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 .
Status of Claims
Claims 1, 2, 4, 6, 7, 9-13, 15, 17, 18 and 20 have been amended.
Claims 1-20 are pending.
Response to Arguments
The 35 U.S.C. 112(b) rejections are withdrawn
The 35 U.S.C. 101 rejection of claims 1-20 are maintained. The Applicant seems to conflate the previous 35 U.S.C. 101 analysis as suggesting that the claims have been treated as “inherently abstract”. This is not the case. As previously indicated, the claims were directed to the abstract idea of “selecting and applying discounts to purchase transactions.” The determination of whether the claims are directed to an abstract idea is based upon the grouping provided by the courts which in this case related to certain methods of organizing human activity which involve managing transactions between people and/or sales activities. It is noted that Step 2A prong one identifies whether the claims are directed to a judicial exception by pointing out the claim’s verbiage which describe the judicial exception.
In regards to Step 2A as to whether the claims provide a practical application, it was pointed out the additional elements do not reflect an improvement in the functioning of a computer or other technology of technical field, but represent the use of a computer as a tool to perform the abstract idea and does no more than generally link the use of the judicial exception to a particular technological environment or field of use by automating the acts of selecting and applying discounts to purchase transactions.
In regards to Step B, the Examiner concedes that a claim may have conventional elements, but those additional elements in combination as a whole must provide functions that the courts would find to be significantly more and not well-understood, routine and conventional. That being said, the courts have recognized computer functions of receiving (e.g., “…a purchase transaction requested…to enable funds…”, processing (e.g., “ a processor…cause the processor to: determine…communicate,…, cause a first determination…, communicate,…, cause a second determination) and storing data (i.e., “a memory that stores a plurality of instructions…”) to be well-understood routine and conventional. It is for these reasons that the 35 U.S.C. 101 rejections are maintained below.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claim 1 is directed to a system and claim 10 is directed to a system, claim 12 is directed to a method
Claim 1 is directed to the abstract idea of “selecting and applying discounts to purchase transactions” which is grouped under certain methods of organizing human activity involving managing transactions between people and/or involving sales activities of behaviors, as in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance).
Claim 1 recites “…determine whether to apply any discounts in association with the purchase transaction, responsive to a plurality of discounts being available and the determination being to apply a first discount of the plurality of discounts in association with the purchase transaction:
communicate, …, data associated with the applied first discount, and cause a first determination of whether to complete the purchase transaction to occur, the first determination being based, at least in part, on an amount of funds associated with the purchase transaction reduced by the applied first discount and an amount of funds associated with the dedicated bank account, and responsive to the plurality of discounts being available and the determination being to apply a second, different discount of the plurality of discounts in association with the purchase transaction: communicate, to the component of the retail system, data associated with the applied second, different discount, and cause a second determination of whether to complete the purchase transaction to occur, the second determination being based, at least in part, on the amount of funds associated with the purchase transaction reduced by the applied second, different discount and the amount of funds associated with the dedicated bank account.”
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as “a processor” and “a memory” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) [automate or implement] the acts selecting and applying discounts to purchase transactions
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of selecting and applying discounts to purchase transactions using computer technology (e.g. processor and memory). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Hence, claim 1 is not patent eligible.
Claims 2-3 do not provide significantly more to the abstract idea wherein they further describe how the discount is applied.
Claims 4-9 do not provide significantly more than abstract idea in that it further describes further instructions of the abstract idea.
Claim 10 is directed to the abstract idea of “selecting and applying discounts to purchase transactions” which is grouped under certain methods of organizing human activity involving managing transactions between people and/or involving sales activities of behaviors, as in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance).
Claim 10 recites, “…responsive to a plurality of discounts being available and a receipt of data associated with a purchase transaction associated with a first amount of funds…: select a discount from the plurality of discounts, apply, to the purchase transaction, the selected discount, and enable the purchase transaction to be completed for a second amount of funds that is less than the first amount of funds, and responsive to no discounts being available and the receipt of data associated with the purchase transaction associated with the first amount of funds …, enable the purchase transaction to be completed for the first amount of funds. ”
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as “a processor” and “a memory” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to selecting and applying discounts to purchase transactions.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements (i.e., processor, memory, etc.,) that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of selecting and applying discounts to purchase transactions using computer technology (e.g. processor and memory). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Hence, claim 10 is not patent eligible.
Claim 11 does not provide significantly more that the abstract idea in that it merely describes that the selection of the discount is performed by a user.
Claim 12 is directed to the abstract idea of “selecting and applying discounts to purchase transactions” which is grouped under certain methods of organizing human activity involving managing transactions between people and/or involving sales activities of behaviors, as in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance).
Claim 12 recites, “…determining,…, whether to apply any discounts in association with the purchase transaction, responsive to a plurality of discounts being available and the determination being to apply a first discount of the plurality of discounts in association with the purchase transaction: communicating, …, data associated with the applied first discount, and causing, by the processor, a first determination of whether to complete the purchase transaction to occur, the first determination being based, at least in part, on an amount of funds associated with the purchase transaction reduced by the applied first discount and an amount of funds associated with the dedicated bank account, and responsive to the plurality of discounts being available and the determination being to apply a second, different discount of the plurality of discounts in association with the purchase transaction: communicating, to the component of the retail system, data associated with the applied second, different discount, and causing, …, a second determination of whether to complete the purchase transaction to occur, the second determination being based, at least in part, on the amount of funds associated with the purchase transaction reduced by the applied second, different discount and the amount of funds associated with the dedicated bank account. ”
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as “a processor” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to selecting and applying discounts to purchase transactions.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements (i.e., processor, memory, etc.,) that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of selecting and applying discounts to purchase transactions using computer technology (e.g., a processor). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Hence, claim 12 is not patent eligible.
Claims 13-20 do not provide significantly more to the abstract idea wherein they further describe how the discount is applied.
Claims 2 and 11 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101 ). Both claim 2 and 11 depend from “a system” which encompasses at least a processor and a memory to store, determine, select and apply discounts to purchase transactions. It is maintained that it is unclear whether the selection of discount is being performed by the system (i.e., processor) or whether the claim encompasses a human (i.e., user) making the discount selection (i.e., based upon user input).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL S FELTEN whose telephone number is (571)272-6742. The examiner can normally be reached Flex.
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DANIEL S. FELTEN
Examiner
Art Unit 3692
/DANIEL S FELTEN/Primary Examiner, Art Unit 3692
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