DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/7/2026 has been entered.
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 § 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 and 8-18 are rejected under 35 U.S.C. 101 because, while the claims herein are directed to a method and/or system, which could be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes), 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.
Regarding claims 1, 9, and 10, the claims recite, in part, receiving a request to a universal resource locator (URL) sent by a user, the URL being a point-request URL read from a store-installed object located at a score of a sponsor company; determining a quantity of points associated with the point-request UR; granting the quantity of points to the user who sent the request; receiving a request to send a digital gift to a sports team utilizing the points; and adding acquired points corresponding to points of the digital gift to balance points of the sports team, which is a recipient of the digital gift; wherein the points are a portion of points set to the sponsor company as grantable points corresponding to consideration borne by the sponsor company; and wherein the points are usable for digital gifts to the sports team or a predetermined plurality of teams.
The limitations, as drafted and detailed above, recited granting and gifting of points to an entity, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and more specifically commercial interactions including marketing or sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of user terminal (claims 1, 9, 10), near field communication component (claims 1, 9, 10), non-transitory computer-readable medium (claim 9), processor (claims 9, 10), a computer (claim 9), an apparatus (claim 10), and memory (claim 10). The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of determining, granting, receiving, and adding) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. There are no additional functional limitations to be considered under prong two.
Accordingly, the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the
judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using user terminal (claims 1, 9, 10), near field communication component (claims 1, 9, 10), non-transitory computer-readable medium (claim 9), processor (claims 9, 10), a computer (claim 9), an apparatus (claim 10), and memory (claim 10) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent- eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat' l Ass' n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computer (see Applicant specification Paragraph 0022); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
The dependent claims 8 and 11-18 appear to merely limit limiting the request to a same season in which points were granted, deleting the URL from a browse history, and authorizing a user, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The user terminal (claims 1, 9, 10), near field communication component (claims 1, 9, 10), non-transitory computer-readable medium (claim 9), processor (claims 9, 10), a computer (claim 9), an apparatus (claim 10), and memory (claim 10) are each functional generic computer components that perform the generic functions of determining, granting, receiving, and adding, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the user terminal (claims 1, 9, 10), near field communication component (claims 1, 9, 10), non-transitory computer-readable medium (claim 9), processor (claims 9, 10), a computer (claim 9), an apparatus (claim 10), and memory (claim 10) are anything other than generic, off-the-shelf computer components. Therefore, the claims do not amount to significantly more than the abstract idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1 and 8-18 are not patent eligible.
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.
Claims 1 and 8-18 are rejected under 35 U.S.C. 103 as being unpatentable over Harada (JP 2017097436) in view of Nozawa (U.S. Pub No. 2018/0276713).
EXAMINER NOTE: Since the translation of Harada does not have paragraph or line numbers, Examiner will cite quotes from the reference in the rejection of the claims.
Regarding claims 1, 9, 10, Harada teaches determining a quantity of points corresponding to an action of a user (“When a consumer purchases a product or the like at a member store, the consumer can earn points according to the purchase price. For example, it can be set as a mechanism in which 1 point is given for a purchase amount of 100 yen”); granting the quantity of points to the user who performed the action (“When a consumer purchases a product or the like at a member store, the consumer can earn points according to the purchase price. For example, it can be set as a mechanism in which 1 point is given for a purchase amount of 100 yen”); receiving a request for sending a digital gift to the sports team using the points from a user terminal used by the user (“the donation button is selected on the initial menu screen. The terminal screen is switched to a donation destination selection screen, and a plurality of donation destination organizations registered as donation destinations are displayed on the screen. Here, a button of a group such as a sport is pressed, and a further selection screen is displayed”, “the store information record database 10 records combinations with specific donation organizations. That is, the store becomes a support store that supports a specific donation destination group, and the connection with the donation destination group can be strengthened” – store is a “sponsor” of the donation destination, “if the donation organization is a professional sports team, the players and managers belonging to the team are also donations” – sports team is a donation destination); and adding acquired points corresponding to points of the digital gift to balance points of the sports team, which is a recipient of the digital gift (“A plurality of registered sport groups are also displayed on the displayed sport selection screen. When one of these is selected, the screen switches to a donation amount screen for setting a donation amount. On the donation amount screen, the consumer inputs the number of points to be donated from the points the user has. In this way, donation by points to a specific organization is completed”); wherein the points are a portion of points set to the sponsor company as grantable points corresponding to consideration borne by the sponsor company (“When the consumer presses the consent button, the screen switches to the continuous donation screen, and the donation rate can be set. Select the full amount of points on the terminal screen, half the points, 30% points, and the donation rate from time to time. When the consumer selects something other than the occasion, when the consumer purchases points by shopping in the store, the points are donated to the donation destination each time at the set ratio. In addition, when any time is selected, it is possible to make a donation by switching to the occasional donation screen for determining the number of points and setting points. Here, the donation ratio displayed on the continuous donation screen is not limited to four points: full points, half points, points 30%, and as needed”); and wherein the points only usable for digital gifts to the sports team or a predetermined plurality of teams (“the store information record database 10 records combinations with specific donation organizations. That is, the store becomes a support store that supports a specific donation destination group, and the connection with the donation destination group can be strengthened” – stores determine which sports teams they wish to support).
Harada teaches NFC functionality as being old and well known (“The consumer can perform initial registration for giving and using points at a store that has joined the point management system 1. Reading is performed by the NFC function 9 by holding the own transportation IC card 3 over the store terminal 4 installed in the store”), but does not appear to specify receiving a request to a universal resource locator (URL) sent by a user from a user terminal, the URL being a point-request URL read from a near field communication (NFC) component included in a store-installed object located at a store of a sponsor company, determining a quantity of points associated with the point-request URL, and granting the quantity of points to the user who sent the request. However, Nozawa teaches receiving a request to a universal resource locator (URL) sent by a user from a user terminal (Paragraphs 0031, 0039, 0052, address of a website is a URL), the URL being a point-request URL read from a near field communication (NFC) component included in a store-installed object located at a store of a sponsor company (Paragraphs 0014, 0019, 0022, 0071, by posting on the website, a user receives a point, thus making the website URL a “point-request URL”, the website URL is requested through the NFC component, and a point is given for that request), determining a quantity of points associated with the point-request URL (Paragraph 0071, to grant points, a number of points must have been determined, Nozawa teaches a determined point value of one), and granting the quantity of points to the user who sent the request (Paragraph 0071). It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to use NFC technology in the way disclosed by Nozawa since the claimed invention is merely a combination of old elements and the combination of each element merely would have performed the same function as it did separately and a person of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claims 8, 13, 16, Harada does not appear to specify the request using the points is possible only within a same season in which the points were granted. However, Harada does teach that in conventional systems, it is old and well known that points can expire (“in the conventional point system, there are many cases where the earned points expire without being used”). It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to set an expiration on points to be donated in order to ensure that points are donated in a timely manner.
Regarding claims 11, 14, 17, Harada does not appear to specify deleting the URL from a browse history of the user terminal. However, the ability to delete URLs from a browse history has been old and well known long before the filing of Applicant’s invention. Multiple web browsers as old as early versions of Internet Explorer and Netscape Navigator have allowed the ability to remove URLs from browser histories before the 2000s. It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to delete no-longer-needed URLs from browser history in order to avoid taking up additional storage for unneeded information.
Regarding claims 12, 15, 18, Harada teaches authorizing the user before granting the points (“The consumer can perform initial registration for giving and using points at a store that has joined the point management system 1”, an act of registration means that a user is authorized to use the system).
Response to Arguments
Applicant argues “Applicant's clamed invention is directed to a method, non-transitory computer-readable medium and apparatus that seek to enable new sports sponsorships that eliminate the need to install physical advertising materials in a stadium so as to gain exposure during games, which is identified as a problem in the technological field of the invention (see, e.g., paragraphs [0004] to [0005] of the published application)” and “Applicant’s claimed method, non-transitory computer-readable medium, and apparatus provide an improvement to the general technological field of Information and Communication Technology (ICT), and more specifically digital marketing and sponsorship management”. However, the current invention does not provide an improvement in the realm of Information and Communication Technology. There is no improvement in the technology of how information is communicated. Further the specification does not support this framing of the invention. Paragraphs 0004-0005 of the specification do not reference anything relating to an improvement in Information and Communication Technology. Rather, these paragraphs are directed towards an improvement to advertising and sponsorship, as admitted by Applicant to be “direct marketing and sponsorship management”, which is merely an improvement to the abstract idea. In the SAP decision (See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)), the courts found that an improvement made to the abstract idea is not patent eligible. SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because there are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.
Applicant argues “By granting a quantity of points associated with "a URL read from an NFC component included in a store-installed object located at a store of a sponsor company" to a user who sent a request, the user can reduce the economic burden of giving a digital gift. Although the points are borne by the sponsor company that installed the store installed object, the sponsor company can be exposed to a desired consumer segment and can obtain a quantitative advertising effect because the points are granted to users who actually visit the store of the sponsor company”. However, reducing an economic burden of giving a digital gift refers to the abstract idea of a commercial interaction, outlined by Certain Methods of Organizing Human Activity. Likewise, the quantitative advertising effect refers to the abstract idea of advertising, which is also outlined by Certain Methods of Organizing Human Activity. As explained above, any improvement to an abstract idea is still merely an abstract idea and represents an improvement in ineligible subject matter.
Applicant argues “by making the points "usable for digital gifts to the sports team or a predetermined plurality of teams," the sports team is motivated to introduce to the users the reading of the NFC component at the store, which is an action designated by the sponsor company, expecting that it will lead to the issuance of digital gifts to its own team or to a predetermined plurality of related teams”. However, issuance of digital gifts refers to the abstract idea of a commercial interaction, outlined by Certain Methods of Organizing Human Activity. As explained above, any improvement to an abstract idea is still merely an abstract idea and represents an improvement in ineligible subject matter.
Applicant argues “the alleged judicial exception is applied by use of a particular machine, i.e., the claimed NFC, and therefore the claimed invention is in fact limited to a useful practical application”. However, as explained by Applicant in the preceding paragraph of the arguments, “The skilled person knows an NFC refers to a part of a device (such as a smartphone, smartwatch, or payment terminal)”. Devices such as smartphones, smartwatches, or payment terminals are merely general purpose computers, and NFC is merely a component of that general purpose computer technology. Further, the NFC component of the claim language is merely used to apply the abstract idea, and therefore does not represent significantly more than the abstract idea and does not integrate the abstract idea into a practical application.
Applicant argues “the claimed point-request URL is not a mere conventional Internet address. Rather, it is expressly tied to a specific technical implementation that performs a defined and novel function within the claimed apparatus. Substituting any other URL would disrupt the operation of the claimed apparatus as well as the associated method implemented therein. Thus, the point-request URL is inseparable from the invention's technical architecture and is not an abstract or conventional element”. However, the term “point-request URL” does not actually add any functionality to the term URL. Rather, “point-request” is merely a title for the URL, and does not functionally limit the URL. Further, even if “point-request” did limit the URL to a specific URL that is tied to the functioning of the system, this has no bearing with regards to 35 U.S.C. 101. The fact that the URL is intended to be a specific URL does not make it any less abstract or conventional.
Applicant argues “Nozawa (paragraph [0052]; FIGS. 1 and 2) teaches "an address of the word- of-mouth information site of the shampoo 11 stored in the tag storage unit 16 is transmitted to the smartphone 15". Nozawa (paragraph [0071]) explains a "customer side smartphone 51 is automatically activated based on an instruction from the NFC tag 17 using the near field communication". Nozawa fails to teach or suggest the existence of a relationship between a URL, as purportedly described in paragraph [0052], which is read by an NFC component and the granted points as purportedly described at paragraph [0071]”. However, Nozawa teaches points being attached to the URL (Paragraph 0022), the URL being requested via NFC (Paragraph 0052), and receiving a point when the smartphone is held over the NFC tag (Paragraph 0071). Therefore, through implementation of points being given by accessing the URL, the URL is indeed considered to be a “point-request” URL.
Conclusion
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/MICHAEL BEKERMAN/Primary Examiner, Art Unit 3621