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 .
Disposition of Claims
Claims 1-8 are pending in the instant application. No claims have been cancelled. No claims have been added. Claims 1,2 , and 8 have been amended. The rejection of claims 1-8 is hereby made final.
Response to Remarks
101
Regarding the rejection of the pending claims under 35 USC 101, as stated in the prior Office Action, the examiner has considered Applicant’s arguments and amendments, but does not find them to be persuasive. If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement (see at least MPEP 2106.05(a) Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016). The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field.
Examples that the courts have indicated may show an improvement in computer-functionality:
i. A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, DDR Holdings, 773 F.3d at 1258-59, 113 USPQ2d at 1106-07;
ii. Inventive distribution of functionality within a network to filter Internet content, BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016);
iii. A method of rendering a halftone digital image, Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868-69, 97 USPQ2d 1274, 1380 (Fed. Cir. 2010);
iv. A distributed network architecture operating in an unconventional fashion to reduce network congestion while generating networking accounting data records, Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01, 120 USPQ2d 1527, 1536-37 (Fed. Cir. 2016);
v. A memory system having programmable operational characteristics that are configurable based on the type of processor, which can be used with different types of processors without a tradeoff in processor performance, Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60, 123 USPQ2d 1712, 1717 (Fed. Cir. 2017);
vi. Technical details as to how to transmit images over a cellular network or append classification information to digital image data, TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 614-15, 118 USPQ2d 1744, 1749-50 (Fed. Cir. 2016) (holding the claims ineligible because they fail to provide requisite technical details necessary to carry out the function);
vii. Particular structure of a server that stores organized digital images, TLI Communications, 823 F.3d at 612, 118 USPQ2d at 1747 (finding the use of a generic server insufficient to add inventive concepts to an abstract idea);
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viii. A particular way of programming or designing software to create menus, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241, 120 USPQ2d 1844, 1854 (Fed. Cir. 2016);
ix. A method that generates a security profile that identifies both hostile and potentially hostile operations, and can protect the user against both previously unknown viruses and "obfuscated code," which is an improvement over traditional virus scanning. Finjan Inc. v. Blue Coat Systems, 879 F.3d 1299, 1304, 125 USPQ2d 1282, 1286 (Fed. Cir. 2018);
x. An improved user interface for electronic devices that displays an application summary of unlaunched applications, where the particular data in the summary is selectable by a user to launch the respective application. Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356, 1362-63, 125 USPQ2d 1436, 1440-41 (Fed. Cir. 2018);
xi. Specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers; Data Engine Techs., LLC v. Google LLC, 906 F.3d 999, 1009, 128 USPQ2d 1381, 1387 (Fed. Cir. 2018); and
xii. A specific method of restricting software operation within a license, Ancora Tech., Inc. v. HTC America, Inc., 908 F.3d 1343, 1345-46, 128 USPQ2d 1565, 1567 (Fed. Cir. 2018).
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It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016). As currently recited, the pending claims recite limitations corresponding to the processing of a transaction, which can be performed mentally, in conjunction with a generic computing device and common computer elements. For at least the reasoning provided above, the rejection of the pending claims under 35 USC 101 is hereby maintained and made final.
103
Applicant’s arguments and amendments have been considered by the examiner and have been addressed in the new grounds of rejection presented below.
Claim Rejections - 35 USC § 101
5. 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.
6. Claim 8 is 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, claim 8 is 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 MPEP 2106 patentable subject matter eligibility guidance analysis which follows.
Under the MPEP 2106 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 claim is directed to the statutory category of a method (claim 8), (See, e.g., MPEP §2106.03). Therefore, we proceed to step 2A, Prong 1.
Under the MPEP 2106 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 displaying a preview code to a user at a checkout terminal by:
acquiring a captured image captured by the imaging unit; and displaying, on the first display unit, a first preview image based on the captured image while simultaneously displaying, on the second display unit, a second preview image based on the captured image. Here, the recited abstract idea falls within one or more of the three enumerated MPEP 2106 categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes managing personal behavior or relationships or interactions between people (e.g., effectuating a purchase at a retail location).
Under the MPEP 2106 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.
Under the MPEP 2106 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: “payment terminal,” “display unit”, and “imaging unit”, 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.).
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 claim as a whole, does 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 claim does 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 claim does 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 claim does 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). Appropriate correction and/or clarification is required.
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.
Claims 1 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (US 2017/0315772) in view of Suzuki (US 2014/00675576).
Regarding claim 1, the prior art discloses a terminal comprising: a first display unit configured for a customer; a second display unit configured for a store clerk(see at least paragraph [0028] to Lee et al, “a plurality of image output devices”); an imaging unit comprising a camera that is arranged near the first display unit (see at least paragraph [0028] to Lee et al, wherein a mobile terminal may include a camera and a display unit) and that captures an image of the code displayed on a medium (see at least paragraph [0028] to Lee et al, wherein a mobile terminal may include a camera and a display unit configured to generate a preview image) ; and a control unit comprising processors that controls the first display unit, the second display unit, and the imaging unit, wherein the control unit acquires a captured image captured by the imaging unit, and causes a first preview image based on the captured image to be displayed on the first display unit while simultaneously causing a second preview image based on the captured image to be displayed on the second display unit (see at least paragraph [0030] to Lee et al, wherein the controller may extract the image quality information, in response to the indicator overlapping the image corresponding to the graphic object output on each of the plurality of image output devices).
Lee et al does not appear to explicitly disclose a payment terminal capable of performing payment using a code, and wherein the first preview image is displayed to assist the customer in moving the medium to a readable position for the imaging unit, and the second preview image is displayed to assist the store clerk in guiding the customer to move the medium to the readable position.
However, Suzuki discloses a sales processing method and system further comprising a payment terminal capable of performing payment using a code (see at least paragraph [0039] to Suzuki, wherein he CPU 101 acquires an identification code for settlement, which is an example of a right code for certifying the right for using electronic money. The identification code for settlement is also called as a prepaid ID or a PIN (personal identification number) code and is hereinafter referred to as a PIN code); and
wherein the first preview image is displayed to assist the customer in moving the medium to a readable position for the imaging unit, and the second preview image is displayed to assist the store clerk in guiding the customer to move the medium to the readable position (see at least paragraphs [0026] and [0027] to Suzuki, wherein he touch panel for operator 116 can display any image under the control of the CPU 101. The touch panel for operator 116 is used to display images representing various kinds of information which should be prompted to the operator. When the display screen of the touch panel for operator 116 is touched, the touch panel for operator 116 outputs position information representing the touched position.
The touch panel for customer 117 is, for example, an LCD (liquid crystal display) or a fluorescent tube display, and is capable of displaying any image under the control of the CPU 101. The touch panel for customer 117 is used to display images representing various kinds of information which should be prompted to the customer. When the display screen of the touch panel for customer 117 is touched, the touch panel for customer 117 outputs position information representing the touched position.”)
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The examiner submits that the combination of the teaching of the image output system and method, as disclosed by Lee et al and the sales processing system and method as taught by Suzuki, in order to effectuate a payment using the camera of a point of sale (see at least paragraph [0060] to Suzuki), could have been readily and easily implemented, with a reasonable expectation of success. As such, the aforementioned combination is found to be obvious to try, given the state of the art at the time of filing.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (US 2017/0315772) in view of Suzuki (US 2014/0067576), further in view of Chao et al (US 2006/0045367).
Regarding claim 2, the prior art discloses the payment terminal according to claim 1, wherein the payment terminal includes a first terminal and a second terminal, the first terminal includes the first display unit and the imaging unit, the second terminal includes the second display unit and the control unit, and the control unit acquires the captured image from the imaging unit of the first terminal, but does not appear to explicitly disclose compress[ing] the captured image at a first compression rate to generate the first preview image, compresses the captured image at a second compression rate different from the first compression rate or a second compression rate the same as the first compression rate to generate the second preview image, or generates the second preview image without compressing the captured image, transfers the first preview image to the first display unit, transfers the second preview image to the second display unit, and causes the first preview image to be displayed on the first display unit while simultaneously causing the second preview image to be displayed on the second display unit.
However, Chao et al discloses a video image capturing and displaying system and method further comprising compress[ing] the captured image at a first compression rate to generate the first preview image, compresses the captured image at a second compression rate different from the first compression rate or a second compression rate the same as the first compression rate to generate the second preview image, or generates the second preview image without compressing the captured image, transfers the first preview image to the first display unit, transfers the second preview image to the second display unit, and causes the first preview image to be displayed on the first display unit while simultaneously causing the second preview image to be displayed on the second display unit (see at least paragraph [0024] to Chao et al, wherein video image capturing and displaying system 30 of the present invention. The video image capturing and displaying system 30 comprises an imaging module 32, a buffer controller 34, a video image compressing module 36, a decompressing module 38, a display 42 and a buffer 44. The imaging module 32 is used for capturing a video image consisting of a time series of image frames. The video image compressing module 36 comprises a plurality of compressing engines, for compressing the video image. Different compressing engines compress each sequential line of the image frame as the basic compression unit with different compression methods or compression rates. The video image compressing module 36 can implement the step 120, the step 130, and the step 140 in FIG. 3. The buffer controller 34, connected to the video image compressing module 36 is used for selecting one of the plurality of compressing engines to compress the video image. The plurality of compressing engines compress the video image in different compression modes or different compression rates. In the preferred embodiment, the compression mode adopted in the compressing step is selected from one of a group consisting of differential pulse coded modulation, wavelet compression, and discrete cosine and translation. In the application of the web camera using the USB specification as the transmission interface, the compression ratio adopted in the compressing step ranges from 1/2 to 1/5. After the video image is compressed by the video image compressing module 36, the compressed image is stored in the buffer 44. The decompressing module 38 comprises a plurality of decompressing engines corresponding to the plurality of compressing engines, for decompressing the compressed video image stored in the buffer. The display 42 is used for displaying the decompressed video image).
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The examiner submits that the combination of the teaching of the image output system and method, as disclosed by Lee et al and the sales processing system and method as taught by Suzuki, further in view of the image capturing and displaying method and system as taught by Chao et al in order to effectuate a payment using the camera of a point of sale (see at least paragraph [0060] to Suzuki), could have been readily and easily implemented, with a reasonable expectation of success. As such, the aforementioned combination is found to be obvious to try, given the state of the art at the time of filing.
Regarding claim 3, the prior art discloses the payment terminal according to claim 2, wherein the control unit acquires, as the captured image, a captured video including a plurality of images captured sequentially in time series by the imaging unit, but does not appear to explicitly disclose compress[ing] the captured video at a third compression rate to generate a first preview video as the first preview image, compresses the captured video at a fourth compression rate different from the third compression rate or a fourth compression rate the same as the third compression rate to generate a second preview video as the second preview image, or generates a second preview video as the second preview image without compressing the captured video, transfers the first preview video to the first display unit, transfers the second preview video to the second display unit, and causes the first preview video to be displayed on the first display unit while simultaneously causing the second preview video to be displayed on the second display unit.
However, Chao et al discloses a video image capturing and displaying system and method further comprising compress[ing] the captured video at a third compression rate to generate a first preview video as the first preview image, compresses the captured video at a fourth compression rate different from the third compression rate or a fourth compression rate the same as the third compression rate to generate a second preview video as the second preview image, or generates a second preview video as the second preview image without compressing the captured video, transfers the first preview video to the first display unit, transfers the second preview video to the second display unit, and causes the first preview video to be displayed on the first display unit while simultaneously causing the second preview video to be displayed on the second display unit.
(see at least paragraph [0024] to Chao et al, wherein video image capturing and displaying system 30 of the present invention. The video image capturing and displaying system 30 comprises an imaging module 32, a buffer controller 34, a video image compressing module 36, a decompressing module 38, a display 42 and a buffer 44. The imaging module 32 is used for capturing a video image consisting of a time series of image frames. The video image compressing module 36 comprises a plurality of compressing engines, for compressing the video image. Different compressing engines compress each sequential line of the image frame as the basic compression unit with different compression methods or compression rates).
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The examiner submits that the combination of the teaching of the image output system and method, as disclosed by Lee et al and the sales processing system and method as taught by Suzuki, further in view of the image capturing and displaying method and system as taught by Chao et al in order to effectuate a payment using the camera of a point of sale (see at least paragraph [0060] to Suzuki), could have been readily and easily implemented, with a reasonable expectation of success. As such, the aforementioned combination is found to be obvious to try, given the state of the art at the time of filing.
Regarding claim 4, the prior art discloses the payment terminal according to claim 1, wherein a screen size of the first display unit is different from a screen size of the second display unit, and the control unit adjusts a display size of the captured image based on the screen size of the first display unit to generate the first preview image, adjusts the display size of the captured image based on the screen size of the second display unit to generate the second preview image, and causes the first preview image to be displayed on the first display unit while simultaneously causing the second preview image to be displayed on the second display unit (see at least paragraph [0028] to Lee et al, wherein A mobile terminal for controlling image qualities of a plurality of image output devices according to one embodiment of the present invention may include a camera, a display unit configured to generate a preview image based on images corresponding to the plurality of image output devices, received through the camera, and outputting the preview image, and extracting image quality information related to each of the plurality of image output devices using the images corresponding to the plurality of image output devices included in the preview image, and transmitting the extracted image quality information or image quality correction data corresponding to the image quality information to at least one image output device corresponding to an image quality adjustment target among the plurality of image output devices).
Regarding claim 5, the prior art discloses the payment terminal according to claim 1, wherein the control unit causes the first preview image and guidance information for guiding an arrangement method of the medium with respect to the payment terminal to be simultaneously displayed on the first display unit (see at least paragraph [0012] to Suzuki, wherein a sales processing apparatus includes a first generation unit, a second generation unit, a display control unit and a printer control unit. The first generation unit configured to generate a paper surface image of a valuable instrument visibly including all the right code necessary for exercising the right, the paper surface is relating to the right obtained by customer paying a consideration. The second generation unit configured to generate a preview image invisibly including the right code. The display control unit configured to control a display device to display the preview image. The printer control unit configured to control a printer to print the paper surface image on a printing medium in response to a request for issuing a valuable instrument of the surface representing by the preview image displayed by the display device).
Regarding claim 6, the prior art discloses the payment terminal according to claim 1, wherein the medium is a third terminal that displays the code (see at least paragraph [0006] to Suzuki, wherein ales processing apparatus such as a POS terminal acquires the prepaid number from a server, prints the prepaid number on a sheet medium, and issues a voucher (valuable instrument) on which the prepaid number is written).
Regarding claim 7, the prior art discloses the payment terminal according to claim 1, wherein the payment terminal is a stationary terminal (see at least paragraph [0006] to Suzuki, wherein ales processing apparatus such as a POS terminal acquires the prepaid number from a server, prints the prepaid number on a sheet medium, and issues a voucher (valuable instrument) on which the prepaid number is written).
Claim 8 contains recitations substantially similar to those addressed above and, therefore, is likewise rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 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, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TALIA F CRAWLEY/Primary Examiner, Art Unit 3627
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