DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Withdrawal from Issue
2. Pursuant to the notice mailed on 2/5/2026, the application is withdrawn from issue to permit reopening of prosecution.
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.
3. Claims 1-2, 4-6, 8-20 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more. Using the language in claim(s) 1 to illustrate, the limitations of capture invoice document data and buyer and seller metadata combined with the invoice document data and encrypt the invoice document data and the buyer and seller metadata, wherein the buyer and seller metadata comprises information about a payment amount, the buyer, the seller, and a VAT and/or turnover tax number, wherein the invoice data analysis module is in data connection with an invoice database unit and via the invoice data analysis module, a determination of creditworthiness and/or of a VAT rate and/or turnover tax rate is performed on the basis of the invoice document data and the buyer and seller metadata stored in the invoice database unit, compare unique buyer profile data and unique seller profile data to user profiles stored, when the buyer profile data are correctly matched with the seller profile data, process a transaction when the unique buyer profile data and the unique seller profile data match the invoice document data combined with the buyer and seller metadata, transfer the invoice document data and the buyer and seller metadata combined with the invoice document data via the communication network due to at least one electronic payment transaction having been correctly performed by the buyer and the seller, connect the buyer terminal and the seller payment receiving device via the communication network only when the buyer profile data received via the communication network from the buyer terminal and the seller profile data received via the communication network from the seller payment receiving device match user profiles stored, store the invoice document data and automatically transfer the invoice document data to the buyer and the seller, and wherein the invoice data analysis module is configured to evaluate and/or analyze invoice document data of several invoices to provide information on electronic transactions to the buyer and the seller, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, commercial or legal interactions, but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity.
The claimed invention allows for automatic invoice data management including storing invoice data and making that data available to buyers and sellers for tax and account management purposes which is a commercial interaction.
The mere nominal recitation of a buyer terminal, a buyer payment device, a seller payment receiving device comprising an NFC interface and card reader or ATM, a seller processing and/or computing device, a central server unit, a communication network, and an invoice database unit, do not take the claim out of the methods of organizing human activity grouping. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements— a buyer terminal, a buyer payment device, a seller payment receiving device comprising an NFC interface and card reader or ATM, a seller processing and/or computing device, a central server unit, a communication network, and an invoice database unit. The a buyer terminal, a buyer payment device, a seller payment receiving device comprising an NFC interface and card reader or ATM, a seller processing and/or computing device, a central server unit, a communication network, and an invoice database unit, are is recited at a high-level of generality (i.e., performing generic computer functions of capturing invoice document data and buyer/seller metadata combined with invoice data, encrypting invoice data and metadata, determining creditworthiness and/or VAT rate and/or turnover tax rate, compare unique buyer profile data to unique seller profile data to stored user profiles, connecting devices to a central server when buyer and seller profile data correctly match, process a transaction, transfer invoice document data and metadata, connect buyer and seller via communication network, store invoice document data and automatically transfer the invoice document data to buyer terminal and seller device, evaluate and/or analyze invoice document data of several invoices) such that they amount to no more than mere instructions to apply the exception using generic computer components (see MPEP §2106.05(f)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a buyer terminal, a buyer payment device, a seller payment receiving device comprising an NFC interface and card reader or ATM, a seller processing and/or computing device, a central server unit, a communication network, and an invoice database unit, amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2, 4-6, 8-20 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-2, 4-6, 8-20 is/are ineligible.
Response to Arguments
4. Applicant's arguments filed with the Appeal Brief dated 3/31/2025 have been fully considered but they are not persuasive.
On pages 11-13 of the Remarks, Applicants argue that the claims are not directed to an abstract idea and under PTO guidance do not fall into one of the groupings of abstract ideas because the claims as a whole recite encrypting an invoice and buyer/seller metadata as well as a central server unit being configured to connect buyer terminal with a seller payment receiving device via a communication network and therefore is not a method of organizing human activity. The Examiner respectfully disagrees.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., a buyer terminal, a buyer payment device, a seller payment receiving device comprising an NFC interface and card reader or ATM, a seller processing and/or computing device, a central server unit, a communication network, and an invoice database unit, the claims recite abstract ideas in the category of “methods of organizing human activity.”
In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 1—i.e., the capturing invoice document data and buyer/seller metadata combined with invoice data, encrypting invoice data and metadata, determining creditworthiness and/or VAT rate and/or turnover tax rate, compare unique buyer profile data to unique seller profile data to stored user profiles, connecting devices to a central server when buyer and seller profile data correctly match, process a transaction, transfer invoice document data and metadata, connect buyer and seller via communication network, store invoice document data and automatically transfer the invoice document data to buyer terminal and seller device, evaluate and/or analyze invoice document data of several invoices—and explains that they describe the concept of electronic invoice management, i.e., a commercial interaction falling into the Certain Methods of Organizing Human Activity grouping of abstract ideas.-see MPEP §2106.04(a). The Examiner’s approach here is consistent with USPTO guidance.
Applicants allege that the claims are not similar to the claim to the claims at issue in Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) because claim 1 includes elements that are significantly more than the alleged abstract idea and are not generic computing components. The Examiner respectfully disagrees. The claims of the instant application recite generic computer components that implement the claimed functions in their ordinary capacity. Here, similar to Dealertrack, the focus of the claims is not on an improvement to the identified additional elements as tools, but on the abstract ideas that use the additional elements as tools. The use of generic computer components to carry out the abstract idea does not impose any meaningful limit on the computer implementation of the abstract idea.
On page 14 of the Remarks, Applicants allege that “the ability of the claimed system to automatically transfer invoice document data from the central server unit to the buyer terminal and seller processing device ensures, real-time updates an efficient data flow which are critical in commercial transactions” and therefore integrate the judicial exception into a practical application. This argument is not persuasive because the argued increase in speed and capability comes from the capabilities of a general-purpose computers that include a buyer terminal payment device, a seller payment receiving device, a seller computing device and a central server unit, rather than the claimed method itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)(“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”).
On pages 14-16 of the Remarks, Applicants argue that the claims recite elements or a combination of elements which “integrate the exception into a practical application of the exception.” Applicants argues that the NFC interface, encryption and automated data comparison/matching provide a concrete technological solution of the problem of data security in electronic transactions and therefore integrate the exception into a practical application.
The Examiner respectfully disagrees. Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are 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).
Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., a buyer terminal, a buyer payment device, a seller payment receiving device comprising an NFC interface and card reader or ATM, a seller processing and/or computing device, a central server unit, a communication network, and an invoice database unit. The terminal, devices, NFC interface, card reader, central server unit, communication network and database are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications.
Here, the claims recite an improvement in a business process, not an improvement in technology.
On page 17 of the Remarks, in response to the argument regarding the PTAB decision, Ex parte Abdelkader, PTAB Appeal. No. 2023-002947, (non-precedential), a PTAB decision does not represent Office policy and moreover, a PTAB decision is fact specific to the case being decided.
Applicants further argue that claim 1 includes multiple, interconnected elements with specific details that provide a particular structure for achieving the technical benefits that goes beyond mere instructions to apply the abstract idea using generic computer components. The argument is not persuasive because the instant application solves a business problem using existing, well established technology.
Limitations that are not indicative of integration into a practical application are those that are 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).
On pages 18-19, Applicants argue that the combination of claimed features amount to significantly more than the abstract idea. The argument is not persuasive because the claims merely recite various computer-based elements along with no more than mere instructions to implement the identified abstract idea using the computer-based elements. Accordingly, the claims do not recite significantly more than the abstract idea.
As best understood by the Examiner, on the bottom of page 19 and page 20 of the Remarks, Applicants argue that “the configuration of claim 1 provides significantly more that the cited prior art.” The argument is not convincing.
Novelty is a question of whether the claimed invention is new. Inventiveness in the Alice/Mayo framework is the search for “an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice, 134 S. Ct. at 2355. The inventiveness inquiry of §101 should therefore not be confused with the separate novelty inquiry of §102 or obviousness inquiry of § 103. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Applicants argue that the claims at issue are similar Example 23
(July 2015 eligibility examples). Many of the examples in the Guidance are hypothetical and are intended to be illustrative of the analysis only. While some of the fact patterns draw from U.S. Supreme Court and U.S. Court of appeal for the Federal Circuit decisions, the examples do not carry the weight of the court decisions and therefore are non-precedential. Nonetheless, the Examiner finds no parallel between Applicants’ claims and the hypothetical, patent-eligible claim described in Example 23 on the Interim Guidance.
Example 23 and patent-eligible claim 4 recites a series of steps for calculating a first measure of area of a first window and a second measure of the area of the
unobstructed portion of the first window and calculating a scaling factor that is
proportional to the difference between the first and second measure which fall into the
category of abstract ideas of mathematical concepts and therefore directed to an
abstract idea (Step 2A prong one).
However, applying step two to Example 23, claim 4, the claims amount to
significantly more than the abstract idea because the claims recites “displaying a first
and second window, detecting an overlap condition indicating the window overlap such
that textual information in the first window is obscured from view, determining the textual
information is too large to fit in the unobstructed portion of the first window, scaling the
textual information based upon the calculated scale factor, automatically relocating the
scaled textual information to an unobstructed portion of the first window so that it is
viewable by the user, and automatically returning the textual information to its original
format when the overlap condition no longer exists.” These limitations are not merely
attempting to limit the mathematical algorithm to a particular technological environment
because the limitations recite a specific application of the mathematical algorithm that
improves the functioning of the basic display function of the computer itself.
Here, the claimed invention merely uses a computer as a tool to implement the
judicial exception-see MPEP 2106.05(f), and therefore, the limitations do not integrate
the abstract idea into a practical application under Prong two of Step 2A. The focus of
the claims is not on an improvement to the identified additional elements as tools, but
on the abstract ideas that use the additional elements as tools.
Applicant further argues that the office fails to properly examine claims 2, 4-6, and 8-20. The argument is not convincing because as stated in the 35 USC 101 rejection above, claim 1 is used as an example, the remaining dependent claims simply further describe the abstract idea. Furthermore, the rejection states, “Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-2, 4-6, 8-20 is/are ineligible.”
In response to the amendment of claims, the Examiner withdraws the 35 U.S.C. § 103 rejection.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Good, Jeff. “A Gentle Introduction to Metadata.” University of California Berkeley. 2002. -cited for metadata defined as data about data.
US 2012/0253958 (Sock et al.)-cited for digital receipt management.
US 2002/0178117 (Maguire et al)-cited for billing database storing invoices and determination of tax rates based on invoices; user profiles, matching profile data; emails and invoice status information provided to the users.
US 2011/0106677 (Elbizri)-cited for invoice data comprise meta-data including payment information about purchase amount, buyer, seller, and applicable sales tax.
US 2016/0217509 (Eggleston, IV et al.)-cited for deleting e-receipts and NFC interface on the buyer terminal/seller payment receiving device.
US 2011/0016043 (Dornseif)-cited for calculating VAT data based on purchase receipts and storing in database.
US 2018/0137478 (Raouda El-Balah)-cited for encryption of buyer, seller and invoice data and invoice data comprising metadata including payment information about purchase amount, buyer, seller and applicable taxes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303)297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694
