DETAILED ACTION
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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Objections
Applicant is advised that should claim 1 were to be found allowable, claim 10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
1. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-20 are directed facilitating an offer to a person upon exit of an area with an asset, which is considered a commercial interaction. Commercial interactions fall within a subject matter grouping of abstract ideas which the Courts have considered ineligible (Certain methods of organizing human activity). The claims do not integrate the abstract idea into a practical application, and do not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea).
Under step 1 of the Alice/Mayo framework, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, each of claims 1-10 and claims 11-20 recites a system comprising biometric reader device, non-transitory storage medium, and processing unit. Therefore, the claims are each directed to one of the four statutory categories of invention (apparatus).
Under step 2A of the Alice/Mayo framework, it must be considered whether the claims are “directed to” an abstract idea. That is, whether the claims recite an abstract idea and fail to integrate the abstract idea into a practical application.
Regarding independent claim 1, the claim sets forth a process in which an offer to a person upon exit of an area with an asset is facilitated, including through the facilitation of consumer-to-business interaction, in the following limitations:
upon determining that the stored information indicates to automatically accept at least one offer on exit with an asset, automatically accept the at least one offer according to the stored information when the person exits with the asset; and
otherwise, upon determining that the stored information does not indicate to automatically accept the at least one offer on exit with the asset, after the person exits with the asset, provide the at least one offer to the person.
The above-recited limitations establish a commercial interaction with a consumer to facilitated automatic acceptance or provision of an offer on exit with an asset. This arrangement amounts to both a sales activity or behavior; and business relations. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See MPEP 2106.04(a)).
Claim 1 does recite additional elements:
a biometric reader device that obtains a digital representation of a biometric for a person;
a non-transitory storage medium that stores instructions;
and a processing unit that executes the instructions to:
access stored information for the person by transmitting the digital representation of the biometric obtained by the biometric reader device
These additional elements merely amount to the general application of the abstract idea to a technological environment (“a biometric reader device”, “a non-transitory storage medium”, “a processing unit”) and insignificant pre-and-post solution activity (accessing, transmitting). The specification makes clear the general-purpose nature of the technological environment. Paragraphs [00111]-[00114] indicate that while exemplary general purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). As indicated above, considered both individually and as an ordered combination, the additional elements do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim, do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea
Further, the additional elements (recited above) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Communicating information (i.e., receiving or transmitting data over a network) and storing and retrieving information in memory have been repeatedly considered well-understood, routine, and conventional activity by the Courts (See MPEP 2106.05(d)). Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Independent Claim 10 is identical in scope to claim 1 and ineligible for the same reasons.
Regarding Claims 4-8, 11, 12, 15, 18-20
Claims 4-8, 11, 12, 18-20 merely serve to further embellish the abstract idea, applied to the same technical environment set forth in claims 1 and 10. Accordingly, these claims do not confer eligibility on the claimed invention.
Regarding Claims 2, 9, 13, 17
Claims 2, 9, 13, 17 further specify the technological environment to which the abstract idea is applied. However, the claims do not specify the technical interactions between elements of the environment to use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim.
Regarding Claims 3, 14, 16
Each of claims 3, 14, and 16 recites the processing unit communicating with another element of the technological environment (exit control mechanism, payment system). However, these communications are recited in such a way that they merely amount to the well-understood, routine, and conventional computer function of transmitting data. Accordingly, they do not confer eligibility on the claimed invention.
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.
2. Claims 1-8, 10, 12, 14-18, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 12, 14-18, 20 of U.S. Patent No. 12/087,114.
Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are anticipated by the claims of the patent, as follows.
Claim 1 of the patent anticipates present claims 1 and 10.
Claim 2 of the patent anticipates present claim 2.
Claim 3 of the patent anticipates present claim 3.
Claim 4 of the patent anticipates present claim 4.
Claim 5 of the patent anticipates present claim 5.
Claim 6 of the patent anticipates present claim 6.
Claim 7 of the patent anticipates present claim 7.
Claim 8 of the patent anticipates present claim 8.
Claim 12 of the patent anticipates present claim 12.
Claim 14 of the patent anticipates present claim 14.
Claim 15 of the patent anticipates present claim 15.
Claim 16 of the patent anticipates present claim 16.
Claim 17 of the patent anticipates present claim 17.
Claim 18 of the patent anticipates present claim 18.
Claim 20 of the patent anticipates present claim 20.
3. Claims 1-4, 10, 12, 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 9, 11, 12, and 14 of U.S. Patent No. 11/594,087.
Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are anticipated by the claims of the patent, as follows.
Claim 7 of the patent anticipates present claims 1-4, 10, and 16.
Claim 9 of the patent anticipates present claim 12.
Claim 11 of the patent anticipates present claim 14.
Claim 12 of the patent anticipates present claim 15.
Claim 14 of the patent anticipates present claim 17.
4. Claims 1-4, 6-7, 10, 12, 15-18, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 9, 12, 14, and 17-19 of U.S. Patent No. 11/295,566.
Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are anticipated by the claims of the patent, as follows.
Claim 1 of the patent anticipates present claims 1-4, 10, 16.
Claim 6 of the patent anticipates present claim 6.
Claim 9 of the patent anticipates present claim 9.
Claim 12 of the patent anticipates present claim 15.
Claim 14 of the patent anticipates present claim 17.
Claim 17 of the patent anticipates present claim 18.
Claim 18 of the patent anticipates present claim 7.
Claim 19 of the patent anticipates present claim 20.
Allowable Subject Matter
Claims 1-20 would be allowable if amended to overcome the 35 USC 101 rejection set forth above, for the following reasons:
The claimed invention is directed towards a system for facilitating an offer to a person on exit with an asset. Each of independent claims 1 and 10 recite the novel features of access stored information for the person by transmitting the digital representation of the biometric obtained by the biometric reader device; upon determining that the stored information indicates to automatically accept at least one offer on exit with an asset, automatically accept the at least one offer according to the stored information when the person exits with the asset; and otherwise, upon determining that the stored information does not indicate to automatically accept the at least one offer on exit with the asset, after the person exits with the asset, provide the at least one offer to the person.
The following reference has been identified as the most relevant prior art to the claimed invention(s). The prior art generally relates to biometric checkout configurations in retail settings. High et al. (US 20180047007 A1) is directed to a payment system for paying for goods at a door of a store, which utilizes biometric identification of a customer to open doors to exit the store. However, High does not disclose or render obvious access stored information for the person by transmitting the digital representation of the biometric obtained by the biometric reader device; upon determining that the stored information indicates to automatically accept at least one offer on exit with an asset, automatically accept the at least one offer according to the stored information when the person exits with the asset; and otherwise, upon determining that the stored information does not indicate to automatically accept the at least one offer on exit with the asset, after the person exits with the asset, provide the at least one offer to the person. Notably, High (nor the general body of art) does not disclose or render obvious determination to automatically accepting offers upon exit from a space including a biometric exit configuration with a retail asset based on a user’s stored information, or providing an offer after a user exits, upon determining that stored user information do not indicate automatic offer acceptance.
The Examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias. It is thereby asserted by the Examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lais et al. (US 8657190 B2) discloses an apparatus for a checkpoint, including using biometric identification of a user to allow or deny exit/entry to an area by controlling the operation of a physical barrier.
Borucki (US 20120089426 A1) discloses techniques for automated profile-based transaction processing, including automatically accepting offers based on user profile preferences.
Using a biometric system to control access and exit of vehicles at shopping malls in South Africa (PTO-892 Reference U) describes implementations of biometric scans at gates to control area entrance/exit using user identification.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A MISIASZEK whose telephone number is (571)272-6961. The examiner can normally be reached Monday-Thursday. 8:00 AM - 5:30 PM.
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, Jeffrey Smith can be reached at 571272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL MISIASZEK/Primary Examiner, Art Unit 3688