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 .
The following is a Final Office Action in response to communications received October 30, 2025. Claim(s) 7, 13 and 20 have been canceled. Claims 1, 3, 8 and 15 have been amended. No new claims have been added. Therefore, claims 1-6, 8-12, 14-19 and 21-23 are pending and addressed below.
Priority
Application No. 15/357,426 filing date 11/21/2016.
Applicant Name/Assignee: American Express Travel Related Services Company, Inc.
Inventor(s): Borandi, Todd
Response to Amendment/Arguments
Claim Rejections - 35 USC § 101
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive.
In the remarks applicant argues that under prong 1, the claimed amended subject matter is directed toward statutory subject matter. Applicant points to the amendments “routing, by the server based on the preinitiation of the transaction, the transaction with the mobile device to a point-of-sale terminal within the merchant facility, wherein the point-of-sale terminal is configured to authorize the mobile device with the pre-initiation of the transaction”, which cannot reasonably be performed using mental processes. Applicant’s argument is persuasive, the examiner withdraws the rejection that the claimed limitations are directed toward mental concepts. However, under step 2A prong 1, the claimed limitations when considered as a whole are directed toward the abstract category of methods of organizing human activity.
In the remarks applicant argues that under step 2A prong 2, the claimed subject matter is integrated into a practical application. Applicant argues the recited communication between a server, mobile device, location beacon and point-of-sale terminal to pre-initiate a transaction and to identify a preauthorized transaction limit based on data or query provided by the mobile device. Based on communication, the recited features regarding routing the transaction to a “routing the transaction to a pre-initiated point-of-sale terminal” a specialized terminal for mobile devices that have pre-initiated transactions within the merchant facility-based on the pre-initiation of the transaction. Applicant points to the specification para 0025. The amended claims recite “routing, by the server based on the pre-initiation of the transaction, the transaction with the mobile device to a point-of-sale terminal within the merchant facility, wherein the point-of sale terminal is configured to authorize the mobile device with pre-initiation of the transaction”. Applicant argues the limited use of the pre-initiated point-of-sale terminal to consumers who have pre-initiated transactions allows for rapid checkout at the pre-initiated point-of-sale terminal is unlike conventional POS terminals. The claim limitations reflect the technical solution that offers a technical improvement utilizing pre-authorization code for rapid checkout reducing time and complex authorization messaging occurring at pre-initiation POS terminals. Applicant’s argument is not persuasive. The specification para 0025 discloses a process directed toward transactions where a merchant collects product data by scanning items and the customer provides or the merchant receives an authorization code as payment through various means that is transmitted to the merchant. The specification makes clear that the purpose if not to improve technology or a technical process but to perform a transaction process using authorization codes.
[0025] The consumer may initiate a transaction at a merchant POS (step 250).
The merchant may scan items per business as usual. In various embodiments, the
consumer may provide the preauthorization code as a form of payment. For
example, the consumer may display the preauthorization code on a mobile device
and the merchant may scan the preauthorization code; the consumer's mobile
device may transmit the preauthorization code to the merchant POS via NFC or
Bluetooth®; the consumer may type the preauthorization code into the merchant
POS, or the consumer's mobile device may transmit the preauthorization code to
the merchant POS by any other suitable method. In various embodiments, the
POS may be programmed to detect a preauthorization code from the mobile
device. In various embodiments, the consumer may swipe a physical card. The
preauthorization may be recognized by the authorizing entity and sent to the POS
device to complete the transaction. In various embodiments, the consumer may
initiate the transaction with the merchant POS without use of the preauthorization
code. In various embodiments, the merchant may provide a separate pre-initiated
POS and limit use of the pre-initiated POS to consumers who have pre-initiated transactions, which may allow for rapid checkout at the pre-initiated POS.
With respect to the amended routing limitations “routing, by the server based on the pre-initiation of the transaction, the transaction with the mobile device to a point-of-sale terminal within the merchant facility, wherein the point-of-sale terminal is configured to authorize the mobile device with the pre-initiation of the transaction”, the examiner does not find the POS terminal to be specialized for mobile devices as argued but instead to be a generic POS device capable of authorizing a transaction and performing a transaction. (see specification para 0018). Applicant’s arguments to do identify what technology is improved or what technical process is improved by routing data utilizing a server for a transaction between a mobile device and POS within a merchant facility is improved because of a transaction authorization process. The rejection is maintained.
In the remarks applicant points to MPEP 2106.05(d)(I)(2), arguing that under step 2B, the claimed limitations beyond the abstract idea is not prevalent or in common use in the art. Applicant points to the amended limitation “routing, by the server based on the pre-initiation of the transaction, the transaction with the mobile device to a point-of-sale terminal within the merchant facility, wherein the point-of sale terminal is configured to authorize the mobile device with pre-initiation of the transaction” which are not disclosed in prior art references and therefore, is not considered to be well understood routine or conventional. Applicant’s argument is not persuasive. The limitation recites generic technology and high level functions in order to perform a transaction. As evidence to that routing authorization data of a transaction between a mobile device and merchant POS is well understood, the examiner provides US Pub No. 2017/0278099 A1 by Curry et al -para 0018, WO 2016/049745 A1 by Ortiz et al -para 00163, para 00222; WO 2016/030862 A1 by Joubert et al- FIG. 7; “The transaction controller (705) in turn receives the transaction response request, decrypts it and extracts the second transaction token contained therein at step (727). As before, the controller (705) then looks up the second token in the database at step (729) and, in particular, looks if it matches a pre-authorisation token previously issued to the consumer, after which the transaction is settled or declined as before at step (731 )…. checks on the first and second tokens including, for example, whether the first token includes a pre-authorisation limit, that the alive time period contained in the first pre-authorisation request has not expired, that the transaction response request includes an amount of the transaction and that the amount of the transaction does not exceed the pre-authorisation amount”; US Pub No. 2016/0019536 A1 by Ortez et al para 0311; CA 2899319 A1 by Giordano et al – para 00200-00201, para 00215-00216; WO 2012/021716 A3 by Baskerville- para 0090-0092, para 0098-0099, para 00168-00172, para 00174”. The rejection is maintained.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6, 8-12, 14-19 and 21-23 are rejected under 35 U.S.C. § 101 because the instant application is directed to non-patentable subject matter. Specifically, the claims are directed toward at least one judicial exception without reciting additional elements that amount to significantly more than the judicial exception. The rationale for this determination is in accordance with the guidelines of USPTO, applies to all statutory categories, and is explained in detail below.
In reference to claims 1-6 and 21:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a method, as in independent Claim 1 and the dependent claims. Such methods fall under the statutory category of "process." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. The claimed invention is directed to an abstract idea without significantly more. Method claim 1 recites a method to (1) receiving a message indicating the location beacon has detected the customer within a proximity of a location beacon (2) transmitting a text message (3) receiving a response message to the query triggering a pre-initiation of a transaction and estimate transaction amount (4) generating preauthorization inquiry (5) determining a preauthorization transaction limit based on transaction amount value (6) storing pre-authorization record (7) transmitting preauthorization code (8) routing transaction (9) receiving preauthorization code (10) determining pre-authorization code corresponds to pre-authorization record (11) transmitting message authorizing transaction. The claimed limitations which under its broadest reasonable interpretation, covers performance of a commercial interaction. When considered as a whole the claimed subject matter is directed toward authorizing a transaction which is a concept of the sub-category sales activities. These concepts are enumerated in Section I of the 2019 revised patent subject matter eligibility guidance published in the federal register (84 FR 50) on January 7, 2019) is directed toward abstract category of methods of organizing human activity.
STEP 2A Prong 2: The identified judicial exception is not integrated into a practical application because the claims fail to provide indications of patent eligible subject matter that integrate the alleged abstract idea into a practical application. The additional elements beyond the abstract idea includes “mobile device”, “location beacon”, “a server”, “merchant facility”, “a database” and “point of sale terminal.”
The applied server to perform the operations “receiving….a message” from the beacon; “transmitting…a text message” to the mobile device; “receiving…a response message” from the mobile device; “storing …a preauthorization record” into a database; “transmitting…a preauthorization code” to the mobile device; “receiving…the preauthorization code” from the POS terminal within the merchant facility; “transmitting…a message” to the POS terminal.
The claimed operations “receiving”, “transmitting”, “storing,” which According to MPEP 2106.05(d) II (see also MPEP 2106.05(g)) the courts have recognized the following computer functions are claimed in a merely generic manner (e.g., at a high level of generality) where technology is merely applied to perform the abstract idea or as insignificant extra-solution activity.
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)
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);
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
The claim limitations are recited at a high level of generality without details of technical implementation and thus are insignificant extra solution activity.
The additional element “server” is applied to perform the operations “generating…a preauthorization inquiry”; “determining…a preauthorized transaction limit”; “routing …the transaction” with the mobile device to a POS terminal within the merchant facility; “determining…that the preauthorization code received” from POS, are recited at a high-level of generality such that it amounts to no more than applying the exception using generic computer components for the purpose of performing a transaction authorization process and routing the transaction. The claim limitations when considered individually fail to provide any indications of patent eligible subject matter, according to MPEP guidance (see MPEP 2106.05 (a)-(c), (e )-(h).
The identified judicial exception is not integrated into a practical application because the claims recite a steps performed “by a server” to “when a mobile device is in range of a location beacon and before a transaction with the mobile device has been requested at a POS terminal at a merchant facility- is not a step per se but rather a recitation of context for the method. The functions are is recited at a high-level of generality such that it amounts to no more than applying the exception using generic computer components. Taking the claim elements separately, the operation performed by the system at each step of the process is purely in terms of results desired and devoid of implementation of details.
With respect to the limitations “by a server” performing the steps, the computer based system merely automates the recited steps. The server, mobile device, location beacon and POS operates in its ordinary capacity and does not use the judicial exception in a manner that imposes meaningful limits upon the abstract idea. Technology is not integral to the process as the claimed subject matter is so high level that any generic programming could be applied and the functions could be performed by any known technical means within a computer environment. Furthermore, the claimed functions do not provide an operation that could be considered as sufficient to provide a technological implementation or application of/or improvement to this concept (i.e. integrated into a practical application).
When considered as a combination of parts the combination of limitations the combination of limitations (1)-(6) is directed toward obtaining location information and customer transaction related data in order to determine a pre-authorization limit and store a pre-authorization code-a common business practice. The combination of limitations (7)-(11) is directed toward transmitting/receiving pre-authorization codes and determining authorization code corresponds to stored code- a common business practice to mitigate risk. The server and its functions are recited at a high level of generality and merely automates the steps recited, therefore, acting as a generic computer to perform the abstract idea identified. The server is claimed generically and is operating in its ordinary capacity and does not use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. The combinations of parts is not directed toward any technical process or technological technique or technological solution to a problem rooted in technology.
In addition, when the claims are taken as a whole, as an ordered combination, the combination of steps does not add “significantly more” by virtue of considering the steps as a whole, as an ordered combination. This is because the claimed subject matter fails to provide additional elements or combination or elements to apply or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. The functions recited in the claims recite the concept of authenticating users based on transaction data, consumer proximity and authentication code which is a process directed toward a business practice. The integration of elements do not improve upon technology or improve upon computer functionality or capability in how computers carry out one of their basic functions. The integration of elements do not provide a process that allows computers to perform functions that previously could not be performed. The integration of elements do not provide a process which applies a relationship to apply a new way of using an application. The instant application, therefore, still appears only to implement the abstract idea to the particular technological environments apply what generic computer functionality in the related arts. The steps are still a combination made to authenticate a user and does not provide any of the determined indications of patent eligibility set forth in the 2019 USPTO 101 guidance. The additional steps only add to those abstract ideas using generic functions, and the claims do not show improved ways of, for example, a particular technical function for performing the abstract idea that imposes meaningful limits upon the abstract idea. Moreover, Examiner was not able to identify any specific technological processes that goes beyond merely confining the abstract idea in a particular technological environment, which, when considered in the ordered combination with the other steps, could have transformed the nature of the abstract idea previously identified. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea includes a “server”, a “POS”, a “location beacon” and “mobile device”–is purely functional and generic. Nearly server is capable of performing the steps of “detecting”, “receiving”, “performing”, “routing”, “transmitting”, “receiving”, “determining” and “transmitting” required by the method claims . . . As a result, the server claimed fails to offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) Absent a possible narrower construction of the terms “detecting”, “receiving”, “performing” and “transmitting” ... are functions can be achieved by any general purpose computer without special programming. None of these activities are used in some unconventional manner nor do any produce some unexpected result. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. Invest Pic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Applicant’s claimed functions add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis modification-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited as an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. We conclude that the claims do not provide an inventive concept because the additional elements recited in the claims do not provide significantly more than the recited judicial exception.
According to 2106.05 well-understood and routine processes to perform the abstract idea is not sufficient to transform the claim into patent eligibility. As evidence the examiner provides:
In para 0003 the specification discloses “A system, method, and computer readable medium (collectively, "system") for rapid checkout pre-initiation may comprise determining that a consumer is within a merchant location of a merchant... but also could be a kiosk at the store entrance where a cardholder could scan their "presence and intent" from their phone back to an authorizing entity. The system may determine that the consumer intends to complete a transaction with the merchant. The system may perform an inquiry regarding the transaction. The system may receive an authorization request from the merchant for the transaction. The system may transmit, based at least partially upon the inquiry, an authorization response to the merchant.”
Please note that the specification is silent with respect to any details as to the technical implementation of the “pre-initiation” that goes beyond analyzing and inquiring information.
In para 0012 the specification discloses “A system for transaction pre-initiation is disclosed. A transaction may be pre-initiated by a variety of methods. In various embodiments, a consumer may instruct an authorizing entity, such as a transaction account issuer, that the consumer is going to make a purchase in the near future. For example, the consumer may open a mobile application on a mobile device, and indicate that the consumer is going to initiate a transaction with a particular merchant. In various embodiments, the authorizing entity may determine that a consumer is going to initiate a transaction in the near future. For example, the authorizing entity may determine based on a signal from a mobile device of a consumer (e.g., GPS) that the consumer is within a merchant location. The authorizing entity may transmit a message to the consumer in response to determining that the consumer is within the merchant location, and the consumer may respond ( e.g., via a selection within an app) indicating that the consumer is going to initiate a transaction with
the merchant. In various embodiments, the merchant may detect that the consumer is within the merchant location ( e.g., via beacons or kiosks within the merchant establishment), and the merchant may notify the authorizing entity through these systems”
Please note that the specification is silent with respect to pre-initiation, initiation of the transaction or the detecting that the customer is within the merchant location. Rather the specification merely recites the function and expected result.
[0015] Referring to FIG. 1, a system 100 for pre-initiation is illustrated according to various embodiments. The system 100 may comprise a transaction account issuer ("TAI") application server 110. The application server 110 may provide graphical user interface ("GUI"), such as a website or mobile application, which allows a consumer to interact with a TAI. For example, the TAI application server 110 may provide a website which allows a consumer to view account statements and make payments....
Please note that the specification is silent with respect to a technical process for the “pre-initiation” the specification instead focuses on the expected result that allows a consumer to interact with accounts.
[0028] The authorizing entity may perform one or more authorization inquiries (step 280). The authorizing entity may have previously performed one or more authorization inquiries in response to the pre-initiation. Thus, the number or type of authorization inquires performed at the time of the transaction may be decreased, which may decrease the processing time associated with authorizing the transaction. Furthermore, because the system has already confirmed via the consumer's mobile device that the consumer is within the merchant location and intends to complete a transaction with the merchant, the authorizing entity may approve transactions which may have otherwise been declined, as well as may approve transactions without requiring a signature or consumer ID verification, which may have otherwise been required.
Please note that the specification discloses authorization inquiries and pre-initiation and customer confirmation without any details as to the technical implementation of any the authorization, pre-initiation or customer confirmation process as to technology.
In para 0011 the specification discloses “the steps recited in any of the method or process descriptions may be executed in any order and are not limited to the order presented. Moreover, any of the functions or steps may be outsourced to or performed by one or more third parties. Furthermore, any reference to singular includes plural embodiments, and any reference to more than one component may include a singular embodiment.”
In para 0025 the specification discloses “mobile device may transmit the preauthorization code to the merchant POS via NFC or Bluetooth®; the consumer may type the preauthorization code into the merchant POS, or the consumer's mobile device may transmit the preauthorization code to the merchant POS by any other suitable method “
In para 0040, the specification discloses basic generic computer elements with an operating system with various conventional software. In para 0074, the specification discloses “Middleware may include any hardware and/or software suitably configured to facilitate communications and/or process transactions between disparate computing systems. Middleware components are commercially available and known in the art. Middleware may be implemented through commercially available hardware and/or software, through custom hardware and/or software components, or through a combination thereof “
In para 0076, where the specification discloses the system may employ any number of conventional techniques for data transmission, signaling, data processing, network control, and the like.
See also para 0037, para 0041, para 0050, para 0052, para 0055, para 0061
Accordingly the specification makes clear that generic computer components and well known technical processes are applied to perform the identified abstract idea.
Further evidence includes:
US Pub No. 2012/0064923 A1 by Imes et al wherein the evidence discloses “proceeds by determining a plurality of zones about the site and detecting a current location of the mobile device relative to the plurality of zones”; US Pub No. 2016/0259462 A1 by Liao (para 0028-0030 wherein the evidence discloses “In step 430, the proximity sensor 160 determines whether the object is in close proximity to the mobile device 100, and then emits the interrupt signal or the signal in other form to inform the processor 140 of the determination result.”); US Pub No. 2013/0173456 A1 by Grigg et al wherein the prior art discloses “the specific merchant may be identified based on user input, or be determining that the user is proximate in location to the specific merchant or determining that the user has immediately conducted a transaction at the specified merchant.”; GB 2463600 A by Bull et al (para 0258-0259); US Pub No. 2018/0025350 A1 by Grossman (para 0031-0032 wherein the evidence discloses “The mobile payment device 204 can be equipped with sensors that can monitor when the mobile payment device 204 is within a predetermined distance from a merchant terminal 204. For example, the sensors can be Bluetooth sensors that detect the presence of a Bluetooth enabled payment terminal. Additionally or alternatively, the sensor can be a proximity sensor that detects the presence of an electronic device”); CN 102414710 A by CHIOTOBEROSS et al wherein the evidence discloses para 0044-0045 “the customer enters the retailer 104 of place of business. In one aspect, for example, the service provider 102 can use the position sensor (e.g., a mobile device with GPS capability combined with geographical fence mark identifying business field of 108, etc.) to determine the customer has entered a retailer 104 place of business… to the mobile device 108 sends a discount offer indicating (for example) if the owner of the coupon purchase”…para 0047-0048 “identification data detector 202 receives the proposed parameter for discount the customer, displaying a discount offer/or allows the customer to explicitly accept the discount offer… automatically executing at mobile device 108 is GPS tracking indicating mobile device 108 has entered a retailer 104 place of business is triggered when mobile discount application program 204. For example, it also can use the geographical fence technology or based on position in the received beacon from the retailer, or for determining the mobile device 108 automatically executes another suitable means into the retailer 104 place of business, to trigger the mobile discount application program”; US Pub No. 2011/0270618 a1 by Banerjee et al (para 0009-0013 wherein the evidence discloses “ receiving location information for the consumer's mobile device includes receiving information about interaction with the consumer's mobile device and a sensor or transceiver located proximate the merchant. In other embodiments of the method, receiving location information for the consumer's mobile device includes receiving location information from a global positioning system… receive information related to a physical location of a consumer; (B) access consumer transaction information from the consumer's account at a financial institution; (C) determine an offer for the consumer based at least in part on the physical location of the consumer and the consumer transaction information from the consumer's account at the financial institution; and (D) provide the consumer the offer on a consumer mobile device”, para 0036 wherein the evidence discloses “f the present invention also include a positioning system 150, such as the well-known Global Positioning System (GPS) or other systems for identifying precise geographical locations of individuals or devices, or positions of individuals or devices relative to known objects or locations. For example, some embodiments of the invention include a positioning system that can identify the current latitude and longitude, and in some cases altitude, of the consumer's mobile device 200 using a sensor/transceiver in the consumer's mobile device 200 in conjunction with a satellite system and/or the wireless telephone network 122. In other embodiments, more local sensors/transceivers interact with sensors/transceivers of the consumer's mobile device 200 to determine if the consumer 110 is within a certain distance from a merchant”): US Pub No. 2006/0003775 A1 by Anderson et al discloses “used for initiating, or triggering, location-based service applications and re-use of existing radio interface parameters with such message sequences to provide low-accuracy location”
As evidence to that routing authorization data of a transaction between a mobile device and merchant POS is well understood, the examiner provides US Pub No. 2017/0278099 A1 by Curry et al -para 0018, WO 2016/049745 A1 by Ortiz et al -para 00163, para 00222; WO 2016/030862 A1 by Joubert et al- FIG. 7; “The transaction controller (705) in turn receives the transaction response request, decrypts it and extracts the second transaction token contained therein at step (727). As before, the controller (705) then looks up the second token in the database at step (729) and, in particular, looks if it matches a pre-authorisation token previously issued to the consumer, after which the transaction is settled or declined as before at step (731 )…. checks on the first and second tokens including, for example, whether the first token includes a pre-authorisation limit, that the alive time period contained in the first pre-authorisation request has not expired, that the transaction response request includes an amount of the transaction and that the amount of the transaction does not exceed the pre-authorisation amount”; US Pub No. 2016/0019536 A1 by Ortez et al para 0311; CA 2899319 A1 by Giordano et al – para 00200-00201, para 00215-00216; WO 2012/021716 A3 by Baskerville- para 0090-0092, para 0098-0099, para 00168-00172, para 00174”.
The instant application, therefore, still appears to only implement the abstract ideas to the particular technological environments using what is generic components and functions in the related arts. The claim is not patent eligible.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 2-6 and 21 these dependent claim have also been reviewed with the same analysis as independent claim 1. Dependent claim 2 is directed toward transmitting a notification to a customer – insignificant extra solution activity to transmit data. Dependent claim 3 is directed toward detecting proximity of device- well-understood and routine technology in business practice of risk mitigation. Dependent claim 4 is directed toward transmitting instructions to skip verification- a common business practice. Dependent claim 5 is directed toward POS accepts code- insignificant extra solution activity. Dependent claim 6 is directed toward a displaying pre-authorization code- insignificant extra solution activity of outputting data. Dependent claim 21 is directed toward indicating additional verification not needed- a common business practice. The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 2-6 and 21 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In reference to Claims 8-12, 14 and 22:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a non-transitory tangible computer readable storage medium article of manufacture, as in independent Claim 8 and the dependent claims. Such articles of manufacture fall under the statutory category of "manufacture." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. Manufacture claim 8 corresponds to method claim 1. Therefore, claim 8 has been analyzed and rejected as being directed toward an abstract idea of the categories of concepts directed toward mental processes and market activity previously discussed with respect to claim 1.
STEP 2A Prong 2: Manufacture claim 8 corresponds to method claim 1. Therefore, claim 8 has been analyzed and rejected as failing to provide limitations that are indicative of integration into a practical application, as previously discussed with respect to claim 1.
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements beyond the abstract idea include an article of manufacture including a non-transitory tangible computer readable medium having instructions stored and a server–is purely functional and generic. The instructions causing a computer-based system to execute the instructions and a server claimed to perform the abstract idea. Nearly every computer based system and server is capable of performing the basic computer instructions and functions claimed- As a result, none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers.
Manufacture claim 8 instructions corresponds to method steps of claim 1. Therefore, claim 8 has been analyzed and rejected as failing to provide additional elements that amount to an inventive concept –i.e. significantly more than the recited judicial exception. Furthermore, as previously discussed with respect to claim 1, the limitations when considered individually, as a combination of parts or as a whole fail to provide any indication that the elements recited are unconventional or otherwise more than what is well understood, conventional, routine activity in the field.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 9-12, 14 and 22 these dependent claim have also been reviewed with the same analysis as independent claim 8. Dependent claim 9 is directed toward a transmitting a notification– insignificant extra solution activity to transmit data. Dependent claim 10 is directed toward detecting proximity using generic locational device- well-understood and routine process in business practice for risk mitigation. Dependent claim 11 is directed toward transmitting instructions to the merchant- a common business practice. Dependent claim 12 is directed toward POS accepts code- insignificant extra solution activity. Dependent claim 14 is directed toward a limiting the pre-authorization code to a QR code- common business practice. Dependent claim 22 is directed toward indicating additional verification not needed- a common business practice. The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 8. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 9-12, 14 and 22 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
In reference to Claims 15-19 and 23:
STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a system, as in independent Claim 15 and the dependent claims. Such articles of manufacture fall under the statutory category of "machine." Therefore, the claims are directed to a statutory eligibility category.
STEP 2A Prong 1. System claim 15 functions corresponds to method steps of claim 1. Therefore, claim 8 has been analyzed and rejected as being directed toward an abstract idea of the categories of concepts directed toward mental processes and market activity previously discussed with respect to claim 1.
STEP 2A Prong 2: System claim 15 functions corresponds to the steps of method claim 1. Therefore, claim 15 has been analyzed and rejected as failing to provide limitations that are indicative of integration into a practical application, as previously discussed with respect to claim 1.
STEP 2B; The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to concepts of the abstract idea into a practical application. The additional elements beyond the abstract idea include a system comprising a processor, a tangible, non-transitory memory having instructions executed by the process to perform the functions corresponding to the steps of claim 1. The recited hardware and other computer elements are purely functional and generic. Nearly every computer system is capable of performing the basic computer instructions claimed- As a result, none of the hardware recited by the system claims offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment, that is, implementation via computers.
System claim 15 processor executed instructions corresponds to method steps of claim 1. Therefore, claim 15 has been analyzed and rejected as failing to provide additional elements that amount to an inventive concept –i.e. significantly more than the recited judicial exception. Furthermore, as previously discussed with respect to claim 1, the limitations when considered individually, as a combination of parts or as a whole fail to provide any indication that the elements recited are unconventional or otherwise more than what is well understood, conventional, routine activity in the field.
The remaining dependent claims—which impose additional limitations—also fail to claim patent-eligible subject matter because the limitations cannot be considered statutory. In reference to claims 16-19 and 23 these dependent claim have also been reviewed with the same analysis as independent claim 15. Dependent claim 16 is directed toward a transmitting a notification – insignificant extra solution activity to transmit data. Dependent claim 17 is directed toward detecting proximity a common use of technology in transactions for risk mitigation or to apply usage rules for transactions. Dependent claim 18 is directed toward transmitting verification instructions to the merchant- a common business practice. Dependent claim 19 is directed toward POS accepts code- insignificant extra solution activity. Dependent claim 23 is directed toward indications that additional verification not needed- a common business practice. The dependent claim(s) have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 15. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014). If applicant believes the dependent claims 16-19 and 23 are directed towards patent eligible subject matter, they are invited to point out the specific limitations in the claim that are directed towards patent eligible subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CA 2912066 C by Pomeroy et al; CA 2868192 A1 by MacKinnon; WO 2005/020028 A2 by Economy et al -para 0044-0050, para 0067-0068; WO 2012/068480 A3 by Lyons et al-para 0086” (AU 2011329678 A1);
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY M GREGG whose telephone number is (571)270-5050. The examiner can normally be reached M-F 9am-5pm.
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/MARY M GREGG/ Examiner, Art Unit 3695
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695