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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/05/2022 was filed prior to examination. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Application Status
This Office Action is in response to Applicant’s 06/05/2025 filing.
Claims 1-12 are pending and have been examined.
This action is non-final.
Summary of Objections
The drawings are objected to for issues pertaining to (a) consistency of disclosure with respect to step S116 of Fig. 7.
Summary of Claim Rejections
Claims 1–121 are rejected under 35 U.S.C. § 101 for being directed to an abstract idea without significantly more.
Claims 1-12 are rejected under 35 U.S.C. § 103 in view of the following prior art of record2:
Foreign Patent Document JP 2021039643 A (Zalewski).
United States Patent Publication No. US 10990934 B2 (Van Os ‘934).
United States Patent Application Publication No. US 20230401558 A1 (Hecht).
United States Patent Application Publication No. US 20180336543 A1 (Van Os ‘543).
United States Patent Application Publication No. US 20190347714 A1 (Hudson).
Non-Patent Literature “Unable to add Apple Card to Apple Watch” (Apple).
Drawings
The drawings are objected to because of issues pertaining to (a) consistency of disclosure with respect to step S116 of Fig. 7. Specifically, step S116 of Fig. 7 is depicted as a step performed by the terminal device in the swim lane diagram, but is disclosed throughout the rest of the specification as being performed by the settlement server 20 – see ¶91 in further view of Fig. 4, ref 202 and ¶148 of Applicant specification. Additionally, see 37 CFR 1.21(e): “(e) Disclosure consistency. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings …”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As an initial matter, the relevant test is the Alice/Mayo test3. The following analysis provided in this section results from the instant application’s claims being examined within the scope of the Alice/Mayo test framework.
With respect Step 1 of Alice/Mayo analysis, the claims are either directed to a system, product of manufacture, or method. Therefore, each of the claims are directed to one of the four statutory categories of invention (Step 1 of Alice/Mayo Test: YES).
Based upon consideration of all relevant factors with respect to the claims as a whole, claims 1-12 are determined to be directed to an abstract idea of sending and receiving settlement service information. The rationales for the aforementioned determination are explained further below.
Prior to step 2A Prong I Alice/Mayo analysis, examiner notes they have identified method claim 11 as the claim that represents the claimed invention for analysis under step 2A Prong I, as method claim 11 is analogous to claims 1 and 12 under step 2A Prong I analysis. I.e., the step 2A Prong I Alice/Mayo rationales applied to claim 11 (below) are similarly applied to claims 1 and 12, mutatis mutandis.
With respect Step 2A Prong I of Alice/Mayo analysis, claims 1-12 recite as a whole a method of organizing human activity because independent claims 1, 11, and 12 each recite claim limitations drawn to:
“1. A [e.g., transaction] processing execution method comprising:
transmitting a predetermined request …;
acquiring … information regarding … [information] related to the settlement service when the request is received, the … [information] being designated …;
transmitting the … information …;
receiving the … information …; and
executing processing related to the settlement service based on the … information.”
Under broadest reasonable interpretation consistent with the specification, these are recitations of commercial interactions of sending and receiving settlement service information, the sending and receiving settlement service information including steps of (A) transmitting a request (B) acquiring designated information related to the settlement service when the request is received, (D) transmitting the information, and (E) executing processing related to the settlement service based on information. Additionally, the limitations “executing processing related to the settlement service based on … information” is also recitation of fundamental economic practices under step 2A prong I of Alice/Mayo analysis. Thus, the claims recite an abstract idea (Step 2A Prong I: Yes, the claims recite an abstract idea).
This judicial exception recited in independent claims 1, 11, and 12 is not integrated into a practical application because, when analyzed under prong II of revised step 2A of the Alice/Mayo test:
The additional elements “… system comprising at least one processor that…”, “…settings related to…”, “…settings being designated on a user’s portable terminal in the settlement service…”, “…setting…”, and “…to a wearable device that is connectable to the portable terminal.” of claim 1, the additional elements “…by a wearable device that is connectable to a portable terminal of a user in a settlement service…”, “…setting…”, “…settings…”, “…on the portable terminal…”, “…the settings being designated on the portable terminal…”, “…setting…”, “…[transmitting]…to the wearable device that is connectable to the portable terminal…”, and “…setting…” of claim 10, and the additional elements “… A non-transitory … medium storing a program causing a computer to:”, “…setting…”, “…settings…”, “…setting…”, “…[transmitting]…to the wearable device that is connectable to the portable terminal…”, and “…setting…” of claim 12 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment4 (MPEP §§ 2106.05 (f), (h)), even when considering each claim’s additional elements both separately and as an ordered combination. See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”.
Even assuming the claimed term “setting” is assumed to be limited to computer application settings, the specification makes clear that they merely act as a stand-in for various abstract aspects of a payment transaction, as evidenced by ¶83 of Applicant specification5. Examiner generally notes that the settings disclosed in Applicant’s specification seems to generally correspond to a payment method, but also broadly encompasses other information such as a balance for financial funds. Again, see ¶83 of Applicant specification.
The claims merely invoke computers as tools to perform an abstract business process (e.g., the recited sending and receiving settlement service information – see MPEP § 2106.05(f)(2)). This stance is supported in view of Applicant’s specification and claims describing the associated computer components at a high degree of generality.
The Applicant’s claims fail to provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement to the functioning of a computer or to any other technology or technical field (MPEP §§2106.04(d)(1) & 2106.05(a)). For example, the instant claims do not include any specific technical details as to how the claimed processor acquires the setting information or how “the settings … [are] designated on … [the] portable terminal in the settlement service”, and instead merely claims the desired result at a high degree of generality. This supports the aforementioned determination that the additional elements of the independent claims are merely applied, and is merely limiting the use of the judicial exception to a particular technological environment. See MPEP §2106.05 (f)(1): “…claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words ‘apply it’”.
An improvement in the abstract idea itself is not a technological solution to a technological problem (MPEP §§ 2106.05 (a), (a) II). See the following:
MPEP 2106.05(a) II: “… it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology … Merely adding generic computer components to perform the method is not sufficient.”
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015): “... our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”
Customedia Techs. V. Dish Network Corp., 951 F.3d 1359, (Fed. Cir. 2020): “We have held that ‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ was insufficient to render the claims patent eligible as an improvement to computer functionality”.
In light of the above rationales provided for step 2A Prong II analysis, the Examiner respectfully submits the focus of the claims is not on an improvement in computers as tools, but rather on an abstract idea that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the independent claims do not integrate the abstract idea into a practical application, as they do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract sending and receiving settlement service information, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field. (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application). Accordingly, claims 1, 11, and 12 are determined to be directed to an abstract idea (Step 2A of the Alice/Mayo Test: The claims are directed to an abstract idea).
When analyzed under step 2B, claims 1, 11, and 12 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 1, 11, and 12, each when viewed as a whole, do not include additional elements amounting to significantly more, as their elements, each viewed both individually and as an ordered combination, amount to no more than mere instructions to implement the abstract sending and receiving settlement service information concept within a particular technological environment, absent of any particular technological details that one of ordinary skill in the art would recognize the claimed invention as providing an improvement to the functioning of a computer or to any other technology or technical field – see MPEP §§ 2106.05 (a), (f), (h) and Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014). Even though claims 1, 11, and 12 utilize computer components, the manner by which the claims’ additional elements are used is indistinguishable from mere addition of general-purpose computers added post-hoc to the abstract idea recited, as even the ordered combination of elements add nothing that is not already present when the steps are considered separately. Accordingly, the Examiner respectfully maintains the focus of the claims is not on such an improvement in computers as tools, but rather on abstract ideas that use computers as tools. Hence, none of the elements of the independent claims add significantly more to the abstract idea itself (i.e., an inventive concept), as merely employing computers as tools to automate and/or implement the abstract idea cannot provide significantly more than the judicial exception itself – see BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018): “It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”.
Accordingly, independent claims 1, 11, and 12 are not patent eligible.
With respect to the dependent claims, the dependent claims have been given the full analysis, including analyzing the additional limitations both individually and as an ordered combination (if any). The dependent claims, when analyzed both individually and in combination, are also held to be patent ineligible under 35 U.S.C. 101 because of the same reasoning as above, and because the claim limitations of the dependent claims fail to establish that the claims are integrated into a practical application or amount to significantly more. The rationales for the aforementioned determinations are explained further below.
With respect to dependent claim 2, it recites further details of the abstract idea, per reciting limitations “…receive… a code display request including user identification information with which the user is identifiable, the code display request being related to display of a code used in the settlement service, and acquire… the … information based on the user identification information included in the code display request.”. The additional elements, “…wherein the at least one processor…”, and “…setting…” do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 2 is also not patent eligible.
With respect to dependent claim 3, it recites further details of the abstract idea, per reciting limitations “…transmits the … information and code display information related to the display of the code …”. The additional elements, “…wherein the at least one processor…”, “…setting…”, and “…to the wearable device…” do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 3 is also not patent eligible.
With respect to dependent claim 4, it recites further details of the abstract idea, per reciting limitations “…wherein the … information indicates … [information] related to a payment source in the settlement service, and determines whether the payment source indicated by the … information is available … and transmits the … information … based on a determination result”. The additional elements, “…wherein the at least one processor…”, “…setting…”, “…settings…”, and “…on the wearable device…” do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 4 is also not patent eligible.
With respect to dependent claim 5, it recites further details of a commercial practice, per reciting limitations “…change the payment source when it is determined that the payment source when it is determined that the payment source indicated by the … information is not available …”. The additional elements, “…wherein the at least one processor automatically…”, “…setting…”, and “…on the wearable device…” do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Merely automating the abstract idea to try to make the process faster or more efficient does not integrate the abstract idea into a practical application or amount to significantly more. Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 5 is also not patent eligible.
With respect to dependent claim 6, it recites further details of a commercial practice, per reciting limitations “…determines whether a balance of a settlement means used by the user in the settlement service is insufficient, and makes … the user … use another settlement means other than the settlement means when it is determined that the balance is insufficient.”. The additional elements, “…wherein the at least one processor…” “…makes a screen of the wearable device transition to a screen for…”, and “…on the wearable device…” do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 6 is also not patent eligible.
With respect to dependent claim 7, it recites further details of a commercial practice, per reciting limitations “…determines whether the balance of the settlement means used by the user in the settlement service is insufficient, and … changes a payment source to another settlement means different from the settlement means when it is determined that the balance is insufficient.”. The additional elements, “…wherein the at least one processor…” and “…automatically…” do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Merely automating the abstract idea to try to make the process faster or more efficient does not integrate the abstract idea into a practical application or amount to significantly more. Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 7 is also not patent eligible.
With respect to dependent claim 8, it recites further details of a commercial practice, save for the additional elements “…wherein the at least one processor…” and “…auto…”. The aforementioned additional elements do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Merely automating the abstract idea to try to make the process faster or more efficient does not integrate the abstract idea into a practical application or amount to significantly more. Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 8 is also not patent eligible.
With respect to dependent claim 9, it does not recite any further abstract idea at step 2A Prong I. However, the additional element, “…wherein the at least one processor causes the portable terminal to display information regarding the wearable device”, does no more than represent the use of computers as tools to perform the abstract idea and merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, the claim does not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 9 is also not patent eligible.
With respect to dependent claim 10, it recites further details of the abstract idea, per reciting limitations “…determine whether the … [information is] available … when the information … [is] designated … and notifies the user of a determination result … ”. The additional elements, “…wherein the at least one processor…”, “…settings…”, and “…on the wearable device…” do no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 10 is also not patent eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 rejected in view of Zalewski and Van Os ‘934
Claims 1-4, 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Patent document JP 2021039643 A (Zalewski), in further view of United States Patent Publication No. US 10990934 B2 (Van Os ‘934).
Claim 1
With respect to claim 1, Zalewski discloses:
A settlement system (Fig. 1, including refs 10, 1006, 200, 300) comprising at least one processor (Page 8 of 22, see “Hardware configuration” section) that
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Examiner’s Note: Examiner notes the “…settlement system…” claimed may include, under broadest reasonable interpretation consistent with the specification, multiple interconnected components carrying out a payment service – see ¶28 in further view of Fig. 1 of Applicant’s published specification7: “…For example, a settlement system 1 includes an ID server 10, a settlement server 20, a portable terminal 30, a wearable device 40, and a store terminal 50. …”
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acquires setting information (payment method information such as, for example, balance values (4000 yen), and/or authentication information (“authentication information #1”)) regarding [a] setting… (payment source/method; e.g., payment code / payment application) related to a settlement service (See steps S1 - S18 of Fig. 1 outlining a payment service; see also at least abstract and page 1 of translation expressly characterizing the disclosed process as one corresponding to that of a “…payment service…”)
See the following of translation of Zalewski, underline emphasis added:
See page 3 of translation, in further view of Fig. 1, step S2 (implicitly teaching authentication information corresponding to payment method being acquired by information processing device 10): “…the wearable device 200 requests the terminal device 100 to authenticate the user U1 in order to perform the payment process using the payment application A (step S1). Subsequently, the terminal device 100 requests the information processing device 10 to authenticate the user U1 (step S2).”
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pages 4-6 of translation (disclosing user database 31 of information processing device 10 has balance / authentication information corresponding to a payment method/source): “… [3. Information processing device [i.e., ref 10] configuration] … As shown in Fig. 3, the information processing device 10 includes a communication unit 20, a storage unit 30, and a control unit 40 … Here, Fig. 4 shows an example of the user database 31 … the user database 31 has “user ID”, "user information", "balance", "authentication information", "issued token", "token expiration date", and "issued". It has items such as … code" and "code expiration date". … Further, for example, in FIG. 4, … the issued code is … "code # 1"
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page 6 of translation: “… the payment control unit 42 issues a predetermined code that can be used for payment. …
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Examiner’s Note: While not expressly teaching an acquiring step outlining as to how the disclosed balance value is acquired by the information processing device 10, Examiner notes it is obvious to one of ordinary skill in the art reading Zalewski that Zalewski implicitly teaches that the information processing device 10 acquires the setting information regarding a setting related to a settlement service (e.g., the balance corresponding to the payment method) at some point in time, by virtue of the fact that the balance corresponding to the payment method is expressly taught to be stored in its database, as depicted in Fig. 4:
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Examiner’s Note (2): Examiner notes a “…setting…” may include, under broadest reasonable interpretation consistent with the specification, at least one or more of [A] a payment source/method, [B] a payment type, [C] a balance, [D] user preferences, [E] a points balance, [F] credential expiration dates/times, [G] a number of transactions (e.g., transaction history), and/or [H] “…any other setting…” – see at least Fig. 6, ¶83, and ¶164 in further view of Fig. 9, SC44:
¶83, underline emphasis added: “The setting information is information related to the settings designated by the user. For example, the setting information indicates a payment source designated by the user. In the example shown in FIG. 2, since the user designates electronic money as a payment source, the setting information indicates that the payment source is electronic money. When the user designates another settlement means, such as a credit card, as a payment source, the setting information indicates that the payment source is a credit card. The setting information may also indicate settings other than a payment source. For example, the setting information may indicate the setting of a charging source, which is a settlement means used to charge electronic money by the user, the setting of whether points can be applied, the setting of a settlement means preferentially used by the user among a plurality of settlement means (for example, the setting of one which is preferentially used by the user out of electronic money and points), the balance of electronic money, the number of points, validity periods of these, a maximum amount of settlement means, or other settings.”
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¶164, underline emphasis added: “…the wearable device 40 displays a setting content screen SC44 showing the contents of the setting information on the display unit 45, as shown in the lower part of FIG. 9.”
Examiner’s Note (3): See also ¶3 of Applicant specification expressly acknowledging Zalewski teaches a “…settlement service…”: “…technology for allowing a user to use a settlement service from a wearable device that can be connected to the user’s portable terminal is known. For example [,] JP 2021-039643 A [i.e., Zalewski] discloses a display control system in which a user’s portable terminal requests a server to issue a code to be used in a settlement service based on a token acquired…”
the setting… (e.g., payment source/method – see balance in Fig. 4) being designated … in the settlement service, and
page 8 of 22: “In the above embodiment, it has been described that the user U1 has previously paid a predetermined amount of money via the payment application A, but the present invention is not limited to the above example. For example, the wearable device 200 may accept a predetermined amount of payment by the user U1 via the payment application A. In this case, the wearable device 200 may display a keyboard or the like on the screen and accept input from the user.
The wearable device 200 does not have to be limited to the above input example, and may be any input operation. For example, the wearable device 200 may display a selection button or the like indicating a predetermined amount unit such as "1000 yen" or "2000 yen" on the screen and accept input from the user. “
transmits the setting information (e.g., balance / authentication information) to a wearable device (Fig. 1, 200) that is connectable to the portable terminal (See Fig. 1, refs S3, S4, S5).
See page 3 and Fig. 1, refs S3 – S6 of Zalewski:
Page 3 of translation: “
the information processing device 10 distributes the authentication token to the terminal device 100 when the authentication for the user U1 is successful (step S3). The authentication token referred to here refers to authentication information that is information related to authentication. For example, the authentication token is a hash value generated by a hash function …
Then, the wearable device 200 performs mutual authentication with the terminal device 100 (step S4). In this way, the wearable device 200 can provide the user with the payment process using a predetermined code while ensuring the security of the payment process.
Specifically, the wearable device 200 mutually authenticates with the terminal device 100 that has been authenticated for a predetermined payment service. For example, the wearable device 200 performs mutual authentication with the terminal device 100 by using a conventional technique related to pairing. [i.e., the wearable device is/becomes connected to the portable terminal]
… the terminal device 100 provides the wearable device 200 with an authentication token for performing payment processing using the payment application A (step S5). For example, the wearable device 200 acquires a token used for payment processing of the payment application A via the terminal device 100 when mutual authentication is performed with the terminal device 100. …
Then, the wearable device 200 accepts the payment operation via the payment application A by the user U1 (step S6). For example, the wearable device 200 displays the balance of the amount of money that has been paid … the … currency acquired by performing the payment processing in the past, and the like via the payment application A. …”
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Zalewski fails to disclose, but Van Os ‘934 discloses:
acquir[ing]setting information (information associated with payment methods) regarding settings (e.g., payment methods – examiner notes the focus of this deficiency in Zalewski is drawn to a distinction between a single payment method vs. a plurality of payment methods)
the settings (e.g., payment sources/methods) being designated on a user's portable terminal (mobile phone) in the settlement service (transaction app / electronic wallet), …
For both above bulleted limitations, see Figs. 16A – 16D, 16F, 16G, 18A-18C of Van Os ‘934 showing multiple payment methods (e.g., “settings”) to be added to smartwatch being added in payment application via portable terminal (partially shown below), in further view of at least Col 43 line 58 – Col 44, line 2, Col 45, lines 64-65, and Col 90, lines 8-11 indicating such processes may result in a backend transaction-coordination server (e.g., analogous to payment processing device 10 of Zalewski) acquiring the associated information payment method information:
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Col 43 line 58 – Col 44, line 2: “In some embodiments, a payment account is added to an electronic device (e.g., device 100, … and 500), such that payment account information is securely stored on the electronic device. In some examples, after a user initiates such process, the electronic device transmits information for the payment account to a transaction-coordination server, which then communicates with a server operated by a payment network for the account (e.g., a payment server) to ensure a validity of the information. The electronic device is optionally configured to receive a script from the server that allows the electronic device to program payment information for the account onto the secure element.”
Col 45, lines 64-65: “…a transaction-coordination server that manages a transaction app on the user device …”
Col 90, lines 8-11: “… an electronic wallet of the electronic device includes payment account information for a plurality of payment accounts associated with a user of the electronic device …”
Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the settings could include multiple payment methods to be added via the terminal device of Zalewski, resulting in the system of Zalewski acquiring setting information (e.g., payment information) for a plurality of settings (e.g., payment methods / accounts), in order to advantageously provide multiple means of payment on the payment application of Zalewski (e.g., settings), and to also advantageously provide more means to add payment methods onto the payment application of Zalewski (e.g., by phone via server import, manually entering, or entering through camera selections, in addition to by watch).
Claim 2
With respect to claim 2, Zalewski in view of Van Os ‘934 renders obvious the system according to claim 1. Zalewski additionally discloses:
wherein the at least one processor receives a code display request (Fig. 1, refs S6-S8, and associated disclosure) including user identification information (authentication token S7) with which the user is identifiable,
See Fig. 1, refs S6 – S8 and associated disclosure.
the code display request being related to display of a code used in the settlement service, (Fig. 1, refs S8-S13 and associated disclosure) and
acquires the setting information (payment method information embedded in specified code) based on the user identification information included in the code display request. (authentication token; see Fig. 1, refs S6-S13 and associated disclosure)
Claim 3
With respect to claim 3, Zalewski in view of Van Os ‘934 renders obvious the system according to claim 2. With respect to the following claim limitations, they are rejected under the same rationales provided in the claim rejection of parent claim 1, mutatis mutandis:
wherein the at least one processor transmits the setting information … to the wearable device (See page 3 and Fig. 1, refs S3 – S6 of Zalewski, as shown in parent claim 1 mapping)
Additionally, Zalewski discloses:
wherein the at least one processor transmits the … code display information (specified code) related to the display of the code to the wearable device. (see Fig. 1, refs S6-S11 and associated disclosure)
Claim 4
With respect to claim 4, Zalewski in view of Van Os ‘934 renders obvious the system according to claim 1. With respect to the following limitations, they are rejected under the same rationale as parent claim 1, mutatis mutandis:
wherein the setting information indicates settings related to a payment source in the settlement service, and …
transmits the setting information to the wearable device …’
Zalewski fails to disclose, but Van Os ‘934 discloses:
the at least one processor determines whether the payment source indicated by the setting information is available on the wearable device (Figs. 18A, 18B and associated disclosure), and transmitting the setting information to the wearable device based on a determination result. (Figs. 18B, 18C and associated disclosure)
Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the processor determine which payment sources are available on the wearable device, resulting in the system of Zalewski displaying possible cards to add on user interface of terminal device, and to also advantageously provide more means to add payment methods onto the payment application of Zalewski (e.g., by phone via server import, manually entering, or entering through camera selections, in addition to by watch).
Claim 9
With respect to claim 9, Zalewski in view of Van Os ‘934 renders obvious the system according to claim 1. Zalewski fails to disclose, but Van Os ‘934 discloses
wherein the at least one processor causes the portable terminal to display information regarding the wearable device. (See Figs. 18A-18C and associated disclosure)
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the portable terminal display information regarding the wearable device, in order to advantageously increase the saliency of payment methods provisioned on the wearable device.
Claim 11
With respect to claim 11, the following claim limitations of claim Zalewski discloses A processing execution method comprising:
transmitting a predetermined request by a wearable device that is connectable to a portable terminal of a user in a settlement service; acquiring setting information regarding settings related to the settlement service when the request is received, … (Fig. 1, ref S1 in further view of associated disclosure and refs S1-S5 and associated disclosure)
With respect to the following remaining claim limitations of claim 11, they are rejected under the same rationale/mapping as in claim 1, mutatis mutandis:
… the settings being designated on the portable terminal;
transmitting the setting information to the wearable device that is connectable to the portable terminal;
receiving the setting information regarding the settings; and
executing processing related to the settlement service based on the setting information.
Claim 12
With respect to claim 12, Zalewski discloses: A non-transitory information storage medium storing a program causing a computer to: (See hardware configuration section on page 8 of translation)
With respect to claim 12, the following remaining claim limitations are rejected under the same rationale/mapping as in claim 1, mutatis mutandis:
acquire setting information regarding settings related to a settlement service,
the settings being designated on a user's portable terminal in the settlement service; and
transmit the setting information to a wearable device that is connectable to the portable terminal.
Claims rejected in view of Zalewski, Van Os ‘934, and Hecht
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Zalewski in view of Van Os ‘934, as applied in parent claims 1 and 4, in further view of United States Patent Application Publication No. US 20230401558 A1 (Hecht).
Claim 5
With respect to claim 5, Zalewski in view of Van Os ‘934 renders obvious the system according to claim 4. Zalewski fails to disclose, but Van Os ‘934 discloses:
wherein the at least one processor automatically changes the payment source … (see Figs. 12A -12C and associated disclosure; see at least Col 68, lines 35-46)
Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the system of Zalewski in view of Van Os ‘934 automatically change payment methods, in order to advantageously optimize the transaction process and allow for multiple accounts to be used simultaneously in a given transaction.
Zalewski in view of Van Os ‘934 fails to disclose, but Hecht discloses:
… [a determination] that the payment source indicated by the setting information is not available on the wearable device. (¶90 of Hecht: “…the transfer user interface 900 may further allow for the customer to select one or more backup payment methods (e.g., via corresponding backup payment method selection buttons) for use in the case that the primary payment method selected is unsuccessful or unavailable.”)
Accordingly, given Van Os ‘934 discloses automatic changes to payment sources, and Hecht disclosing change to payment sources responsive to availability-based determinations for payment sources, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the system of Zalewski in view of Van Os ‘934 automatically change payment sources responsive to determinations of availability (e.g., to a backup), resulting in the system of Zalewski in view of Van Os ‘934 to automatically changes the payment source when it is determined that the payment source indicated by the setting information is not available on the wearable device, in order to advantageously save the user time from having to manually select options when the primary/default payment method is not available, e.g., with a predetermined backup payment method.
Claims rejected in view of Zalewski, Van Os ‘934, and Van Os ‘543
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Zalewski and Van Os ‘934, as applied in parent claim 1, in further view of United States Patent Application Publication No. US 20180336543 A1 (Van Os ‘543).
Claim 6
With respect to claim 6, Zalewski in view of Van Os ‘934 renders obvious the system according to claim 1. Zalewski fails to disclose, but Van Os ‘934 discloses:
… make… a screen of the wearable device transition to a screen for the user to use another settlement means other than the [currently selected] settlement means … .
See Figs. 6A – 6G and associated disclosure.
Zalewski in view of Van Os ‘934 fails to disclose, but Van Os ‘543 discloses:
wherein the at least one processor determines whether a balance of a settlement means used by the user in the settlement service is insufficient, and … [changes to] another settlement means other than the settlement means when it is determined that the balance is insufficient. (¶779 of Van Os ‘543: “… instead of providing the manual accounts selection option using accounts selection user interface 2378 described above with reference to FIGS. 23F-23J, electronic device 2300 automatically selects, in accordance with a determination that the currently-selected account (e.g., the payment account) has insufficient funds, a default back account (e.g., debit card account) as a second account for use in a transaction when the currently-selected account (e.g., the payment account) has insufficient funds. Thus, in some embodiments, in accordance with a determination that the payment account has insufficient funds, instead of or in addition to displaying accounts selection button 2368 providing the user with the option to manually selection a second account for use in the transaction, the device automatically sets (and displays an indication of) the default backup account (e.g., the debit card account) to be used with the payment account in the transaction. In some embodiments, the default backup account is pre-configured by the user (e.g., the user pre-selects an account from a plurality of accounts stored on or provisioned on the device as the default backup account).”)
Accordingly, given Van Os ‘934 discloses the currently selected settlement being displayed / determined between transitionable screens for other payment selections, and Van Os ‘543 disclosing automatic selection a back-up account based on a determination of insufficient funds on a default card (e.g., first selected card, of which would be displayed within the GUI of Zalewski in view of Van Os ‘934), it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the at least one processor determine whether a balance of a settlement means used by the user in the settlement service is insufficient, and make a screen of the wearable device transition to a screen for the user to use another settlement means other than the settlement means when it is determined that the balance is insufficient, in order to advantageously increase the saliency of the automatically selected account, and to provide a more efficient human-machine interface that reduces the number of cumbersome and/or repetitive human inputs (¶¶4-5 of Van Os ‘543) when the default account is determined to have insufficient funds.
Claim 7
With respect to claim 7, it is rejected under the same rationale as claim 6, above, mutatis mutandis (See ¶779 of Van Os ‘543 disclosing the change of payment selection as including an automatic embodiment).
Claims rejected in view of Zalewski, Van Os ‘934, and Hudson
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zalewski and Van Os ‘934, as applied in parent claim 1, in further view of United States Patent Application Publication No. US 20190347714 A1 (Hudson).
Claim 8
With respect to claim 8, Zalewski in view of Van Os ‘934 renders obvious the system according to claim 1. Zalewski in view of Van Os ‘934 fails to teach, but Hudson discloses:
wherein … at least one processor determines whether a balance of a settlement means used by the user in the settlement service is insufficient, and executes auto-charging of the settlement means based on an insufficient amount of the balance when it is determined that the balance is insufficient. (See Fig. 4 in further view of at least ¶¶38-41)
Accordingly, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the system of Zalewski in view of Van Os ‘934 determine balance insufficiency an execute auto-charging (e.g., top-up) means based on an insufficient amount, as disclosed by Hudson, in order to advantageously provide users with overdraft protection (i.e., providing an improved financial solution to users).
Claims rejected in view of Zalewski, Van Os ‘934, and Apple
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Zalewski and Van Os ‘934, as applied in parent claim 1, in further view of Non-Patent Literature “Unable to add Apple Card to Apple Watch” (Apple).
Claim 10
With respect to claim 10, Zalewski in view of Van Os ‘934 renders obvious the system according to claim 1. Zalewski additionally discloses:
… the settings are designated on the portable terminal, … (See Figs. 18A-18C and associated disclosure – the same obviousness rationale of claim 9 applies herein, mutatis mutandis)
Zalewski in view of Van Os ‘934 fails to disclose, but Apple.com reasonably suggests:
wherein the at least one processor determines whether the settings are available on the wearable device when the settings are designated on the portable terminal, and notifies the user of a determination result. (See Title, page 1 of Apple.com)
Accordingly, it would have been rendered obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have the at least one processor determine whether the settings are available on the wearable device when the settings (e.g., payment method) are designated on the portable terminal and provide a notification of the determination result, in order to advantageously make known to the user when issues of availability / functionality occur on the terminal device.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. US 20160253651 A1 (Park). Park is pertinent for disclosing token issuance to a paired electronic device (e.g., smartwatch). Examiner notes appendix figures not depicted in application are also pertinent. For example, P003-008 illustrates an embodiment of electronic device B (e.g., smartwatch) being issued a token for payment (¶1289).
United States Patent Application Publication No. US 20210373744 A1 (Miller). Miller is generally pertinent for disclosing interfaces related to smart watches used in transaction processes. See at least Figs. 10I – 10L, 13B – 13AA.
United States Patent Application Publication No. US 20190391720 A1 (Choi). At least Figs. 6, 7, 12, 14, 17-21 and associated disclosure is pertinent for disclosing an arrangement between server, electronic device (e.g., phone), and wearable device (e.g., watch) paired to electronic device.
United States Patent Application Publication No. US 20160253652 A1 (Je). Je discloses card registration at a second wearable device based on communications with a first electronic device, payment server, and token server (Fig. 27 and associated disclosure).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A MALKOWSKI whose telephone number is (313)446-6624. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on (571) 272-3955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.A.M./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
1 I.e., the subject matter claimed.
2 See detailed 103 rejections further within office action for each claim’s specific combination of prior art.
3 See MPEP § 2106 I.
4 E.g., device pairing / companion devices.
5 Examiner also notes ¶¶164, 266, 268, 269, and Fig. 9, SC44 of Applicant specification are also pertinent.
6 I.e., the mobile (terminal) device depicted in the lower left.
7 Underline emphasis added.
Prosecution Insights