DETAILED ACTION
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 .
Applicant filed a response dated May 6, 2019 in which claims 1, 3, 6, 8, 9, 11, 13, 16, and 18-20 have been amended and claims 7 and 17 have been canceled. Therefore, claims 1-6, 8-16, and 18-20 are currently pending in the application.
Continued Examination Under 37 CFR 1.114
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. Because 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 6, 2019 has been entered.
Priority
Application 17/728,386 was filed on April 25, 2022.
Examiner Request
The Applicant is requested 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.
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, 4-7, 11, 14-17, and 21-24 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. (MPEP 2106). The claims are directed to a method, system, and apparatus which is one of the statutory categories of invention (Step 1: YES). The recitation of the claimed invention is analyzed as follows, in which the abstract elements are boldfaced.
Claim 1 recites the limitations of:
An apparatus for issuing and facilitating transactions associated with a virtual card based on communications and actions of parties to a transaction, the apparatus comprising processing circuitry configured to:
receive a card request from a customer to be issued the virtual card, the virtual card having a persistent personal account number (PAN) that enables the virtual card to be used for obtaining financing for multiple transactions without changing the persistent PAN;
provide a graphical interface at a client device to set up a customer account for the virtual card based on the card request and to predefine loan terms for a future transaction; and
issue the virtual card with the persistent PAN to the client device of the customer by providing instructions to the client device for graphical display of the virtual card at the client device;
responsive to presentation of the virtual card to a first vendor or merchant, facilitate payment of the first vendor or merchant on behalf of the customer in response to a request to initiate a first financial transaction using the virtual card with the persistent PAN and a selection by the customer to accept the accepted loan terms;
establish a first loan for the customer based on the first financial transaction and original loan terms;
receive, via customer input at the graphical interface at the client device, an input defining a change to loan terms for loan processing;
responsive to presentation of the virtual card to a second vendor or merchant, facilitate payment of the second vendor or merchant on behalf of the customer in response to a request to initiate a second financial transaction using the virtual card with the persistent PAN, but with changed terms;
establish a second loan for the customer based on the second financial transaction and the changed terms; and
facilitate servicing the first and second loans based on an activity of the customer after the first and second loans are established, according to the original loan terms and the changed terms, respectively,
wherein the processing circuitry being configured to facilitate servicing of the first and second loans comprises the processing circuitry being configured to: receive an indication of a refund for a returned product; and
attempt to determine a corresponding transaction and corresponding loan to the returned product by comparing a list of stored merchant identities from past transactions to a refunding merchant identity to determine a match between one of the stored merchant identities and the refunding merchant identity, and in response to determining the match, determining if multiple transactions occurred for the refunding merchant identity to:
in response to determining no multiple transactions, apply the refund to the corresponding loan,
in response to determining the multiple transactions, determine if a second match exists based on comparing transaction amount, time, date and location, and
responsive to the second match existing, apply the refund to the corresponding loan, and responsive to the second match not existing, provide a refund check or refund credit to the customer.
Claim 11 recites the limitations of:
A method of issuing and facilitating transactions associated with a virtual card based on communications and actions of parties to a transaction, the method comprising:
receiving a card request from a customer to use the virtual card, the virtual card having a persistent personal account number (PAN) that enables the virtual card to be used for obtaining financing for multiple transactions without changing the persistent PAN;
providing a graphical interface at a client device to set up a customer account for the virtual card based on the card request and predefining loan terms as accepted loan terms for a future transaction; and
issuing the virtual card with the persistent PAN to a client device of the customer by providing instructions to the client device for graphical display of the virtual card at the client device;
responsive to presentation of the virtual card to a first vendor or merchant, facilitating payment of a first vendor or merchant on behalf of the customer in response to a request to initiate a first financial transaction using the virtual card with the persistent PAN and a selection by the customer to accept the accepted loan terms;
establishing a first loan for the customer based on the first financial transaction and original loan terms by matching the accepted loan terms;
receiving, via customer input at the graphical interface at the client device, an input defining a change to loan terms for loan processing;
responsive to presentation of the virtual card to a second vendor or merchant, facilitating payment of the second vendor or merchant on behalf of the customer in response to a request to initiate a second financial transaction using the virtual card with the persistent PAN, but with changed terms;
establishing a second loan for the customer based on the second financial transaction and the changed terms; and
facilitating servicing the first and second loans based on an activity of the customer after the first and second loans are established, according to the original loan terms and the changed terms, respectively,
wherein facilitating servicing of the first and second loan comprises: receiving an indication of a refund for a returned product;
attempting to determine a corresponding transaction and corresponding loan to the returned product by comparing a list of stored merchant identities from past transactions to a refunding merchant identity to determine a match between one of the stored merchant identities and the refunding merchant identity to:
in response to determining no multiple transactions, apply the refund to the corresponding loan,
in response to determining the multiple transactions, determine if a second match exists based on comparing transaction amount, time, date and location, and
responsive to the second match existing, apply the refund to the corresponding loan, and responsive to the second match not existing, provide a refund check or refund credit to the customer.
The claim as a whole recites a method that, under its broadest reasonable interpretation, covers collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction and managing an associated loan. For example, the specification explains that [0008] communications and actions of parties to a transaction include facilitating payment of a vendor or merchant on behalf of a customer in response to the transaction, establishing a loan for the customer based on the transaction, and facilitating servicing the loan based on an activity of the customer after the loan is established. This is a fundamental economic practice of a financial transaction; a commercial interaction, such as for business relations; and managing personal behavior or relationships or interactions between people, which are certain methods of organizing human activity.
Furthermore, the claims cover the use of an apparatus comprising processing circuitry for collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction and managing an associated loan. As the steps could be performed by a human without a computer, the claim limitations fall within the mental processes grouping, and the claim recites an abstract idea.
Thus, the claims recite an abstract idea. (Step 2A, prong 1: YES).
Moreover, the judicial exception is not integrated into a practical application. Other than reciting a “apparatus comprising processing circuitry”, “virtual card”, “graphical interface”, “client device”, and “processing circuitry”, to perform the steps of “providing”, “issuing”, “facilitating”, “establishing”, and “determining”, nothing in the claim elements preclude the steps from practically being a certain method for organizing human activity. The claim as a whole does not integrate the exception into a practical application. The claim merely describes how to generally “apply” the concept of collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction and managing an associated loan in a computer environment. The additional computer elements recited in the claim limitations are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception utilizing generic computer components.
For example, the Specification at [0042] discloses “In one embodiment, the processing circuitry 100 may include a storage device (e.g., memory 104) and a processor 102 that may be in communication with or otherwise control a user interface 110 and a device interface 120. As such, the processing circuitry 100 may be embodied as a circuit chip (e.g., an integrated circuit chip) configured (e.g., with hardware, software or a combination of hardware and software) to perform operations described herein. However, in some embodiments, the processing circuitry 100 may be embodied as a portion of a server, computer, laptop, workstation or even one of various mobile computing devices. In situations where the processing circuitry 100 is embodied as a server or at a remotely located computing device, the user interface 110 may be disposed at another device (e.g., at a computer terminal) that may be in communication with the processing circuitry 110 via the device interface 120 and/or a network (e.g., network 30).” Thus, the specification supports that general purpose computers or computer components are utilized to implement the steps of the abstract idea.
Additionally, the claimed graphical interface is merely adding pre-solution activity to the judicial exception, as merely data gathering means of the user’s options to receive the resources, and the interface objects are generally linking the judicial exception to a particular technological environment. Examiner notes that the claimed graphical interface elements at the client device are merely for setting up a customer account and displaying the issued virtual card at the client device. In view of the specification [0043]-[0044], the display interface is described only in generic terms. Use of a graphical interface to register a customer account or input loan terms constitutes mere data gathering. Similarly, the communication is merely transferring data.
Thus, the specification supports that general purpose computers or computer components are utilized to implement the steps of the abstract idea.
Merely implementing the abstract idea on a generic computer is not a practical application of the abstract idea. The claim as a whole, in viewing the additional elements both individually and in combination, does not integrate the judicial exception into a practical application. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. (Step 2A prong two: No)
The claim does not include additional elements, when considered both individually and as an ordered combination, that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using “apparatus comprising processing circuitry”, “virtual card”, “graphical interface”, “client device”, and “processing circuitry”, to perform the steps of “providing”, “issuing”, “facilitating”, “establishing”, and “determining”, amounts to no more than mere instructions to apply the exception using generic computer component. The claim merely describes how to generally “apply” the concept of collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction in a computer environment. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. Such additional elements are determined to not contain an inventive concept according to MPEP 2106.05(f). It should be noted that (1) the “recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not provide significantly more because this type of recitation is equivalent to the words “apply it”, and (2) “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice, commercial interaction, or managing personal behavior or relationships or interactions between people) does not integrate a judicial exception into a practical application or provide significantly more”.
Claim 11 is substantially similar to claim 1, thus, it is rejected on similar grounds.
For similar reasons as explained above with regard to claim 1, under Step 2A, prong two, these additional elements are merely applying generic computer components to implement the abstract idea. Under Step 2B, when viewing the additional elements individually and in combination, the additional elements do not amount to an inventive concept amounting to significantly more than the judicial exception itself as the claimed computer-related technologies are mere tools for implementing the abstract idea as explained with regard to claim 1.
Dependent claims 4-7, 14-17, and 21-24 merely limit the abstract idea and do not recite any further additional elements beyond the cited abstract idea and the elements addressed above, thus, they do not amount to significantly more. The dependent claims are abstract for the reasons presented above because there are no 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. Thus, the dependent claims are directed to an abstract idea. (Step 2B: No)
Therefore, claims 1, 4-7, 11, 14-17, and 21-24 are not patent-eligible.
Response to Arguments
Applicant’s arguments and the Affidavit of Dr. David Whitmire filed on May 8, 2026 have been fully considered but are not persuasive for the following reasons:
Applicant’s arguments and the Affidavit of Dr. David Whitmire filed on May 8, 2026 have been fully considered but are not persuasive for the following reasons:
The Affidavit under 37 CFR 1.132 filed March 17, 2026 is insufficient to overcome the rejection of claims 1, 4-7, 11, 14-17, and 21-24 based upon ineligible subject matter under 35 U.S.C. 101 as set forth in the last Office action because:
Per MPEP 716, although factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962) (expert opinion that an application meets the requirements of 35 U.S.C. 112 is not entitled to any weight; however, facts supporting a basis for deciding that the specification complies with 35 U.S.C. 112 are entitled to some weight); In re Lindell, 385 F.2d 453, 155 USPQ 521 (CCPA 1967) (Although an affiant’s or declarant’s opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis in original)).
Dr. Whitmire provides the opinion in paragraphs 7 and 11 that “the claims of the '386 application do more than merely "apply it" in relation to the integration of computer components into the solution defined. Instead, the processing circuitry ( or otherwise apparatus itself) is defined with specificity in relation to how it is structured for providing a persistent pan in multiple different BNPL transactions and further solves the technical problem created by the persistent pan through loan matching for product returns.”
This opinion is not persuasive. Examiner notes that the stated problems of a one-to-one correspondence between PANs of a virtual card and transactions is not a technical problem, and the claimed solution is not a technical solution. In the claim, the solution of establishing two loans, with different terms tied to the same PAN is part of the abstract idea, as it is merely involves data manipulation and record keeping to track transactions and their corresponding loans. The stated problem of matching returns to a corresponding loan is similarly not a technical problem nor solved by a technical solution. Reciting a persistent PAN to track a refund for a returned product by comparing a list of stored merchant identities from past transactions to a refunding merchant identity to determine a match, as recited in claims 1 and 11, for example, merely describes the abstract idea of facilitating and tracking credit-financed purchase transactions and refunds. The claimed solution of determining a match between the stored merchant identities and the refunding merchant identity is an abstract idea and could be completed mentally or by pen and paper.
Additionally, in paragraph 9, Dr. Whitmire describes the business advantages in that the system not only would benefit from a persistent PAN, but a methodology in order to allow a closed in credit system, like BNPL, to behave like an open credit system. However, this would be merely improving an abstract idea and does not constitute a technological improvement. The affidavit does not explain or support that the computer or underlying technology is improved.
At paragraph 10, Dr. Whitmire opines that the invention therefore combines technical tools of processing circuitry utilizing a persistent PAN to improve the transaction process by allowing customers to use the same virtual card, which creates a further technical problem that is solved by enabling a loan matching process to determine if a transaction is from a common purchase event (and should subsequently be associated with the same PAN) and further presents a unique machine-integrated interface workflow. However, this opinion does not support any technical improvements. Instead it supports that the abstract idea itself is improved.
Similarly, at paragraph 11, Dr. Whitmire describes the claimed functions clearly improve the capability of the system as a whole to increase efficiency and functionality in practical employment of the invention through the unique generation of a specific graphical interface. The advantages described are not technical advantages, but advantages to the business and an improved abstract idea.
In paragraphs 8 and 12, Dr. Whitmire opines that the claims of the '386 application also amount to significantly more than any alleged abstract idea. Instead, similar to the analysis noted above, the processing circuitry is defined with specificity in relation to how it is executed in its operating environment to provide the use of the same virtual card in multiple different transactions.
Examiner notes that the additional elements of the computer system - “apparatus comprising processing circuitry”, “virtual card”, “graphical interface”, “client device”, and “processing circuitry”, to perform the steps of “providing”, “issuing”, “facilitating”, “establishing”, and “determining”, are merely generic computer components performing their well-known basic functions of collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction and managing an associated loan. Per the specification, the recited computer elements are described only at a high level of generality, (see Spec. at paras. [0042]-[0044]). In view of the specification, the application of the computer elements is merely being applied to the abstract idea.
In paragraph 12, Dr. Whitmire opines that the use of the technical tool (processing circuitry) and concept (a persistent PAN in multiple different transactions) in order to quickly provide a consistent virtual card to users, while also further solving the problem of loan matching from using a persistent PAN, is unique and highly unconventional. This is not persuasive as whether or not an abstract idea is complex or not does not provide an improvement to the computer or underlying technology.
With respect to Applicant’s arguments as to the § 101 rejections for now pending claims 1, 4-7, 11, 14-17, and 21-24, Examiner notes the following:
Applicant argues that the claims are not directed to an abstract idea.
Examiner disagrees and notes that the claim as a whole recites a method that, under its broadest reasonable interpretation, covers collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction. This is a fundamental economic practice of a financial transaction; a commercial interaction, such as for business relations; and managing personal behavior or relationships or interactions between people, which are certain methods of organizing human activity. See MPEP 2106.04; Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017) (local processing of payments for remotely purchased goods). Thus, the claims recite an abstract idea.
Regarding the applicant's argument that the amended features would integrate the abstract idea into a practical application, the examiner respectfully disagrees and notes that, here the additional elements of the computer system - a “apparatus comprising processing circuitry”, “virtual card”, “graphical interface”, “client device”, and “processing circuitry”, to perform the steps of “providing”, “issuing”, “facilitating”, “establishing”, and “determining”, in all steps is recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims at issue covers collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction in a computer environment. The claims invoke the “apparatus comprising processing circuitry”, “virtual card”, “graphical interface”, “client device”, and “processing circuitry” merely as tools to execute the abstract idea.
For example, the Specification at [0042] discloses “In one embodiment, the processing circuitry 100 may include a storage device (e.g., memory 104) and a processor 102 that may be in communication with or otherwise control a user interface 110 and a device interface 120. As such, the processing circuitry 100 may be embodied as a circuit chip (e.g., an integrated circuit chip) configured (e.g., with hardware, software or a combination of hardware and software) to perform operations described herein. However, in some embodiments, the processing circuitry 100 may be embodied as a portion of a server, computer, laptop, workstation or even one of various mobile computing devices. In situations where the processing circuitry 100 is embodied as a server or at a remotely located computing device, the user interface 110 may be disposed at another device (e.g., at a computer terminal) that may be in communication with the processing circuitry 110 via the device interface 120 and/or a network (e.g., network 30).” Thus, the specification supports that general purpose computers or computer components are utilized to implement the steps of the abstract idea.
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a certain method of organizing human activity or mental process) does not integrate a judicial exception into a practical application. (MPEP 2106.05 (f))
Next, Examiner notes that the stated problems of a one-to-one correspondence between PANs of a virtual card and transactions is not a technical problem, and the claimed solution is not a technical solution. In the claim, the solution of establishing two loans, with different terms tied to the same PAN is part of the abstract idea, as it is merely involves data manipulation and record keeping to track transactions and their corresponding loans. The stated problem of matching returns to a corresponding loan is similarly not a technical problem nor solved by a technical solution. Reciting a persistent PAN to track a refund for a returned product by comparing a list of stored merchant identities from past transactions to a refunding merchant identity to determine a match, as recited in claims 1 and 11, for example, merely describes the abstract idea of facilitating and tracking credit-financed purchase transactions and refunds. The claimed solution of determining a match between the stored merchant identities and the refunding merchant identity is an abstract idea and could be completed mentally or by pen and paper.
Finally, the Applicant argues that the claims are directed to significantly more than the abstract idea.
Examiner disagrees, however, and notes that, as explained above in the instant rejection under 35 U.S.C. § 101, that the additional elements do not amount to an inventive concept. The additional elements of the computer system - “apparatus comprising processing circuitry”, “virtual card”, “graphical interface”, “client device”, and “processing circuitry”, to perform the steps of “providing”, “issuing”, “facilitating”, “establishing”, and “determining”, are merely generic computer components performing their well-known basic functions of collecting, analyzing, and transmitting data to facilitate the completion of a financial transaction and managing an associated loan. Per the specification, the recited computer elements are described only at a high level of generality, (see Spec. at paras. [0042]-[0044]). In view of the specification, the application of the computer elements is merely being applied to the abstract idea.
The other limitations which are simply supporting the abstract idea correspond to insignificant extra-solution activity which do not transform the abstract idea into a patent eligible subject matter. Also, the functionality here is already present in the recited hardware, which is merely routine and conventional. Collecting, analyzing, and transmitting data is routine and conventional. There is no technological problem or solution identified. This is merely a business solution to transfer data between devices. (MPEP 2106.05 (f))
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and is available for review on Form PTO-892 Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MERRITT J HASBROUCK whose telephone number is (571)272-3109. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Tran can be reached on 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MERRITT J HASBROUCK/Examiner, Art Unit 3695
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695
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