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 .
DETAILED ACTION
Introduction
1. The following is a NON-FINAL Office Action in response to the communication
received on 11/13/25. Claims 2-9, 11-12, 14-18 are now pending in this application.
2. A request for continued examination (RCE) under 37 CFR 1.114, including the
fee set forth in 37 CFR 1.17(e), was filed in this application AFTER FINAL rejection.
Since this application is eligible for continued examination under 37 CFR 1.114, and the
fee set forth in 37 CFR 1.17(e) has been timely paid, the FINALITY of the previous
Office Action has been WITHDRAWN pursuant to 37 CFR 1.114. Applicant's
submission filed on 11/13/25 has been entered.
Response to Amendments
3. Applicants Amendment has been acknowledged in that: Claims 19-21 are cancelled.; hence such, claims 2-9, 11-12, 14-18 are now pending in this application.
RESPONSE TO ARGUMENTS
Applicant argues#1
Moreover, the USPTO memo of August 4, 2025, Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101 at page 3, identifies the importance of "Distinguishing claims that recite a judicial exception from claims that merely involve a judicial exception: Examiners should be careful to distinguish claims that recite an exception (which require further eligibility analysis) from claims that merely involve an exception (which are eligible and do not require further eligibility analysis) (Emphasis Added)" during step 2A Prong 1.
With respect to Step 2A Prong 1, at page 14 item 1, the Instant Office Action provides an analysis that does not include any actual or logical argument or rationale underpinning.
The rejection merely: 1. -recites Applicant's Claim 19 [with a number of words in bold];
2. -provides a nebulous paragraph
"These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. The claim recites elements that are in bold above, which covers performance of the limitation as a commercial interaction, related to marketing or sales activities, specifically (steps for applying for a virtual card for conducting purchase transactions)";
3. -repeats the recitation of Applicant's Claim 19 [this time all in Bold]; and
4. -provides a nebulous conclusion
"If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a commercial interaction, then it falls within the "Certain Methods of Organizing Human Activity" grouping of abstract ideas."
The problem with the prong 1 analysis is in the object being analyzed. While it is arguable that "steps for applying for a physical credit card for conducting purchase transactions" may fall under performance of the limitation as a commercial interaction, related to marketing or sales activities, at the time of priority for the instant Application (3/17/2014) there were no steps for applying for a virtual card for conducting purchase transactions.
A proper rejection of the judicial exception would be a physical credit card not a virtual card. E.g., -The claim recites elements that are in bold above, which covers performance of the limitation as a commercial interaction, related to marketing or sales activities, specifically (steps for applying for a phvsical credit card for conducting purchase transactions).
Examiner Response
Examiner respectfully disagrees.
The “virtual credit card” is part of the identified abstract idea, and a fundamental function of a virtual credit card is to facilitate financial transactions.
The abstract claim limitations that are recited in representative claim 2 are ( receiving a request for a co-branded credit card for a customer; performing a customer qualification process to automatically determine if said customer qualifies for said co-branded credit card, said customer qualification process occurring in real-time; automatically assigning a temporary co-branded virtual credit card to said qualified customer, said temporary co-branded virtual credit card comprising: a virtual card number; a security code; an expiration date; and predefined temporary time period of validity; transmitting a virtual credit card to said customer and transmitting said temporary co-branded virtual credit card to said customer, said temporary co-branded virtual credit card configured to be stored to complete a purchase during said predefined temporary time period of validity) is part of the identified abstract idea (A commercial interaction, steps for applying for a virtual card for conducting purchase transactions), which squarely fall in to the abstract category of Certain Methods of Organizing Human Activity (A commercial interaction), which the MPEP defines a commercial interaction:
MPEP 2106.04(a)(2) Abstract Idea Groupings [R-07.2022]:
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
The phrase "methods of organizing human activity" is used to describe concepts relating to:
• fundamental economic principles or practices (including hedging, insurance, mitigating risk);
• commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and
• managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).
Second, this grouping is limited to activity that falls within the enumerated sub-groupings of fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior and relationships or interactions between people, and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances as explained in MPEP § 2106.04(a)(3). Finally, the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping
Another example of subject matter where the commercial or legal interaction is business relations includes:
i. processing information through a clearing-house, where the business relation is the relationship between a party submitted a credit application (e.g., a car dealer) and funding sources (e.g., banks) when processing credit applications, Dealertrack v. Huber, 674 F.3d 1315, 1331, 101 USPQ2d 1325, 1339 (Fed. Cir. 2012).
The rejection is maintained.
Applicant argues#2
Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Because this approach considers all claim elements, the Supreme Court has noted that "it is consistent with the general rule that patent claims 'must be considered as a whole."' Alice Corp., 573 U.S. at 218 n.3, 110 USPQ2d at 1981
If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility.
This Application is a continuation and claims priority to and the benefit of co-pending U.S. Patent Application 14/626,773, filed on February 19, 2015; which (14 626, 773) claims priority to and benefit of then co-pending U.S. Patent Application No. 61/954,461, filed on March 17, 2014.
Apple Pay was initially released October 20, 2014.
Apple Passbook was announced at the 2012 Apple Worldwide Developers Conference on June 11, 2012, and released with iOS 6 on September 19, 2012. It was not renamed "Apple Wallet" until the release of iOS 9 on September 16, 2015.
Thus, the state of the technical field of digital payment did not include Apple Pay or Apple Wallet on March 17, 2014.
In contrast, in March of 2014, the idea of applying for a credit card arguably recite the identified fundamental economic principles and commercial or legal interaction.
Examiner Response
Examiner respectfully disagrees.
As far as the argument pertaining to additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field:
Applicant misapprehends when a Berkheimer analysis is required under current examination policy. Simply put, Examiner is not required under current Examination policy to evaluate under Step 2B, whether additional elements constitute “well-understood, routine, and conventional activities,” [“WURC activities”] unless an additional element(s) were found to be insignificant extra-solution activity in Step 2A, Prong 2. MPEP § 2106.05(d)(I). Here, the condition precedent was not met and the Final Office Action determined the additional elements were no more than mere instructions to apply the abstract idea exception using a computer. MPEP § 2106.05(f). Thus, Examiner was not required to determine a Berkheimer analysis. MPEP § 2106.05(d)(I). (See Section 101 rejection below).
Applicant has not provided evidence on the record for the statements, “Apple Pay was initially released October 20, 2014. Apple Passbook was announced at the 2012 Apple Worldwide Developers Conference on June 11, 2012, and released with iOS 6 on September 19, 2012. It was not renamed "Apple Wallet" until the release of iOS 9 on September 16, 2015. Thus, the state of the technical field of digital payment did not include Apple Pay or Apple Wallet on March 17, 2014.”
Applicant is reminded that arguments do not replace evidence where evidence is necessary, see the cited MPEP section below:
MPEP 2145:
I. ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS NECESSARY
Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
The rejection is maintained.
Applicant argues#3
However, the "additional elements" include:
automatically assigning a temporary co-branded virtual credit card to said qualified customer, said temporary co-branded virtual credit card comprising: a virtual card number; a security code; an expiration date; and a predefined temporary time period of validity; electronically transmitting a virtual credit card app to a mobile device of said customer, said virtual credit card app configured to provide access to said temporary co-branded virtual credit card; and electronically transmitting said temporary co-branded virtual credit card to said mobile device of said customer, said temporary co-branded virtual credit card configured to be stored at said virtual credit card app on said mobile device and presented to a point of sale via said virtual credit card app when said mobile device is used to complete a purchase during said predefined temporary time period of validity.
Here, the additional elements provide an improvement to the functioning of a
computer (e.g., customer's mobile device) by introducing a storage application for the virtual card such that it is not merely floating around as part of a text, email, photo, or the like. E.g., "electronically transmitting a virtual credit card app to a mobile device of said customer, said virtual credit card app configured to provide access to said temporary co-branded virtual credit card".
Examiner Response
Examiner respectfully disagrees.
The limitations (automatically assigning a temporary co-branded virtual credit card to said qualified customer, said temporary co-branded virtual credit card comprising: a virtual card number; a security code; an expiration date; and predefined temporary time period of validity; transmitting a virtual credit card to said customer and transmitting said temporary co-branded virtual credit card to said customer, said temporary co-branded virtual credit card configured to be stored to complete a purchase during said predefined temporary time period of validity) is part of the identified abstract idea.
The (virtual credit app configured to provide access to said temporary co-branded virtual credit card, mobile device and point of sale) are recited at a high level of generality and being used in their ordinary capacity and are being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f).
There is no improvement to the functioning of the computer (the customer’s mobile device).
The mobile device is operating in its ordinary capacity (mobile devices contain a memory for storing data, and an antenna to allow them to communicate electronically with other electronic devices (transmitting and receiving data).
The rejection is maintained.
Applicant argues#4
The additional elements further improve the technical field by providing a new and novel method for disseminating and utilizing a previously non-existent virtual credit card, e.g., "electronically transmitting said temporary co-branded virtual credit card to said mobile device of said customer, said temporary co-branded virtual credit card configured to be stored at said virtual credit card app on said mobile device and presented to a point of sale via said virtual credit card app when said mobile device is used to complete a purchase during said predefined temporary time period of validity."
USPTO memo of August 4, 2025, Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101 at page 4, "The specification does not need to explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. The claim itself does not need to explicitly recite the improvement described in the specification."
Thus, the "inventive concept" is furnished by the above additional element recited in the claim in addition to (beyond) the judicial exception, and is therefore sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself.
For at least this reason, Applicant respectfully submits the elements of representative independent Claim 2 are sufficient to overcome the rejection under 35 U.S.C. § 101. Independent
Examiner Response
Examiner respectfully disagrees.
As far as novelty is concerned, applicant is pointed to MPEP 2106.05:
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination.
See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government's
invitation to substitute §§ 102, 103, and 112 inquiries for the better established
inquiry under § 101 "). As made clear by the courts, the "'novelty' of any element
or steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter." Intellectual Ventures I
V. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016)
(quoting Diamond V. Diehr, 450 U.S. at 188-89, 209 USPQ at 9). See also Synopsys, Inc. V. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet V. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive
concept inquiry requires more than recognizing that each claim element, by itself, was known [A]n inventive concept can be found in the non-conventional and
in the art. non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well- understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103 ) is further discussed in MPEP § 2106.05(d). It appears that applicant is conflating novelty (Sections 102/103) with patent eligibility.
The claims were properly rejected under 35 U.S.C 101, see the section 101 rejection
below.
The argument pertaining to the additional elements, has been addressed above, see the Response to Applicant argues#3 above and they are not improving a technical field.
There are no additional elements that amount to significantly more than the identified abstract idea.
The rejection is maintained.
Applicant argues#5
Claim 11 recites features similar to (yet possibly different from) the features identified above with respect to independent Claim 2. Therefore, Applicant respectfully submits that the elements of Claim 11 are also sufficient to overcome the rejection under 35 U.S.C. § 101 for at least the reasons given above with respect to Claim 2.
Claims 3-9 depend from independent Claim 2 and recite additional features thereof.
Claims 12 and 14-18 depend from Independent Claim 11 and recite additional features thereof. Therefore, Applicant respectfully submits Claims 3-9, 12, and 14-18 overcome the rejection under 35 U.S.C. § 101 for at least the reasons set forth above with respect to Claims 2 and 11.
Accordingly, Applicant respectfully requests that the Examiner reconsider and withdraw the rejection of pending Claims 2-9, 11-12, and 14-18 under 35 U.S.C. § 101.
Examiner Response
Examiner respectfully disagrees.
This argument has been addressed above with respect to claim 2 above.
The rejection is maintained.
Claim Rejections- 35 U.S.C § 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.
1. Claims 2-9, 11-12, 14-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 2, 11, 19 are directed to a method, which is a statutory category of invention. (Step 1: YES).
Representative claim 2:
A computer-implemented method comprising:
electronically receiving a request for a co-branded credit card for a customer;
performing a computer-generated customer qualification process to automatically determine if said customer qualifies for said co-branded credit card, said computer-generated customer qualification process occurring in real-time;
automatically assigning a temporary co-branded virtual credit card to said qualified customer, said temporary co-branded virtual credit card comprising: a virtual card number; a security code; an expiration date; and predefined temporary time period of validity;
electronically transmitting a virtual credit card app to a mobile device of said customer, said virtual credit card app configured to provide access to said temporary co-branded virtual credit card; and
electronically transmitting said temporary co-branded virtual credit card to said mobile device of said customer, said temporary co-branded virtual credit card configured to be stored at said virtual credit card app on said mobile device and presented to a point of sale via said virtual credit card app when said mobile device is used to complete a purchase during said predefined temporary time period of validity.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity.
The claim recites elements that are in bold above, which covers performance of the limitation as a commercial interaction, related to marketing or sales activities, specifically (steps for applying for a virtual card for conducting purchase transactions), e.g. (receiving a request for a co-branded credit card for a customer; performing a customer qualification process to automatically determine if said customer qualifies for said co-branded credit card, said customer qualification process occurring in real-time; automatically assigning a temporary co-branded virtual credit card to said qualified customer, said temporary co-branded virtual credit card comprising: a virtual card number; a security code; an expiration date; and predefined temporary time period of validity; transmitting a virtual credit card to said customer and transmitting said temporary co-branded virtual credit card to said customer, said temporary co-branded virtual credit card configured to be stored to complete a purchase during said predefined temporary time period of validity.)
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a commercial interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Claim 11 is abstract for similar reasons.
Step 2A-Prong 1: YES. The claims are abstract).
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05.f), (2) Adding insignificant extra solution activity to the judicial exception (MPEP 2106.05.g), (3) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05.h).
Claims 2,11 includes the following additional elements:
-A computer
-A Point of Sale
-A mobile device
-A database
-A virtual credit card app configured to provide access to said temporary co-branded virtual credit card
The computer, point of sale, mobile device, database and virtual credit card app are recited at a high level of generality and are being used in their ordinary capacity and are being used as a tool for implementing the steps of the identified abstract idea, see MPEP 2106.05(f), where applying a computer or using a computer as a tool to perform the abstract idea is not indicative of a practical application.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea
Therefore claims 2,11 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, there are no additional elements recited in the claim beyond the judicial exception.
Mere instructions to implement an abstract idea, on or with the use of generic computer components, or even without any computer components, cannot provide an inventive concept - rendering the claim patent ineligible. Thus claims 2, 11 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 3-9, 12, 14-18 further define the abstract idea that is present in their respective independent claims 2, 11 and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above.
Therefore, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 3-9, 12, 14-18 are directed to an abstract idea. Thus, the claims 2-9, 11-12, 14-18 are not patent-eligible.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD Z SHAIKH whose telephone number is (571)270-3444. The examiner can normally be reached M-T, 9-600; Fri, 8-11, 3-5.
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/MOHAMMAD Z SHAIKH/Primary Examiner, Art Unit 3694 2/4/2026