DETAILED ACTION
In the response filed May 23, 2025, the Applicant amended claims 1, 16, and 17. Claims 1-12, 15-18, and 20 are pending in the current application.
Notice of 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 .
Response to Arguments
Applicant’s arguments for claims 1-12, 15-18, and 20 with respect to the 35 U.S.C. 101 rejection have been considered but are unpersuasive. Applicant argues that the claims are patent eligible as the amended claims recite an improvement to the functioning of a computer or technical field. Examiner respectfully disagrees.
Specifically, Applicant argues that the amended claims recite a technique for “improving security” by pre-populating the last four digits of the credit card number and information representing a credit card type while the actual credit card number is kept secure. Examiner respectfully disagrees. Here, none of the presented technical solutions are improvements to the functioning of the computer or the technical field of credit card security. First, the disclosure does not describe a particular “secure” storage associated with the transaction processing system. In addition, the mention of security in the disclosure (See Specification, Paragraph [72]) is aimed at security measures such as encryption and authentication/authorization mechanisms. Nowhere in the disclosure is there a description or an explanation of specifically using the last four digits of the credit card number for increasing security or limiting the transmission of sensitive data. Applicant’s arguments remain unpersuasive.
The specific claim language of “a secure storage associated with the transaction processing system,” wherein an entirety of the credit card number is kept in the secure storage and not displayed within the order placement user interface,” is equivalent to adding the words “apply it” on a computer and/or mere instructions to implement the abstract idea on a computer. These steps/functions are a result of the identified abstract idea and the implementation of presenting the results on a computer. The instant claims merely limit the use of the abstract idea to a particular environment - that being a computer environment. Limitations that link the use of a judicial exception to a particular technological environment or field of use do not qualify as "significantly more," and do not transform the judicial exception into patent-eligible subject matter. Applicant’s arguments remain unpersuasive. The 35 U.S.C. 101 rejection is hereby maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“a transaction processing system …” in claims 1 and 17.
“a merchant system …” in claim 1 and 17.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), Applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
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 1-12, 15-18, and 20 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.
Claims 1, 16, and 17 recites the phrases “wherein the payment information comprises a credit card number stored in a secure storage associated with the transaction processing system,” “wherein an entirety of the credit card number is kept in the secure storage,” and “accessing, by the transaction processing system, the credit card number stored in the secure storage.” These limitations contain 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 pre-AIA the inventors, at the time the application was filed, had possession of the claimed invention.
With regard to claims 1, 16, and 17, “a secure storage” is understood to comprise a form of storage that is in some way secure where data cannot be accessed. The original disclosure consistently uses "storage” to refer to mass storage for data or instructions (see Paragraph [95]) but there is no disclosure with regard to a secure storage. The disclosure does not describe a particular “secure” storage associated with the transaction processing system. In addition, the mention of security in the disclosure is aimed at security measures such as encryption and authentication/authorization mechanisms (See Specification, Paragraph [72]), but there is no mention of a particular secure storage or any security protocols to make the aforementioned storage secure. Therefore, the limitation is considered to be new matter.
Dependent claims 2-12, 15, and 18-20, which depend from claims 1, 16, and 17, inherit the deficiencies noted for claims 1, 16, and 17.
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 1-12, 15-18, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Claims 1-12 and 15; 17, 18, and 20 are drawn to processes and claim 16 is drawn to a device, each of which is within the four statutory categories (e.g., a process, a machine). (Step 1: YES).
Step 2A – Prong One: In prong one of step 2A, the claims are analyzed to evaluate whether they recite a judicial exception.
Claim 1 (representative of claim 16) recites/describes the following steps:
“receiving…an order request from a buyer, the order request comprising identifying information associated with the buyer and corresponding to a request for a transaction between the buyer and a seller;”
“identifying…membership program information for the buyer and order preference information associated with the buyer…using the identifying information associated with the buyer, wherein the membership program information corresponds to a membership program that is managed by the transaction processing system for the seller, wherein the order preference information comprises payment information, wherein the payment information comprises a credit card number…;”
“wherein the payment identifying information representing the portion of the payment information includes last four digits of the credit card number and information representing a credit card type,”
“receiving…an order placement request corresponding to the order request…;” and
“updating the membership program information associated with the buyer based on the order placement request;”
“identifying one or more membership benefits corresponding to the membership program;”
“determining that the buyer is eligible for a first membership benefit of the one or more membership benefits based on at least the membership program information associated with the buyer;”
“sending, … instructions for transferring, …records of previous transactions conducted between two parties, the two parties including the buyer identified by the identifying information and the seller associated with the membership program;”
“receiving, …, the records of previously conducted transactions by between the buyer identified by the identifying information and the seller associated with the membership program;” and
“applying the first membership benefit to the transactions previously conducted by the buyer with the seller.”
These steps, under broadest reasonable interpretation, describe or set-forth applying eligible membership benefits for transactions conducted by an identified member of a membership program, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
Claim 17 recites/describes the following steps:
“receiving…a request from a seller to create a membership program for the seller, wherein the seller has conducted a plurality of transactions with a plurality of buyers, respectively…;
“accessing…a record of the plurality of transactions…;”
“accessing…a user account record for each buyer of the plurality of buyers…, wherein the user account record for each buyer comprises a respective user identifier for the buyer;”
“creating…membership program information for each buyer of the plurality of buyers using the record of the plurality of transactions;” and
“storing…the membership program information associated with each buyer of the plurality of buyers in association with a respective user identifier for the buyer and the user account record for the buyer;”
“identifying one or more membership benefits corresponding to the membership program;”
“determining that the buyer is eligible for a first membership benefit of the one or more membership benefits based on at least the membership program information associated with the buyer;”
“sending, … instructions for transferring, …records of previous transactions conducted between two parties, the two parties including each buyer of the plurality of buyers and the seller associated with the membership program;”
“receiving, …, the records of previously conducted transactions between each buyer of the plurality of buyers and the seller associated with the membership program;” and
“receiving,…, the records of transactions previously conducted by each buyer of the plurality of buyers with the seller;”
“applying the first membership benefit to the transactions previously conducted by the buyer with the seller;”
“receiving,…, an order request from a buyer, the order request comprising identifying information associated with the buyer and corresponding to a request for a transaction between the buyer and the seller;”
“identifying, …, the membership program information associated with the buyer and order preference information associated with the buyer … using the identifying information associated with the buyer, wherein the order preference information comprises payment information, wherein the payment information comprises a credit card number stored in a secure storage associated with the transaction processing system;”
“wherein the payment identifying information representing the portion of the payment information includes last four digits of the credit card number and information representing a credit card type,”
“receiving, … an order placement request corresponding to the order request…,” and
“updating the membership program information associated with the buyer based on the order placement request.”
These steps, under broadest reasonable interpretation, describe or set-forth creating membership accounts for identified users to apply membership benefits and maintaining membership program information of users, which amounts to commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Each of the depending claims 2-12, 15, and 18-20 likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis. Any elements recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim.
Step 2A – Prong Two:
The claims recite the additional elements/limitations of: “a transaction processing system,” “a merchant system associated with the seller,” “a database associated with the transaction processing system,” and “a secure storage associated with the transaction processing system” (claims 1, 16, and 17); “one or more processors; and one or more computer-readable non-transitory storage media,” (claim 16).
The claims also recite the additional elements/limitations of: “wherein the payment information comprises a credit card number stored in a secure storage associated with the transaction processing system,” “causing, by the transaction processing system, an order placement user interface to be presented to the buyer, the order placement user interface comprising data stored in the membership program information, wherein payment identifying information representing a portion of the payment information is pre-populated, without user input, in one or more interactive input elements within the order placement user interface,... wherein an entirety of the credit card number is kept in the secure storage and not displayed within the order placement user interface;” “accessing, by the transaction processing system, the credit card number stored in the secure storage;” “processing, by the transaction processing system, the order by sending the accessed credit card number to a payment processor;” (claims 1 and 16); “wherein the payment information comprises a credit card number stored in a secure storage associated with the transaction processing system,” “causing, by the transaction processing system, an order placement user interface to be presented to the buyer, the order placement user interface comprising data corresponding to the membership program information, wherein identifying information representing a portion of the payment information is pre-populated, without user input, in one or more interactive input elements within the order placement user interface,... wherein an entirety of the credit card number is kept in the secure storage and not displayed within the order placement user interface;” “accessing, by the transaction processing system, the credit card number stored in the secure storage;” “processing, by the transaction processing system, the order by sending the accessed credit card number to a payment processor;” (claim 17); and “wherein the order placement request is made using the order placement user interface,” “configuring, by the transaction processing system, one or more application programming interfaces (APIs) to be accessed by a merchant system associated with the seller;” “based on querying a database associated with the transaction processing system,” (claims 1, 16, and 17).
The requirement to execute the claimed steps/functions using “a transaction processing system,” “a merchant system associated with the seller,” “a database associated with the transaction processing system,” and “a secure storage associated with the transaction processing system” (claims 1, 16, and 17); “one or more processors; and one or more computer-readable non-transitory storage media,” (claim 16), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See MPEP 2106.05(f).
The requirement to execute the claimed steps/functions “wherein the payment information comprises a credit card number stored in a secure storage associated with the transaction processing system,” “causing, by the transaction processing system, an order placement user interface to be presented to the buyer, the order placement user interface comprising data stored in the membership program information, wherein payment identifying information representing a portion of the payment information is pre-populated, without user input, in one or more interactive input elements within the order placement user interface,... wherein an entirety of the credit card number is kept in the secure storage and not displayed within the order placement user interface;” “accessing, by the transaction processing system, the credit card number stored in the secure storage;” “processing, by the transaction processing system, the order by sending the accessed credit card number to a payment processor;” (claims 1 and 16); “wherein the payment information comprises a credit card number stored in a secure storage associated with the transaction processing system,” “causing, by the transaction processing system, an order placement user interface to be presented to the buyer, the order placement user interface comprising data corresponding to the membership program information, wherein identifying information representing a portion of the payment information is pre-populated, without user input, in one or more interactive input elements within the order placement user interface,... wherein an entirety of the credit card number is kept in the secure storage and not displayed within the order placement user interface;” “accessing, by the transaction processing system, the credit card number stored in the secure storage;” “processing, by the transaction processing system, the order by sending the accessed credit card number to a payment processor;” (claim 17); and “wherein the order placement request is made using the order placement user interface,” “configuring, by the transaction processing system, one or more application programming interfaces (APIs) to be accessed by a merchant system associated with the seller;” “based on querying a database associated with the transaction processing system,” (claims 1, 16, and 17), is equivalent to adding the words “apply it” on a computer and/or mere instructions to implement the abstract idea on a computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See MPEP 2106.05(f).
Dependent claims recite the additional elements/limitations of: “a seller computing device,” (claim 3); “a user device associated with the buyer,” (claim 4); and “a database associated with the seller,” (claim 10 and 12).
The requirement to execute the claimed steps/functions using “a seller computing device,” (claim 3); “a user device associated with the buyer,” (claim 4); and “a database associated with the seller,” (claim 10 and 12), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application. See MPEP 2106.05(f).
Remaining dependent claims 2-12, 15, and 18-20 either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
As discussed above in “Step 2A – Prong 2,” the requirement to execute the claimed steps/functions using “a transaction processing system,” “a merchant system associated with the seller,” “a database associated with the transaction processing system,” and “a secure storage associated with the transaction processing system” (claims 1, 16, and 17); “one or more processors; and one or more computer-readable non-transitory storage media,” (claim 16); “a seller computing device,” (claim 3); “a user device associated with the buyer,” (claim 4); and “a database associated with the seller,” (claim 10 and 12), is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more.” See MPEP 2106.05(f).
As discussed above in “Step 2A – Prong 2,” the requirement to execute the claimed steps/functions “wherein the payment information comprises a credit card number stored in a secure storage associated with the transaction processing system,” “causing, by the transaction processing system, an order placement user interface to be presented to the buyer, the order placement user interface comprising data stored in the membership program information, wherein payment identifying information representing a portion of the payment information is pre-populated, without user input, in one or more interactive input elements within the order placement user interface,... wherein an entirety of the credit card number is kept in the secure storage and not displayed within the order placement user interface;” “accessing, by the transaction processing system, the credit card number stored in the secure storage;” “processing, by the transaction processing system, the order by sending the accessed credit card number to a payment processor;” (claims 1 and 16); “wherein the payment information comprises a credit card number stored in a secure storage associated with the transaction processing system,” “causing, by the transaction processing system, an order placement user interface to be presented to the buyer, the order placement user interface comprising data corresponding to the membership program information, wherein identifying information representing a portion of the payment information is pre-populated, without user input, in one or more interactive input elements within the order placement user interface,... wherein an entirety of the credit card number is kept in the secure storage and not displayed within the order placement user interface;” “accessing, by the transaction processing system, the credit card number stored in the secure storage;” “processing, by the transaction processing system, the order by sending the accessed credit card number to a payment processor;” (claim 17); and “wherein the order placement request is made using the order placement user interface,” “configuring, by the transaction processing system, one or more application programming interfaces (APIs) to be accessed by a merchant system associated with the seller;” “based on querying a database associated with the transaction processing system,” (claims 1, 16, and 17), is equivalent to adding the words “apply it” on a computer and/or mere instructions to implement the abstract idea on a computer. These limitations therefore do not qualify as “significantly more.” See MPEP 2106.05(f).
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer.
Remaining dependent claims 2-12, 15, and 18-20 either recite the same additional elements as noted above or fail to recite any additional elements (in which case, note prong one analysis as set forth above – those claims are further part of the abstract idea as identified by the Examiner for each respective dependent claim).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claims amount to significantly more than the abstract idea identified above (Step 2B: NO).
Allowable Subject Matter
Claims 1-12, 15-18, and 20 would be allowable subject matter if revised and amended to overcome the rejections under 35 U.S.C. 101 as set forth in this Office action.
The reasons for allowable subject matter regarding claims 1-12, 15-18, and 20 were identified in the Office action mailed June 4, 2025.
Conclusion
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 Patrick Kim whose telephone number is (571)272-8619. The examiner can normally be reached Monday - Friday, 9AM - 5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Resha Desai can be reached at (571)270-7792. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.K./Examiner, Art Unit 3628
/RESHA DESAI/Supervisory Patent Examiner, Art Unit 3628