Prosecution Insights
Last updated: April 18, 2026
Application No. 18/908,166

MOBILE SETTLEMENT SYSTEM, MOBILE TERMINAL, AND METHOD FOR MOBILE SETTLEMENT SYSTEM

Final Rejection §101
Filed
Oct 07, 2024
Examiner
PATEL, AMIT HEMANTKUMAR
Art Unit
3696
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Toshiba TEC Kabushiki Kaisha
OA Round
2 (Final)
56%
Grant Probability
Moderate
3-4
OA Rounds
2y 3m
To Grant
63%
With Interview

Examiner Intelligence

Grants 56% of resolved cases
56%
Career Allow Rate
126 granted / 225 resolved
+4.0% vs TC avg
Moderate +7% lift
Without
With
+7.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 3m
Avg Prosecution
36 currently pending
Career history
261
Total Applications
across all art units

Statute-Specific Performance

§101
60.5%
+20.5% vs TC avg
§103
17.3%
-22.7% vs TC avg
§102
11.2%
-28.8% vs TC avg
§112
5.2%
-34.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 225 resolved cases

Office Action

§101
DETAILED ACTION Notice of Pre-AIA or AIA Status 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Response to Amendment 2. The Amendment filed on December 23, 2025 has been entered. Claims 1 and 9 have been amended. 16-20 have been cancelled. No new claims have been added. Thus, claims 1-15 are pending and rejected for the reasons set forth below. Claim Rejections - 35 USC § 101 3. 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 4. Claims 1-15 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. In sum, claims 1-15 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the January 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows. Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a machine (claims 1-15), where the machine are substantially directed to the subject matter of the process. (See, e.g., MPEP §2106.03). Therefore, we proceed to step 2A, Prong 1. Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability. Here, the claims recite the abstract idea of carrying out a transaction using settlement and authentication means by: storing a settlement application and additional settlement information required for at least one payment method…; for acquiring biometric information of a user…; displaying information to the user…; receiving a user selection of a payment method via the payment method selection…; enter a settlement pre-registration mode and cause,…., to display a payment method selection…, in the settlement pre-registration mode, receive a user selection of a payment method via the payment method selection…, in the settlement pre-registration mode, acquire biometric information of the user via,…., when the selected payment method requires the additional settlement information to complete settlement, in the settlement pre-registration mode, acquire an authentication result for the acquired biometric information, and enter a shopping mode permitting registration of items in a sales transaction and, upon checkout for completing the sales transaction, cause an output of the additional settlement information stored in the,…, to a settlement,…,. if the authentication result indicates a successful authentication of the user based on the biometric information. Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes fundamental economic practices or principles and commercial or legal interactions (e.g., carrying out a transaction using settlement and authentication means). Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). Therefore, the claim is directed to an abstract idea. Independent claim 1 and 9 are nearly identical to each other so the same analysis applies. Under the 2019 PEG step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as: a :processor,” “unit,” screen,” “terminal,” and “server” do not amount to an innovative concept since, as stated above in the step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. (See, e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. (See, e.g., MPEP §2106.05 I.A.); (see also, paragraph [0030] of the specification). Dependent claims 2–8, and 10–15 have all been considered and do not integrate the abstract idea into a practical application. Dependent claims 2 and 10 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe storing the additional settlement information for multiple payment methods. Dependent claims 3 and 11 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe that the biometric acquisition unit is a camera. Dependent claims 4 and 12 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe that the biometric acquisition unit is a fingerprint sensor. Dependent claims 5 and 13 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe what the selected payment method and the use of a security code. Dependent claims 6 and 14 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe that the payment method is an electronic money service and additional settlement information includes a user ID and a password. Dependent claims 7 and 15 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe that the biometric information is a facial image or a fingerprint. Dependent claim 8 recites limitations that further define the abstract idea noted in claim 1 in that it describes that the authentication result is obtained from an external server. The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field (e.g., the field of computer coding technology is not being improved); the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., simply claiming the use of a computer and/or computer system to implement the abstract idea). Prior Art Not Relied Upon 5. The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. (See MPEP §707.05). The Examiner considers the following reference pertinent for disclosing various features relevant to the invention, but not all the features of the invention, for at least the following reasons: 1. Sauer (U.S. Pub. No. 2020/0065927) teaches a system for payment on delivery service using a code and consumer computing device to carry out a transaction. Although Sauer describes the use of a security measure to carry out a transaction similar to the current invention, Sauer does not disclose the following limitations as part of the current invention: “storing additional settlement information required for at least one payment method in a storage unit; causing a display screen of the mobile terminal to display a payment method selection screen; receiving a user selection of a payment method via the payment method selection screen; acquiring biometric information of a user of the mobile terminal via a biometric information acquisition unit of the mobile terminal when the selected payment method requires the additional settlement information to complete settlement; acquiring an authentication result for the acquired biometric information; and outputting the additional settlement information stored in the storage unit to a settlement server if the authentication result indicates a successful authentication of the user based on the biometric information.” These limitations discuss the features relating to the use of an additional security measure using additional settlement information in conjunction with the use of biometric information in order to carry out a transaction. This is not found in the prior art, including Sauer. Response to Arguments 6. Applicant’s arguments filed on December 23, 2025 have been fully considered. Applicant’s arguments concerning the 35 U.S.C. §101 rejection of the claims, including supposed deficiencies in the rejection, are not persuasive. Applicant argues that “As noted in the memorandum, the fourth paragraph of MPEP § 2106.05(a) now reads, in part, "When performing this evaluation, examiners should be "careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements of the claims. McRO, 837 F.3d at 1313, 120 USPQ2d at 1100. See also Ex Parle Desiardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential) ("Examiners and panels should not evaluate claims at such a high level of generality" that potentially meaningful technical limitations are dismissed without adequate explanation)." (underlining in original.” (See Applicant’s Arguments, p. 8). Applicant’s assertion here is conclusory and fails to identify how Examiner’s analysis of the claims has oversimplified anything. Applicant suggests that the newly amend claims contain the term “a settlement pre-registration mode” that “highlight such solution/improvements.” However, Applicant fails to show how this “settlement pre-registration mode” is a technological improvement. Merely stating that it is does not make it so. Therefore, the rejection under 35 U.S.C. §101 is maintained. Conclusion Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR §1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Amit Patel whose telephone number is (313) 446-4902. The Examiner can normally be reached Mon - Thu 8 AM - 6 PM EST. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Matthew Gart, can be reached at (571) 272-3955. The Examiner’s fax number is (571) 273-6087. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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. Information regarding the status of an application may be obtained from the Patent Center system (https://patentcenter.uspto.gov). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call (800) 786-9199 (USA or CANADA) or (571) 272-1000. /Amit Patel/ Examiner Art Unit 3696 /EDWARD CHANG/Primary Examiner, Art Unit 3696
Read full office action

Prosecution Timeline

Oct 07, 2024
Application Filed
Sep 29, 2025
Non-Final Rejection — §101
Dec 23, 2025
Response Filed
Apr 01, 2026
Final Rejection — §101 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
56%
Grant Probability
63%
With Interview (+7.1%)
2y 3m
Median Time to Grant
Moderate
PTA Risk
Based on 225 resolved cases by this examiner. Grant probability derived from career allow rate.

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