DETAILED ACTION
The communication is a First Action Non-Final on the merits. Claims 1-20, as originally filed, are currently pending and have been considered below.
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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 2025 July 15 was/were in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-10 are directed towards a server (i.e. a system). Claims 11-15 are directed towards a system. Claims 16-20 are directed towards a method. Thus, these claims, on their face, are directed to one of the statutory categories of 35 U.S.C. § 101.
Step 2A - Prong One: As per MPEP 2106.04, Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon. In Prong One examiners evaluate whether the claim(s) recites a judicial exception; that is, whether the claim(s) set forth or describe a law of nature, natural phenomenon, or abstract idea.
Claim 1 is presented here as a representative claim for specific analysis (The underlined claim terms here are interpreted as additional elements beyond the abstract idea.):
An electronic receipt server, comprising: a communication interface connectable to a network; a storage device; and a processing circuit configured to:
receive advertisement setting information from a setter terminal via the communication interface;
store the advertisement setting information in the storage device;
store electronic receipt information in the storage device;
receive a request for an electronic receipt from a user terminal via the communication interface;
identify a company code associated with the requested electronic receipt;
acquire the advertisement setting information associated with the company code in the storage device;
acquire a company-specific advertisement when the advertisement information indicates company-specific advertisements are enabled for the company code;
and output the acquired company-specific advertisement with the electronic receipt to the user terminal via the communication interface.
The claims here are based on the recitation of an abstract idea (i.e. recitation other than the additional elements delineated here with underlining and further addressed per Step 2A - Prong Two and Step 2B). The claims recite the abstract idea of presenting advertisements alongside receipt data which falls within certain methods of organizing human activity.
The phrase "certain methods of organizing human activity" applies to fundamental economic principles or practices including hedging insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors business relations; managing personal behavior or relationships or interactions between people including social activities teaching, and following rules or instructions. Refer to MPEP 2106.04(a)(2) II. A-C.
The Remaining Claims: The additional independent claims fail to recite any additional elements beyond those identified above. Similarly, the dependent claims recite fail to recite any additional elements beyond those already identified except for: store-specific shopping application (claims 9, 14, 20).
The dependent claims further reiterate the same abstract idea with further embellishments: outputting multiple advertisements simultaneously (claims 2, 3, 12, 13, 17, 18); specifying ad display characteristics (claims 4, 5); selecting advertisements based on user characteristics (claims 6, 7, 19); storing ads in a database (claim 8); store-specific app (claims 9, 14, 20); app is a receipt/wallet application (claims 10, 15). Therefore, the identified claims fall within the subject matter groupings of abstract ideas enumerated in MPEP 2106.04(a)(2).
Step 2A - Prong Two: As per MPEP 2106.04.II.A.2, Prong Two determines if the claim(s) recite additional elements that integrate the judicial exception into a practical application.
As for the additional elements of: electronic receipt server, a communication interface, a network, a storage device, a processing circuit, a setter terminal, a user terminal, store-specific shopping application. To be patent-eligible, the elements additional to the identified abstract idea must amount to more than "an instruction to apply the abstract idea . . . using some unspecified, generic computer" to render the claim patent-eligible. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014). It would have been readily apparent to one having ordinary skill in the art (PHOSITA) at the time the invention was filed that the additional elements represent generic computing devices. Therefore, the claims amount to no more than a mere method, system, and/or computer program product to implement the abstract idea on a generic computer system. See MPEP § 2106.05(f).
As for the additional element(s) of: receive, store, and output of various pieces of data. The gathering of data represents insignificant extra-solution activity that comprises mere data gathering. The additional element(s) represent insignificant extra-solution activity incidental to the primary process or product that are merely a nominal or tangential addition to the claim as noted in MPEP 2106.05(g).
The ordered combination of these additional elements amounts to generally linking the use of the abstract idea to a particular technological environment or field of use (MPEP 2106.05(h)). The ordered combination offers nothing more than employing a generic configuration of computer devices and computer functions. The claims do not amount to a practical application, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient.
Step 2B: As per MPEP 2106.05, the additional elements are analyzed, both individually and in combination, to determine whether an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim, as a whole, amounts to significantly more than the judicial exception itself.
As for the additional element(s): receive, store, and output of various pieces of data. These represent content similar to receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information).
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Company Specific Receipt Marketing.
References of Record but not Applied in the Current Grounds of Rejection
The prior art listed below is made of record as considered pertinent to applicant's disclosure and is not relied upon in the grounds of rejection presented in this Office action. Those starred with '*' were added to this list in this Office action. Those without "*" were added in a previous Office action and are not repeated on a PTO-892 Notice of References Cited form, but are maintained herein for informational purposes only.
* Son Hyo Yeon (Pub. #: KR 20230008437 A) discloses presenting advertisements along with or inside of an electronic receipt based on the contents of the receipt.
* Experian, in “The 2014 Digital Marketer”, details an increase of as much as 600% over traditional “spray and pray” marketing techniques.
Examiner's Note on the Format of the Prior Art Rejections
The prior art rejections below contain underlined markings of the limitations (e.g. sample limitation). The underlined portions of a claim are addressed at the end of the grounds of rejection for that claim. Examiner notes that the underlining of the claim language is not a statement that the primary reference does not teach that language, but simply that said claim language is addressed at the end of the grounds of rejection for that claim.
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.
Claim(s) 1-3, 6, 8, 10-13, 15-18, 19 is/are rejected under 35 U.S.C. § 103 as being unpatentable over
Boal et al. (Pub. #: US 2013/0204697 A1) in view of
Johnson (Pub. #: US 2013/0275210 A1).
Claim(s) 1, 11, 16:
These claims are analogous with different representative embodiments: claim 1 is a server embodiment, claim 11 is a system embodiment, and claim 16 is a method embodiment. Boal teaches a computer system with computer-readable media in at least 0112-0117 for performing the steps:
receive advertisement setting information from a setter terminal via the communication interface; store the advertisement setting information in the storage device;
store electronic receipt information in the storage device;
receive a request for an electronic receipt from a user terminal via the communication interface;
(Boal discloses prompting a user to input a preference/request for an electronic receipt in at least 0059, 0060, 0067-0069.)
identify a company code associated with the requested electronic receipt;
acquire the advertisement setting information associated with the company code in the storage device;
(Boal discloses using a "retailer identity" to select advertisements in at least 0078 and discloses filtering offers based on the retailer identity in at least 0212.)
acquire a company-specific advertisement when the advertisement information indicates company-specific advertisements are enabled for the company code; and output the acquired company-specific advertisement with the electronic receipt to the user terminal via the communication interface.
(Boal discloses presenting selected advertisements while presenting the electronic receipt in at least Figure 1, Figure 2, and 0035-0049.)
As for, "receive advertisement setting information from a setter terminal via the communication interface;" and "store the advertisement setting information in the storage device;": Boal discloses a "data repository for digital coupon[s]" in at least 0178 and "a data repository of promotional offers" in at least 0202. Examiner notes that coupons are a form of advertisement. Boal does not appear to specify a setter terminal sending via a communication interface the advertisement data. However, Johnson teaches a technique for an online advertising system that includes an advertiser device (i.e., setter terminal) for inputting advertisements and advertisement metadata/targeting information in at least Figures 2A through 2J and 0041-0047.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the receipt advertisement device and advertisement repository as taught by Boal with the technique of presenting an advertiser a user interface on a computing device for the inputting of advertisement data as taught by Johnson. Motivation to combine Boal with Johnson derives from the desire to allow an advertiser to "quickly and easily create advertisements online" (Johnson: 0006).
Claim(s) 2, 12, 17:
wherein the processing circuit is further configured to: acquire a shared advertisement; and output the acquired shared advertisement with the electronic receipt to the user terminal via communication interface.
(Boal discloses presenting multiple advertisements in an electronic receipt with some of the advertisements selected "at random" and some advertisements selected via targeting criteria that includes "retailer identity" in at least Figure 1, Figure 2, 0038-0040, 0078, and 0212. Boal discloses that offers may be "targeted" or "non-targeted" in at least 0097.)
Claim(s) 3, 13, 18:
wherein the shared advertisement and the company-specific advertisement are both shown on the electronic receipt.
(Boal discloses presenting multiple simultaneous advertisements in an electronic receipt in at least Figure 1, Figure 2. See at least items 151 and 152.)
Claim(s) 6, 19:
obtain user characteristics associated with the request for the electronic receipt; and determine whether the advertisement setting information includes user characteristic settings, wherein the company-specific advertisement is acquired based on an obtained user characteristic and the user characteristic settings in the advertisement setting information.
(Boal discloses selecting advertisements based on user characteristics with the use of "customer preferences", "customer demographics", "customer purchase history", and "customer coupon redemption history" in at least 0078, 0188, 0190.)
Claim(s) 8:
wherein the company-specific advertisement is stored in the storage device.
(Boal discloses a "data repository for digital coupon[s]" in at least 0178 and "a data repository of promotional offers" in at least 0202.)
Claim(s) 10, 15:
wherein the request for the electronic receipt from the user terminal is sent from an electronic receipt service application.
(Boal discloses a "dedicated transaction management application" in at least 0033.)
Claim(s) 4, 5 is/are rejected under 35 U.S.C. § 103 as being unpatentable over
Boal et al. (Pub. #: US 2013/0204697 A1) in view of
Johnson (Pub. #: US 2013/0275210 A1) in view of
Velusamy et al. (Pub. #: US 2012/0166261 A1).
Claim(s) 4:
herein the shared advertisement and the company-specific advertisement are displayed in different modes.
Boal discloses providing advertisements with different text styles via the underlined and italicized text found in Figure 1. Boal discloses presenting receipt information formatted according to settings provided by a retailer in at least 0079. Boal, in view of Johnson, does not appear to specify different modes for display of disparate types of advertisements. However, Velusamy teaches a technique within an advertisement system whereby retailers provide retailer specific data for presentation with their advertisements in at least 0066-0067.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the receipt advertisement device and advertisement repository as taught by Boal, in view of Johnson, with the technique of retailer-specific advertisement formatting as taught by Velusamy. Motivation to combine Boal, in view of Johnson, with Velusamy in order to provide users with advertisements at a time of purchase "when users are most excited about their purchases" (Velusamy: 0015).
Claim(s) 5:
wherein the company-specific advertisement is displayed in a highlighted manner distinct from the shared advertisement manner of display.
Boal discloses providing advertisements with different text styles via the underlined and italicized text found in Figure 1. Boal discloses presenting receipt information formatted according to settings provided by a retailer in at least 0079. Boal, in view of Johnson, does not appear to specify different modes for display of disparate types of advertisements. However, Velusamy teaches a technique within an advertisement system whereby retailers provide retailer specific data for presentation with their advertisements in at least 0066-0067.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the receipt advertisement device and advertisement repository as taught by Boal, in view of Johnson, with the technique of retailer-specific advertisement formatting as taught by Velusamy. Motivation to combine Boal, in view of Johnson, with Velusamy in order to provide users with advertisements at a time of purchase "when users are most excited about their purchases" (Velusamy: 0015).
Claim(s) 7 is/are rejected under 35 U.S.C. § 103 as being unpatentable over
Boal et al. (Pub. #: US 2013/0204697 A1) in view of
Johnson (Pub. #: US 2013/0275210 A1) in view of
Smadja et al. (Pub. #: US 2012/0047014 A1).
Claim(s) 7:
wherein the user characteristic is a store membership level.
Boal, in view of Johnson, does not appear to specify a user characteristic that comprise a store membership level. However, Smadja teaches a technique for selecting a receipt advertisement based on a user's "tier" of membership with a service provider in at least 0101.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the receipt advertisement device based on user characteristics as taught by Boal, in view of Johnson, with the technique of selecting a receipt ad based on user characteristics that include a membership tier or level as taught by Smadja. Motivation to combine Boal, in view of Johnson, with Smadja derives from the desire to send the most optimal advertisements to users based on user characteristics (Smadja: 0011 and 0012).
Claim(s) 9, 14, 20 is/are rejected under 35 U.S.C. § 103 as being unpatentable over
Boal et al. (Pub. #: US 2013/0204697 A1) in view of
Johnson (Pub. #: US 2013/0275210 A1) in view of
Ventrice et al. (Pub. #: US 2019/0180302 A1).
Claim(s) 9, 14, 20:
wherein the request for the electronic receipt from the user terminal is sent from a store-specific shopping application.
Boal discloses a "dedicated transaction management application" in at least 0033. Boal, in view of Johnson, does not appear to specify that the application is a "store-specific" application. However, Ventrice teaches a technique for offer generation based on consumer data and delivered via a "retailer specific" app in at least 0150-0157.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the receipt advertisement device based on user characteristics as taught by Boal, in view of Johnson, with the technique of a retailer specific app as taught by Ventrice. Motivation to combine Boal, in view of Johnson, with Ventrice derives from the desire to deliver advertisements with the highest return on investment (ROI) (Ventrice: 0159-0162).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT SNIDER whose telephone number is (571)272-9604. The examiner can normally be reached M-W: 9:00-4:30 Mountain (11:00-6:30 Eastern).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached at (571)270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT SNIDER/Examiner, Art Unit 3621
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