AIA
Parent data
19016068 filed 01/10/2025 Con of 18609376, filed 03/19/2024, U.S. Pat # 12229797
18609376 Con of 18305447, filed 04/24/2023, U.S. Pat # 11966944
18305447 Con of 17354437, filed 06/22/2021, U.S. Pat # 11676170
17354437 Con of 15387993, filed 12/22/2016, U.S. Pat # 11074605
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Claims 1-20 examined.
Amended 1 8 15
New none
Canceled none
Response to Remarks
Applicant amendment and remarks not persuasive.
DP withdrawn; Applicant filed TD
101 maintained.
The pending claims: rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites an abstract idea,
CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
Alice clearinghouse via computer
Bilski hedge via computer
Here checkout via computer
103 withdrawn. Art search impeded by contradictory claim language:
initiating, by a merchant server, a checkout
US Ser 19016068 Specification says client device initiates (abstract “initiating, by a client device”)(US PG PUB ¶ 3 “request made by client”). Checkout initiated by merchant results in the anomalous result of the seller is the buyer, a non-sequitur. This leads to another non-sequitur: who is the consumer then? Actually, there isn’t one. Despite the claim to a transaction, “trans” explicitly indicating 2 parties, there actually is no transaction. There’s 1 party. We are then left with a stack of inconsistencies.
PRIORITY
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 121 is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 121 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The limitation that is missing from the application as filed is
initiating, by a merchant server, a checkout
US Ser 19016068 Specification says client device initiates (abstract “initiating, by a client device”)(US PG PUB ¶ 3 “request made by client”).
Therefore the claimed invention is not supported by the application as filed. The priority date for the claim limitations of the instant application will be 05/21/2026
35 USC § 112a
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112a:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 8 15 is/are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
NEW MATTER REJECTION
The following from the claims 1 8 15 contains new matter; see bold below.
initiating, by a merchant server
WRITTEN DESCRIPTION REJECTION
Claim 1 8 15: rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims dependent on rejected claims and are accordingly rejected.
Claims: rejected under 35 USC 112a; the claims recites
initiating, by a merchant server
However, there is no written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Further, the invention is merely functional claiming. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed (see MPEP § 2161.01). Here Applicant's claims are directed to generic claims constrained only by the broad steps of the claim. When looking to the specification for an explanation of the steps taken to achieve the claimed determinations, the Applicant appears only to disclose broad generic descriptions and black box diagrams that describe the intended results of the determinations. The generic limitations recited in the claims encompass both disclosed examples and all known methods of performing these functions in the prior art. The claims are rejected because the original disclosure does not support every possible species of the claimed genus. Claims dependent on rejected claims and are accordingly rejected. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software. In order for the written description requirement to be satisfied, the specification must disclose the specific type of microcomputer used in the claimed invention as well as the necessary steps for implementing the claimed function. Further the disclosure must provide sufficient detail such that one skilled in the art would know how to program the microprocessor to perform the necessary steps described in the specification. See MPEP §2161.01- §2163.07(b). The Applicant merely presents broad steps and generic descriptions to achieve the results. Applicant’s claims are rejected because the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate that the inventor possessed the invention or provides details sufficient for a person of ordinary skill in the art to program a general purpose computer to perform the claimed limitations. For more information regarding the written description requirement, see MPEP §2161.01- §2163.07(b). Claims are dependent on rejected claims and are accordingly rejected.
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
The claims (1-20) are rejected under 35 USC 101.
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. The claim(s) is/are directed to one or more abstract idea(s). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the abstract idea(s).
Step 1: (MPEP 2106.03)
The claims and dependents (1-20) are directed to statutory classes (1 process 8 machine 15 manufacture). The claims herein are directed to subject matter which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
Step 2A, Prong One: Evaluating whether the claim(s) recite(s) a judicial exception -- law of nature, natural phenomenon, abstract idea. (MPEP 2106.04).
CLAIM 1 8 15
1. A [ computer-implemented ] method, comprising:
O initiating, by a [merchant server a checkout operation including a default transaction amount associated with a plurality of items and a plurality of promotions and a token associated with account information, wherein the plurality of promotions is associated with multiple promotional codes configured to use multiple server calls during checkout operation
O transmitting, by the merchant server, a single transaction processing server call to obtain a single default promotional code associated with the default transaction amount, the plurality of items, and the plurality of promotions
O receiving , by the merchant server, data associated with multiple display promotions, wherein the data includes , validation information for the plurality of promotions, and wherein the validation information does not include a valid promotion disclosure for a multiple display promotion
O displaying , by the merchant server, an error message for the multiple display promotion
O declining , by the merchant server, a transaction prior to submitting the checkout operation for processing, wherein declining includes using the single default promotional code to prevent payment associated with the error message ,and wherein using the single default promotional code reduces overall processing requirements of the merchant server, thereby increasing operating efficiency for validating error messages during the checkout operation
bold = judicial exception [ apply it ]
Collecting info, analyzing it, displaying certain results. Elec. Power Group (CAFC 2016)(EPG)
The pending claims: rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites an abstract idea,
CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
Alice clearinghouse via computer
Bilski hedge via computer
Here commercial interaction via computer
The Claims: rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite an idea. The claims steps set forth Certain Methods of Organizing Human Activity such as
fundamental economic principles or practices (including hedging, insurance, mitigating risk)
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
US Ser 19016068
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A computer-implemented method, comprising:
O initiating, by a [merchant server], a checkout operation including a default transaction amount associated with a plurality of items and a plurality of promotions and a token associated with account information, wherein the plurality of promotions is associated with multiple promotional codes configured to use multiple server calls during checkout operation
O transmitting, by the merchant server, a single transaction processing server call to obtain a single default promotional code associated with the default transaction amount, the plurality of items, and the plurality of promotions
O receiving , by the merchant server, data associated with multiple display promotions, wherein the data includes, validation information for the plurality of promotions, and wherein the validation information does not include a valid promotion disclosure for a multiple display promotion
O displaying , by the merchant server, an error message for the multiple display promotion
O declining , by the merchant server, a transaction prior to submitting the checkout operation for processing, wherein declining includes using the single default promotional code to prevent payment associated with the error message ,and wherein using the single default promotional code reduces overall processing requirements of the merchant server, thereby increasing operating efficiency for validating error messages during the checkout operation
Collect info,
analyze it,
display certain result
DEPENDENT CLAIMS
CLAIM 2 9 17
claim 1/8/15, wherein the
O checkout operation is associated with the multiple display promotions based on a match between the checkout operation, a set of eligible promotions for one or more of a merchant, an account number, and the default transaction amount.
Examiner
Idea itself, computer implemented.
CLAIM 3 10 16
claim 1/8/15, further comprising:
O selecting the plurality of items as part of a purchase transaction associated with the checkout operation wherein the multiple display promotions are selected based on a match between the plurality of items and a set of eligible promotions.
Examiner
Idea itself, computer implemented.
CLAIM 4 11
claim 1/8, wherein the
O data associated with the multiple display promotions further includes promotional disclosure information for the plurality of promotions.
Examiner
Idea itself, computer implemented.
CLAIM 5 12 18
claim 1/8/15, wherein the
O data associated with the multiple display promotions further includes validation information for one or more promotions of the multiple display promotions.
Examiner
Idea itself, computer implemented.
CLAIM 6 13 19
claim 1/8/15, wherein the
O default transaction amount is a sum of all transaction amounts associated with the plurality of items.
Examiner
Idea itself, computer implemented.
CLAIM 7 14 20
claim 1/8/15, further comprising
O reversing the payment.
Examiner
Idea itself, computer implemented.
Step 2A, Prong Two: Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s) and then evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application Prong Two distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception (MPEP 210604)
The claim says one is to take the idea and “apply it” with generic elements generally applied
This judicial exception is not integrated into a practical application In particular, the claim only recites generic additional elements generally applied to perform data gathering, analysis. The additional element -- recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea The additional element is mere applying the idea on a computer See MPEP 2105, 2106
The elements are recited at a high-level of generality (eg generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component Accordingly, these additional elements do not integrate the abstract idea into a practical application for lack of any meaningful limits on practicing the abstract idea. The steps are computer-implemented, but one could do them with pen and paper, abacus, slide-rule etc The additional elements present only a particular technological environment
The additional elements are not sufficient to amount to significantly more than the judicial exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, and do not provide meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment The limitations (those beyond the abstract idea) do not improve the technical field that the abstract idea limitations invoke Moreover, these generic limitations do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, not meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment See Alice Corp p 16 of slip op noting that none of the hardware recited "offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment', that is implementation via computers" (citing Bilski 561 US at 610)
Step 2B: Identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (ie, amount to significantly more than the judicial exception(s)) (MPEP 210605)
The additional elements present only a particular technological environment. The claim recites additional elements The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) amounts to no more than mere instructions to apply the exception using a generic computer component See MPEP 2105605 Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept The claim is not patent eligible
Dependents of rejected claims are rejected.
35 USC § 112b
The following is a quotation of 35 U.S.C. 112, b:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-20, i.e. independents 1 8 15 (and dependents 2-7, 9-14, 16-20) rejected under 35 U.S.C. 112 (b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The limitation that is missing from the application as filed is initiating, by a merchant server. US Ser 19016068 Specification says client device initiates (abstract “initiating, by a client device”)(US PG PUB ¶ 3 “request made by client”). Checkout initiated by merchant results in the anomalous result of the seller is the buyer, a non-sequitur. This leads to another non-sequitur: who is the consumer then? Actually, there isn’t one. Despite the claim to a transaction, “trans” explicitly indicating 2 parties, there actually is no transaction. We are then left with a stack, so to speak, of multiple inconsistencies.
Appropriate correction required.
Conclusion
Art cited but not relied upon:
US Pat 10489765
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BREFFNI X BAGGOT whose telephone number is (571)272-7154. The examiner can normally be reached M-F 8a-10a, 12p-6p.
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BREFFNI BAGGOT
Primary Examiner
Art Unit 3621
/BREFFNI BAGGOT/Primary Examiner, Art Unit 3621
Prosecution Insights