DETAILED ACTION
Status of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is in response to an amendment dated April 23, 2026. Claims 1-4 are amended. Claim 5 is cancelled. Claims 1-4 are pending. All pending claims are examined.
Response to Arguments
101 Rejection Analysis
101 Analysis
In line with the "2019 Revised Patent Subject Matter Eligibility Guidance," which explains how we must analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed. Reg. 50-57 ("Revised Guidance"), the first step of Alice (i.e., Office Step 2A) consists of two prongs. In Prong One, we must determine whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim is patent eligible. Id.
An abstract idea must fall within one of the enumerated groupings of abstract ideas in the Revised Guidance or be a "tentative abstract idea, "with the latter situation predicted to be rare. Id. at 51-52 (Section I, enumerating three groupings of abstract ideas), 54 (Section III.A. I., describing Step 2A Prong One), 56-57 (Section III.D., explaining the identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, the next is Step 2A Prong Two, in which we must determine if the "claim as a whole integrates the recited judicial exception into a practical application of the exception." Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a practical application, we move to the second step of Alice (i.e., Office Step 2B). to evaluate the additional limitations of the claim, both individually and as an ordered combination, to determine whether they provide an inventive concept. Id. at 56 (Section III.B.). In particular, we look to whether the claim:
• Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional in the field, which is indicative that an inventive concept may be present; or
• simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
The analysis in line with current 101 guidelines. Even if the abstract idea is deemed to be novel, the abstract idea is no less abstract (see Flook- new mathematical formula was an abstract idea).
“ In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se):
(b) Certain methods of organizing human activity—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)1 – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / p.52.
Independent Claim 1, which recites:
A payment device comprising:
a scanner;
a change machine
a card reader;
a memory; and
a processor connected to the scanner, the card rader, the change machine, and the memory , and configured to
directly entered via the scanner, and store the product information as a first product information into the memory;
a stored self-registered product file from an external system[[,]] based on a checkout code entered via the scanner, extract producte information included in the self-registered product file, and store the extracted product information as a second product information into the memory, the product information being included in the self-registered product file based on
product-related data entered via an information terminal;
the total amount and a payment amount that is based on at least one of cash inserted inot the change machine or a card read by the card reader
wherein the checkout code is a unique code generated in response to a checkout declaration made on the information terminal
2A, Prong One
Taking the broadest reasonable interpretation, the invention is directed to a method of organizing human activity that entails retrieving stored information on items selected and adding additonal item data at checkout which is a commercial or legal interaction of accessing financial information of a customer at the POS terminal based on predefined conditions.(App. Spec. paras. 0003-0004; Abstract).
These limitations describe steps a person would take for updating an existing list of items without canceling the transaction at the checkout terminal, whereby the request is evaluated against predefined criteria in which (see App. Spec. paras. 0003-0005, 0022). Updating the information in an existing record in which the request is evaluated against criteria as recited in the claims are nothing more than gathering data and applying a set of instructions to the data.
2A Step Two
Beyond the abstract idea, the additional elements recite hardware components such as a processor (see App. Spec. paras. 0024-0033; Fig. 1), there does not appear to be any technology being improved.
They are described at a high level of generality where each step does no more than require a generic computer to perform generic computer functions. Absent is any support in the specification that the claims as recited require specialized computer hardware or other inventive computer components.
Unlike, McRO, the present claims contain improvements to the context in which the list of items is updated without having to cancel the transaction at the POS checkout and not one of a technology or technological field.
Although the claims recite:
a stored self-registered product file from an external system[[,]] based on a checkout code entered via the scanner, extract producte information included in the self-registered product file, and store the extracted product information as a second product information into the memory, the product information being included in the self-registered product file based on
product-related data entered via an information terminal;
these suggest a process of retrieving existing stored information and updating the record to reflect the most current list of items at the checkout point, absent is any support for the claims as recited for how it is an improvement to the computer or technical field beyond automating the process of updating the record..
The innovation as claimed appears to be directed to the user’s objective of requesting access to a existing information and updating the record, rather than the integration of a practical application.
In particular, absent is any indication as to how updating the record is an improvement to a technical field. There is a lack of improvement to a computer or technical field of record management, because the data processing performed merely uses a system as a tool to perform an abstract idea- see MPEP 2106.05(f). Therefore, the claims are directed to an abstract idea. The invention as claimed recites a generic computer component and the claim does not pass step 2A, Prong Two.
Step 2B; The next step is to identify any additional limitations beyond the judicial exception. The additional elements are processor (see App. Spec. paras. 0022-0033; Fig. 1) which is disclosed in the specification at a high degree of generality. Absent is any genuine issue of material fact that this component requires any specialized hardware or inventive computer component.
Further, the dependent claims 2-4, for example, recite additional descriptive details about the devices used in executing the process of checkout. For example, claims 2 and 4 describes the payment device in additional detail, however the recited abstract idea is not integrated into a practical application.
In particular, the claims only recite generic computer components to evaluate the submitted data based on predefined conditions. The dependent claims provide additional descriptions of the components of the claimed invention in a manner that merely refines and further limits the abstract idea of independent claim 1 does not add any feature that is an “inventive concept” which cures the deficiencies of the independent claims.
None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the dependent claims are patent-ineligible.
In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1-4 are not patent eligible under 35 USC 101.
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 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
The claim recites abstract idea of organizing human activities. This judicial exception is not integrated into a practical application and the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
The claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter.
Independent Claim 1, which is illustrative of the independent claim 5 recite:
1. A payment device comprising:
a scanner;
a change machine
a card reader;
a memory; and
a processor connected to the scanner, the card reader, the change machine, and the memory , and configured to
directly entered via the scanner, and store the product information as a first product information into the memory;
a stored self-registered product file from an external system[[,]] based on a checkout code entered via the scanner, extract product information included in the self-registered product file, and store the extracted product information as a second product information into the memory, the product information being included in the self-registered product file based on
product-related data entered via an information terminal;
the total amount and a payment amount that is based on at least one of cash inserted in to the change machine or a card read by the card reader
wherein the checkout code is a unique code generated in response to a checkout declaration made on the information terminal
The invention as claimed recites an abstract idea of transaction checkout when certain conditions are met, a method of organizing human activity that is commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
Besides reciting the abstract idea, the remaining claim limitations recite generic computer components (e.g., payment device, input device, terminal, acceptance unit - see App. specification, paras. 0028-0033; Figs. 1-2 and 4). This recited abstract idea is not integrated into a practical application. In particular, the claim only recites generic computer components (e.g. processor, device) for transmitting or and receiving data.
The additional elements are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using generic components. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.
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 elements - (e.g., input device) amount to no more than mere instructions to apply the abstract idea using generic computer components.
Further, the dependent claims 2-4 , for example, recite additional descriptive details about the devices used in executing the process of checkout. For example, claims 2 and 4 describes the payment device in additional detail, however the recited abstract idea is not integrated into a practical application. In particular, the claims only recite generic computer components to evaluate the submitted data based on predefined conditions. The dependent claims provide additional descriptions of the components of the claimed invention in a manner that merely refines and further limits the abstract idea of independent claim 1 does not add any feature that is an “inventive concept” which cures the deficiencies of the independent claims.
None of the additional elements taken individually or when taken as an ordered combination amount to significantly more than the abstract idea. Accordingly, the dependent claims are patent-ineligible.
In conclusion, merely “applying” the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1-4 are not patent eligible under 35 USC 101.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1] as being anticipated by Sambe, USP Pub. No. 20170004572.
As to claim 1, Sambe discloses A payment device comprising:
a scanner;
a change machine
a card reader;
a memory; and
a processor connected to the scanner, the card reader, the change machine, (Sambe, paras. 0030-0033) and the memory , and configured to
directly entered via Sambe, paras. 0030-0033 - scanner) the scanner, and store the product information as a first product information into the memory;
a stored self-registered product file from an external system[[,]] based on a checkout code entered via the scanner, extract product information included in the self-registered product file, and store the extracted product information as a second product information into the memory, the product information being included int eh self-registered product file based on product-related data entered via an information terminal (Sambe, para. 0026 (portable information terminal), see also paras. 0053-0054);
Sambe, paras 0080-0082, 0084; see also paras. 0030-0032; 0143, 0150, 0152, 0162 – barcode displayed on POS);
calculate a total amount for a single commercial transaction by adding up amounts of the first product information and the second product information stored in the memory, (Sambe, paras. 0030-0032). and
the total amount and a payment amount that is based on at least one of cash inserted into the change machine or a card read by the card reader (Sambe, paras. 0030-0032).
wherein the checkout code is a unique code generated in response to a checkout declaration made on the information terminal Sambe, paras. 0030 – “The cashier 3 reads, with the scanner 11, the barcode attached to a commodity 5 to be purchased by the customer 4. The scanner 11 sends barcode data obtained from the barcode to the POS apparatus 10. The POS apparatus 10 specifies the commodity 5 based on the barcode data sent from the scanner 11 and registers the sales quantity, the sales amount, and other sales information of the commodity 5 in a purchased commodity list.”; see also para. 0032; 0080-0082, 0084;paras. 0143, 0150, 0152, 0162 – barcode displayed on POS);
As to claim 2, Sambe discloses the payment device according to claim 1, wherein the processor is further configured to: checkout codes to be accepted for the single commercial transaction (Sambe, para. 0030 – “The cashier 3 reads, with the scanner 11, the barcode attached to a commodity 5 to be purchased by the customer 4. The scanner 11 sends barcode data obtained from the barcode to the POS apparatus 10. The POS apparatus 10 specifies the commodity 5 based on the barcode data sent from the scanner 11 and registers the sales quantity, the sales amount, and other sales information of the commodity 5 in a purchased commodity list.”);
As to 4, Sambe discloses the payment device according to claim 1, further comprising:
a display wherein the processor is further configured to display
the first product information second product information on the display in a distinguishable manner. (Sambe, paras 0080-0082, 0084; see also paras. 0030-0032; 0143, 0150, 0152, 0162)
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.
Claim 3 are rejected under 35 U.S.C. 103 as being unpatentable over Sambe, USP Pub. No. 20170004572 in view of Kaneko, USP. Pub. No. 20210090050
As to claim 3 Sambe does not directly disclose but Kaneko discloses the payment device according to claim 1, wherein the processor is further configured to
self-registered product file Kaneko, paras. 0026-0028 – mobile terminal),
wherein the processor is configured to acquire((s)), from the external system, the self-registered product file processor detects an instruction to acquire information from the external system(Kaneko, paras. 0026-0028 – controller and settlement feature; see also Figs. 9A-B, 10).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the payment device functionality of Sambe with the detection feature of Kaneko because it provides a way of ensuring the necessary conditions are met and tracking the progress of the execution of a transaction checkout process in a seamless and secure fashion, thereby improving the user experience.
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 CHIKA OJIAKU whose telephone number is (571)270-3608. The examiner can normally be reached Monday - Friday: 8.30 AM -5:00 PM EST.
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/CHIKAODINAKA OJIAKU/Primary Examiner, Art Unit 3696
1 Interval Licensing, 896 F.3d at 1344–45 (concluding that ‘‘[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,’’ observing that the district court ‘‘pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.’’); Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of ‘‘voting, verifying the vote, and submitting the vote for tabulation,’’ a ‘‘fundamental activity’’ that humans have performed for hundreds of years, to be an abstract idea);
In re Smith, 815F.3d 816, 818 (Fed. Cir. 2016) (concluding that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are abstract).
14 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir . 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)(holding that computer-implemented method for ‘‘anonymous loan shopping’’ was an abstract idea because it could be ‘‘performed by humans without a computer’’); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.’’); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of ‘‘computer’’ or ‘‘computer readable medium’’ does not make a claim otherwise directed to process that ‘‘can be performed in the human mind, or by a human using a pen and paper’’ patent eligible); id. at 1376 (distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions that ‘‘could not, as a practical matter, be performed entirely in a human’s mind’’). Likewise, performance of a claim limitation using generic computer components does not necessarily preclude the claim limitation from being in the mathematical concepts grouping, Benson, 409 U.S.at 67, or the certain methods of organizing human activity grouping, Alice, 573 U.S. at 219–20 - – See Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019
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