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 .
Response to Amendment
This Office Action is in response to the Amendment filed on 12/17/2025.
Claims 1-6 and 8-19 are currently amended.
Claims 1-20 are currently pending and examined 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.
Step 1:
Claims 1-20 is/are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter) (Step 1, Yes).
Step 2A Prong One:
Claim 1 recites (additional elements underlined):
A transaction processing apparatus, comprising:
a determining component configured to determine whether a transaction satisfies an amount condition based on a total amount of the transaction;
an applying component configured to, based on the transaction satisfying the amount condition, apply a coupon identified by input coupon information to the transaction if the transaction satisfies the amount condition, resulting in an updated amount of the transaction; and
a payment component configured to process a payment based on the updated amount.
Under the broadest reasonable interpretation, the limitations outlined above that describe or set forth the abstract idea, cover performance of the limitations in the mind but for the recitation of generic computer(s) and/or generic computer component(s). That is, other than reciting the additional elements identified below, nothing in the claim precludes the limitations from practically being performed in the mind. These limitations are considered a mental process because the limitations include an observation, evaluation, judgement, and/or opinion. These limitations are also similar to “collecting information, analyzing it, and displaying certain results of the collection and analysis” and/or “collecting and comparing known information” which were determined to be mental processes in MPEP 2106.04(a)(2)(III)(A). The Examiner notes that “[c]laims can recite a mental process even if they are claimed as being performed on a computer” (see MPEP 2106.04(a)(2)(III)(C)). The mere nominal recitation of the additional elements identified below do not take the claims out of the mental process grouping. Therefore, the claim recite a mental process (Step 2A Prong One, Yes).
The limitations outlined above also describe or set forth an commercial interaction activity. Commercial interactions fall within the certain method of organizing human activity enumerated grouping of abstract ideas. The limitations outlined above also describe or set forth a fundamental economic principle or practice because commercial interactions are related to commerce and economy, a commercial interaction (e.g., advertising, marketing or sales activities or behaviors, business relations), and managing personal behavior or relationships or interactions between people (e.g., between a customer and a store clerk). Therefore, the claim recites a certain method of organizing human activity (Step 2A Prong One, Yes).
The limitations outlined above that describe or set forth the abstract idea are also considered mathematical concepts at least because the above limitations determine whether a transaction satisfies an amount condition based on an amount of the transaction and applies a coupon identified by the input coupon information to the transaction if the transaction satisfies the amount condition. These limitations are similar to “organizing information and manipulating information through mathematical correlations” which was determined to be a mathematical concept in MPEP 2106.04(a)(2)(II). Therefore, the claim recites a mathematical concept (Step 2A Prong One, Yes).
Step 2A Prong Two:
In Step 2A Prong Two, these additional element(s) are recited at a high level of generality, and under the broadest reasonable interpretation, are generic computer(s) and/or generic computer component(s) that perform generic computer functions. The additional element(s) are merely used as tools, in their ordinary capacity, to perform the abstract idea. The additional element(s) amount adding the words “apply it” with the judicial exception. Merely implementing an abstract idea on generic computer(s) and/or generic computer component(s) does not integrate the judicial exception similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. “[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter" (see pp 10-11 of FairWarning IP, LLC. v. Iatric Systems, Inc. (Fed. Cir. 2016)). The additional elements also amount to generally linking the use of the abstract idea to a particular technological environment or field of use. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not integrate the judicial exception into a practical application. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer(s) and/or generic computer component(s). Their collective functions merely provide generic computer implementation. There is no indication that the combination of elements improves the functioning of a computer, improves any other technology or technical field, applies or uses the judicial exception to effect a particular treatment or prophylaxis for disease or medical condition, applies the judicial exception with, or by use of a particular machine, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claims as a whole is more than a drafting effort designed to monopolize the exception. (Step 2A Prong Two, No).
Step 2B:
In Step 2B, the additional elements also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A Prong Two overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. The additional elements amount no more than a mere instruction to apply the abstract idea using generic computer(s) and/or generic computer component(s) (Step 2B, No).
Claims 2-7 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 1 (i.e., mathematical concepts, certain methods of organizing human activities and/or mental processes).
Claim 2 recites the additional elements “the determining component” and “the applying component”. Claim 3 recites the additional element “the applying component”. Claim 5 recites the additional element “electronically”. Claim 6 recites the additional element “electronic”. However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claims 4 does not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 1, claim 4 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim 7 recites the additional element of “further comprising a scanner configured to read various code symbols, wherein the coupon comprises a code symbol”. However, in Step 2A Prong Two, this additional element also does not integrate the judicial exception into a practical application because it amounts to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, adding insignificant extra-solution activity, and generally linking the use of the judicial exception to a particular technological environment or field of use. In Step 2B, this additional elements also does not amount to significantly more because it amounts to simply appending well-understood, routine, and conventional activity as evidenced by at least ¶ 113 of US 2020/0151723 A1, ¶ 126 of US 2018/0249120 A1, ¶ 111 of US 2014/0337214 A1, and/or MPEP 2106.05(d)(II) (e.g., electronically scanning or extracting data from a physical document). With regard to the remaining additional elements, they also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. The additional elements amount no more than a mere instruction to apply the abstract idea using generic computer(s) and/or generic computer component(s) (Step 2B, No).
Claim 8 recites (additional elements underlined):
A method, comprising:
determining, by a computer comprising at least one processor, that a transaction satisfies an amount condition based on a total amount of the transaction; and
based on the transaction satisfying the amount condition, applying, by the computer, a coupon identified by input coupon information to the transaction, resulting in an updated amount of the transaction; and
based on the updated amount, processing, by the computer, a payment settling the transaction.
For the same reasons explained above with respect to claim 1, claim 8 also recites an abstract idea in Step 2A Prong One (i.e., mathematical concept, certain method of organizing human activities, and mental processes). For the same reasons explained above with respect to claim 1, claim 8 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claims 9-13 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 8 (i.e., mathematical concepts, certain methods of organizing human activities and/or mental processes).
Claims 9-10 and 12 recite the additional element “by the computer”. Claim 12 recites the additional element “electronic”. However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claim 11 does not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 8, claim 11 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim 13 recites the additional element of “further comprising reading, by the computer, various code symbols, wherein the coupon comprises a code symbol”. However, in Step 2A Prong Two, this additional element also does not integrate the judicial exception into a practical application because it amounts to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, adding insignificant extra-solution activity, and generally linking the use of the judicial exception to a particular technological environment or field of use. In Step 2B, this additional elements also does not amount to significantly more because it amounts to simply appending well-understood, routine, and conventional activity as evidenced by at least ¶ 113 of US 2020/0151723 A1, ¶ 126 of US 2018/0249120 A1, ¶ 111 of US 2014/0337214 A1, and/or MPEP 2106.05(d)(II) (e.g., electronically scanning or extracting data from a physical document). With regard to the remaining additional elements, they also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. The additional elements amount no more than a mere instruction to apply the abstract idea using generic computer(s) and/or generic computer component(s) (Step 2B, No).
Claim 14 recites substantially similar limitations as claim 1. Therefore, for the same reasons explained above with respect to claim 1, claim 14 also recites an abstract idea in Step 2A Prong One (i.e., mathematical concept, certain method of organizing human activities, and mental processes). Claim 14 recites the additional elements of “A point of sale terminal, comprising: a memory; a change machine interface; a communication interface; a processor configured to”. However, for the same reasons explained above with respect to claim 1, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more.
Claims 15-20 recite further limitations that also fall within the same abstract ideas identified above with respect to claim 14 (i.e., mathematical concepts, certain methods of organizing human activities and/or mental processes).
Claim 15 recites the additional elements “the processor is further configured to” and “the applying component”. Claim 16 recites the additional element “the processor is further configured to”. Claim 18 recites the additional element “electronically”. Claim 19 recites the additional element “electronic”. However, these additional elements also do not integrate the judicial exception into a practical application or amount to significantly more because they amount to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, and generally linking the use of the judicial exception to a particular technological environment or field of use.
Claims 17 does not recite any other additional elements. Therefore, for the same reasons explained above with respect to claim 1, claim 4 also does not integrate the judicial exception into a practical application or amount to significantly more.
Claim 20 recites the additional element of “further comprising a scanner configured to read various code symbols, wherein the coupon comprises a code symbol”. However, in Step 2A Prong Two, this additional element also does not integrate the judicial exception into a practical application because it amounts to adding the words “apply it” with the judicial exception, mere instructions to implement the idea on a computer, merely using a computer as a tool to perform an abstract idea, adding insignificant extra-solution activity, and generally linking the use of the judicial exception to a particular technological environment or field of use. In Step 2B, this additional elements also does not amount to significantly more because it amounts to simply appending well-understood, routine, and conventional activity as evidenced by at least ¶ 113 of US 2020/0151723 A1, ¶ 126 of US 2018/0249120 A1, ¶ 111 of US 2014/0337214 A1, and/or MPEP 2106.05(d)(II) (e.g., electronically scanning or extracting data from a physical document). With regard to the remaining additional elements, they also do not amount to significantly more for the same reasons set forth with respect to Step 2A Prong Two. The Examiner notes that revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be reevaluated in Step 2B because the answer will be the same. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. The additional elements amount no more than a mere instruction to apply the abstract idea using generic computer(s) and/or generic computer component(s) (Step 2B, No).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4, 7-11, 13-17, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terabayashi (US 2012/0265594 A1, hereinafter “Terabayashi”) in view of Hayashi (US 2020/0279252 A1, hereinafter “Hayashi”).
As per Claim 1, Terabayashi discloses A transaction processing apparatus, comprising (¶ 2 “Embodiments described herein related to a settlement processing apparatus, method and system used for settlement of a commodity or service as a trade object”. ¶ 17 “processing apparatus”. ¶ 22 “The POS terminal 1 has a CPU (Central Processing Unit) 10 serving as a control center. This CPU 10 is connected with a memory 11, a communication I/F (Interface) 12, a scanner I/F 13, a keyboard controller 14, display controllers 15 and 16 and a printer controller 17 via a bus line 18 consisting of address or data bus lines.” Also see at least Figures 1 and 12 and citations below.):
a determining component configured to determine whether a transaction satisfies a total amount condition based on an amount of the transaction (¶ 54 “After Act S8 or S9 is executed, the CPU 10 calculates a remaining amount E (Act 10). The remaining amount E is calculated by subtracting the one of the total 11 discount amount C1, the total 12 discount amount C2 and the voucher amount D written in the transaction buffer from the total amount B written in the transaction buffer. After calculating the remaining amount E, the CPU 10 determines whether or not the remaining amount E is greater than 0 (Act S11). If the remaining amount E is greater than 0 (Act11: Yes), the CPU 10 returns to Act S5 and under the state that the CPU 10 can accept the indication of the execution of an automatic discount, the announcement of the use of a voucher and an indication of the execution of a registration termination to wait for the input of the contents above.” ¶ 55 “On the other hand, if the remaining amount E is smaller than 0 (Act 11: No), that is, the discount amount is greater than the total amount B, then, the CPU 10 displays an alarm message on the display 23 at the side of a shop assistant to notify an error and then deletes the total 11 discount amount C1 or the total 12 discount amount C2 or the voucher amount D written in the transaction buffer in the previous Act S8 or S9 (Act S12). Then, the CPU 10 returns to execute Act S5 to enter into the state in which the CPU 10 can accept an indication of the execution of an automatic discount, the announcement of the use of a voucher and an indication of the execution of a registration termination to wait for the input of the contents above.” Also see at least Figures 5-6, 8, 10, ¶¶ 47-48, and citations below.); and
an applying component configured to, based on the transaction satisfying the amount condition, apply […] identified by input […] information to the transaction if the transaction satisfies the amount condition, resulting in an updated amount of the transaction (“¶ 54 “After Act S8 or S9 is executed, the CPU 10 calculates a remaining amount E (Act 10). The remaining amount E is calculated by subtracting the one of the total 11 discount amount C1, the total 12 discount amount C2 and the voucher amount D written in the transaction buffer from the total amount B written in the transaction buffer. After calculating the remaining amount E, the CPU 10 determines whether or not the remaining amount E is greater than 0 (Act S11). If the remaining amount E is greater than 0 (Act11: Yes), the CPU 10 returns to Act S5 and under the state that the CPU 10 can accept the indication of the execution of an automatic discount, the announcement of the use of a voucher and an indication of the execution of a registration termination to wait for the input of the contents above.” ¶ 55 “On the other hand, if the remaining amount E is smaller than 0 (Act 11: No), that is, the discount amount is greater than the total amount B, then, the CPU 10 displays an alarm message on the display 23 at the side of a shop assistant to notify an error and then deletes the total 11 discount amount C1 or the total 12 discount amount C2 or the voucher amount D written in the transaction buffer in the previous Act S8 or S9 (Act S12). Then, the CPU 10 returns to execute Act S5 to enter into the state in which the CPU 10 can accept an indication of the execution of an automatic discount, the announcement of the use of a voucher and an indication of the execution of a registration termination to wait for the input of the contents above.” Also see at least Figures 5-6, 8, 10, and citations above.); and
a payment component configured to process a payment based on the updated amount (¶ 17 “a settlement processing apparatus”. ¶ 43 “the settlement processing carried out by the POS terminal 1 for the purchased commodities is described below.” ¶ 50 “If commodities are settled with a credit card or electronic money, a key is arranged on the keyboard 22 to indicate a settlement with a credit card or electronic money”. ¶ 57 “Further, the CPU 10 makes the receipt printer 25 issue the receipt on which printed the PLU data written in the transaction buffer, the subtotal amount A, the total amount B, the total 11 discount amount C1, the total 12 discount amount C2, the voucher amount D, the transaction number of the said transaction, the transaction date and time and the like (Act S14).” ¶ 58 “the CPU 10 generates the history information of the transaction, stores the history information in the sales file 32 (Act S15), and then ends the settlement processing.” ¶ 65 “Then, if `950` is input by the numeric keypad 221 and the cash total key 224 is operated in the processing of Act S5, then the receipt shown in FIG. 7 is issued in the processing of Act S14. The PLU data which is written into the transaction buffer in the said transaction: `the commodity XXX 1,000`, the subtotal amount A: `the subtotal 1,000`, the total amount B: `the total 1,000`, the cash total amount: `the cash total 950` [i.e., updated amount] and the like are printed on the receipt shown in FIG. 7. Furthermore, for the total 11 discount amount C1, such as `the members discount amount 50` is printed to be able to identify that is equivalent to the discount class: `the members discount` which is set for the total 11 key 225.” Also see at least Figure 7 which the processing of a payment based on the updated amount (i.e., $950) after applying a discount).
While Terabayashi discloses all of the above limitations, including the use of vouchers and discounts, Terabayashi does not appear to explicitly disclose a coupon and coupon.
However, Hayashi teaches a coupon and coupon (¶ 9 “Embodiments disclosed herein provide an information processing apparatus that can appropriately perform application of coupons, a settlement apparatus, and an information processing method.” ¶ 14 “The handy scanner 12 acquires a commodity code for identifying a commodity. In addition, the handy scanner 12 acquires a coupon code for identifying a coupon. As the handy scanner 12, a well-known device capable of optically reading a barcode, a two-dimensional code, or the like that is formed to be optically readable can be adopted. In addition, as the handy scanner 12, a well-known device that acquires data stored in a wireless tag by wireless communication can be adopted.” Also see at least Figure 3 and ¶¶ 11-16, 33-35, and 38-43.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the vouchers and discounts as taught by Terabayashi, for the coupons as taught by Hayashi. One of ordinary skill in the art would have been motivated to do so in order to enable a consumer to purchase a commodity at a reduced price (Hayashi, ¶ 38), ensure that a plurality of coupons can be appropriately applied to a transaction (Hayashi, ¶¶ 38-39), and prevent fraud by prevent unauthorized use of particular coupons. Additionally, since each individual element and its function are shown in the prior art, albeit shown in separate reference, the difference between the claimed subject matter and the prior art rests not on any individual element or function, but in the very combination itself – that is in the substitution of the coupons of Hayashi for the vouchers and discounts of Terabayashi. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious (KSR Rationale B).
As per Claim 2, Terabayashi disclose […] and the transaction satisfies the amount condition (¶¶ 54-55. Also see at least Figures 5-6, 8, 10, and citations above.).
While Terabayashi discloses the use of vouchers and discounts during a transaction, Terabayashi does not appear to explicitly disclose wherein the determining component determines whether the coupon is a particular coupon, and wherein the applying component applies the coupon to the transaction if the coupon is the particular coupon […].
However, Hayashi teaches wherein the determining component determines whether the coupon is a particular coupon, and wherein the applying component applies the coupon to the transaction if the coupon is the particular coupon […] (¶¶ 38-43. Also see at least Figure 3 and ¶¶ 11-16, and 33-35).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the vouchers and discounts as taught by Terabayashi, for the coupons as taught by Hayashi. One of ordinary skill in the art would have been motivated to do so in order to enable a consumer to purchase a commodity at a reduced price (Hayashi, ¶ 38), ensure that a plurality of coupons can be appropriately applied to a transaction (Hayashi, ¶¶ 38-39), and prevent fraud by prevent unauthorized use of particular coupons. Additionally, since each individual element and its function are shown in the prior art, albeit shown in separate reference, the difference between the claimed subject matter and the prior art rests not on any individual element or function, but in the very combination itself – that is in the substitution of the coupons of Hayashi for the vouchers and discounts of Terabayashi. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious (KSR Rationale B). The Examiner notes that the above italicized and underlined limitations are not given patentable weight because they are not required to be performed if the coupon is not a particular coupon. The above italicized and underlined limitations are not given patentable weight because they are contingent limitations (see MPEP 2111.04). However, for the sake of advancing prosecution, all limitations are considered and addressed.
As per Claim 3, while Terabayashi discloses the use of vouchers and discounts during a transaction, Terabayashi does not appear to explicitly disclose wherein the applying component applies the coupon to the transaction if the coupon comprises another coupon than the particular coupon.
However, Hayashi teaches wherein the applying component applies the coupon to the transaction if the coupon comprises another coupon than the particular coupon (¶¶ 38-43. Also see at least Figure 3 and ¶¶ 11-16, and 33-35).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the vouchers and discounts as taught by Terabayashi, for the coupons as taught by Hayashi. One of ordinary skill in the art would have been motivated to do so in order to enable a consumer to purchase a commodity at a reduced price (Hayashi, ¶ 38), ensure that a plurality of coupons can be appropriately applied to a transaction (Hayashi, ¶¶ 38-39), and prevent fraud by prevent unauthorized use of particular coupons. Additionally, since each individual element and its function are shown in the prior art, albeit shown in separate reference, the difference between the claimed subject matter and the prior art rests not on any individual element or function, but in the very combination itself – that is in the substitution of the coupons of Hayashi for the vouchers and discounts of Terabayashi. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious (KSR Rationale B). The Examiner notes that the above italicized and underlined limitations are not given patentable weight because they are not required to be performed if the coupon is not another coupon than the particular coupon. The above italicized and underlined limitations are not given patentable weight because they are contingent limitations (see MPEP 2111.04). However, for the sake of advancing prosecution, all limitations are considered and addressed.
As per Claim 4, Terabayashi discloses wherein the amount condition comprises a condition that an amount obtained by subtraction of a discount amount of the […] from the amount of the transaction is higher than a set amount (¶¶ 54-56, 61-66, 69, and 71-74. Also see at least Figures 5-6, 8, 10, and citations above.).
While Terabayashi discloses all of the above limitations, including the use of vouchers and discounts, Terabayashi does not appear to explicitly disclose coupon. However, in the same field of endeavor, Hayashi teaches the use of coupons in at least ¶ 9 “Embodiments disclosed herein provide an information processing apparatus that can appropriately perform application of coupons, a settlement apparatus, and an information processing method.” ¶ 14 “The handy scanner 12 acquires a commodity code for identifying a commodity. In addition, the handy scanner 12 acquires a coupon code for identifying a coupon. As the handy scanner 12, a well-known device capable of optically reading a barcode, a two-dimensional code, or the like that is formed to be optically readable can be adopted. In addition, as the handy scanner 12, a well-known device that acquires data stored in a wireless tag by wireless communication can be adopted.” Also see at least Figure 3 and ¶¶ 11-16, 33-35, and 38-43.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the vouchers and discounts as taught by Terabayashi, for the coupons as taught by Hayashi. One of ordinary skill in the art would have been motivated to do so in order to enable a consumer to purchase a commodity at a reduced price (Hayashi, ¶ 38), ensure that a plurality of coupons can be appropriately applied to a transaction (Hayashi, ¶¶ 38-39), and prevent fraud by prevent unauthorized use of particular coupons. Additionally, since each individual element and its function are shown in the prior art, albeit shown in separate reference, the difference between the claimed subject matter and the prior art rests not on any individual element or function, but in the very combination itself – that is in the substitution of the coupons of Hayashi for the vouchers and discounts of Terabayashi. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious (KSR Rationale B).
As per Claim 7, while Terabayashi disclose a scanner for scanning a barcode, Terabayashi does not appear to explicitly disclose further comprising a scanner configured to read various code symbols, wherein the coupon comprises a code symbol. However, in the same field of endeavor, Hayashi teaches this limitation in at least ¶ 12 “The self-checkout apparatus 100 includes a main body 1 and weighing units 2 and 3. The main body 1 includes a touch panel 10, a scanner window 11, a handy scanner 12, a receipt dispensing port 13, a card insertion port 14, a coin deposit tray 15, a receiving tray 16, a bill insertion port 17, a bill discharge port 18, a human presence sensor 19, and a signal lamp 20.” ¶ 13 “The handy scanner 12 acquires a commodity code for identifying a commodity. In addition, the handy scanner 12 acquires a coupon code for identifying a coupon. As the handy scanner 12, a well-known device capable of optically reading a barcode, a two-dimensional code, or the like that is formed to be optically readable can be adopted. In addition, as the handy scanner 12, a well-known device that acquires data stored in a wireless tag by wireless communication can be adopted.” ¶ 33 “When the customer wants to apply a coupon belonging to the customer to the present transaction, a coupon code of the coupon is read by the handy scanner 12 or the fixed scanner 24. Accordingly, the handy scanner 12 or the fixed scanner 24 inputs the coupon code and notifies the processor 21 of the input coupon code. Through this notification, the processor 21 determines YES in ACT 4 and proceeds to ACT 5. The coupon code may be input through the touch panel 10 or the reader-writer 26. Thus, a device used for inputting the coupon code among the touch panel 10, the handy scanner 12, the fixed scanner 24, and the reader-writer 26 is an example of the input unit configured to input designation of a coupon.” Also see at least Figure 2 and ¶ 19.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the scanner as disclosed by Terabayashi, for the scanner of Hayashi. One of ordinary skill in the art would have been motivated to do so for the advantage of quickly and efficiently identifying a coupon code so that a discount can be applied to the transaction (Hayashi, ¶¶ 13 and 38). One of ordinary skill in the art would have been motivated to do so in order to enable a consumer to purchase a commodity at a reduced price (Hayashi, ¶ 38), ensure that a plurality of coupons can be appropriately applied to a transaction (Hayashi, ¶¶ 38-39), and prevent fraud by prevent unauthorized use of particular coupons. Additionally, since each individual element and its function are shown in the prior art, albeit shown in separate reference, the difference between the claimed subject matter and the prior art rests not on any individual element or function, but in the very combination itself – that is in the substitution of the scanner of Hayashi for the scanner of Terabayashi. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious (KSR Rationale B).
As per Claim 8, it recites substantially similar limitations as claim 1. Therefore, claim 8 is rejected using the same rationale. Claim 8 recites the additional limitations by a computer comprising at least one processor, by the computer, and by the computer. However, Terabayashi teaches these limitations in at least ¶ 2 “Embodiments described herein related to a settlement processing apparatus, method and system used for settlement of a commodity or service as a trade object”. ¶ 17 “processing apparatus”. ¶ 22 “The POS terminal 1 has a CPU (Central Processing Unit) 10 serving as a control center. This CPU 10 is connected with a memory 11, a communication I/F (Interface) 12, a scanner I/F 13, a keyboard controller 14, display controllers 15 and 16 and a printer controller 17 via a bus line 18 consisting of address or data bus lines.” ¶ 98 “ While certain embodiments have been described, these embodiments have been presented by way of example only, and are not intended to limit the scope of the invention. Indeed, the novel method or system described herein may be embodied in a variety of other forms.” Also see at least Figures 1 and 12 and citations above.
As per Claims 9 and 15, they recite substantially similar limitations as claim 2. Therefore, claims 9 and 15 are rejected using the same rationale.
As per Claims 10 and 16, they recite substantially similar limitations as claim 3. Therefore, claims 10 and 16 are rejected using the same rationale.
As per Claims 11 and 17, they recite substantially similar limitations as claim 4. Therefore, claims 11 and 17 are rejected using the same rationale.
As per Claims 13 and 20, they recite substantially similar limitations as claim 7. Therefore, claims 13 and 20 are rejected using the same rationale.
As per Claim 14, it recites substantially similar limitations as claim 1. Therefore, it is rejected using the same rationale. Claim 14 recites the additional limitation of a change machine interface. However, Hayashi teaches this limitation in at least ¶¶ 12-16. Also see citations above.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to combine the change machine interface as taught by Hayashi, into Terabayashi. One of ordinary skill in the art would have been motivated to do so for the advantages of providing customers with the correct change after making a purchase, reduced labor costs, enhanced security, and improved cash management by eliminating manual counting errors. The claimed invention is also merely a combination of old elements, and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable (KSR Rationale A).
Claim(s) 5-6, 12, and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terabayashi in view of Hayashi, in further view of Karita (US 2022/0343322 A1, hereinafter “Karita”).
As per Claim 5, while Terabayashi discloses vouchers and discounts, Terabayashi does not appear to explicitly discloses wherein the particular coupon comprises is an electronically issued coupon. However, in the same field of endeavor, Hayashi teaches the use of coupons in at least ¶ 9 “Embodiments disclosed herein provide an information processing apparatus that can appropriately perform application of coupons, a settlement apparatus, and an information processing method.” ¶ 14 “The handy scanner 12 acquires a commodity code for identifying a commodity. In addition, the handy scanner 12 acquires a coupon code for identifying a coupon. As the handy scanner 12, a well-known device capable of optically reading a barcode, a two-dimensional code, or the like that is formed to be optically readable can be adopted. In addition, as the handy scanner 12, a well-known device that acquires data stored in a wireless tag by wireless communication can be adopted.” ¶ 25 “The reader-writer 26 reads data recorded in a portable recording medium. In addition, the reader-writer 26 writes data into the recording medium. As the reader-writer 26, a well-known device that reads and writes data in a state where it is in contact with a magnetic card, an integrated circuit (IC) card, or the like inserted into the card insertion port 14 by the customer can be adopted. In addition, as the reader-writer 26, for example, a well-known device that reads and writes data in a state where it is not in contact with a contactless IC card or the like can be adopted. Examples of the above-described recording medium include a point card and an IC card for settlement. The reader-writer 26 may read a coupon code from a recording medium such as a membership card in which a coupon code is recorded [i.e., electronically issued coupons].” Also see at least Figure 3 and ¶¶ 11-16, 33-35, and 38-43.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the vouchers and discounts as taught by Terabayashi, for the coupons as taught by Hayashi. One of ordinary skill in the art would have been motivated to do so in order to enable a consumer to purchase a commodity at a reduced price (Hayashi, ¶ 38), ensure that a plurality of coupons can be appropriately applied to a transaction (Hayashi, ¶¶ 38-39), and prevent fraud by prevent unauthorized use of particular coupons. Additionally, since each individual element and its function are shown in the prior art, albeit shown in separate reference, the difference between the claimed subject matter and the prior art rests not on any individual element or function, but in the very combination itself – that is in the substitution of the coupons of Hayashi for the vouchers and discounts of Terabayashi. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious (KSR Rationale B).
Alternatively, Karita teaches wherein the particular coupon comprises an electronically issued coupon in at least ¶ 17 “electronic coupons”. ¶ 22 “The electronic coupon is a coupon that a consumer can get thought the communication network.” ¶ 25 “The member terminal 50 is a communication apparatus that is used by a consumer who is registered as a member in order to use an electronic coupon managed by the coupon management server 10. For example, a communication apparatus such as a smartphone, a cellular phone, a tablet terminal, or a personal computer may be the member terminal 50. In the member terminal 50, an application program for using an electronic coupon is installed. Hereinafter, the application program will be referred to as “coupon application.” A consumer can receive an electronic coupon by using the coupon application.” ¶ 28 “The coupon ID is a unique code issued for identifying each of the coupon records 61.” ¶ 38 “issuing a coupon”.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify coupons as taught by the combination of Terabayashi/Hayashi as modified above, for the electronic coupons as taught by Karita. One of ordinary skill in the art would have been motivated to do so for the advantages of enabling customers to obtain a price discount during checkout (Karita, ¶ 3), superior convivence for customers and store clerks, increased sustainability (e.g., elimination of physical waste, reduction of carbon footprints), and better coupon targeting compared to paper coupons. Additionally, since each individual element and its function are shown in the prior art, albeit shown in separate reference, the difference between the claimed subject matter and the prior art rests not on any individual element or function, but in the very combination itself – that is in the substitution of the electronic coupons of Karita for the coupons of the combination of Terabayashi/Hayashi as modified above. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious (KSR Rationale B). The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material and/or intended use language. However, for the sake of advancing prosecution, all limitations are considered and addressed.
As per Claim 6, while Terabayashi discloses vouchers and discounts, Terabayashi does not appear to explicitly discloses wherein the coupon comprises one of a paper printed coupon or an electronic coupon. However, in the same field of endeavor, Hayashi teaches the use of coupons in at least ¶ 9 “Embodiments disclosed herein provide an information processing apparatus that can appropriately perform application of coupons, a settlement apparatus, and an information processing method.” ¶ 14 “The handy scanner 12 acquires a commodity code for identifying a commodity. In addition, the handy scanner 12 acquires a coupon code for identifying a coupon. As the handy scanner 12, a well-known device capable of optically reading a barcode, a two-dimensional code, or the like that is formed to be optically readable can be adopted. In addition, as the handy scanner 12, a well-known device that acquires data stored in a wireless tag by wireless communication can be adopted.” ¶ 25 “The reader-writer 26 reads data recorded in a portable recording medium. In addition, the reader-writer 26 writes data into the recording medium. As the reader-writer 26, a well-known device that reads and writes data in a state where it is in contact with a magnetic card, an integrated circuit (IC) card, or the like inserted into the card insertion port 14 by the customer can be adopted. In addition, as the reader-writer 26, for example, a well-known device that reads and writes data in a state where it is not in contact with a contactless IC card or the like can be adopted. Examples of the above-described recording medium include a point card and an IC card for settlement. The reader-writer 26 may read a coupon code from a recording medium such as a membership card in which a coupon code is recorded [i.e., electronically issued coupons].” Also see at least Figure 3 and ¶¶ 11-16, 33-35, and 38-43.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the vouchers and discounts as taught by Terabayashi, for the coupons as taught by Hayashi, because doing so would enable a consumer to purchase a commodity at a reduced price (Hayashi, ¶ 38). Additionally, since each individual element and its function are shown in the prior art, albeit shown in separate reference, the difference between the claimed subject matter and the prior art rests not on any individual element or function, but in the very combination itself – that is in the substitution of the coupons of Hayashi for the vouchers and discounts of Terabayashi. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious (KSR Rationale B).
Alternatively, Karita teaches wherein the coupon comprises one of a paper printed coupon or an electronic coupon in at least ¶ 17 “electronic coupons”. ¶ 22 “The electronic coupon is a coupon that a consumer can get thought the communication network.” ¶ 25 “The member terminal 50 is a communication apparatus that is used by a consumer who is registered as a member in order to use an electronic coupon managed by the coupon management server 10. For example, a communication apparatus such as a smartphone, a cellular phone, a tablet terminal, or a personal computer may be the member terminal 50. In the member terminal 50, an application program for using an electronic coupon is installed. Hereinafter, the application program will be referred to as “coupon application.” A consumer can receive an electronic coupon by using the coupon application.” ¶ 28 “The coupon ID is a unique code issued for identifying each of the coupon records 61.” ¶ 38 “issuing a coupon”.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify coupons as taught by the combination of Terabayashi/Hayashi as modified above, for the electronic coupons as taught by Karita. One of ordinary skill in the art would have been motivated to do so for the advantages of enabling customers to obtain a price discount during checkout (Karita, ¶ 3), superior convivence for customers and store clerks, increased sustainability (e.g., elimination of physical waste, reduction of carbon footprints), and better coupon targeting compared to paper coupons. Additionally, since each individual element and its function are shown in the prior art, albeit shown in separate reference, the difference between the claimed subject matter and the prior art rests not on any individual element or function, but in the very combination itself – that is in the substitution of the electronic coupons of Karita for the coupons of the combination of Terabayashi/Hayashi as modified above. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious (KSR Rationale B). The Examiner notes that the above italicized and underlined limitation is not given patentable weight because it is nonfunctional descriptive material and/or intended use language. However, for the sake of advancing prosecution, all limitations are considered and addressed.
As per Claims 12 and 19, they recite substantially similar limitations as claim 6. Therefore, it is rejected using the same rationale.
As per Claim 18, it recites substantially similar limitations as claim 5. Therefore, it is rejected using the same rationale.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive. In the Remarks, Applicant argues:
Argument A: “Although Assignee’s representative traverses this rejection, solely to expedite prosecution of claims 1, 8, and 14 are presently amended to further emphasize the statutory subject matter recited herein.”
In response, the Examiner respectfully disagrees. As explained above, viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. The additional elements amount no more than mere instructions to apply the abstract idea using generic computer(s) and/or generic computer component(s). Their collective functions merely provide generic computer implementation.
Argument B: “Terabayashi states that ‘remaining amount E is calculated by subtracting the one of the total 11 discount amount C1, the total 12 discount amount C2 and the voucher amount D, . .. from the total amount B’ e.g., remaining amount E is based on subtracting a value from a total amount B. Assignee's representative submits that Terabayashi only arguably uses remaining amount E as a total discount amount based on use of a voucher, and not as a ‘a total amount of the transaction’ as presently recited in claims 1, 8, and 14. Stated differently, Terabayashi only arguably compares a discount amount of a voucher already applied to a transaction, while the amended claims ‘apply a coupon’ based on ‘a total amount of the transaction.’ Hayashi fails to cure these deficiencies of Terabayashi.”
In response, the Examiner respectfully disagrees. The claims do not explicitly state that the step of determining whether the transaction satisfies an amount condition based on a total amount of the transaction is determined before applying any discounts. Under the broadest reasonable interpretation, the claims determine whether a transaction satisfies an amount condition based on a total amount of the transaction, which can include a total amount of the transaction before or after applying any discounts. Therefore, Terabayashi does determine whether a transaction satisfies an amount condition based on a total amount of the transaction, and applies a coupon in response to the transaction satisfying the amount condition as explained above.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Catoe et al. (US Patent No. 11,087,318 B1) discloses coupon triggers and thresholds having a minimum or maximum purchase. A minimum purchase lets the merchant require a certain low-side dollar total for the transaction total before allowing the e-coupon discount to be triggered. The maximum purchase trigger lets the merchant put a high-side limit on the dollar total of a transaction, so that the discount will not keep applying if the transaction exceeds the limit. It can also be set to apply only to the dollar portion of the transaction. Additionally, a flag item trigger may be set so that flagged items do not count toward a minimum or maximum threshold requirement/limit.
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/SAM REFAI/Primary Examiner, Art Unit 3621