DETAILED ACTION
This Non-Final Office action is in response to Applicant’s RCE on 12/08/2025. Claims 1-16 are pending. The effective filing date of the claimed invention is 07/27/2006.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Exemplary claim 1 (and similarly claims 11 and 15) recites “determining, based only on receipt of the purchase price, an indication of an article being purchased, and the identifier, by the one or more processors. . . .” The underlining showing the language lacking of written description. For this exclusionary negative limitation (i.e. “based only on. . . .”, which excludes basing the determination on everything except receipt of the “purchase price, an indication of an article being purchased, and the identifier,” Applicant has support for the following at [0072]:
[0072] Consumers may purchase goods at the retail partner location 320using gift cards via swiping their universal transaction identifier 120 (in FIG. 1) at one of the POS terminals 314a-d. The POS terminal 314a-d may be equipped with a card reader, such as a credit card reader, for sensing the information on the universal transaction identifier. In a transaction, the consumer may offer the universal transaction identifier to the salesperson at the retail partner location 320. The universal transaction identifier may be read by the card reader at the POS terminal 314a-d to determine the appropriate customer account. The identifier is communicated, along with the purchase price of the article being purchased and any other relevant data (e.g. an identifier for the article being purchased), to the host controller 312, which communicates the universal transaction identifier and purchase price to the enterprise infrastructure 310.
[0072] explicitly states that the 1) identifier is sent, 2) purchase price is sent, and 3) any other relevant data is sent. There is no explicit support for this negative limitation as [0072\] specifically leaves it open to also “any other relevant data sent.” This may include an identication of an article being purchased, and can include any other information. This does not provide support for where the determination is performed “only on” purchase price, indication of article, and the identifier. Accordingly, there is a lack of written description for this limitation. Appropriate correction is required. Applicant is required to remove “based only on” as there is no support in Specification for this negative limitation.
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 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (i.e. abstract idea).
Step 1 – Claims 1-10 are process claims; claims 11-14 are system claims; and claims 15-16 are non-transitory CRM claims. Accordingly, step 1 is satisfied.
Step 2A, Prong 1 – Claim 1 (and similarly claims 11 and 15) recites the abstract idea of a method of processing a payment transaction, 1:
receiving, (e.g. MPEP 2106.04(a)(2)(II)(A) certain method of organizing human activity such as fundamental economic principles or practices, commercial or legal practices; mental process – MPEP 2106.04(a)(2)(III)(C) An example of a case identifying a mental process performed in a computer environment as an abstract idea is Symantec Corp., 838 F.3d at 1316-18, 120 USPQ2d at 1360. In this case, the Federal Circuit relied upon the specification when explaining that the claimed electronic post office, which recited limitations describing how the system would receive, screen and distribute email on a computer network, was analogous to how a person decides whether to read or dispose of a particular piece of mail and that “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper”. 838 F.3d at 1318, 120 USPQ2d at 1360. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089; the examiner finds that receiving a purchase request falls at least under the abstract idea of a fundamental economic practice as this is common practice in transactions);
determining, based only on receipt of the purchase price, indication of item being purchased, and the identifier(see MPEP 2106.04(a)(2)(III)(C)(3) mental process can be performed using mind and pen and paper - 3. Using a computer as a tool to perform a mental process. An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders; see also MPEP 2106.04(a)(2)(II)(C) Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015). The patentee in this case claimed methods comprising storing user-selected pre-set limits on spending in a database, and when one of the limits is reached, communicating. . . .);
identifying to the consumer(see e.g. MPEP 2106.04(a)(2)(III)(A) In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: a claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind, In re Brown, 645 Fed. App'x 1014, 1016-17 (Fed. Cir. 2016) (non-precedential); MPEP 2106.04(a)(2)(II)(fundamental economic practice of identifying payment account(s) for a user);
receiving (see MPEP 2106.04(a)(2)(II) - 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, and business relations) using available funds to pay for a transaction is a fundamental economic practice); and,
authorizing (see MPEP 2106.04(a)(2) 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, and business relations); 3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III)).
Accordingly, when viewed alone and in ordered combination, claim 1 (and similarly claims 11 and 15) recites abstract idea.
Step 2A, Prong 2 – Claim 1 (and similarly claims 11 and 15) does not integrate the underlying abstract idea with practical application.
Claim 1 recites the potential additional limitations of 1) where the abstract idea is “performed by an enterprise infrastructure comprising one or more processors and non-transitory computer readable memory storing instructions, the one or more processors executing the executable instructions to perform the method. . . .”; 2) wherein the identifier is in physical form; 3) storing accounts in the enterprise infrastructure wherein in storage in the enterprise infrastructure is by an enterprise providing party; and 4) authorizing payment. In general, these additional limitations are recited at a very high level of generality and act as tools in an “apply it” manner to implement the underlying abstract idea.
In particular, for 1) the enterprise infrastructure with processors and instructions, as mentioned above, this is recited as adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)). MPEP 2106.05(f) – mere instructions to apply an exception - Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”).
For 2) the amendment of “wherein the identifier is in physical form” is simply indicating that somewhere the identifier is in physical form. The examiner maintains that this is abstract idea as when an account number is written down with pen and paper the identifier of that account is technically in “physical” form. The examiner notes that the claim simply recites receiving a consumer’s purchase request and the identifier, where the identifier could easily be in verbal form and/or physical form. The claim does not require that the user hands a physical card to the enterprise infrastructure, if that is what Applicant’s intent is.
For 3) this is simply a database that stores data, and storage is provided by a remote entity. See MPE 2106.04(a)(2)(II)(B) An example of a claim reciting business relations is found in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The business relation at issue in Credit Acceptance is the relationship between a customer and dealer when processing a credit application to purchase a vehicle. The patentee claimed a “system for maintaining a database of information about the items in a dealer’s inventory, obtaining financial information about a customer from a user, combining these two sources of information to create a financing package for each of the inventoried items, and presenting the financing packages to the user.” 859 F.3d at 1054, 123 USPQ2d at 1108. The Federal Circuit described the claims as directed to the abstract idea of “processing an application for financing a loan” and found “no meaningful distinction between this type of financial industry practice” and the concept of intermediated settlement in Alice or the hedging concept in Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108.
For 4) authorizing a payment is abstract idea, see MPEP 2106.04(a)(2)(II)(A) fundamental economic practice v. local processing of payments for remotely purchased goods, Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017).
Accordingly, when viewed alone and in ordered combination, the examiner finds that claim 1 (and similarly claims 11 and 15) is directed to abstract idea.
Step 2B - Claim 1 (and similarly claims 11 and 15) do not recite significantly more. Claim 1 recites the potential additional elements of 1) where the abstract idea is “performed by an enterprise infrastructure comprising one or more processors and non-transitory computer readable memory storing instructions, the one or more processors executing the executable instructions to perform the method. . . .”; 2) wherein the identifier is in physical form; 3) a single database of the enterprise infrastructure; 4) authorizing payment. In general, these additional elements are recited at a very high level of generality and act as tools in an “apply it” manner to implement the underlying abstract idea. In particular, for the 1) enterprise infrastructure with processors and instructions, as mentioned above, this is recited as i. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)). See MPEP 2106.05. MPEP 2106.05(f) – mere instructions to apply an exception - Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”). For 2) the amendment of “wherein the identifier is in physical form” this is simply indicating that somewhere the identifier is in physical form. The examiner maintains that this is abstract idea as when an account number is written down with pen and paper the identifier of that account is technically in “physical” form. The examiner notes that the claim simply recites receiving a consumer’s purchase request and the identifier, where the identifier could easily be in verbal form and physical form. The claim does not require that the user hands a physical card to the enterprise infrastructure, if that is what Applicant’s intent is. For 3) this is simply a database that stores data and wherein a remote entity provides storage. See MPE 2106.04(a)(2)(II)(B) An example of a claim reciting business relations is found in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The business relation at issue in Credit Acceptance is the relationship between a customer and dealer when processing a credit application to purchase a vehicle. The patentee claimed a “system for maintaining a database of information about the items in a dealer’s inventory, obtaining financial information about a customer from a user, combining these two sources of information to create a financing package for each of the inventoried items, and presenting the financing packages to the user.” 859 F.3d at 1054, 123 USPQ2d at 1108. The Federal Circuit described the claims as directed to the abstract idea of “processing an application for financing a loan” and found “no meaningful distinction between this type of financial industry practice” and the concept of intermediated settlement in Alice or the hedging concept in Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108; see also MPEP 2106.05(f)(1) Other examples where the courts have found the additional elements to be mere instructions to apply an exception, because they recite no more than an idea of a solution or outcome include: i. Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co., 850 F.3d 1315, 1331, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017). For 4) authorizing a payment is abstract idea, see MPEP 2106.04(a)(2)(II)(A) fundamental economic practice v. local processing of payments for remotely purchased goods, Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017). Accordingly, when viewed alone and in ordered combination, the examiner finds that claim 1 (and similarly claims 11 and 15) is directed to abstract idea.
While not required, the examiner refers to MPEP 2106.05(d). 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. If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility. In the present claims, the examiner finds the latter. See MPEP 2106.05(d)(II) Because examiners should rely on what the courts have recognized, or those of ordinary skill in the art would recognize, as elements that describe well‐understood, routine activities, the following section provides examples of elements that have been recognized by the courts as well-understood, routine, conventional activity in particular fields. It should be noted, however, that many of these examples failed to satisfy other considerations (e.g., because they were recited at a high level of generality and thus were mere instructions to apply an exception, or were insignificant extra-solution activity). Thus, examiners should carefully analyze additional elements in a claim with respect to all relevant Step 2B considerations, including this consideration, before making a conclusion as to whether they amount to an inventive concept.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
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));
iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
Many of the claim limtiations relate to these computer functions that the courts have found to be well-understood, routine, and conventional. Accordingly, this is a factor under Step 2B that weighs against the claims being found to be eligible.
Dependent Claims – Claim 2 recites more abstract idea that is implemented using the enterprise infrastructure in “apply it” manner. See MPEP 2106.04(a)(2)(II)(C) - An example of a claim reciting social activities is Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 126 USPQ2d 1498 (Fed. Cir. 2018). The social activity at issue in Voter Verified was voting. The patentee claimed “[a] method for voting providing for self-verification of a ballot comprising the steps of” presenting an election ballot for voting, accepting input of the votes, storing the votes, printing out the votes, comparing the printed votes to votes stored in the computer, and determining whether the printed ballot is acceptable. 887 F.3d at 1384-85, 126 USPQ2d at 1503-04. The Federal Circuit found that the claims were directed to the abstract idea of “voting, verifying the vote, and submitting the vote for tabulation”, which is a “fundamental activity that forms the basis of our democracy” and has been performed by humans for hundreds of years. 887 F.3d at 1385-86, 126 USPQ2d at 1504-05. Claim 3 recites accessing data using an identifier, which is abstract idea. See MPEP 2106.04(a)(2)(II)(B) - An example of a claim reciting advertising is found in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). The patentee in Ultramercial claimed an eleven-step method for displaying an advertisement (ad) in exchange for access to copyrighted media, comprising steps of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad. 772 F.3d. at 715, 112 USPQ2d at 1754. The Federal Circuit determined that the "combination of steps recites an abstraction—an idea, having no particular concrete or tangible form" and thus was directed to an abstract idea, which the court described as "using advertising as an exchange or currency." Id. Claim 4 recites the specifics of the identifier being on a card (Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).) and receiving data from POS terminal (abstract idea performed on POS terminal additional element in “apply it” manner). Claim 5 recites where the identifier is a telephone number, further showing the mental process of the a telephone number identifier that can be written with pen and paper in the mental process category. Claim 6 further specifying where the identifier (such as a telephone number) can be provided to multiple retailers, where this is more of the abstract idea of commercial or legal interactions at MPEP 2106.04(a)(2)(II)(B). Claim 7 recites updating accounts and the like, which is abstract idea as shown in MPEP 2106.04(a)(2)(B) - Another example of a claim reciting social activities is Interval Licensing LLC, v. AOL, Inc., 896 F.3d 1335, 127 USPQ2d 1553 (Fed. Cir. 2018). The social activity at issue was the social activity of “’providing information to a person without interfering with the person’s primary activity.’” 896 F.3d at 1344, 127 USPQ2d 1553 (citing Interval Licensing LLC v. AOL, Inc., 193 F. Supp.3d 1184, 1188 (W.D. 2014)). The patentee claimed an attention manager for acquiring content from an information source, controlling the timing of the display of acquired content, displaying the content, and acquiring an updated version of the previously-acquired content when the information source updates its content. 896 F.3d at 1339-40, 127 USPQ2d at 1555. The Federal Circuit concluded that “[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea,” observing that the district court “pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.” 896 F.3d at 1344-45, 127 USPQ2d at 1559. Claim 8 recites reducing a balance accordingly, where this is done via “apply it” of the enterprise infrastructure, and the reducing of the balance is done through mathematical concept (MPEP 2106.04(a)(2)(I)) abstract idea. Claim 9 recites in response to a trigger causing the payment transaction to be processed and recorded (for the automation aspect, see MPEP 2106.05(a)(I) Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential); payment processing is abstract idea MPEP 2106.04(a)(2)(II)(A) Other examples of "fundamental economic principles or practices" include: v. local processing of payments for remotely purchased goods, Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017)). Claim 10 recites tracking data which is abstract idea (MPEP 2106.04(a)(2)(II)(C) C. Managing Personal Behavior or Relationships or Interactions Between People The sub-grouping “managing personal behavior or relationships or interactions between people” include social activities, teaching, and following rules or instructions. An example of a claim reciting managing personal behavior is Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015). The patentee in this case claimed methods comprising storing user-selected pre-set limits on spending in a database, and when one of the limits is reached, communicating a notification to the user via a device. 792 F.3d. at 1367, 115 USPQ2d at 1639-40. The Federal Circuit determined that the claims were directed to the abstract idea of “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)”, which “is not meaningfully different from the ideas found to be abstract in other cases before the Supreme Court and our court involving methods of organizing human activity.” 792 F.3d. at 1367-68, 115 USPQ2d at 1640). Claim 12 recites the addition of a payment gateway, where appears to just add the abstract idea of functionality relating to payment See MPEP 2106.04(a)(2)(II)(A) - v. local processing of payments for remotely purchased goods, Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017), see also automation of a manual activity and insignificant extra-solution activity. Claim 13 further recites the specifics of the account that it can include a credit card account, gift card account, or the like, where this is akin to insignificant extra solution activity as described in MPEP 2106.05(g). Claim 14 recites where the processor(s) are able to transmit data to the retailer, where the abstract idea of communicating data is being performed in “apply it" many by the processor(s). See MPEP 2106.05(II) C. Managing Personal Behavior or Relationships or Interactions Between People The sub-grouping “managing personal behavior or relationships or interactions between people” include social activities, teaching, and following rules or instructions. An example of a claim reciting managing personal behavior is Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015). The patentee in this case claimed methods comprising storing user-selected pre-set limits on spending in a database, and when one of the limits is reached, communicating a notification to the user via a device. 792 F.3d. at 1367, 115 USPQ2d at 1639-40. The Federal Circuit determined that the claims were directed to the abstract idea of “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)”, which “is not meaningfully different from the ideas found to be abstract in other cases before the Supreme Court and our court involving methods of organizing human activity.” 792 F.3d. at 1367-68, 115 USPQ2d at 1640. Accordingly, claims 1-16 are found to be directed to abstract idea.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 1-16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Pat. No. 6,886,741 to Salveson (“Salveson”) in view of U.S. Pat. Pub. No. 2006/0081702 to Nandakumar (“Nandakumar”).
With regard to claims 1, 11, 15, and 16, Salveson discloses the claimed method of processing a payment transaction performed by an enterprise infrastructure comprising one or more processors and non-transitory computer readable memory storing executable instructions, the one or more processors executing the executable instructions to cause the enterprise infrastructure to perform the method (see e.g. abstract, “An all-purpose transaction system using a universal card is disclosed herein.” And where “The universal card allows a consumer/cardholder to conduct various types of transactions using a single card that has a single, unique, arbitrary identification number.”; see Fig. 1, 20, where the examiner has interpreted the transaction card processing center (TCPC) as reading on the claimed “enterprise infrastructure”; see col. 3, ln. 60-61, where the universal card can be used for “retail transactions") comprising steps of:
receiving, by the one or more processors of the enterprise infrastructure, a consumer’s purchase request from the retailer (see Fig. 4, 120, “Receive transaction request from POS terminal.“ where the POS terminal is the claimed “retailer”), said consumer’s purchase request comprising a purchase price and an identifier associated with a plurality of accounts (see Fig. 4 and col. 9, ln. 52 – col. 10, ln. 3 and col. 10, ln. 10-41, where the TCPC (e.g. enterprise infrastructure) receives the transaction request from the POS terminal, where the request includes e.g. a transaction amount and an account identification; see col. 2, ln. 1-10 for plurality of accounts available from “the card” - For example, a consumer/cardholder may use the card to make purchases charged to one or more of the cardholder's credit card accounts, one or more bank accounts (e.g., debit card transactions associated with an account, such as a checking or savings account) and/or one or more vendor charge accounts including his/her current vendor accounts.; see col. 2, ln. 17-21, where the customer selects a payment method to use for the transaction) wherein the identifier is in physical form (see col. 2, ln. 9-16 printed on the card, thereby found to be in physical form);
determining, based only on receipt of the purchase price and the identifier and other identifiers, that at least one account associated with the identifier has a balance associated with the retailer to cover the payment, [wherein the determination is performed by the enterprise infrastructure through a plurality of network connections to service providers maintaining said plurality of accounts] (see e.g. col. 2, ln. 20-60, where the TCPC receives the purchase request from the vendor/POS terminal/retailer with identifier and transaction amount (and more “if required” same as Applicant’s Specification disclosure at [0072]), and then the TCPC “determining an authorization status based on whether there are sufficient funds to effectuate the purchase for the transaction amount using the transaction payment method."; see e.g. col. 5, ln. 55—col. 6, ln. 24, where the TCPC connects with various service providers through the network connections) upon a choice of the consumer during the transaction (the consumer has chosen to use the system, and to continue using the system during the transaction), by the one or more processors of the enterprise infrastructure, from the plurality of accounts associated with the identifier [and a consumer account maintained by the enterprise infrastructure] (see Fig. 6 and col. 1, ln. 55—col. 2, ln. 16 describing universal card with multiple accounts associated therewith) and wherein the plurality of accounts are stored in the enterprise infrastructure by an enterprise (see e.g. col. 5, ln. 40-55 where the user has access to credit card accounts, debit card accounts, etc. from the universal card system, and see col. 5, ln. 55-62 for central file in database that stored information on accounts; see e.g. col. 6, ln. 12-23);
identifying to a consumer/user, by the one or more processors of the enterprise infrastructure, each of the plurality of accounts comprising the balance associated with the retailer for the payment, wherein the consumer initiated the consumer’s purchase request (see e.g. col. 2, ln. 1-22; col. 7, ln. 30-50, where the system identifies at least one account to the user, and the user selects one of the identified accounts);
receiving, by the one or more processors of the enterprise infrastructure, subsequent to the identifying, an indication that the consumer desires to use at least a portion of the balance for the payment (see col. 2, ln. 1-22 and col. 7, ln. 30-50 “If the cardholder has more than one [identified] account with cash deposits then the cardholder selects[(an indication)] which of the accounts with cash deposits to use for the transaction. The chosen account is then accessed. The system responds by sending a status indicating whether the desired amount of funds is available in the selected account. If the funds are available, the system completes the transaction by transferring the amount of funds from the cardholder's selected account to the vendor/server's account.”);
receiving, at the enterprise infrastructure, confirmation to use the balance associated with the retailer to cover the payment (see e.g. col. 8, ln. 10-33, where this process can be performed at the TCPC, and where the TCPC receives confirmation when the user selects the account, the account “associated with a retailer” as the account can be “a charge account that the cardholder has with the vendor or an ‘in-house’ account that the cardholder has with the vendor.”);
authorizing, by the one or more processors of the enterprise infrastructure, the payment from the at least one account of the plurality of accounts based on the identifying and the indication (see e.g. col. 2, ln. 28-33; col. 8, ln. 10-33; see col. 2, ln. 28-33, “A purchase authorization status is received from the TCPC. If the purchase authorization status is an authorized status, the purchase transaction for the cardholder is completed using the transaction payment method.” (emphasis added), where “the transaction payment method” is the account that was selected by the cardholder and identified by the enterprise).
Salveson does not disclose, “wherein, upon a choice of a consumer, the balance is associated with at least one of a plurality of gift cards of the retailer.” However, this was common at the time of invention. The examiner refers to exemplary reference Nandakumar at e.g. abstract, [0003], [0005], [0006], [0018-20] to show that it would have been obvious to one of ordinary skill in the transaction art to include the ability to have several cards linked to a universal card, where the several cards can include “gift cards” from multiple merchants, where this is beneficial so that transaction processing can proceed as it normally would the only difference is that the user does not have to carry each and every card in their physical wallet as the universal card can have several gift cards and other cards linked to it for payment processing at any particular merchant. See Nandakumar at portions cited. See Nandakumar Abstract “Once a universal card provider issues such a linked card to a consumer, other data pertinent to traditional consumer-type cards is linked to the universal linked card, which is then presented by the consumer in place of the various traditional media. The merchant or organization presented with the linked card retrieves from one of the databases the necessary other data for completion of the consumer's desired transaction and completes the transaction as normal.” Again, and similar to the primary reference of Salveson, the consumer has a choice to use the system or not, as shown here in the abstract.
Therefore, it would have been obvious to one of ordinary skill in the transaction art before the effective filing date of the claimed invention to modify Salveson’s universal card with the ability to link multiple gift cards and any other amount of cards to the universal card, as taught by Nandakumar, where the motivation is “Once a universal card provider issues such a linked card to a consumer, other data pertinent to traditional consumer-type cards is linked to the universal linked card, which is then presented by the consumer is presented in place of the various traditional media. The merchant or organization presented with the linked card retrieves from one of the databases the necessary other data for completion of the consumer's desired transaction and completes the transaction as normal.”
With regard to claims 2 and 3, Salveson further discloses authenticating, by the one or more processors of the enterprise infrastructure, a consumer using the universal transaction identifier (see col. 9, ln. 3-20, where the universal card is swiped and an associated PIN is received, where both of these are used to verify the identity and authenticity of the cardholder; col. 3, ln. 30-40 and col. 4, ln. 1-23 where multiple accounts can be accessed through the universal card).
With regard to claim 4, Salveson further discloses where the universal transaction identifier is a card and the receiving is from a point of sale terminal (see Fig. 4).
With regard to claim 5, Salveson further discloses where the universal transaction identifier is a telephone number associated with a consumer and one or more accounts (see col. 6, ln. 25-43).
With regard to claim 6, Salveson further discloses where the universal transaction identifier is configured to be accepted by more than one retailer, service provider or manufacturer (see col. 4, ln. 1-23).
With regard to claim 7, Salveson further discloses where the universal transaction identifier is associated with at least one loyalty account and wherein the consumer's loyalty account is updated to reflect loyalty account activity associated with the payment (see col. 2, ln. 1-10, where the examiner interprets the “one or more vendor charge accounts” as loyalty accounts).
With regard to claim 8, Salveson further discloses where after determining at least one account associated with the identifier, receiving from a consumer, information indicating the consumer chooses to use the balance for the payment; and causing the account balance to be reduced accordingly (see e.g. Fig. 8, where this causing of debiting is performed after identifying, receiving, as claimed).
With regard to claim 9, Salveson further discloses where the causing comprises causing the transaction to be processed and recorded (see Fig. 9, element 146).
With regard to claim 10, Salveson further discloses where the enterprise infrastructure tracks the balance of the account (see Fig. 9, 146; see Fig. 8).
With regard to claim 12, Salveson further discloses where the system further comprises a payment gateway (see Fig. 4, 124, 126).
With regard to claim 13, Salveson further discloses where the account includes at least one of a credit card (see Fig. 6), a gift card, a bank account, redemption coupons, and a loyalty account.
With regard to claim 14, Salveson further discloses where the processor is further operable to send an authorization code to a retailer (see col. 2, ln. 23-35).
Response to Arguments
Applicant's arguments filed 11/07/2025 have been fully considered but they are not persuasive.
Applicant argues that there is support in Applicant’s Specification at e.g. [0072] for the claimed limitation relating to “based only on receipt of the purchase price, an indication of an article being purchased, and the identifier. . . .” As found above, the examiner does not find support for this negative limitation of “based only on . . . “. Further, Applicant has not demonstrated at all that of the limitation is performed based only on the specific data received, as claimed. For these reasons, Applicant’s arguments are not persuasive.
Applicant argues that the prior art does not teach the claimed limitations under 103, and in particular the amendments. The examiner respectfully disagrees. The examiner has pointed out in the 103 rejection above, where basing a decision on certain data is a design choice of the system, as shown above, and each account is account.
As for the 101 rejection, Applicant argues that the claims are eligible under each step. The examiner respectfully disagrees. The examiner has addressed each amendment and argument in the 101 rejection above. The examiner notes that making a determination based on two pieces of data (i.e. purchase price and identifier) is still a mental processes as this is still a determination that can be performed in the mind/ pen and paper. Accordingly, The examiner finds the claims to be directed to abstract idea.
Conclusion
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/PETER LUDWIG/Primary Examiner, Art Unit 3687
1 The struck-through language indicates an additional element analyzed under Step 2A, Prong 2; Step 2B.