DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Whether a Claim is to a Statutory Category
In the instant case, claims 1-5 recite a device/ machine and claim 6 recites a computer-readable storage medium/ machine that are performing a series of functions. Therefore, these claims fall within the four statutory categories of invention of a machine and a process. Step 1 is satisfied.
Step2A – Prong 1: Does the Claim Recite a Judicial Exception
Exemplary claim 1 (and similarly claim 6) recites the following abstract concepts that are found to include an enumerated “abstract idea”:
An information processing device comprising:
a display device; and
a processor configured to
receive an input of an identifier capable of identifying a user;
displays on the display device a list of pieces of electronic receipt information associated with the identifier, and
displays, when additional information on benefit granting is added to the electronic receipt information, first display information according to a type of the additional information in association with the electronic receipt information displayed in the list.
[Emphasis added to show the bolded abstract idea being executed by unbolded additional elements that do not meaningfully limit the abstract idea]
This device claim is grouped within the "certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test because the claims involve a series of steps for following rules or instructions to display first display information according to a type of the additional information in association with the electronic receipt information which is a process that is encompassed by the abstract idea of managing personal behavior. See e.g., MPEP 2106.04(a)(2)(II)(C); 2106.05(h). Accordingly, claim 1 (and similarly claim 6) recite an abstract idea.
Step2A – Prong 2: Does the Claim Recite Additional Elements that Integrate the Judicial Exception into a Practical Application
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional elements of the claims such as information processing device, display device and processor merely use a computer as a tool to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, the information processing device, display device and processor perform the steps or functions of following rules or instructions to display first display information according to a type of the additional information in association with the electronic receipt information. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer (or technical elements disclosed at a high level of generality such as information processing device, display device and processor) performing functions of receiving, identifying, displaying and adding that correspond to acts required to carry out the abstract idea (MPEP 2106.05(f) and (h)). Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Step2B: Does the Claim Amount to Significantly More
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional element analysis of Step 2A Prong 2 is equally applied to Step 2B. “Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis.” MPEP 2106.05(d). The courts have recognized the following computer functions as well‐understood, routine, and conventional (“WURC”) functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. Exemplary claim 1 recites the following limitations that the courts have found to be WURC:
Claim 1 includes several limitations relating to receiving or transmitting data over a network (receive an input of an identifier capable of identifying a user; as claimed). See MPEP 2106.05(d)(II) where courts found to be WURC - i. 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); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
Claim 1 includes several limitations relating to storing and retrieving information in memory (displays on the display device a list of pieces of electronic receipt information associated with the identifier …; displays, when additional information on benefit granting is added to the electronic receipt information, first display information according to a type of the additional information in association with the electronic receipt information displayed in the list…; as claimed). See MPEP 2106.05(d)(II) where courts found to be WURC - ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.")
Claim 1 includes several limitations relating to performing repetitive calculations (displays, when additional information on benefit granting is added to the electronic receipt information …; as claimed). See MPEP 2106.05(d)(II) where courts found to be WURC - ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.");
Accordingly, when viewed alone and in ordered combination, these additional elements are not found to recite significantly more than the underlying abstract idea.
Independent claim 6 describes a computer-readable storage media performing the functions of receiving, identifying, displaying and adding also relating to following rules or instructions without additional elements beyond technical elements disclosed at a high level of generality such as a computer-readable storage medium, computer and information processing device that provide significantly more than the abstract idea of following rules or instructions to display first display information according to a type of the additional information in association with the electronic receipt information as noted above regarding claim 1. Therefore, this independent claim is also not patent eligible.
Dependent claims 2-5 further describe the abstract idea of following rules or instructions to display first display information according to a type of the additional information in association with the electronic receipt information. These claims do not include additional elements to perform their respective functions of displaying, adding and granting beyond the technical elements disclosed at a high level of generality such as processor, additional information and as disclosed in independent claim 1 that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, these dependent claims are also not patent eligible. Further, the dependency of these claims on ineligible independent claim 1 also renders dependent claims 2-5 as not patent eligible.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gotanda et al. (US 2020/0134577 A1).
Regarding claim 1 and 6, Gotanda teaches:
An information processing device comprising/ A computer-readable storage medium having stored thereon a program which is executable by a computer, the program causes the computer of an information processing device to function as (See Gotanda ¶ [0028] - an information processing apparatus and a program that may effectively and intuitively perform an operation of a purchaser for confirming a plurality of process categories corresponding to electronic receipt information and [0045] - the electronic receipt correspondence program and the electronic receipt displaying program executed in the portable terminal are stored on a non-transitory computer readable medium such as a CD-ROM, a flexible disk (FD), a CD-R, and a Digital Versatile Disk (DVD), as a file of an installable format or an executable format to be provided):
a display device (See Gotanda ¶ [0029] - an electronic receipt displaying unit that displays a plurality of selectable process categories corresponding to the electronic receipt information received from the electronic receipt receiving unit in a menu on a display unit); and
a processor (See Gotanda ¶ [0043] – central processing unit) configured to
receive an input of an identifier capable of identifying a user (See Gotanda ¶ [0029] - a member correlating unit that correlates a membership code to a user and [0071] - determines whether there is an electronic receipt issuing instruction corresponding to an input of a membership code);
displays on the display device a list of pieces of electronic receipt information associated with the identifier (See Gotanda ¶ [0127] - in addition to the display indicating that the displayed information is the certificate, customer information and the merchandise information of the purchased merchandise [electronic receipt information] and as shown in Fig 18), and
displays, when additional information on benefit granting is added to the electronic receipt information, first display information according to a type of the additional information in association with the electronic receipt information displayed in the list (See Gotanda ¶ [0038] - The certificate button is a button for viewing the electronic receipt information to which a certificate has been added, [0147] - in the display example, a list of information for the merchandise that allows applying (proof of purchase) for the campaign (reward) (or electronic receipt information including information on merchandise that allows applying (proof of purchase) for campaign (reward)) is displayed and as shown in Fig 21 – campaign A and B are shown as “new”).
Regarding claim 2, Gotanda teaches:
The information processing device according to claim 1, wherein
the processor displays the first display information indicating a state related to the benefit granting of the additional information (See Gotanda ¶ [0147] - in the display example, a list of information for the merchandise that allows applying (proof of purchase) for the campaign (reward) (or electronic receipt information including information on merchandise that allows applying [a state related to the benefit granting by example] (proof of purchase) for campaign (reward)) is displayed).
Regarding claim 3, Gotanda teaches:
The information processing device according to claim 2, wherein
the processor displays, as the state related to the benefit granting of the additional information, the first display information indicating whether the state is a state in which the benefit granting by the additional information is executable (See Gotanda ¶ [0147] - in the display example, a list of information for the merchandise that allows applying (proof of purchase) for the campaign (reward) (or electronic receipt information including information on merchandise that allows [is executable] applying [a state related to the benefit granting by example] (proof of purchase) for campaign (reward)) is displayed).
Regarding claim 4, Gotanda teaches:
The information processing device according to claim 1, wherein
the processor displays, when the additional information on the benefit granting is added to the electronic receipt information, second display information indicating a benefit granted by the additional information in association with the electronic receipt information displayed in the list (See Gotanda ¶ [0145-0146] - if it is determined that the user taps and selects the campaign button, the CPU (the electronic receipt displaying unit) of the portable terminal extracts the electronic receipt information in relation to the merchandise that enables applying for the campaign (reward)… the CPU (in particular, the electronic receipt displaying unit) of the portable terminal generates a list of the campaign information from the extracted electronic receipt information (or a list of the electronic receipt information to which the campaign information is added), and displays the generated list of the campaign information (or the list of the electronic receipt information to which the campaign information is added) on the display unit).
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Gotanda et al. (US 2020/0134577 A1) in view of Gotanda et al. (US 2014/0236713 A1), herein after “Gotanda 2014”.
Regarding claim 5, Gotanda teaches:
The information processing device according to claim 4 (See claim 4 above), ...
While Gotanda teaches a system for displaying reward information to a user of a device based on electronic receipt information (Gotanda ¶ [0145-0147]), Gotanda does not explicitly teach that the processor displays the second display information indicating a total value of points granted by the additional information. This is taught by Gotanda 2014 (See Gotanda 2014 ¶ [0121] - the accumulated point display area is an area for displaying the total number of points accumulated in the promotion management server). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the reward information displaying system of Gotanda the use of displaying a total number of points as taught by Gotanda 2014 to easily recognize how frequently the user purchases goods at the stores (Gotanda 2014 ¶ [0096]), thereby increasing the accuracy and efficiency of Gotanda’s reward information displaying system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW S WERONSKI whose telephone number is (571)272-5802. The examiner can normally be reached M-F 8 am - 5 pm EST.
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/MATTHEW S WERONSKI/Examiner, Art Unit 3627
/MICHAEL JARED WALKER/Primary Examiner, Art Unit 3627
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