DETAILED ACTION
This communication is in response to the amendment/remarks filed 11 December 2025.
Claims 7, 17, and 18 have been amended.
Claims 1-20 are currently pending.
Claims 1-20 are rejected.
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/Remarks
Regarding the double patenting rejections, an appropriate terminal disclaimer has been filed and approved. The rejections are withdrawn.
Regarding 35 USC § 101, Applicant’s remarks have been fully considered but are not persuasive. Applicant argues that the “specification discloses a technical solution: a denomination-specific transaction fee rate system that dynamically adjusts based on inventory conditions. This enables the money handling technology to self-regulate inventory levels through coordinated control of physical money handling hardware, including recognition units, transport paths, storage units, and outlets.” Remarks at 11. Applicant is arguing limitations not present in the claims. Money handling hardware with transport paths and recognition units, for example, is not present in the claims.
Applicant argues that “the present claims reflect improvements to how the money handling apparatus itself operates by enabling denomination-specific inventory management through coordinated hardware and software control.” Remarks at 12. The improvements present in the claims exist within the abstract steps of calculating and offering rewards or fees to a user in order to influence their behavior. These are not considered technical in nature as they exist in the abstract.
Applicant agues that claim 1 “requires a specialized money handling apparatus with specific physical components, including an inlet for receiving money, transport paths, recognition units for identifying and counting denominations, storage units for organizing money by denomination, and outlets for dispensing money.” Remarks at 13. Applicant is arguing limitations not present in the claims. An apparatus with transport paths and recognition units, for example, is not present in the claims.
Applicant argues that the “coordinated system addresses the specific technical problem of managing cash inventory without external CIT services.” Remarks at 14. The problem of managing cash inventory is not inherently technical in nature. This argument is not persuasive.
Applicant argues that “This acknowledgment in the Office Action [referring to the absence of 102/103 rejections] demonstrates that the claimed denomination-specific transaction fee rate system is not conventional, routine, or well-understood in the art. It if were, the Office Action would have identified prior art that teaches or suggest these limitations.” Remarks at 15. Lack of prior art rejections is not an indication that the claims recite subject matter which is patent eligible under 35 USC §101. See MPEP 2106.05 which states: “lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.”
Applicant argues that “The Office Action’s assertions that elements are “well-understood, routine, and conventional” are conclusory and provide no factual support.” Remarks at 16. This assertion was not made in the Office Action. This assertion need not be made when the additional elements are merely being used as a tool to implement the abstract idea.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
Claims 1-11 recite a system which is considered a machine or manufacture. Claims 12-20 recite a method which is considered a process.
Step 2A-Prong One
Claims 1-20 recite the concept of incentivizing a customer to deposit money into an apparatus with the goal being a rebalancing of cash inventory within a store. The customer is incentivized via the use of either a commission or a reward based on the denominations that are needed and the denominations provided by the customer (see, for example “storing, in a memory, a transaction condition including a transaction fee rate set for each denomination in advance and for each of a plurality of transaction types; displaying and receiving, via a display of a transaction apparatus, input information on a transaction with a customer; receiving, by the transaction apparatus, money from the customer; recognizing and counting, by the transaction apparatus, the received money to acquire a quantity of money for each denomination and a first amount that is a total amount of the received money; performing a first processing of the received money based on the first amount; performing a second processing to provide a reward to or charge a commission to the customer, based on a transaction fee that is a total of amounts calculated, for each denomination of the received money, from the transaction fee rate and the quantity of money; accepting an operation from the customer, through the display, to select a transaction type of the plurality of transaction types; calculating, for each denomination of the received money, a second amount by multiplying the quantity of money by the transaction fee rate corresponding to both a denomination and the selected transaction type; calculating the transaction fee that is a total of the second amounts of each denomination; and performing the second processing based on the transaction fee of the selected transaction type” in claim 12 and “accepting an operation from the customer, through the display, to increase the quantity of the received money by depositing additional money and/or decrease the quantity of the received money by dispensing a part of the received money, for changing the second amount of at least one denomination out of the denominations of the received money; recalculating the second amounts after the operation; and performing the second processing based on the transaction fee that is a total of the recalculated second amounts” in claim 19). This concept falls into the certain methods of organizing human activity grouping of abstract ideas including commercial interactions and managing personal behavior. Thus, claims 1-20 recite an abstract idea.
In additional to certain methods of organizing human activity, certain limitations fall into the mathematical concepts grouping of abstract idea. These limitations include: “calculate, for each denomination of the received money, a second amount by multiplying the quantity of money by the transaction fee rate corresponding to both a denomination and the selected transaction type” in claims 1 and 12 and “calculate the transaction fee that is a total of the second amounts of each denomination” in claims 1 and 12. Thus, claims 1-20 fall into the mathematical concepts grouping of abstract ideas.
Step 2A-Prong Two
This judicial exception is not integrated into a practical application. The claims recite the additional element of a system comprising a memory, a management apparatus, a transaction apparatus including a display and a money handling device, and processing circuitry (claims 1-11) or a memory, a display of a transaction apparatus, and a transaction apparatus (claims 12-20) and includes no more than mere instructions to apply the exception using a generic computer component. The system or memory and transaction apparatus does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A-Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). The claims do not provide an inventive concept (significantly more than the abstract idea). The claims are ineligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,229,742 (i.e., the reference claim). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,229,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the reference claim.
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 MEREDITH A LONG whose telephone number is (571)272-3196. The examiner can normally be reached Mon - Fri 9:30 - 6.
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/MEREDITH A LONG/Primary Examiner, Art Unit 3622