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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 8, and 13 recite “a networking means in communication with at least one other instance of said kiosk”. As per the “Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications” issued on January 21, 2011 and MPEP 2161.01, the first paragraph of § 112 contains a written description requirement that is separate and distinct from the enablement requirement. To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. The written description requirement of § 112(a) applies to all claims including original claims that are part of the disclosure as filed. Claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function.
Independent claims 1, 8, and 13 recited “a networking means” using functional claim language. The only networking means disclosed in the applicant’s specification which communicate with other kiosks appears to be “networking hardware” or a “networking process”, each of which is broad genus that would encompass any and all possible networking hardware, as well as, any and all possible networking processes. The examiner has been unable to find support for such a broad genus of “networking hardware” and/or “networking process” in the applicant’s disclosure. The applicant’s specification is devoid of a disclosure of a single species of networking hardware used by a kiosk to communicate with another kiosk. Likewise, the applicant’s specification is devoid of a disclosure of a single species of networking processes. While the specification does indicate that such communication can be performed wirelessly, this is neither a disclosure of a specific networking hardware, nor an actual process for networking because it merely describes the way a transmission occurs, and not the process used in performing the networking. Likewise, the specification discloses some species of networks such as a peer-peer network or a client-server network. Once again, this is not a disclosure of a species of networking hardware on the kiosk, or a networking process performed by the kiosk. Without a disclosure of a single specific species of “networking means”, the specification cannot possibly prove to one of ordinary skill in the art that the inventor actually invented an invention which encompasses any and all possible “networking means” as claimed. As such, it is clear that the applicant’s specification does not describe the claimed genus in a manner which proves, to a person of ordinary skill in the art, that the inventor actually invented the claimed genus of invention.
The same is true for the geolocation means in claim 11. The examiner has been unable to find enough species in the applicant disclosure of performing geolocation to prove that the applicant invented an invention which can confirm a user’s presence using any and all mean of geolocation. The neither term geolocation nor the term GPS are even mention in the specification. The closest support is found in paragraph 45 where a Bluetooth or other signal or geofencing can be used to determine the user proximity to the kiosk. However, this paragraph does not state that such signals or geofencing is used to confirm a user’s presence. Instead, it is disclosed as determining the users is in proximity of the kiosk. Additionally, it describes that such signals or geofencing is used but does not disclose how the applicant’s invention uses such things to determine the user is in proximity to the kiosk. As such, it is clear that the applicant’s specification does not describe the claimed genus in a manner which proves, to a person of ordinary skill in the art, that the inventor actually invented the claimed genus of invention.
Dependent claims 2-6, 9-12, and 14-16 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claims 1, 8, and 13 recite “a networking means in communication with at least one other instance of said kiosk”. First, it is impossible to determine the intended metes and bounds of the phrase “at least one other instance of said kiosk”. A kiosk appears to be a physical device that must be located in a defined area. The term “said kiosk” means that the phrase has antecedent basis to the previously recite “a kiosk”. Since, this is a single kiosk, it would not appear for it to be possible for there to be another instance of it, as there can be only one “a kiosk”. Does the applicant intend for the kiosk to somehow communicate with itself using some type of networking means? If not, how does a single device have other instances of itself? Instead, for “a kiosk” to communicate using a networking means, it would appear to require that the networking means of the kiosk being in communication with at least one additional kiosk. Likewise, if the networking means of the kiosk “in communication”, and the additional kiosk is also using the same network, it would appear that the networking means of the kiosk would be in communication with a second networking means of the additional kiosk. As such, it is clear that independent claims 1, 8, and 13 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Dependent claim 3 is also indefinite. According to claim 3, a device called a receiving device is somehow a number (a mobile telephone number). One of ordinary skill in the art would not be able to determine how a device can be a number. While it is possible for a received device to be a mobile phone, and for the mobile phone to have a mobile telephone number associated with it, it does not appear possible for a receiving device to be a mobile phone number. As such, claim 3 is clearly indefinite.
Dependent claims 2-6, 9-12, and 14-16 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
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 1-16 are directed to a system, a method, and a computer program product which would all be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim(s) 1-16 recite(s) the following abstract idea:
defining an area in which a kiosk is located;
establishing communication with at least one other instance of said kiosk;
maintaining/holding/storing a plurality of tokens, wherein the plurality of tokens comprises at least one token which is an item of fungible currency, and at least one token is exchangeable for a specified good or service;
generating a unique code;
transmitting the unique code to a receiving device, wherein said receiving device is a mobile telephone number;
executing a registration and identification/confirmation procedure in which a user enters a unique personal code, wherein the unique personal code comprises a mobile telephone number;
setting a target behavior goal selected from the group consisting of the number of visits per unit time and a target visit duration;
tracking user progress toward the target behavior goal using a variable, wherein the variable is the progression toward a goal defined as a set number of confirmations of a registrant within a defined time period and/or the progression toward a goal defined as a target time elapsed proximal to said kiosk, wherein tracking user progress toward the target behavior goal includes
requiring the user to check in at said kiosk; and
confirming user presence in which user presence is determined by a periodic check-in procedure or a geolocation means
awarding/providing one or more tokens immediately redeemable upon determination that the user has reached said target behavior goal; and
allowing the user to withdraw awarded tokens upon reaching said target behavior goal.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising marketing and 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 because the claim only recites the additional elements of a kiosk comprising an internal storage space, a networking means, a printer, and a user interface for displaying data and receiving user input (e.g. a general-purpose computer with generic computer components).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
establishing communication with at least one other instance of said kiosk (transmitting and/or receiving data);
maintaining/holding/storing a plurality of tokens, wherein the plurality of tokens comprises at least one token which is an item of fungible currency, and at least one token is exchangeable for a specified good or service (storing data);
transmitting the unique code to a receiving device, wherein said receiving device is a mobile telephone number (transmitting data);
awarding/providing one or more tokens immediately redeemable upon determination that the user has reached said target behavior goal (transmitting or storing data); and
allowing the user to withdraw awarded tokens upon reaching said target behavior goal (receiving and transmitting data).
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 processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because 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 a kiosk comprising an internal storage space, a networking means, a printer, and a user interface for displaying data and receiving user input (e.g. a general-purpose computer with generic computer components) 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 (as evidenced from paragraph 29, 31, and 36 of the applicant’s specification); 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. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
establishing communication with at least one other instance of said kiosk (transmitting and/or receiving data);
maintaining/holding/storing a plurality of tokens, wherein the plurality of tokens comprises at least one token which is an item of fungible currency, and at least one token is exchangeable for a specified good or service (storing data);
transmitting the unique code to a receiving device, wherein said receiving device is a mobile telephone number (transmitting data);
awarding/providing one or more tokens immediately redeemable upon determination that the user has reached said target behavior goal (transmitting or storing data); and
allowing the user to withdraw awarded tokens upon reaching said target behavior goal (receiving and transmitting data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-16 are not patent eligible.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4-5, 7-8, 10-13, and 15-16 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sorem (PGPUB: 2016/0343023).
Claim 1: Sorem discloses a system for rewarding target behaviors comprising:
providing a kiosk located within a defined area (Paragraphs 15 and 28: the terminal may be computerized kiosk, it may be a stand-alone kiosk located in a merchant store or it may be integrated into a portion of the merchant store; Paragraph 72: the terminal may be located inside the store, such as near the entrance to the store), said kiosk comprising:
a user interface configured to receive user input (Paragraph 28: the terminal may comprise input and/or output devices; Paragraph 44: the customer may enter a login and PIN at the terminal; the terminal may receive the login information and accordingly determine that the customer logging in must be physically present at the terminal (and store, as the case may be); Paragraph 48: the customer I/O module of the terminal may comprise a keyboard, microphone, mouse, touch-sensitive display, one or more buttons, one or more switches, and/or any other input device);
a networking means in communication with at least one other instance of said kiosk (Paragraphs 8, 28-29, and 43: the kiosk terminal may communicate with other kiosk terminals in the same merchant store or in a different store (or outside the store of elsewhere)); and
an internal storage space adapted to hold a plurality of tokens, in which at least one token is an item of fungible currency; and in which at least one token is exchangeable for a specified good or service (Paragraph 53: the terminal may dispense a gift card having a magnetic strip; Paragraph 68: the output module of the terminal may output physical rewards as well as physical (and electronic) indicia of rewards; the output module of the terminal may output vouchers and gift certificates as rewards, including previously accrued rewards; Paragraph 98: the terminal may output the reward indicia, which may comprise, e.g., a coupon, voucher (e.g., for a free memory card or other product), receipt, or other indicia of the prize, or it may output the actual prize (e.g., cash or a voucher); Paragraphs 23-28 and 34: the terminal may store customer and reward-related information in any of a plurality of database such as an identifier database, account database, reward program database, and other databases).
Claim 4: Sorem discloses the system of claim 1, wherein said kiosk further comprises instructions for tracking a variable. (Paragraphs 54-59: The terminal includes: a transaction module for processing transaction information; a behavior module for obtaining information relating to customer reward-earning behaviors; a frequency module for processing information related to a customer’s visits to a store, determining a frequency of visits tracking reward information corresponding to the frequency, and determining whether and when a customer may earn a reward based on a visit (or number of visits or frequency of visit) to the store (or other behavior); and a rewards module to interrogate whether a customer visit (or frequency), customer transaction, and/or customer behavior has earned or more rewards pursuant to any number of different reward programs; Paragraph 94: reward accrual may be based on frequency, transactions, and/or behaviors)
Claim 5: Sorem discloses the system of claim 4 in which the variable is the progression toward a goal defined as a set number of confirmations of a registrant within a defined time period. (Paragraphs 16 and 73: visit may be recorded by customer swiping a customer rewards card (or otherwise inputting customer identification information) (e.g., a confirmation) at the terminal; the visit may be recorded when the terminal receives customer identification information from a customer identification device (e.g., a confirmation); Paragraphs 97-100: reward programs may include instant win rewards and/or regional instant win rewards where a customer can participate in this program one per day (or another specified number of times in a specified amount of time; to participate the customer may scan or swipe (or enter, read, activate, or otherwise input) their customer identification device at the terminal; Paragraphs 101-102: rewards programs may include visit frequency based rewards where rewards are granted based on the number of times (or frequency at which) a customer visits one or more specific stores or types of stores, or otherwise engage in specific reward-earning behaviors related to the store; this includes a number of time a customer visits the store over a period of time such as a number of required monthly visits)
Claim 7: Sorem discloses the system of claim 5, wherein said kiosk is further configured to provide one or more tokens immediately redeemable upon determination that the user has reached said target behavior goal. (Paragraphs 68-69: output module may output vouchers and gift certificates as rewards. It should be noted that rewards may be output even if the customer did not earn a reward that day; it is possible for customers to claim an already-accrued reward; the customer may request that the terminal print out the gift certificate at the terminal's printer; Paragraphs 97-100: the terminal, when an instant win occurs, may output the reward indicia such as coupon, voucher (e.g., for a free memory card or other product), receipt, or other indicia of the prize, or it may output the actual prize (e.g., cash or a voucher); Paragraphs 101-101: when a customer visits the terminal and inputs their customer identification information, a frequency point, when a visit results in enough frequency points to obtain a reward token the customer can spend the available frequency points to immediately obtain the reward token; Paragraph 111-114: when a customer earns a reward token, such as a coupon, it can be printed out, electronically transferred toward the next purchase in the store, transferred to a point of sale device for immediate purchase, or stored in the customer’s reward account; Paragraphs 49 and 53: other examples of other tokens immediately provided to the customer when a target behavior goal is reached including the printing of a gift certificate and/or dispensing of a gift card)
Claim 8: Sorem discloses a method for facilitating behavior-based rewards, comprising
defining an area and providing a kiosk within said area (Paragraphs 15 and 28: the terminal may be computerized kiosk, it may be a stand-alone kiosk located in a merchant store or it may be integrated into a portion of the merchant store; Paragraph 72: the terminal may be located inside the store, such as near the entrance to the store), said kiosk comprising
a user interface (Paragraph 28: the terminal may comprise input and/or output devices; Paragraph 44: the customer may enter a login and PIN at the terminal; the terminal may receive the login information and accordingly determine that the customer logging in must be physically present at the terminal (and store, as the case may be); Paragraph 48: the customer I/O module of the terminal may comprise a keyboard, microphone, mouse, touch-sensitive display, one or more buttons, one or more switches, and/or any other input device),
a networking means in communication with at least one other instance of said kiosk (Paragraphs 8, 28-29, and 43: the kiosk terminal may communicate with other kiosk terminals in the same merchant store or in a different store (or outside the store of elsewhere)), and
an internal storage space adapted to hold a plurality of tokens, said internal storage space having storing at least one token, in which said token may be either an item of currency or exchangeable for a specified good or service (Paragraph 53: the terminal may dispense a gift card having a magnetic strip; Paragraph 68: the output module of the terminal may output physical rewards as well as physical (and electronic) indicia of rewards; the output module of the terminal may output vouchers and gift certificates as rewards, including previously accrued rewards; Paragraph 98: the terminal may output the reward indicia, which may comprise, e.g., a coupon, voucher (e.g., for a free memory card or other product), receipt, or other indicia of the prize, or it may output the actual prize (e.g., cash or a voucher); Paragraphs 23-28 and 34: the terminal may store customer and reward-related information in any of a plurality of database such as an identifier database, account database, reward program database, and other databases); and
executing, by said kiosk, a registration and identification procedure in which a user enters a unique personal code (Paragraphs 46 and 74: customers may register for one or more rewards programs at the terminal; the customer may enter the registration code at the terminal and then provide registration information, such as the customer's name and address).
Claim 10: Sorem discloses the method of claim 8, further comprising setting a target behavior goal selected from the group consisting of the number of visits per unit time and a target visit duration. (Paragraphs 16 and 73: visit may be recorded by customer swiping a customer rewards card (or otherwise inputting customer identification information) (e.g., a confirmation) at the terminal; the visit may be recorded when the terminal receives customer identification information from a customer identification device (e.g., a confirmation); Paragraphs 97-100: reward programs may include instant win rewards and/or regional instant win rewards where a customer can participate in this program one per day (or another specified number of times in a specified amount of time; to participate the customer may scan or swipe (or enter, read, activate, or otherwise input) their customer identification device at the terminal; Paragraphs 101-102: rewards programs may include visit frequency based rewards where rewards are granted based on the number of times (or frequency at which) a customer visits one or more specific stores or types of stores, or otherwise engage in specific reward-earning behaviors related to the store; this includes a number of time a customer visits the store over a period of time such as a number of required monthly visits)
Claim 11: Sorem discloses the method of claim 10, further comprising tracking user progress toward said target behavior goal, including: requiring the user to check in at said kiosk; and confirming user presence in which user presence is determined by a periodic check-in procedure or a geolocation means. (Paragraphs 16 and 73: visit may be recorded by customer swiping a customer rewards card (or otherwise inputting customer identification information) (e.g., a confirmation) at the terminal; the visit may be recorded when the terminal receives customer identification information from a customer identification device (e.g., a confirmation); Paragraphs 97-100: reward programs may include instant win rewards and/or regional instant win rewards where a customer can participate in this program one per day (or another specified number of times in a specified amount of time; to participate the customer may scan or swipe (or enter, read, activate, or otherwise input) their customer identification device at the terminal; Paragraphs 101-102: rewards programs may include visit frequency based rewards where rewards are granted based on the number of times (or frequency at which) a customer visits one or more specific stores or types of stores, or otherwise engage in specific reward-earning behaviors related to the store; this includes a number of time a customer visits the store over a period of time such as a number of required monthly visits; Paragraphs 24, 34-37, 41-42, 44, 60, and 85: the customer identification module, identifier database, and identifier I/O module of the terminal confirms that the present customer’s input identification information matches identification information in the database )
Claim 12: Sorem discloses the method of claim 11, further comprising allowing the user to withdraw awarded tokens upon reaching said target behavior goal. (Paragraphs 68-69: output module may output vouchers and gift certificates as rewards. It should be noted that rewards may be output even if the customer did not earn a reward that day; it is possible for customers to claim an already-accrued reward; the customer may request that the terminal print out the gift certificate at the terminal's printer; Paragraphs 97-100: the terminal, when an instant win occurs, may output the reward indicia such as coupon, voucher (e.g., for a free memory card or other product), receipt, or other indicia of the prize, or it may output the actual prize (e.g., cash or a voucher); Paragraphs 101-101: when a customer visits the terminal and inputs their customer identification information, a frequency point, when a visit results in enough frequency points to obtain a reward token the customer can spend the available frequency points to immediately obtain the reward token; Paragraph 111-114: when a customer earns a reward token, such as a coupon, it can be printed out, electronically transferred toward the next purchase in the store, transferred to a point of sale device for immediate purchase, or stored in the customer’s reward account; Paragraphs 49 and 53: other examples of other tokens immediately provided to the customer when a target behavior goal is reached including the printing of a gift certificate and/or dispensing of a gift card; Paragraphs 89-92: when a customer reaches the target goal behavior, the reward is granted and the customer may request the terminal to output the reward, wherein the terminal can output an indicia of the reward such as a coupon, or the reward itself including the outputting of cash)
Claim 13: Sorem discloses a non-transitory computer-readable medium comprising instructions that, when executed by one or more processors, cause the kiosk to perform a method comprising:
defining an area in which the kiosk is located (Paragraphs 15 and 28: the terminal may be computerized kiosk, it may be a stand-alone kiosk located in a merchant store or it may be integrated into a portion of the merchant store; Paragraph 72: the terminal may be located inside the store, such as near the entrance to the store);
providing a user interface configured to receive user input (Paragraph 28: the terminal may comprise input and/or output devices; Paragraph 44: the customer may enter a login and PIN at the terminal; the terminal may receive the login information and accordingly determine that the customer logging in must be physically present at the terminal (and store, as the case may be); Paragraph 48: the customer I/O module of the terminal may comprise a keyboard, microphone, mouse, touch-sensitive display, one or more buttons, one or more switches, and/or any other input device);
establishing communications between a networking means of the kiosk and at least one other instance of a kiosk; (Paragraphs 8, 28-29, and 43: the kiosk terminal may communicate with other kiosk terminals in the same merchant store or in a different store (or outside the store of elsewhere))
maintaining, within an internal storage space, a plurality of tokens in which each token is either currency or is exchangeable for a good or service (Paragraph 53: the terminal may dispense a gift card having a magnetic strip; Paragraph 68: the output module of the terminal may output physical rewards as well as physical (and electronic) indicia of rewards; the output module of the terminal may output vouchers and gift certificates as rewards, including previously accrued rewards; Paragraph 98: the terminal may output the reward indicia, which may comprise, e.g., a coupon, voucher (e.g., for a free memory card or other product), receipt, or other indicia of the prize, or it may output the actual prize (e.g., cash or a voucher); Paragraphs 23-28 and 34: the terminal may store customer and reward-related information in any of a plurality of database such as an identifier database, account database, reward program database, and other databases);
executing a registration procedure in which a user enters a unique personal code (Paragraphs 46 and 74: customers may register for one or more rewards programs at the terminal; the customer may enter the registration code at the terminal and then provide registration information, such as the customer's name and address); and
tracking user progress toward a target behavior goal (Paragraph 15: the terminal may track customer attendance to the store, signal the earning of a reward, monitor customer behaviors, dispense rewards and reward vouchers, and communicate customer reward and account data; Paragraph 56-59: a frequency module of the reward terminal information tracks reward information corresponding to frequency and determines whether and when a customer may earn a reward based on a visit (or number of visits or frequency of visit) to the store (or other behavior); data from the frequency module of the terminal, transaction module of the terminal, and behavior module of the terminal may be passed to the rewards module of the terminal to determine whether a customer visit (or frequency), customer transaction, and/or customer behavior has earned one or more rewards pursuant to any number of different reward programs; reward module of the terminal may also determine reward redemption data, reward alert data, and reward account data; for instance, the reward module may determine how many un-redeemed reward points remain in a customer's account; Paragraph 72: reward-earning behaviors may be monitored and tracked at a terminal).
Claim 15: Sorem discloses the computer-readable medium of claim 13, wherein the target behavior goal comprises a number of visits per unit time or the duration of a visit. (Paragraphs 16 and 73: visit may be recorded by customer swiping a customer rewards card (or otherwise inputting customer identification information) (e.g., a confirmation) at the terminal; the visit may be recorded when the terminal receives customer identification information from a customer identification device (e.g., a confirmation); Paragraphs 97-100: reward programs may include instant win rewards and/or regional instant win rewards where a customer can participate in this program one per day (or another specified number of times in a specified amount of time; to participate the customer may scan or swipe (or enter, read, activate, or otherwise input) their customer identification device at the terminal; Paragraphs 101-102: rewards programs may include visit frequency based rewards where rewards are granted based on the number of times (or frequency at which) a customer visits one or more specific stores or types of stores, or otherwise engage in specific reward-earning behaviors related to the store; this includes a number of time a customer visits the store over a period of time such as a number of required monthly visits)
Claim 16: Sorem discloses the computer-readable medium of claim 15, wherein the instructions further cause the kiosk to award the user with an immediately redeemable award upon determining that the user has reached the target behavior goal. (Paragraphs 68-69: output module may output vouchers and gift certificates as rewards. It should be noted that rewards may be output even if the customer did not earn a reward that day; it is possible for customers to claim an already-accrued reward; the customer may request that the terminal print out the gift certificate at the terminal's printer; Paragraphs 97-100: the terminal, when an instant win occurs, may output the reward indicia such as coupon, voucher (e.g., for a free memory card or other product), receipt, or other indicia of the prize, or it may output the actual prize (e.g., cash or a voucher); Paragraphs 101-101: when a customer visits the terminal and inputs their customer identification information, a frequency point, when a visit results in enough frequency points to obtain a reward token the customer can spend the available frequency points to immediately obtain the reward token; Paragraph 111-114: when a customer earns a reward token, such as a coupon, it can be printed out, electronically transferred toward the next purchase in the store, transferred to a point of sale device for immediate purchase, or stored in the customer’s reward account; Paragraphs 49 and 53: other examples of other tokens immediately provided to the customer when a target behavior goal is reached including the printing of a gift certificate and/or dispensing of a gift card)
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) 9 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sorem (PGPUB: 2016/0343023) in view of Yahn et al. (PGPUB: 2013/0204688)
Claims 9 and 14: The method of claim 8, and the computer-readable medium of claim 13, wherein said unique personal code comprises a mobile telephone number.
Sorem discloses the method of claim 8, and the computer-readable medium of claim 13 in the cited sections above.
While Sorem discloses the ability to received a phone number from mobile phone in at least paragraphs 36-38 and 40, does not specifically state that the unique personal code comprises the mobile telephone number.
However, the analogous art of Yhan discloses that it is known for a unique personal code, used for identifying a customer to a kiosk, to comprise a mobile telephone number in at least paragraph 25, 33 and 41.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify the invention of Sorem to include the mobile telephone number of Yahn.
The rationale for doing so is that it merely requires the simple substitution of one known element for another to obtain predictable results. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the differences between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself-that is the substitution of the unique personal code comprise a mobile telephone number of Yhan for the unique personal code of Sorem. Thus, the simple substitution of one known element for another producing a predictable result renders the claims obvious.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sorem (PGPUB: 2016/0343023) in view of Miller (PGPUB: 2021/0225132)
Claims 2-3. The system of claim 1, wherein said kiosk is configured to execute a method of registering and confirming a user, said method comprising generating a unique code and transmitting the unique code to a receiving device, wherein said receiving device is a mobile telephone number.
Sorem discloses the system of claim 1, wherein said kiosk is configured to execute a method of registering and confirming a user by transmitting data to and/or receiving data from a receiving device that is a mobile phone, including transmitting a mobile phone number in at least Paragraphs 36-38, 40, 46 and 74..
Sorem does not disclose that it generates the unique code and then transmits it to the receiving device.
However, the analogous art of Miller discloses that it is known for a kiosk to generate a unique code and transmit it to a devices as part of the registration and confirmation process in at least paragraphs 23-26, 28, and 30.
It would have been obvious to one of ordinary skill in the art to modify the registration and confirmation process in invention of Sorem to include generating the unique code and transmitting it to the receiving device as disclosed by Miller.
The rationale for doing so is that it merely requires combining prior art elements according to known methods to yield predictable results. It can be seen that each element is taught in either Sorem or Miller. Generating the unique code and transmitting the using code to the receiving device as disclosed by Miller does not change nor effect the normal functions of the terminal as taught by Sorem. Since the functionalities of the elements in Sorem and Miller do not interfere with each other the results of the combination would be predictable.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sorem (PGPUB: 2016/0343023) in view of Gupta et al. (PGPUB: 2010/0241496)
Claim 6: The system of claim 4 in which the variable is the progression toward a goal defined as a target time elapsed proximal to said kiosk.
Sorem discloses the system of claim 4 in which the variable is a progression toward a goal that must be completed over a period time while the user is proximate to a kiosk such as registering a recently purchased product at the terminal, completing a survey, otherwise transacting business, or otherwise engaging in any behavior associated with reward criteria in at least paragraphs 55, 86, and 89, and that while many of the embodiments disclosed herein have been described with reference to specific rewards programs having defined time periods or frequencies, the principles herein are equally applicable to the any type of rewards program having any timing features in at least paragraph 116.
Sorem does not specifically that the variable is the progression toward a goal defined as a target time elapsed proximal to said kiosk.
However, the analogous art of Gupta discloses that it is known for a behavior variable in a reward program to include the progression toward a goal defined as a target time elapsed proximal to a specific location or device in at least paragraphs 16-18, 27-28, 40, and 45.
It would have been obvious to one of ordinary skill in the art to modify the invention of Sorem to include reward programs with variables defined as target time proximal to a specific location or device (e.g., kiosk) as disclosed by Gupta.
The rationale for doing so is that it would be obvious to try. Sorem discloses that the invention can be used with rewards program that have defined time periods or frequencies. As there are a limited number of predictable time period based variables used in rewards programs and a variable defined as target time proximal to a kiosk is one such predictable time period based variable, one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fong et al. (PGPUB: 2023/0104941) which discloses a kiosk comprising: a user interface configured to receive user input; a networking means in communication with at least one other instance of said kiosk; and an internal storage space adapted to hold a plurality of tokens; in which at least one token is an item of fungible currency; and in which at least one token is exchangeable for a specified good or service.
Pharris (PGPUB: 2012/0047070) which also discloses a kiosk comprising: a user interface configured to receive user input; a networking means in communication with at least one other instance of said kiosk; and an internal storage space adapted to hold a plurality of tokens.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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/John Van Bramer/Primary Examiner, Art Unit 3622
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