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 . This office action is in response to Applicant’s RCE filed December 29, 2025 in which claims 1, 10 and 17 are amended. Thus, claims 1-20 are pending in the application.
Continued Examination Under 37 CFR 1.114
2. A request for continued examination 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/2025 has been entered.
Claim Rejections - 35 USC § 101
3. 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The Examiner has identified independent method Claim 1 as the claim that represents the claimed invention for analysis and is similar to independent Claims 10 and 17.
The claims 1-9 are directed to a method, claims 10-16 are directed to a non-transitory computer-readable medium and 17-20 are directed to a system which are one of the statutory categories of invention. (Step 1: YES).
The claim 1 recites : providing a buy now pay later (BNPL) offer in a public location, wherein an image capture of a visual capturable code portion of said BNPL offer will cause a mobile device to automatically generate a formatted and addressed electronic message comprising at least one request for identification information; receiving, at a BNPL product provider computing system, said electronic message including said identification information; utilizing, at said BNPL product provider computing system, said identification information to identify an existing credit account associated with a customer, wherein said identification information is at least partially obtained by receiving GPS data from said mobile device and verifying said GPS data from said mobile device is consistent said existing credit account associated with said customer, and wherein said GPS data is provided to a second computing system for fraud determination and/or evaluation; generating, at said BNPL product provider computing system and based on said existing credit account, a new BNPL product with associated terms, wherein said new BNPL product does not establish a new credit account but utilizes said existing credit account; transmitting from said BNPL product provider computing system, said new BNPL product with associated terms; receiving at said BNPL product provider computing system, an electronic acceptance of said new BNPL product with associated terms; transmitting from said BNPL product provider computing system and to said mobile device, said new BNPL product; providing, from said mobile device and to a retail computing system, said new BNPL product during a checkout process; and completing, at said retail computing system, a transaction with said new BNPL product. These limitations (with the exception of italicized portions), under their broadest reasonable interpretation, is a process that covers Certain methods of organizing human activity such as Commercial or legal interactions. The claims recite a method to provide a buy now pay later product with associated terms to a credit account holder. A buy now pay later product with associated terms is nothing more than a transaction. A transaction is fulfilling the agreement in the form of contracts and hence it is a Commercial Interaction. In addition, these limitations can also be classified under Mental Processes as these limitations relate to concepts performed in the human mind (including an observation, evaluation, judgment, opinion and use of a pen and paper). The claim 1 also recites the additional elements of a visual capturable code, a buy now pay later (BNPL) product provider computing system, a BNPL application, a mobile device, an electronic message, a second computing system and a retail computing system which do not necessarily restrict the claim from reciting an abstract idea. That is, other than, a visual capturable code, a buy now pay later (BNPL) product provider computing system, a BNPL application, a mobile device, an electronic message, a second computing system and a retail computing system, nothing in the claim precludes the steps from being performed as a method of organizing human activity. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim 1 recites an abstract idea (Step 2A: Prong 1: YES).
This judicial exception is not integrated into a practical application. The additional elements of a visual capturable code, a buy now pay later (BNPL) product provider computing system, a BNPL application, a mobile device, an electronic message, a second computing system and a retail computing system, result in no more than simply applying the abstract idea using generic computer elements. The specification describes the additional elements of a visual capturable code, a buy now pay later (BNPL) product provider computing system, a BNPL application, a mobile device, an electronic message, a second computing system and a retail computing system, to be generic computer elements (see Fig. 3, [0039]). A buy now pay later (BNPL) product provider computing system, a BNPL application and a retail computing system are recited at a high level of generality and are broadly interpreted to correspond to generic software suitably programmed to perform their respective function. Paragraph [0039] of the applicant’s specification describes a mobile device as, “a mobile device (or mobile phone) refers to a computing device that has ingrained telephony capability via a mobile carrier.” Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements (as shown above in italics) are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. 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, the claim 1 is directed to an abstract idea (Step 2A - Prong 2: NO).
The claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional element of a visual capturable code, a buy now pay later (BNPL) product provider computing system, a BNPL application, a mobile device, an electronic message, a second computing system and a retail computing system are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component (MPEP 2106.05(f)). The additional elements, when considered separately and as an ordered combination, does not add significantly more (also known as an “inventive concept”) to the exception. The additional elements of the instant underlying process, when taken in combination, together do not amount to significantly more than the sum of the functions of the elements when each is taken alone. Thus, claim 1 is not patent eligible (Step 2B: NO).
Similar analysis can be extended to other independent claims 10 and 17 and hence the claims 10 and 17 are rejected on similar grounds as claim 1. In addition, claim 10 also recites a non-transitory computer-readable medium that amounts to generic computer implementation. Examiner notes that claims 10 and 17 also recite a customer accessible computing system, which do not restrict the claim from reciting an abstract idea under Step 2A-Prong 1. A customer accessible computing system is recited at a high level of generality and do not result in practical application under Step 2A-Prong 2 and does not amount to add significantly more under Step 2B. Thus, claims 10 and 17 are also not patent eligible.
The dependent claims have been given the full two-part analysis including analyzing the additional limitations both individually and in combination. Dependent claims 2-9, 11-16 and 18-20 when analyzed are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations narrow the abstract idea further and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. Claims 4 and 14 further narrows the abstract idea, however it recites an additional element of a BNPL product provider database outside of those identified as being directed to the abstract idea in independent claims, described above. A BNPL product provider database is recited at a high level of generality that amounts to generic computer implementation. Hence, it does not integrate the abstract idea into a practical application or provide significantly more than the abstract idea when considered individually and as an ordered combination.
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) 1-20 are ineligible.
No Prior art
4. The prior art rejection was withdrawn in the Final Rejection dated June 06, 2023 based on the applicants’ arguments regarding the prior art of record. An updated search was conducted but does not result in a prior art rejection at this time.
Response to Arguments
5. Applicant's arguments filed dated 12/29/2025 have been fully considered but they are not persuasive due to the following reasons:
6. With respect to Step 2A, Prong 1, Applicant argues that (pages 17-20), “The Claim elements do not fall within the "Mental Processes - Concepts Performed in the Human Mind (e.g. observation, evaluation, judgement, opinion)" grouping of abstract ideas.”
Examiner respectfully disagrees and notes that as explained in the 101 analysis above, the steps of the claim, is a process that, under their broadest reasonable interpretation, covers Certain methods of organizing human activity such as Commercial or legal interactions. The claims recite a method to provide a buy now pay later product with associated terms to a credit account holder. A buy now pay later product with associated terms is nothing more than a transaction. A transaction is fulfilling the agreement in the form of contracts and hence it is a Commercial Interaction. In addition, these limitations can also be classified under Mental Processes as these limitations relate to concepts performed in the human mind (including an observation, evaluation, judgment, opinion and use of a pen and paper). Examiner notes that according to the MPEP 2106.04, a claim that requires a computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind. An image capture of a code portion of the BNPL offer is a data gathering activity. Receiving GPS data is also a data gathering activity. Human mind is not actually determining the GPS location, human mind is merely involved in reading the GPS location from the mobile device which is a mental process. The claim 1 also recites the additional elements of a visual capturable code, a buy now pay later (BNPL) product provider computing system, a BNPL application, a mobile device, an electronic message, a second computing system, and a retail computing system which do not necessarily restrict the claim from reciting an abstract idea. That is, other than, a visual capturable code, a buy now pay later (BNPL) product provider computing system, a BNPL application, a mobile device, an electronic message, a second computing system and a retail computing system, nothing in the claim precludes the steps from being performed as a method of organizing human activity. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity or covers the concepts that can be performed in the human mind but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” or “Mental Processes” grouping of abstract ideas, respectively. Accordingly, the claims recite an abstract idea.
7. Applicant argues that (pages 22-23), “Here, similar to DDR Holdings, the Claim includes the additional elements that amount to significantly more than the abstract idea, because they modify conventional customer/offer interactions to dynamically produce automated initial contact messages which differ from the conventional interactions between a user and the offer.”
Applicant’s arguments that the claims of the instant application are analogous to those found statutory in DDR are not found persuasive. The claims in DDR were rooted in computer technology because they modified the way the internet functioned to address a problem that was created by the invention of the internet. DDR dealt with a problem unique to the Internet whereby owners of one web site did not want to redirect users away to a different web site. The claimed solution in DDR created a hybrid web page incorporating look and feel elements from the host web site with commerce objects from the third-party web site. This feature, which was neither a generic computer function nor a conventional network operation, qualified as an inventive concept. But Applicant’s claims do not address redirecting problems unique to the Internet and do not use hybrid web sites. So DDR has no applicability.
8. With respect to applicant’s arguments regarding Step 2B, (on pages 21-24), Applicant states that, “the claim as a whole amounts to significantly more than the judicial exception itself.”
One of the guidelines issued by the Office to determine if the claims recite additional elements which are not well understood, routine or conventional and hence, amount to significantly more than an abstract idea, is the USPTO guidelines of April 19, 2018 incorporating the Berkheimer memo (Berkheimer memo, hereinafter).
According to the Berkheimer memo,
In a step 2B analysis, an additional element (or combination of elements) is not well understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional elements). This option should
be used only when the examiner is certain, based upon his or her personal knowledge, that the additional elements) represents well-understood, routine, conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).
The claim simply applies the abstract idea using generic computer elements as a tool (see MPEP 2106.05(f)). The additional elements in the claim are the visual capturable code, a buy now pay later (BNPL) product provider computing system, a BNPL application, a mobile device, an electronic message, and a retail computing system. As per the rejection above, the specification describes the additional elements of the visual capturable code, a buy now pay later (BNPL) product provider computing system, a BNPL application, a mobile device, an electronic message, a second computing system and a retail computing system to be generic computer elements (see Fig. 3, [0039]). Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. Instructing the mobile device to implement the abstract idea does not improve the functioning of the mobile device. A mobile device is merely being used to carry out the commercial interaction. Applicant fails to explain how the image capture of a code generates a formatted and addressed electronic message on a mobile device. (See MPEP 2106.05(f) (1) (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”), (3) (“describes “the effect or result dissociated from any method by which maintaining the state is accomplished” and does not provide a meaningful limitation because it merely states that the abstract idea should be applied to achieve a desired result”). There is no indication in Applicants’ claims that any specialized hardware or other inventive computer components are required. The fact that a general purpose computing system, suitably programmed, may be used to perform the claimed method and the fact that the claims at issue do not require any nonconventional computer, network, or other components, or even a “non-conventional and non-generic arrangement of known, conventional pieces” but merely call for performance of the claimed functions “on a set of generic computer components, satisfies the Berkheimer memo requirement that the additional elements are conventional elements (as outlined in criterion 1 of the Berkheimer memo). The additional elements of the instant underlying process, when taken in combination, together do not amount to substantially more than the sum of the functions of the elements when each is taken alone. Hence, the claims do not recite significantly more than an abstract idea.
For these reasons and those discussed in the rejection, the rejections under 35 U.S.C. 101 are maintained.
Examiner Request
9. The Applicant is request to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 U.S.C. §112(a) or §112 1st paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BHAVIN SHAH whose telephone number is (571)272-2981. The examiner can normally be reached on M-F 9AM-6PM.
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/BHAVIN D SHAH/Examiner, Art Unit 3694 May 15, 2026
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