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 . Claims 1-11 are pending.
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.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 11, applicant recites: “A non-transitory recording medium storing a plurality of program codes which, when executed by one or more processors, causes the one or more processors to perform a method, the method comprising,” i.e., the claim recites both a “non-transitory recording medium” and a “method.” This manner of claiming mixes two distinct statutory classes of invention, thereby creating ambiguity over when infringement occurs. Given the metes and bounds are unclear, the claim is rejected for indefiniteness.
Appropriate correction is required.
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 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture, or composition of matter? MPEP 2106.03.
Per Step 1, claims 1-9 are to a system (i.e., a machine), claim 10 to a method (i.e., a process), and claim 11 to a non-transitory computer-readable medium (i.e., a manufacture). Thus, the claims are directed to statutory categories of invention. However, the claims are rejected under 35 U.S.C. 101 because they are directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The analysis proceeds to Step 2A Prong One.
(Examiner notes that claim 11, while being rejected under 35 USC § 112(b) for mixing two distinct statutory classes of invention, still encompasses at least one statutory category, thereby passing Step 1. For purposes of compact prosecution, examiner assumed that applicant intended to claim a non-transitory computer-readable medium.)
Step 2A Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon? MPEP 2106.04.
The abstract idea of claims 1, 10, and 11 is (claim 1 being representative):
issue first identification information identifying a point for a consumer to obtain a coupon;
register the first identification information in first association information;
calculate an actual value of a carbon dioxide emission from an amount of activity for a printed material, the printed material bearing a symbol including the first identification information;
calculate a number of points based on the actual value; and
register the calculated number of points in the first association information in association with the first identification information.
The abstract idea steps italicized above are those which could be performed mentally, including with pen and paper. The abstract idea entails: 1) issuing identification information associated with a coupon (i.e., observing); calculating carbon emissions, points (i.e., evaluating); and registering said information (i.e., observing). These are all tasks an administrator could accomplish mentally and/or with pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, including observations, evaluations, judgements, and/or opinions, then it falls within the Mental Processes – Concepts Performed in the Human Mind grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally and alternatively, the abstract idea steps italicized above describe obtaining a coupon and registering points, i.e., advertising or marketing, which constitutes a process that, under its broadest reasonable interpretation, covers commercial activity. This is further supported by page 5 of applicant’s specification as filed. If a claim limitation, under its broadest reasonable interpretation, covers commercial interactions, including contracts, legal obligations, advertising, marketing, sales activities or behaviors, and/or business relations, then it falls within the Certain Methods of Organizing Human Activity – Commercial or Legal Interactions grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally and alternatively, the abstract idea steps italicized above describe the rules or instructions for obtaining a coupon and registering points, which constitutes a process that, under its broadest reasonable interpretation, covers managing personal behavior relationships, interactions between people. This is further supported by page 5 of applicant’s specification as filed. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior relationships, interactions between people, including social activities, teaching, and/or following rules or instructions, then it falls within the Certain Methods of Organizing Human Activity – Managing Personal Behavior Relationships, Interactions Between People grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04.
This judicial exception is not integrated into a practical application because the additional elements are merely instructions to apply the abstract idea to a computer, as described in MPEP 2106.05(f).
Claim 1 recites the following additional elements: circuitry,
Claim 10 recites no additional elements.
Claim 11 recites the following additional elements: [a] non-transitory recording medium storing a plurality of program; by one or more processors.
These elements are merely instructions to apply the abstract idea to a computer, per MPEP 2106.05(f). Applicant has only described generic computing elements in their specification, as seen on pages 6-7 of applicant’s specification as filed, for example.
Further, the combination of these elements is nothing more than a generic computing system applied to the tasks of the abstract idea. Because the additional elements are merely instructions to apply the abstract idea to a generic computing system, they do not integrate the abstract idea into a practical application, when viewed in combination. See MPEP 2106.05(f).
Therefore, per Step 2A Prong Two, the additional elements, alone and in combination, do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B involves evaluating the additional elements to determine whether they amount to significantly more than the judicial exception itself.
The examination process involves carrying over identification of the additional element(s) in the claim from Step 2A Prong Two and carrying over conclusions from Step 2A Prong Two pertaining to MPEP 2106.05(f).
The additional elements and their analysis are therefore carried over: applicant has merely recited elements that facilitate the tasks of the abstract idea, as described in MPEP 2106.05(f).
Further, the combination of these elements is nothing more than a generic computing system applied to the tasks of the abstract idea. When the claim elements above are considered, alone and in combination, they do not amount to significantly more.
Therefore, per Step 2B, the additional elements, alone and in combination, are not significantly more. The claims are not patent eligible.
The analysis takes into consideration all dependent claims as well:
Dependent claims 2-9 recite additional abstract steps and/or information that further narrow the abstract idea above. This narrowing of the abstract idea doesn’t integrate it into practical application or add significantly more, and the abstract idea groupings highlighted above still apply. Some of the dependent claims recite further additional elements, beyond those highlighted above:
Claim 2: from a printing management system of a provider of the printed material when the printing management system generates a job to create the printed material.
Claim 4: by a first information processing terminal used by the consumer.
Claim 7: from a second information processing terminal used by a provider of the printed material.
Claim 8: from a first information processing terminal used by the consumer.
Similar to above, these are generic computing elements that merely facilitate the tasks of the abstract idea (see pages 6-7 of applicant’s specification as filed). Whether viewed alone or in combination, they do not integrate the abstract idea into practical application or add significantly more. See MPEP 2106.05(f).
Accordingly, claims 1-11 are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over MacArthur (US 8527335) in view of Talbert (US 20100315667).
Claims 1, 10, and 11
MacArthur discloses:
[A point management system comprising circuitry {point management system represented by system 100, which performs a method to manage points associated with pollution reduction, described in col. 4, lines 10-40} configured to:]
[A point management method {See previous citation to col. 4, lines 10-40.} comprising:]
[A non-transitory recording medium storing a plurality of program codes which, when executed by one or more processors, causes the one or more processors to perform a method {See previous citation to col. 4, lines 10-40. Also see col. 1, line 65 to col. 2, line 10.}, the method comprising:]
issue first identification information identifying a point for a consumer to obtain a coupon {issue first identification information identifying a point for a consumer to obtain a coupon described in col. 6, lines 55-65: The associated points may be offered in a variety of forms and media. For example, the points may be printed on a paper coupon having a unique identification code, number, or symbol (such as a UPC symbol or bar-coded data). In one embodiment, the points are encoded on an RFID tag associated with the product or service. The coupon may be bundled with a product or may be printed on the product's packaging.};
register the first identification information in first association information {register the first identification information in first association information described in col. 7, lines 35-45, where unique identification code represents first identification information: Once a purchaser 116 purchases a product or service associated with the points, the purchaser 116 may send a request to the point-receiving module 114 within the system 100 to redeem the points (Step 210). The request may identify the unique identification code associated with the points, and the point-receiving module 114 may cross-reference the identification code with information stored in the computer database 108. The point-receiving module 114 may reject the request if, for example, the points have been previously redeemed.};
the printed material bearing a symbol including the first identification information {printed material bearing a symbol including the unique identification code or first identification information described in col. 6, lines 55-60: The associated points may be offered in a variety of forms and media. For example, the points may be printed on a paper coupon having a unique identification code, number, or symbol (such as a UPC symbol or bar-coded data). In one embodiment, the points are encoded on an RFID tag associated with the product or service.};
calculate a number of points based on the actual value {calculate a number of points based on the actual value, e.g., of carbon dioxide, described in col. 9, lines 20-30: As one example, a metric ton (i.e., approximately 2,200 pounds) of carbon dioxide may be translated into 2,200 points. For every dollar of purchase by a purchaser 116, a single point is issued thereto. Thus, a $120.00 purchase rewards the purchaser 116 with 120 points. Each point may be assigned a value of $0.01 by the facilitator 112, so that the $120 purchase earns (rewards) the purchaser 116 the equivalent of $1.20 in discounts on subsequent purchases with the facilitator 112, $1.20 in charitable donations, or $0.60 in cash.}; and
register the calculated number of points in the first association information in association with the first identification information {register the calculated number of points in the first association information in association with the first identification information, e.g., via a user account, described in col. 8, lines 1-15: The purchaser's user account may be used to accumulate points for later redemption (as described in more detail below). The system 100 may, upon request, provide an account summary (including points earned) to the purchaser 116. In one embodiment, the point-receiving module 114 may automatically receive a request to accumulate points when a purchaser buys a product or service. For example, the purchaser 116 may receive points from a purchase made over a web site, and the web site may send a request to add the points to the purchaser's account.}.
MacArthur doesn’t explicitly disclose, however, Talbert, in a similar field of endeavor directed to carbon footprint accounting, teaches:
calculate an actual value of a carbon dioxide emission from an amount of activity for a printed material {calculate an actual value of a carbon dioxide emission from an amount of activity for a printed material described in [0043]-[0044]: [0043] A user-requested job may be performed 404. For instance, a printing device may print a job associated with a print job request. [0044] An actual carbon emission value for the requested job may be received 405 from the printing device. For example, after the job is performed a realized carbon emission value may be stored on the printing device.}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify MacArthur to include the features of Talbert. Given that MacArthur pertains to accruing loyalty points associated with pollution reduction, one of ordinary skill in the art would have been motivated to look to Talbert, in order to reduce the overall carbon footprint of an entity, thereby contributing to further pollution reduction {[0001]-[0002] of Talbert}.
Claim 2
MacArthur further discloses: issue the first identification information in response to a registration request for the first identification information {See previous citation to col. 8, lines 1-15.}
Talbert further teaches: the registration request being transmitted from a printing management system of a provider of the printed material when the printing management system generates a job to create the printed material {transmitted from a printing management system of a provider of the printed material when the printing management system generates a job to create the printed material described in [0030], where the printing device and/or a marking device-based module represents a printing management system which deliver for receipt, i.e., transmits, when a job is created: A second energy cost may be determined 205 for the one or more performed jobs. In an embodiment, a second energy cost reflecting actual energy consumed for the one or more performed jobs may be received from a printing device, a marking device-based module, and/or the like. A second energy cost calculation may be based on an amount of electricity used to perform the job and/or an amount of paper output used. }; and receive the amount of activity for the printed material in the job from the printing management system {See previous citation to [0030].}.
The motivation and rationale to include the additional features of Talbert is the same as set forth previously.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of MacArthur and Talbert, further in view of Shi (US 20200372588).
Claim 3
Talbert further teaches: for the printed material {See previous citations to [0043]-[0044].}.
The motivation and rationale to include the additional features of Talbert is the same as set forth previously.
The combination of MacArthur and Talbert doesn’t explicitly teach, however, Shi, in a similar field of endeavor directed to predicting carbon emissions, teaches: obtain a predicted value of the carbon dioxide emission using a learned model that predicts the predicted value from the amount of activity {obtain a predicted value of the carbon dioxide emission using a learned model that predicts the predicted value from the amount of activity described in [0034]: Estimation process 144 and/or forecast and/or models may be built and/or trained using historical data. Real-time grid data from local grid monitoring devices' web services may be ingested into computer and sent to models and/or processes to estimate and predict grid carbon intensities.}; and calculate the number of points based on the predicted value and the actual value {calculate the number of points based on the predicted value and the actual value described in [0049]: Continuing to refer to FIG. 4, computing device 104 may be designed and configured to create a machine-learning model using techniques for development of linear regression models. Linear regression models may include ordinary least squares regression, which aims to minimize the square of the difference between predicted outcomes and actual outcomes according to an appropriate norm for measuring such a difference (e.g. a vector-space distance norm); coefficients of the resulting linear equation may be modified to improve minimization.}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the combination of MacArthur and Talbert to include the features of Shi. Given that MacArthur pertains to accruing loyalty points associated with pollution reduction, one of ordinary skill in the art would have been motivated to look to Shi, in order to facilitate evaluating and optimizing the emission impacts of resources, thereby contributing to further pollution reduction {[0042] of Shi}.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of MacArthur and Talbert, further in view of Belanger (US 20070265916).
Claim 4
MacArthur further discloses: receive the first identification information included in the symbol read by a first information processing terminal used by the consumer {See previous citation to col. 6, lines 55-60.}.
The combination of MacArthur and Talbert doesn’t explicitly teach, however, Belanger, in a similar field of endeavor directed to loyalty points programs, teaches: determine whether the first association information indicates that one or more points associated with the received first identification information have already been given {determine whether the first association information indicates that one or more points associated with the received first identification information have already been given described in [0026]: The server 60 can then validate and accept the sent advertising data. In this embodiment, the server can have duplication prevention so that a single ad from one customer can only be accepted once. The user or handheld device can erase the advertising data, since the user knows that the same data will not be accepted again. The sent data may include actual scanned data as well as additional data such as a time when the advertisement was read. The server then can credit the proper loyalty point program, here program 50 of retailer 150, for that user.}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the combination of MacArthur and Talbert to include the features of Belanger. Given that MacArthur pertains to accruing loyalty points, one of ordinary skill in the art would have been motivated to look to Belanger, in order to ensure that the potential customer does not receive additional, unearned points {[0024] of Belanger}.
Claim 5
Belanger further teaches: add the one or more points to a point balance of the consumer in management information when determining that the one or more points have not yet been given, the management information recording the point balance of the consumer {non-duplicative points added to loyalty account point balance, as described in [0022]-[0026].}; and register the one or more points not yet given and second identification information identifying the consumer in the first association information in association with each other {registering points, second identification information, e.g., a device ID, described in [0030]-[0031]. Also see [0022]-[0026].}.
The motivation and rationale to include the additional features of Belanger is the same as set forth previously.
Claim 6
Belanger further teaches: determine that the one or more points have already been given when the second identification information associated with the one or more points is registered in the first association information {See previous citations to [0022]-[0026], [0030]-[0031].}.
The motivation and rationale to include the additional features of Belanger is the same as set forth previously.
Claim 7
The combination of MacArthur and Talbert doesn’t explicitly teach, however, Belanger, in a similar field of endeavor directed to loyalty points programs, teaches: in response to a request from a second information processing terminal used by a provider of the printed material, register third identification information identifying the provider, a number of points for obtaining the coupon, and a name of a product to which the coupon is applicable in association with each other in second association information {register third identification information identifying the provider, e.g., a retailer, a number of points for the product promotion, and name of associated product promotion described in [0030]: FIG. 2 shows a flow chart for a preferred embodiment for an advertiser 31, for example, retailer 150, shop 152 or hardware store 154, to establish a loyalty points program for scannable print advertisements 32. A potential advertiser can log onto a central website, for example called www.mygossspot.com, by creating a user name and password in a first step 200. The user name thus identifies the loyalty point program. At step 210, the advertiser 31 can create a promotion for a particular print advertisement 32, for example offering 10 loyalty points in its loyalty point program and entering an identification for the advertisement 32, for example NEWSDAY Sep. 10, 2006 VERSION 1. Advantageously, the web page for creating the promotion may provide for a tiered promotion, for example offering 10 loyalty points if a reader scans the advertisement and sends the scanned data in to server 60 with a device ID, 20 points if the reader scans the advertisement and sends the scanned data in to the server 60 with a device ID and an e-mail address, and 30 points if the reader scans the advertisement and sends in the scanned data to the server 60 with the device ID, an e-mail address and an answer to a survey question.}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the combination of MacArthur and Talbert to include the features of Belanger. Given that MacArthur pertains to accruing loyalty points, one of ordinary skill in the art would have been motivated to look to Belanger, in order to facilitate the tracking of redemption of said loyalty points {[0028] of Belanger}.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of MacArthur, Talbert, and Belanger, further in view of Fredregill (US 5923016).
Claim 8
MacArthur further teaches: receive a coupon obtaining request from a first information processing terminal used by the consumer {coupon obtaining request facilitated via the internet, i.e., a network of information processing terminals, including those accessed by the consumer, described in col. 4, lines 15-40.}; coupon {See previous citation to col. 6, lines 55-65.}
The combination of MacArthur, Talbert, and Belanger doesn’t explicitly teach, however, Fredregill, in a similar field of endeavor directed to points redemption, teaches: {as described in col. 11, line 30 to col. 12, line 20}; obtain a point balance of the consumer from management information recording the point balance of the consumer {obtaining a point balance described in col. 11, line 30 to col. 12, line 20.}; obtain a number of points associated with the [exchange] requested by the [exchange] obtaining request from the second association information {obtaining a number of points associated with the [exchange] request described in col. 11, line 30 to col. 12, line 20.}; compare the point balance with the number of points {point comparison described in col. 11, line 30 to col. 12, line 20.}; and set the [exchange] as being possessed by the consumer when the number of points is equal to or less than the point balance of the consumer {[exchange] recognized when number of points is equal to or less than the point balance of the consumer, as described in col. 11, line 30 to col. 12, line 20.}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the combination of MacArthur, Talbert, and Belanger to include the features of Fredregill. Given that MacArthur pertains to accruing loyalty points, one of ordinary skill in the art would have been motivated to look to Fredregill, in order to facilitate consumers obtaining incentives and being informed of these incentives during the same transaction in which they are earned {Col. 2, lines 5-10 of Fredregill}.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of MacArthur and Talbert, further in view of Vargas (US 20170132892).
Claim 9
The combination of MacArthur and Talbert, and Belanger doesn’t explicitly teach, however, Vargas, in a similar field of endeavor directed to a smart label that includes sustainability information, teaches: wherein the symbol is a QR CODE {QR code described in [0024]: Referring initially to the drawings, FIGS. 1-2 illustrate the tag or label 100 incorporating embedded trigger technology 102, such as RFID, QR codes, barcodes, etc.}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the combination of MacArthur and Talbert to include the features of Vargas. Given that MacArthur pertains to accruing loyalty points, one of ordinary skill in the art would have been motivated to look to Vargas, in order to facilitate customer engagement, thereby enhancing brand loyalty {[0046] of Vargas}.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
“Green Computing and Carbon Footprint Management in the IT Sectors” (NPL attached), which teaches managing an organization’s carbon footprint: The focus of the current research is on making computers as energy-efficient as possible, and applying innovative ideas to energy-related computer technology. It is anticipated that green information technology (IT) will rapidly become a reality and official organizational policy. Thus, green IT is not merely restricted to environmental strategies but is concerned with the overall development of people and society as a whole. In this regard, collaboration is to be explored to optimize business. This article examines the importance of green computing in sectors such as IT, networking, industries, and corporations.
US 20100250356, which teaches providing incentives for carbon reduction: This invention relates generally to electronic commerce (e-commerce) systems and media platforms, for use with both mobile and non-mobile systems, to deploy virtual advertising and promotion via the use of electronic coupons, and more particularly a method and system for aggregating and distributing carbon reduction credits in connection with the creation and/or use of electronic coupons or virtual electronic rebates (VeeBates) and permitting individuals and groups within one or more social communications networks to participate in and transmit information to others about their activities related to the virtual advertising, incentives, redemption and promotion and aggregate carbon credits in connection therewith, either as part of the incentive or aggregation by the incentive promoter as part of its activities in reducing its carbon footprint.
US 20200027115, which teaches paying with loyalty points: Embodiments described herein provide methods and systems for making reward point account balances liquid for the customer. In traditional systems, reward points issued to customers in their reward point accounts have limited redemption options. Embodiments discussed herein allow a user to provision their reward point account into a digital wallet. The user can then use the reward points to purchase goods and services using their reward point account as a payment source via the digital wallet. The result is that the reward point account balance becomes a liquid asset for the customer to use to purchase any goods and/or services at any merchant that accepts payments from a digital wallet. Further, due to real-time point conversion at the time of the transaction, the available point balance is always up-to-date for use through any access method available to the user.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN SAMUEL WASAFF whose telephone number is (571)270-5091. The examiner can normally be reached Monday through Friday 8:00 am to 6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SARAH MONFELDT can be reached at (571) 270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOHN SAMUEL WASAFF
Primary Examiner
Art Unit 3629
/JOHN S. WASAFF/Primary Examiner, Art Unit 3629
Prosecution Insights