DETAILED ACTION
This communication is in response to the amendment/remarks filed 26 May 2026.
Claims 2, 6, 7, 12, 13, and 20 have been amended.
Claims 2-21 are currently pending.
Claims 2-21 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
The rejections under 35 USC § 112 have been remedied by amendment of the claims and are withdrawn.
Regarding the rejections under 35 USC § 101, Applicant’s remarks have been fully considered but are not persuasive. Applicant argues that “the claims recite a specific technical architecture that solves a concrete technical problem: the closed and restricted security architecture of SSTs – such as ATMs – that prevents them from interfacing with open advertisement systems. The specification expressly identifies this technical problem: “because of the unique security required by financial transactions, the architectures of ATMs and their networks are restricted and closed. So, ATMs cannot be interfaced with open-advertisement systems.”” Remarks at 8-9. While this may be a technical problem of ATMs, the claims are not limited to ATMs. Rather, the claims recite a self-service terminal (SST) which is broadly interpreted to include kiosks and user devices. The specification does not indicate that this technical problem exists in all types of SSTs. Applicant’s argument is not persuasive. Any argument stemming from the identified problem that exists solely with ATMs is also not persuasive.
Applicant argues that the “anonymous session identifier mapping, the proxy pipe mechanism, and the real-time overlaying of a separate advertisement interface on an existing SST interface during an ongoing financial transaction are concrete technical operations that improve the technical functioning of the SST system.” Remarks at 11. As an initial matter, a separate advertisement interface is not recited in the claims. Mapping identifiers is not technical in nature and this is done within the advertising activity (i.e., the abstract idea). Similarly, the “proxy pipeline” is just the manner in which the advertisement is provided to the interface and is also done with the advertising activity (i.e., the abstract idea). No detail about the “proxy pipeline” is recited in the claims other than by what it accomplishes, the delivery of the advertisement interface. Applicant’s argument is not persuasive.
Regarding the Double Patenting rejections, Applicant argues that “at present claim independent claim 2 has been amended and Applicant believes that now obviates the rejections.” Remarks at 7. While claim 2 has been amended, Examiner finds the added limitations in claim 1 of US Patent 10,970,748. The rejections remain, as shown 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 2-21 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 2-19 recite a method which is considered a process. Claims 20 and 21 recite a system which is considered a machine or manufacture.
Step 2A-Prong One
(Claim 2) The “selecting, by the executable instructions, an advertisement service based on evaluation of policy conditions” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “by the executable instructions” language, the claim encompasses a user manually evaluating policy conditions to select an advertisement service. Thus, this claim recites a limitation that falls into the mental processes grouping of abstract ideas. This claim recites an abstract idea.
(Claim 5) The “selecting further includes evaluating the policy conditions based on: an identity of the SST, a physical location of the SST, a time of day, and a calendar day” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “by the executable instructions” language found in independent claim 1, the claim encompasses a user manually evaluating policy conditions based on a number of criteria. Thus, this claim recites a limitation that falls into the mental processes grouping of abstract ideas. This claim recites an abstract idea.
(Claim 13) The “selecting, by the executable instructions, an advertisement service based on recent activities of the consumer identified in the profiles” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “by the executable instructions” language, the claim encompasses a user manually evaluating recent consumer activities to select an advertisement service. Thus, this claim recites a limitation that falls into the mental processes grouping of abstract ideas. This claim recites an abstract idea.
(Claim 17) The “selecting further includes determining the advertisement service based on most recent known transactions in the profiles” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “by the executable instructions” language found in independent claim 13, the claim encompasses a user manually utilizing recent known transactions to make a determination. Thus, this claim recites a limitation that falls into the mental processes grouping of abstract ideas. This claim recites an abstract idea.
(Claim 20) The “aggregating activities and preferences of a consumer associated with services occurring over multiple channels as an aggregated profile, wherein the multiple channels include emails, web applications, kiosks, mobile devices, point-of-sale (POS) devices, and self-service terminals (SSTs)” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “cause the hardware processor to perform” language, the claim encompasses a user manually aggregating data on a consumer. Thus, this claim recites a limitation that falls into the mental processes grouping of abstract ideas. This claim recites an abstract idea.
(Claim 20) The “selecting an advertisement service based on the aggregated profile” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “cause the hardware processor to perform” language, the claim encompasses a user manually utilizing known information to select an advertisement service. Thus, this claim recites a limitation that falls into the mental processes grouping of abstract ideas. This claim recites an abstract idea.
(Claims 2, 13, and 20) These claims recite the concept of selecting and providing a targeted advertisement to an identified user at a self-service terminal (SST) and allowing the user to make a purchase via the SST (see, for example, “receiving, by executable instructions that execute on a processor of a device from a non- transitory computer-readable storage medium, a transaction session identifier for a transaction of a consumer at a self-service terminal (SST); mapping, by the executable instructions, the transaction session identifier to an anonymous session identifier to anonymize the transaction session identifier from an advertisement service while enabling the advertisement service to integrate into the transaction; selecting, by the executable instructions, an advertisement service based on evaluation of policy conditions; providing, by the executable instructions, consumer identifying information to the advertisement service; communicating, by the executable instructions, the anonymous session identifier to the selected advertisement service to establish a link between the advertisement service and the ongoing transaction at the SST without exposing the transaction session identifier to the advertisement service; overlaying, by the executable instructions, an advertisement interface supplied by the advertisement service on an existing interface of the SST during the transaction; processing, by the executable instructions, a payment for a good or service through the advertisement interface during the transaction; and providing, by the executable instructions, evidence of the payment through the advertisement interface” in claim 2 wherein similar limitations are present in claims 13 and 20). This concept falls into the certain methods of organizing human activity grouping of abstract ideas including commercial interactions and advertising activities. Thus, these claims recite an abstract idea.
The dependent claims further limit the concept recited in the independent claims but do not recite limitations that take the claims out of the above-identified abstract idea groupings. The dependent claims further define the source, destination, and character of information (see “obtaining the transaction session identifier from a financial service having access to the transaction” in claim 3, “acquiring the consumer identifying information from a loyalty system using a customer number obtained during the transaction” in claim 6, “obtaining the consumer identifying information as at least one of: a customer name, a consumer address, a consumer email, and a consumer phone number” in claim 7, “using a payment mechanism being used by the consumer for the transaction as the payment for the good or service “ in claim 10, “sending transaction details associated with the payment to at least one of: a registered email address of the consumer and a registered phone number of the consumer” in claim 12, “identifying the consumer based on at least one of: entry of information through an input mechanism of the SST and scanning of a loyalty card” in claim 16, and “sending the confirmation as at least one of: an email, a text message, and a quick response (QR) code” in claim 19), further limit how the ad service is selected (see “selecting further includes querying multiple advertisement services to select the advertisement service” in claim 4, “selecting further includes evaluating the policy conditions based on: an identity of the SST, a physical location of the SST, a time of day, and a calendar day” in claim 5, and “determining the advertisement service based on most recent known transactions in the profiles” in claim 17), further limit how and what information is displayed (see “the SST that produces presentations for the advertisement interface in a defined region of a display while maintaining other presentations for the existing interface in remaining regions of the display” in claim 8, “presenting a quick response (QR) code within the advertisement interface” in claim 11, and “overlaying the interface on top of an existing interface associated with the transaction” in claim 18), further define how the profiles are managed (see “federating the profiles from different advertisement services” in claim 14 and “normalizing the profiles into a standard format” in claim 15) and further include the transmission of information (see “relaying actions of the consumer taken within the advertisement interface to the advertisement service” in claim 9 and “acting as a proxy between the consumer at the SST and the advertisement service during the transaction” in claim 21). These limitations do not take the claims out of the certain methods of organizing human activity grouping of abstract ideas. Thus, the dependent claims also recite an abstract idea.
Step 2A-Prong Two
This judicial exception is not integrated into a practical application. The claims recite the additional element of executable instructions that execute on a processor of a device from a non-transitory computer-readable storage medium (found in claims 2-19) or a system comprising a server comprising a hardware processor and non-transitory computer-readable storage medium, the non-transitory computer-readable storage medium comprising executable instructions (found in claims 20 and 21) and includes no more than mere instructions to apply the exception using a generic computer component. The instructions or system 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 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 10,970,748. 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 patented claim. Patented claim 4 recites evaluation of policy conditions to select an advertisement service while patented claim 1, the claim upon which patented claim 4 depends, supplies the remainder of the limitations.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 10,970,748. 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 patented claim.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,970,748. 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 patented claim.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,970,748. 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 patented claim.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,970,748. 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 patented claim.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,970,748. 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 patented 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
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