DETAILED ACTION
This communication is in response to application no. 19/024140 filed 16 January 2025 and the preliminary amendment filed 02 February 2025.
With the preliminary amendment claim 1 was cancelled and claims 2-21 were added.
Claims 2-21 are currently pending and have been examined.
Claims 2-21 are rejected as shown in this detailed action.
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 .
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.
Claims 6, 7, and 12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 6, 7, and 12 recites the limitation “wherein providing further includes ….” Each of these claims depend from claim 2. Within claim 2 there are two “providing” steps and it is unclear what “providing” step is being further limited in these dependent claims. Thus, the claims are indefinite.
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);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; 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 1 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 1 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 2 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 3 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
The claims are not rejected under 35 USC § 102/102. The present claims recite providing an advertisement interface on a self-service terminal (SST) and processing a purchase via the advertisement interface during an already ongoing transaction. The independent claims all recite slightly different wording. Claim 2 recites “a transaction of a consumer,” “overlaying … an advertisement interface … during the transaction,” and “processing … a payment … through the advertisement interface during the transaction ….” Claim 13 recites “the consumer engaged in a transaction,” “providing … an interface on the SST during the transaction between the consumer and the advertisement service,” and “processing … a purchase through the interface ….” Claim 20 recites “the consumer engaged in a transaction at an SST,” “providing an interface supplied by the advertisement service on the SST during the transaction; and processing a purchase … through the interface ….” These limitations all indicate that a purchase via the advertisement interface occurs during an ongoing transaction at the SST. Providing advertisements to an SST is know in the art, as shown by Fuerstenberg below. Performing a purchase via an SST by way of an advertisement presented on the SST is also known, as shown by Belkoura, Chua, and Townsend below. Selection of an ad service is also known, as shown by Li below. However, while Townsend is considered the closest prior art found by Examiner, none of the references alone or in combination teach all of the limitations in the present claims, including a purchase via an advertisement interface that occurs during an ongoing transaction at the SST. A description of the noted references and what they teach/do not teach follows:
US 2005/0171857 (“Belkoura”): Belkoura discloses a kiosk that displays advertisements for movies, music, etc. (see ¶ 0021). Belkoura indicates that a “user may also be provided with the ability to purchase the movie” and “to purchase music.” However, Belkoura does not indicate that the purchase takes place amid or during another transaction as claimed in the present claims.
US 2011/0137689 (“Chua”): Chua discloses displaying advertisements for a local theater on an ATM interface (see ¶ 0025). Chua indicates that upon “further interaction by the user, the ATM 50 enables ticketing (i.e., ticket or seat reservation and ticket purchase) for a user selected show” and that the ATM will print the tickets via its receipt printer. However, Chua does not indicate that the purchase takes place amid or during another transaction as claimed in the present claims.
US 2013/0024307 (“Fuerstenberg”): Fuerstenberg discloses presenting advertisements on an ATM on white space of the display wherein the user can load or store an accompanying coupon (see ¶ 0122 and 0123). Fuerstenberg does not disclose processing a purchase via the ATM as claimed in the present claims.
US 2013/0185148 (“Townsend”): Townsend discloses displaying advertisements on an ATM display and allow customers to “be able to either purchase a promoted product or service on site at the ATM machine or request a follow up by inputting their contact information into the ATM” (see ¶ 0008). However, Townsend does not indicate that the purchase takes place amid or during another transaction as claimed in the present claims.
US 2015/0019325 (“Li”): Li discloses selection of an ad service/network using a set policy (see ¶ 0049 and ¶ 0276). However, Li does not disclose that the ad service provides an interface to an SST as claimed.
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