviors, and business relations” between two people. MPEP § 2106.04(a)(2)(II)(B). Limitations B–I are the required [price match steps to “request[ ] the price change be credited back to the user,” and therefore recite the same exception. Id.
Alternatively4, Limitations B–J, as drafted, recite the abstract idea exception of mental processes that under the broadest reasonable interpretation, cover performance in the human mind or with pen and paper, but for the recitation of the generic computer components indicated in bold. MPEP § 2106.04(a)(2)(III).
Claims recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include:
• a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
. . .
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011).
MPEP § 2106.04(a)(2)(III)(A). For example, but for the generic computer components claim language, here, Limitations B–J, recite collecting information (Limitations B, G) and analyzing it (Limitations C, D, E, F, H, I, and J), where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind. For example, Limitation C is a mental processes that is practically performed in the human mind or with pen and paper because it requires mere “observation, evaluation, judgment, and/or opinion” to extract first transaction data from an image of a paper receipt. Limitation D is a mental processes that is practically performed in the human mind or with pen and paper because it requires mere “observation, evaluation, judgment, and/or opinion” to “generate the unique key.” Limitation D covers any solution with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, which is so broad as to encompass mental processes. Limitation E is a mental process that is practically performed in the human mind or with pen and paper because collecting and comparing known information are steps that can be practically performed in the human mind under Classen. Limitation F is a mental process that is practically performed in the human mind or with pen and paper because it requires mere “observation, evaluation, judgment, and/or opinion” to “authenticate the user” “responsive to” the metal process of Limitation E. Limitation H is a mental process that is practically performed in the human mind or with pen and paper because collecting and comparing known information are steps that can be practically performed in the human mind under Classen. Limitation I is a mental process that is practically performed in the human mind or with pen and paper because it requires mere “observation, evaluation, judgment, and/or opinion” to “generate and transmit a notification” “responsive to” the metal process of Limitation H. Limitation J is a mental process that is practically performed in the human mind or with pen and paper because it requires mere “observation, evaluation, judgment, and/or opinion” to request a price change be credited back to the user. “The use of a physical aid (e.g., pencil and paper or a slide rule) to help perform a mental step (e.g., a mathematical calculation) does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another” or a multi-step mental process. MPEP § 2106.04(a)(2)(III)(B).
If a claim limitation under BRI, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract idea exception. MPEP § 2106.04(a)(2)(III). Accordingly, the pending claims recite the combination of these abstract idea exceptions.
Step 2A, Prong Two: Rep. Claim 1 does not contain additional elements that integrate the abstract idea exception into a practical application because the additional elements are mere instructions to apply the abstract idea exception. MPEP § 2106.05(f). The additional elements are limited to the computer components and indicated in bold, supra. The additional elements are: A system, comprising: one or more processors; and a memory storing instructions; a data extraction processor; an electronic image of a paper receipt; image capturing system of a user device; a user device; and a merchant system.
Regarding the system, comprising: one or more processors; and a memory storing instructions; a data extraction processor; an electronic image of a paper receipt; image capturing system of a user device; a user device; and a merchant system, Applicant’s Specification does not otherwise describe them or describes them using exemplary language as a general-purpose computer, as a part of a general-purpose computer, or as any known and exemplary (generic) computer component known in the prior art. Thus, Applicant takes the position that such hardware/software is so well known to those of ordinary skill in the art that no explanation is needed under 35 U.S.C. § 112(a). Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984) (citing In re Meyers, 410 F.2d 420, 424 (CCPA 1969) (“[T]he specification need not disclose what is well known in the art”). E.g., Spec. ¶ 43 (“the system, comprising: one or more processors; and a memory storing instructions; a data extraction processor; an electronic image of a paper receipt; image capturing system of a user device; a user device; and a merchant system”); ¶ 92 (“a general ledger system”); ¶ 18 (“network 110 may be one or more of a wireless network, a wired network or any combination of wireless network and wired network … any other wired or wireless network for transmitting and receiving a data signal.”); ¶ 19 (“any number of the example types of networks”); ¶ 21 (“network-enabled computer system and/or device may include, but is not limited to: e.g., any computer device, or communications device”); ¶ 22 (“any type of tangible and non-transitory storage medium … any other storage mechanism”); ¶ 25 (“any device capable of communicating … any other mobile device … any other smartphone or like device.”); ¶ 29 (“any other acceptable frequency”); ¶ 50 (“any other suitable order information … any other suitable information about the transaction … defined in any other suitable manner”); ¶ 51 (“any other suitable module”); ¶ 58 (“Controller 202 may be any controller or processor capable of controlling the operations”); ¶ 61 (“any electronic data input device that reads data from a dynamic transaction card and/or EMV™ processor”); ¶ 62 (“any electronic data input device that reads data from a magnetic stripe on a credit or debit card”); ¶ 63 (“any electronic data input device that reads data from a NFC device … any other acceptable frequency”); ¶ 67 (“Power manager 214 may be any microcontroller or integrated circuit”); ¶ 69 (“any input device”); ¶ 70 (“device capable of providing audio signals”); ¶ 71 (“any device or controller that controls an electronic visual display”); ¶ 72 (“Display 222 may be any display”); ¶ 73 (“Cash register/retail enterprise system 224 may include any device or devices that cooperate with PoS device 200 to process transactions”); ¶ 78 (“User device 302 may be a network-enabled computer. As referred to herein, a network- enabled computer may include, but is not limited to: e.g., any computer device, or communications device”); ¶ 79 (“any other mobile device”); ¶ 80 (“User device 302 may also be a network-enabled computer. As referred to herein, a network-enabled computer may be, but is not limited to: e.g., any computer device, or communications device”); ¶ 82 (“any number of example types of networks mentioned”); ¶ 38 (“Client device 120 may transmit the electronic image of the captured picture to data extraction processor 140 via network 110. Content from the paper document may be extracted by the data extraction processor 140, which may include an OCR device that may convert images of text into characters."); ¶ 39 (“The paper document may be OCRed through an automated, a manual, or a hybrid of the automated and manual process. An OCR device may include a comparison unit which compares the text from the OCR device with content relating to transactions that is stored in an account provider data storage 154.”); ¶ 37 (“Image capture system 126 may include a camera that may be utilized to capture a picture of a paper document, such as a paper receipt. Image capture system 126 may also include a scanner that may be utilized to capture a picture of a paper document”). The specification consistently uses exemplary language ("for example," "such as," "may include," "e.g.," "or the like," "any") when describing the claimed components, demonstrating that Applicant treats these elements as well-known, generic computer components requiring no detailed explanation under 35 U.S.C. § 112(a). The generic processor, here, appears to perform calculations (functions) that are programmed by software. Spec. ¶ 22. This is a computer doing what it is designed to do—performing directions it is given to follow.
Limitation A further describes the processors executing instructions stored in memory to perform the steps of the claimed invention. This takes generic hardware and describes the functions of receiving, storing, and sending data (instructions) between the processor and memory device, which merely invokes computers or other machinery in its ordinary capacity to receive, store, or transmit data. MPEP § 2106.05(f)(2). Limitations B–J describe the processor, memory device, and instructions, performing the steps of the claimed invention, which represents the abstract idea exception itself. Performing the steps of the abstract idea exception itself simply adds a general-purpose computer after the fact to an abstract idea exception, MPEP § 2106.05(f)(2), or generically recites an effect of the judicial exception. MPEP § 2106.05(f)(3).
Therefore, the claim as a whole, looking at the additional elements individually and in combination, are no more than mere instructions to apply the exception using generic computer components and is not a practical application. MPEP § 2106.05(f). The additional elements do not integrate the abstract idea exception into a practical application because they do not impose any meaningful limits on the abstract idea exception. Accordingly, Rep. Claim 1 is directed to an abstract idea.
The claims do not provide an inventive concept.
Step 2B: Rep. Claim 1 fails Step 2B because the claim as whole, looking at the additional elements individually and in combination, are not sufficient to amount to significantly more than the recited judicial exception. As discussed with respect to Step 2A, Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer and/or generic computer components. MPEP § 2106.05(f). The same analysis applies here in Step 2B. Mere instructions to apply an exception using a generic computer and/or generic computer components cannot provide an inventive concept. MPEP § 2106.05(I).
The additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the identified judicial exception.
The pending claims in their combination of additional elements is not inventive. First, the claims are directed to an abstract idea. Second, each additional element represents a currently available generic computer technology, used in the way in which it is commonly used (individually generic). Last, Applicant’s Specification discloses that the combination of additional elements is not inventive. Spec., ¶ 111 (steps/functions may be performed in any order); ¶¶ 18, 19, 21, 22, 25, 29, 37, 38, 39, 43, 50, 51, 58, 61, 62, 63, 67, 69, 70, 71, 72, 73, 78, 79, 80, 82, 92, 111, Figs. 1–3 (known and generic (exemplary) computer equipment as explained and cited supra.)
Thus, Examiner finds the additional elements of Rep. Claim 1 are elements that have been recognized as well-understood, routine, and conventional (“WURC”) activity in the particular field of this invention based on Applicant’s own disclosure5. Spec. ¶¶ 18, 19, 21, 22, 25, 29, 37, 38, 39, 43, 50, 51, 58, 61, 62, 63, 67, 69, 70, 71, 72, 73, 78, 79, 80, 82, 92, 111, Figs. 1–3; MPEP § 2106.05(d). Specifically, Applicant’s Specification discloses the recited additional elements (i.e., the system, comprising: one or more processors; and a memory storing instructions; a data extraction processor; an electronic image of a paper receipt; image capturing system of a user device; a user device; and a merchant system) are limited to generic computer components. These elements do no more than “apply” the recited abstract idea(s) on a known computer (e.g., processor) and computer-related components (e.g., memory). The Examiner also finds the functions of receiving, storing, transmitting, and processing (e.g., performing mathematical operations on) data, described in Limitations A–J are all normal functions of a generic computer.
There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements in combination adds nothing that is not already present when looking at the elements individually. Their collective functions merely provide conventional computer implementation of the abstract idea at a high level of generality. Thus, Rep. Claim 1 does not provide an inventive concept.
Dependent Claims Not Significantly More
There are no dependent claims.
Conclusion
Claim 1 is therefore drawn to ineligible subject matter as they are directed to an abstract idea without significantly more. The analysis above applies to all statutory categories of invention. As such, the presentment of Rep. Claim 1 otherwise styled as another statutory category is subject to the same analysis.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (U.S. Pat. Pub. No. 2014/0278883) [“Wang”] in view of Ellis et al. (U.S. Pat. No. 10,192,217) [“Ellis”].
Regarding Claim 1, Wang discloses:
A system, comprising:
(See at least ¶ 3.)
one or more processors; and a memory in communication with the one or more processors and storing instructions that, when executed by the one or more processors, are configured to cause the system to:
(See at least ¶ 34, “Computing device 200 includes one or more processor(s) 202, one or more memory device(s) 204 … Processor(s) 202 include one or more processors or controllers that execute instructions stored in memory device(s) 204 and/or mass storage device(s) 208. Processor(s) 202 may also include various types of computer-readable media, such as cache memory.”)
receive first transaction data,
(See at least ¶ 46, “receiving 402 a record of a transaction. A record of a transaction may include such data as a date of the transaction, a location where the transaction occurred, an identifier of the POS at which the transaction occurred, an identifier of the customer that was a party to the transaction, and other information. The transaction record may further include various <product,price> entries that list a product identifier and a price paid for the product corresponding to that product identifier. Other data may include taxes paid for the entire transaction and/or for specific item identifiers. Any discounts due to coupons or price matching may also be noted for each item identifier for which such price adjustments were applied. The transaction record may be transmitted from a POS 106 to a server system 102a.”
sent from a data extraction processor [user device with barcode decoder] that extracts the first transaction data from an electronic image of a paper receipt [barcode on paper receipt] associated with a transaction that is captured by an image capture system of a user device associated with a user;
(See at least ¶ 47, “transactions may be transmitted to the server system by 1) the user scanning a bar code or other optical code printed on a receipt with a user device 108, 2) the user device 108 transmitting some representation of the optical code to the server system 102a and 3) the server system 102a identifying a transaction record corresponding to the transmitted representation of the optical code.” The user device with a barcode scanner captures an electronic image of the barcode printed on the paper receipt. The barcode contains the transaction identifier. ¶ 47 (“The transaction identifier may uniquely identify the transaction record and may be printed on a paper receipt to enable the customer to take advantage of the methods disclosed herein” The barcode decoder extracts the identifier from captured barcode image. Thus, data is sources and derives from the electronic image. See also, Ellis, Fig. 40 and associated text col. 33:42–col. 34:14)
generate a unique key based on receiving the first transaction data;
(Examiner interprets “generate” as recited by the claims broadly in view of Applicant’s Specification, ¶ 44, as identifying the unique key from an electronic image of a paper receipt associated with a transaction. See at least ¶ 47, “The receipts utilized in the practice of the invention contain a transaction specific identifier 20. The transaction specific identifier 20 … is unique to each transaction. All data generated and related to the customer's purchase is keyed to the transaction specific identifier 20 for later retrieval.” “Thus, providing the transaction specific identifier 20 gives the system a key to access, sort, and retrieve all of the purchase data contained in the first electronic database 22.” ¶ 60; see also ¶ 61 (requesting “information that is specific to the customer's purchase such as the receipt date 12 and/or the total cost shown on the receipt”).
compare the unique key to a stored transaction record associated with the transaction;
(See at least ¶ 63, when describing the process to authenticate legitimate requests, proving servers 48 match transaction specific identifiers 20 (i.e., the unique key) against a list of known transaction identifiers stored in the merchant database 22.)
responsive to determining the unique key corresponds to the stored transaction record, authenticate the transaction;
(Examiner interprets “authenticate the transaction” as recited by the claims broadly in view of Applicant’s Specification, ¶ 45, as allowing the price match. See at least ¶ 63, “If there is no match (or another error is identified) a message 49 returns to the customer notifying the customer that the input data is invalid and to try again. If the submitted request passes the checks of the proving servers 48, the request is passed on to the data comparison engine 38.”)
[…]
transmit a second notification to a merchant system requesting the price change be credited back to the user.
(See at least ¶ 46, “A redemption module 306 may interact with one or more POSs 106 to apply the credits to subsequent transactions. … The redemption module 306 may interact with the POS 102 in order to validate a gift card, code, or other representation of credits presented at the POS 106 when processing payment for a transaction. … The POS 106 may then transmit this information, or a representation thereof, to the redemption module 306. If the transmitted information is valid, the redemption module 302 may transmit authorization to the POS 106 [merchant system] to apply corresponding credits to the transaction. Otherwise, the redemption module 306 may transmit a rejection of the transmitted information and the POS 106 will not apply any corresponding credits to the transaction.” When “applying corresponding credits to the transaction,” credits may be a price difference. ¶ 52 (“A credit for the transaction record according to the price differences determined at step 408 may then be determined 410. For example, a credit equal to P1-P3 may be assigned for each item identifier”). “The sum of the credits for each item identifier as determined 410 may then be assigned to the user associated with the transaction record.” ¶ 53)
Wang discloses generating and transmitting a notification indicating a consumer price change for a purchased item when the original purchase price and a current price are different. Wang, ¶¶ 76, 77. Wang does not disclose determining that the first location of the user device corresponds to a second location associated with a merchant location for which price matching has been identified and generating and transmitting a notification indicating a consumer price change in response to determining the first and second locations correspond. Thus, Wang does not disclose but Ellis discloses:
receive a first location of the user device;
(Ellis, See at least Col. 20:38–9, “At block 2107, a current position of the mobile device 110 is determined.”)
determine that the first location corresponds to [match] a second location associated with a merchant location for which price matching has been identified; responsive to determining the first location corresponds to the second location, generate and transmit a first notification to the user device identifying a price change for a purchased item; and
(Ellis, See at least Fig. 18, step 1807, and associated text col. 17:43–5, “At block 1807, the location of mobile device 110 and the location of the merchant are compared to ensure a match.” “The offer engine 1731 can alert the account holder regarding the offer while the mobile device 110 of the account holder is at a geographic location to use the offer or coupon [at the merchant location].” Fig. 21 and associated text col. 20:46–9; see also col. 16:11–2, 37–50. “The process of FIG. 21 may be used to determine and present a financial incentive (e.g., offers, coupons, rebates, etc.) to an account holder.” Col. 20:6–8. The notifications are communicated to a mobile wallet application 116 on the user mobile device. Col. 14:54–8. Examiner interprets “price match” as “a discount on the purchase price or lower price elsewhere” and “price change” as “a realized amount of the discount on the purchase price or coupon.” Spec. ¶¶ 4, 94. A customer receiving a financial incentive (i.e., partial refund, rebate, coupon, or discount on the purchase price) as described in Ellis meets this claim limitation. See also, Wang, Fig. 15C and associated text ¶¶ 139–41 (generating and transmitting a notification crediting the price difference) and ¶¶ 76, 77 (same).)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have combined determine that the first location corresponds to [match] a second location associated with a merchant location for which price matching has been identified; responsive to determining the first location corresponds to the second location, generate and transmit a first notification to the user device identifying a price change for a purchased item, as explained by Ellis, to the known invention of Wang, in the same field of invention, with the motivation for merchants to communicate rebates related to goods and services to nearby customers earlier, similar to what the customer had previously purchased, to increase the merchants sales/profits (just-in-time advertising). Ellis, col. 39:54–56. Primary reference Wang teaches that “where the price comparison is initiated at a point of sale 19, the customer can have the option of applying the credit at the point of sale.” Wang, ¶ 77. The advantages to Wang of sending a notification of a price change based on matching the user device and merchant location, occurs through earlier notification of the price change (e.g., during a user’s entry to a merchant as compared to during checkout). The earlier notification of a price change would alert the user to discounts (not previously known until checkout) that could incentivize the user to make a larger purchase or additional purchases not contemplated because they have more money to spend (through the price match/rebate). Waiting until checkout to identify the price match leaves little time to go back and get things after the shopping has been completed, for example.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES H MILLER whose telephone number is (469)295-9082. The examiner can normally be reached M-F: 10- 4 PM (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES H MILLER/Primary Examiner, Art Unit 3694
1 Statements of intended use fail to limit the scope of the claim under BRI. MPEP § 2103(I)(C).
2 Statements of intended use fail to limit the scope of the claim under BRI. MPEP § 2103(I)(C).
3 Statements of intended use fail to limit the scope of the claim under BRI. MPEP § 2103(I)(C).
4 “It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping. … Accordingly, examiners should identify at least one abstract idea grouping, but preferably identify all groupings to the extent possible, if a claim limitation(s) is determined to fall within multiple groupings and proceed with the analysis in Step 2A Prong Two.” MPEP § 2106.04(a).
5 See Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), 3-4, https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF (April, 18, 2018) (That additional elements are well-understood, routine, or conventional may be supported by various forms of evidence, including "[a] citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).").