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
1. This office action is in response to an amendment received on 5/11/26 for patent application 17/385,838.
2. Claims 2, 11, 14 are amended.
3. Claims 2-9, 11-12, and 14-18 are pending.
RESPONSE TO ARGUMENTS
Applicant argues#1
Under step 1, Applicant submits Pending Claims 2-9, 11-12, and 14-18 are drawn to one of the four statutory categories of invention under 35 U.S.C. § 101.
Representative Claim 2 recites "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 a predefined time
period of validity; 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 mobile device and presented on a display of said mobile device at a point of sale to complete a purchase during said predefined temporary time period of validity; and automatically invalidating said temporary co-branded virtual credit card, to prevent any further purchases, after said predefined time period of validity tolls."
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 (quoting Diamond v. Diehr, 450 U.S. 175, 188, 209 USPQ 1, 8-9 (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.
Examiner Response
Examiner respectfully disagrees.
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 Non-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 argues#2
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.
Applicant previously denoted the state of virtual card transactions as of the March 17,
2014 date. In response, the Office Action argued "Arguments presented by applicant cannot take the place of evidence in the record."
Applicant respectfully submits there is no evidence in the record regarding the state of virtual card technology as of the March 17, 2014 which Applicant is trying to replace.
There are no 102 or 103 rejections, and Applicant has not provided any argument to rebut any evidence as to the state of virtual card transactions, as of the March 17, 2014 filing date. Because the only evidence in the record, e.g., the lack of any 102 or 103 prior art references, supports Applicant's assertion as to the state of technology when the Application was filed.
Instead, what Applicant has shown is yet to be disputed state of technology at the time of filing with respect to the "virtual" aspects of the Claim, which can only be deemed "additional elements".
Examiner Response
Examiner respectfully disagrees.
Examiner would like to point out that, 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 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). Furthermore, 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 (MPEP 2106.05 (I))
The rejection is maintained.
Applicant argues#3
Applicant has italicized the portions of the representative Claim that arguably recite the identified fundamental economic principles and commercial or legal interaction and has left the remainder, e.g., the "additional elements" in plain text: 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
a predefined time period of validity;
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 mobile device and presented on a display of said mobile device at a point of sale to complete a purchase during said predefined temporary time period of validity; and
automatically invalidating said temporary co-branded virtual credit card, to prevent any further purchases, after said predefined time period of validity tolls."
Thus, 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 time period of validity;
-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 mobile device and presented on a display of said mobile device at a point of sale to complete a purchase during said predefined temporary time period of validity; and
-automatically invalidating said temporary co-branded virtual credit card, to prevent any further purchases, after said predefined time period of validity tolls.
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; invalidating said temporary co-branded virtual credit card to prevent any further purchases, after said predefined time period of validity) is part of the identified abstract idea.
The additional elements outside of the abstract idea (computer, point of sale, display of mobile device) are recited at a high level of generality, operating 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).
The rejection is maintained.
Applicant argues#4
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 113 USPQ2d 1097 (Fed. Cir. 2014), provides an example of additional elements that favored eligibility because they were more than well-understood, routine conventional activities in the field. The claims in DDR Holdings were directed to systems and methods of generating a composite webpage that combines certain visual elements of a host website with the content of a third-party merchant. 773 F.3d at 1248, 113 USPQ2d at 1099. The court found that the claim had additional elements that amounted to significantly more than the abstract idea, because they modified conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, which differed from the conventional operation of Internet hyperlink protocol that transported the user away from the host's webpage to the third party's webpage when the hyperlink was activated. 773 F.3d at 1258-59, 113 USPQ2d at 1106-07.
Here, the claim recite the combination of different technological environments to provide a specific, integrated, and practical application of the exception into a specific recited solution. In addition, the Claim addresses a number of specific components performing the different parts of the solution, the technical details of the message presented on the display, as well as the interaction (e.g., communication) between the different components.
Examiner Response
Examiner respectfully disagrees.
As far as the comparison to DDR is concerned, the patent at issue in DDR provided and Internet-based solution to solve a problem unique to the Internet ( the problem in DDR Holdings (conventional Internet hyperlink protocol preventing websites from retaining visitors), that (1) did not foreclose other ways of solving the problem, and (2) recited a specific series of steps that resulted in a departure from the routine and conventional sequence of steps after the click of a hyperlink advertisement.
In the instant invention, the claimed solution is not necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer" analysis. /d.
How to apply for a virtual credit card is a business problem. Applicant is trying to solve this business problem with the use of technology.
The claimed invention is unlike the claimed invention recited in DDR.
The rejection is maintained.
Applicant argues#5
Moreover, the Claimed elements provide meaningful limitations that restrict the
identified concept to a particular useful application. Additionally, the Claim elements recite a particular way to achieve the desired outcome, as opposed to merely claiming the idea of a solution or outcome.
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 amount to significantly more than the judicial exception itself.
Therefore, Applicant respectfully submits the Step 2B analysis provided herein results in the answer being Yes. The additional elements in the claim amount to significantly more than a judicial exception.
Examiner Response
Examiner respectfully disagrees.
This argument has been addressed above with respect to Applicant argues#1,3 above.
There are no additional elements that amount to significantly more than the identified abstract idea.
Also see the section 101 rejection below.
The rejection is maintained.
Applicant argues#6
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 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 §112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
1. Claim 2-9, 11-12, and 14-18 are ejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2& 11, recite in the last limitation, “after said time period of validity tolls”
It is unclear to Examiner what is meant by a “time of period validity tolls?”
There is no mention of any “toll” recited in the claim before the last limitation or defined in the specification.
Under BRI (Broadest Reasonable Interpretation) a period of validity of toll is associated with a prepaid toll account (ex: EZ pass).
Claims 3-9, 12, 14-18 are rejected using the same rationale as claims 2&11, as they fail to cure the deficiency of claims 2&11.
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.
2. 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 time period of validity;
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 mobile device and presented on a display of said mobile device at a point of sale to complete a purchase during said predefined temporary time period of validity and
automatically invalidating said temporary co-branded virtual credit card to prevent any further purchases, after said predefined time period of validity tolls.
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 time period of validity; 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 and automatically invalidating said temporary co-branded virtual credit card to prevent any further purchases, after said predefined time period of validity tolls)
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 display of 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, display of the 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
THIS ACTION IS MADE FINAL. 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 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 7/14/2026
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