ASG
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 application dated January 13, 2025. Claims 1-5 are pending. All pending claims are examined.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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 limitations 1-5 have been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it is unclear as to what structure the unit is represented by in the support. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
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 1-5 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 first acquisition unit that acquires product information, based on product-related data entered via an input device;
a second acquisition unit that acquires stored product information from an external system, based on product- related data entered via an information terminal;
an acceptance unit that accepts identification input device;
a payment unit that makes a payment, based on the product information acquired by the first acquisition unit and the second acquisition unit, wherein the identification information is a unique code generated in response to a checkout declaration made on the information terminal identified, the second acquisition unit acquires, from the external system, the product information identified by the information for identifying the product information acquired from the external system; and identification information accepted by the acceptance unit.
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 2-5 , 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 claims 1 and 5 do 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 1-5 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 4-5 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 first acquisition unit that acquires product information, based on product-related data entered via an input device(Sambe, paras. 0030-0033 - scanner);
a second acquisition unit that acquires stored product information from an external system, based on product- related data entered via an information terminal (Sambe, para. 0026 (portable information terminal), see also paras. 0053-0054);
an acceptance unit that accepts identification input device (Sambe, paras 0080-0082, 0084; see also paras. 0030-0032; 0143, 0150, 0152, 0162 – barcode displayed on POS);
a payment unit that makes a payment, based on the product information acquired by the first acquisition unit and the second acquisition unit, wherein the identification information is a unique code generated in response to a checkout declaration made on the information terminal identified, the second acquisition unit acquires, from the external system, the product information identified by the information for identifying the product information acquired from the external system; and identification information accepted by the acceptance unit (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, further comprising: a limiting unit that limits a number of pieces of identification information accepted by the acceptance unit(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 unit that displays the product information acquired by the first acquisition unit and the product information acquired by the second acquisition unit in a distinguishable manner. (Sambe, paras 0080-0082, 0084; see also paras. 0030-0032; 0143, 0150, 0152, 0162:
As to claim 5 recites limitations similar to claim 1 and is rejected in like manner.
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, further comprising:
a detection unit that detects an instruction as to whether or not to acquire, from the external system, the product information identified by the identification information accepted by the acceptance unit (Kaneko, paras. 0026-0028 – mobile terminal),
wherein the second acquisition unit acquires, from the external system, the product information identified by the identification information accepted by the acceptance unit on condition that the detection unit 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
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