DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for continued examination of application 17/804,087 (05/25/22) filed on 05/18/26.
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 - 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- 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; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1 - 9 is/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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention involves utilizing to electronically transmit information when said mobile device is within a transmission range, said information comprising: access information such that said mobile device can electronically initiate an inquiry; and a provision to automatically include customer identification information with said inquiry; automatically generating, in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information; electronically transmitting said customer identification information including said automatically generated location information; utilizing said customer identification information to perform a credit prescreen; generating, based on a result of said credit prescreen, a plurality of payment scenarios with associated terms, wherein said plurality of payment scenarios comprises at least one payment scenario related to said credit prescreen and at least one payment scenario unrelated to said credit prescreen; utilizing said customer identification information to identify a customer data file and obtain customer behavior information therefrom; utilizing said obtained customer behavior information to customize said plurality of payment scenarios with associated terms; transmitting said plurality of customized payment scenarios with associated terms; receiving a completed agreement for a selected payment scenario of said plurality of customized payment scenarios with said associated terms; providing said selected payment scenario during a checkout process; and completing a transaction with said selected payment scenario, which is a fundamental economic principles or practices (providing payment scenarios); commercial or legal interactions (providing payment scenarios); and managing personal behavior or relationships or interactions between people (utilizing ….. to electronically transmit; automatically generating; electronically transmitting; utilizing ….. to perform; generating; utilizing ….. to identify; utilizing ….. to customize; transmitting; receiving; providing, completing, etc.).
The mere nominal recitation of a “payment scenario information interactive beacon” and “mobile device” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to utilizing to electronically transmit information when said mobile device is within a transmission range, said information comprising: access information such that said mobile device can electronically initiate an inquiry; and a provision to automatically include customer identification information with said inquiry; automatically generating, in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information; electronically transmitting said customer identification information including said automatically generated location information; utilizing said customer identification information to perform a credit prescreen; generating, based on a result of said credit prescreen, a plurality of payment scenarios with associated terms, wherein said plurality of payment scenarios comprises at least one payment scenario related to said credit prescreen and at least one payment scenario unrelated to said credit prescreen; utilizing said customer identification information to identify a customer data file and obtain customer behavior information therefrom; utilizing said obtained customer behavior information to customize said plurality of payment scenarios with associated terms; transmitting said plurality of customized payment scenarios with associated terms; receiving a completed agreement for a selected payment scenario of said plurality of customized payment scenarios with said associated terms; providing said selected payment scenario during a checkout process; and completing a transaction with said selected payment scenario.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components. That is, other than reciting a “payment scenario information interactive beacon” and “mobile device”, nothing in the claim elements preclude the steps from practically being performed in the mind. For example, but for “the payment scenario information interactive beacon” and “mobile device”, the claim encompasses the user manually utilizing to electronically transmit information when said mobile device is within a transmission range, said information comprising: access information such that said mobile device can electronically initiate an inquiry; and a provision to automatically include customer identification information with said inquiry; automatically generating, in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information; electronically transmitting said customer identification information including said automatically generated location information; utilizing said customer identification information to perform a credit prescreen; generating, based on a result of said credit prescreen, a plurality of payment scenarios with associated terms, wherein said plurality of payment scenarios comprises at least one payment scenario related to said credit prescreen and at least one payment scenario unrelated to said credit prescreen; utilizing said customer identification information to identify a customer data file and obtain customer behavior information therefrom; utilizing said obtained customer behavior information to customize said plurality of payment scenarios with associated terms; transmitting said plurality of customized payment scenarios with associated terms; receiving a completed agreement for a selected payment scenario of said plurality of customized payment scenarios with said associated terms; providing said selected payment scenario during a checkout process; and completing a transaction with said selected payment scenario. NOTE: (a) The claim is silent regarding who or what is performing the positively recited steps or acts. The claim may not necessarily be describing what a machine itself is doing, but may interpreted more broadly. (b) For example, how a machine (e.g., “a payment scenario information interactive beacon”) or data (e.g., “customer identification information”, “obtained customer behavior information”) may be used (e.g., “utilizing ….. to electronically transmit”; “utilizing ….. to perform”; “utilizing ….. to identify”; “utilizing ….. to customize”, etc.) as a tool of a human operator. See also, MPEP§ 2111 Broadest Reasonable Interpretation. (b) The claim also references a “mobile device”. The claim is not from the perspective of the “mobile device” and the “mobile device” does not perform any of the positively recited steps or acts required of the claimed invention. The “mobile device” is only nominally or tangentially related. For example, with respect to the intended use/ result of the access information (e.g., “such that said mobile device can”). For example, with respect to the location where the automatically generation step occurs (e.g., “at said mobile device”). See also, MPEP§ 2111 Broadest Reasonable Interpretation.
The mere nominal recitation of a “payment scenario information interactive beacon” and “mobile device” does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea) is not integrated into a practical application.
The claim recites the combination of additional elements of the “payment scenario information interactive beacon” being utilized to electronically transmit “to a mobile device”. The claim recites the combination of additional elements of the “automatically generating” step occurring “at said mobile device”. The claim recites the combination of additional elements of at least one “electronically transmitting” step being “from said mobile device”. The claim recites the combination of additional elements of the “transmitting” being “to said mobile device”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer being used to perform the generic computer functions of (a) data receipt/ transmission (e.g., “utilizing ….. to electronically transmit”; “electronically transmitting”; “transmitting”; “providing”, “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “automatically generating”, “utilizing ….. to perform”; “generating”; “utilizing ….. to identify”; “utilizing ….. to customize”; “completing”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering payment scenario data), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “payment scenario information interactive beacon” and “mobile device” are also recited at a high level of generality. At best, the “payment scenario information interactive beacon” and “mobile device” limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea. NOTE: (a) The claim is silent regarding who or what is performing the positively recited steps or acts. The claim may not necessarily be describing what a machine itself is doing, but may interpreted more broadly. (b) For example, how a machine (e.g., “a payment scenario information interactive beacon”) or data (e.g., “customer identification information”, “obtained customer behavior information”) may be used (e.g., “utilizing ….. to electronically transmit”; “utilizing ….. to perform”; “utilizing ….. to identify”; “utilizing ….. to customize”, etc.) as a tool of a human operator. See also, MPEP§ 2111 Broadest Reasonable Interpretation. (b) The claim also references a “mobile device”. The claim is not from the perspective of the “mobile device” and the “mobile device” does not perform any of the positively recited steps or acts required of the claimed invention. The “mobile device” is only nominally or tangentially related. For example, with respect to the intended use/ result of the access information (e.g., “such that said mobile device can”). For example, with respect to the location where the automatically generation step occurs (e.g., “at said mobile device”). See also, MPEP§ 2111 Broadest Reasonable Interpretation.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 05/25/22 does not provide any indication that the “payment scenario information interactive beacon” and “mobile device” are anything other than generic, off-the-shelf computer components, see at least Fig. 1A and para. [0250]. Furthermore, the prosecution history of the instant application provides Butvin, US Pub. No. 2021/0065160; Kurani, US Pat. No. 10,679,285; Kim, 10,796,363; Sulkowski, US Pub. No. 2005/0102221 and Zhao, US Pub. No. 2015/0073911 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “utilizing ….. to electronically transmit”; “electronically transmitting”; “transmitting”; “providing”, “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “automatically generating”, “utilizing ….. to perform”; “generating”; “utilizing ….. to identify”; “utilizing ….. to customize”; “completing”, etc. step(s) as claimed) are well understood, routine and conventional. Butvin, abstract, Fig. 4E, [0031] [0032] [0034] [0035] [0043 [0064] [0071] [0072] [0073] [0075] [0076] [0077] [0078] [0088] [0089] [0090] [0093] [0094] [0098] [0113] [0115] [0120] [0122] [0123] [0128] [0129] [0133] [0220] [0243] [0249] [0250] [0251] [0255] [0261] [0262] [0263] [0266] [0267] [0268] [0269] [0270] [0271] [0272] [0273] [0274] [0276] [0278] [0280] [0281] [0284] [0285]. Kurani, col. 2, line 60+ - col. 3, line 22; col. 7, lines 10 - 23; col. 9, lines 27 - 41; col. 10, line 64+ - col. 11, line 23; col. 14, lines 13 - 27. Kim, col. 28, lines 39 - 49. Sulkowski, [0010] [0013] [0014] [0022] [0078] [0083]. Zhao, abstract, [0010]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “utilizing ….. to electronically transmit”; “electronically transmitting”; “transmitting”; “providing”, “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “automatically generating”, “utilizing ….. to perform”; “generating”; “utilizing ….. to identify”; “utilizing ….. to customize”; “completing”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 9 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Response to Arguments
Objections
Withdrawn in view of applicant’s arguments and/ or amendments.
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claim(s) are not directed to a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
Fundamental economic principles or practices relate to the economy and commerce. The claimed invention encompasses fundamental economic principles or practices as it relates to processing of payments (e.g., providing payment scenarios).
The claimed invention encompasses commercial or legal interactions. The claimed invention relates to providing payment scenarios. Providing payment scenarios, in the instant scenario, pertains to agreements in the form of “contracts”, “legal obligations”, “sales activities or behaviors” and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions (e.g., “utilizing ….. to electronically transmit information ….. when said mobile device is within a transmission range, said information comprising:
access information such that said mobile device can electronically initiate an inquiry; and a provision to automatically include customer identification information with said inquiry; automatically generating, ….. in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information; electronically transmitting ….. said customer identification information including said automatically generated location information;
utilizing said customer identification information to perform a credit prescreen;
generating, based on a result of said credit prescreen, a plurality of payment scenarios with associated terms, wherein said plurality of payment scenarios comprises at least one payment scenario related to said credit prescreen and at least one payment scenario unrelated to said credit prescreen; utilizing said customer identification information to identify a customer data file and obtain customer behavior information therefrom; utilizing said obtained customer behavior information to customize said plurality of payment scenarios with associated terms; transmitting said plurality of customized payment scenarios with associated terms …..; receiving a completed agreement for a selected payment scenario of said plurality of customized payment scenarios with said associated terms; providing said selected payment scenario during a checkout process; and completing a transaction with said selected payment scenario.”).
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
The claimed invention is directed to mental processes. The claimed invention encompasses observations, evaluations, judgements and opinions (e.g., “automatically generating, ….. in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information”; “utilizing said customer identification information to perform a credit prescreen; generating, based on a result of said credit prescreen, a plurality of payment scenarios with associated terms, wherein said plurality of payment scenarios comprises at least one payment scenario related to said credit prescreen and at least one payment scenario unrelated to said credit prescreen; utilizing said customer identification information to identify a customer data file and obtain customer behavior information therefrom; utilizing said obtained customer behavior information to customize said plurality of payment scenarios with associated terms”; and “completing a transaction with said selected payment scenario.”) which are examples of mental processes.
Contrary to applicant’s arguments, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid. Similarly, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Although claims 1 - 9 recite a “payment scenario information interactive beacon” and a “mobile device”, nothing forecloses applicant’s claimed invention from being performed by a human and thus applicant’s claimed invention is still directed to a mental process.
NOTE: In response to applicant’s argument (i.e., “Of course, as Applicant has argued, the admitted additional elements solve an existing problem in the field e.g., customers "being constantly badgered to open a new credit account". (Applicant's Spec. [0002]).” See pg. 14 of applicant’s arguments/ remarks as filed 05/18/26). No nexus has been established between the additional elements (i.e., “payment scenario information interactive beacon”, “mobile device”) and the problem described in para. [0002] of applicant’s specification as filed 05/25/22.
NOTE: In response to applicant's argument, it is noted that the features upon which applicant relies (i.e., “Applicant has argued the location generation cannot be performed by a human mind even with the help of paper, pencil, and/or slide rule. This location generation required a GPS, WiFi, or Cellular capabilities. Applicant does not agree that any court has held GPS, WiFi, or Cellular capabilities to fit within the terminology of a simply physical aid. As such, evidence to support such an assertion is respectfully requested. Otherwise, Applicant respectfully requests the Office Action withdraw the improper mental process rejection.” See pg. 13 of applicant’s arguments/ remarks as filed 05/18/26) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
First, although applicant’s specification may provide support for a “mobile device” with components such as a “GPS”, the claimed device (i.e., “mobile device”) doesn’t have or require any of the components or capabilities applicant described (i.e., “GPS, WiFi, Cellular capabilities”). See Fig. 1A and para. [0049] [0057] of applicant’s specification as filed 05/25/22. Applicant’s claimed invention merely recites a “non-functional” data descriptor (e.g., “location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information, not required machine attributes”). See independent claim 1 as filed 05/18/26. See also, MPEP §2111.05 Functional and Nonfunctional Descriptive Material. These features were considered as part of the PRONG 1 abstract idea analysis. Second, consistent with applicant’s specification as filed 05/25/22, the “location information” described may not even correspond to the “mobile device” at all.
For example, see para. [0054] of applicant’s specification as filed 05/25/22 which states:
[0054] In one embodiment, the location information could be the location of the mobile phone or non-phone computing device. In one embodiment, the location of the mobile phone can be determined via geo-fence, beacon range, a ping, NFC, WiFi, or the like. Moreover, the location may be an actual location or a relative location. “
NOTE: (a) The claim is silent regarding who or what is performing the positively recited steps or acts. The claim may not necessarily be describing what a machine itself is doing, but may interpreted more broadly. (b) For example, how a machine (e.g., “a payment scenario information interactive beacon”) or data (e.g., “customer identification information”, “obtained customer behavior information”) may be used (e.g., “utilizing ….. to electronically transmit”; “utilizing ….. to perform”; “utilizing ….. to identify”; “utilizing ….. to customize”, etc.) as a tool of a human operator. See also, MPEP§ 2111 Broadest Reasonable Interpretation. (b) The claim also references a “mobile device”. The claim is not from the perspective of the “mobile device” and the “mobile device” does not perform any of the positively recited steps or acts required of the claimed invention. The “mobile device” is only nominally or tangentially related. For example, with respect to the intended use/ result of the access information (e.g., “such that said mobile device can”). For example, with respect to the location where the automatically generation step occurs (e.g., “at said mobile device”). See also, MPEP§ 2111 Broadest Reasonable Interpretation. See also, MPEP §2106.04(a)(2)(III).
NOTE: Contrary to applicant’s characterization, all elements of applicant’s claim have been considered. Most of applicant’s claimed invention is indicative of the abstract idea (i.e., “utilizing ….. to electronically transmit information ….. when said mobile device is within a transmission range, said information comprising: access information such that said mobile device can electronically initiate an inquiry; and
a provision to automatically include customer identification information with said inquiry;
automatically generating, ….. in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information; electronically transmitting ….. said customer identification information including said automatically generated location information; utilizing said customer identification information to perform a credit prescreen; generating, based on a result of said credit prescreen, a plurality of payment scenarios with associated terms, wherein said plurality of payment scenarios comprises at least one payment scenario related to said credit prescreen and at least one payment scenario unrelated to said credit prescreen; utilizing said customer identification information to identify a customer data file and obtain customer behavior information therefrom; utilizing said obtained customer behavior information to customize said plurality of payment scenarios with associated terms; transmitting said plurality of customized payment scenarios with associated terms …..; receiving a completed agreement for a selected payment scenario of said plurality of customized payment scenarios with said associated terms;
providing said selected payment scenario during a checkout process; and
completing a transaction with said selected payment scenario.”). The abstract idea was considered as part of PRONG 1. As noted on pg. 6 above, the combination of additional elements (i.e., “The claim recites the combination of additional elements of the “payment scenario information interactive beacon” being utilized to electronically transmit “to a mobile device”. The claim recites the combination of additional elements of the “automatically generating” step occurring “at said mobile device”. The claim recites the combination of additional elements of at least one “electronically transmitting” step being “from said mobile device”. The claim recites the combination of additional elements of the “transmitting” being “to said mobile device”.) were considered as part of PRONG 2.
NOTE: Just to reiterate, the role of the “payment scenario information interactive beacon” and “mobile device” were not considered as part of the PRONG 1 abstract idea analysis. The role of the “payment scenario information interactive beacon” and “mobile device” were considered as additional elements under the PRONG 2 analysis. As discussed in further detail below, the “payment scenario information interactive beacon” and “mobile device” are merely used as a tool to perform the abstract idea. See also, MPEP §2106.05 (f). Furthermore, the “payment scenario information interactive beacon” and “mobile device” are limited to insignificant extra-solution activity. See also, MPEP §2106.05 (g).
(2)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it provides (a) a technical solution to a technical problem; and (b) improvements in the functioning of a computer, or to any other technology or technical field (e.g., “Of course, as Applicant has argued, the admitted additional elements solve an existing problem in the field e.g., customers "being constantly badgered to open a new credit account". (Applicant's Spec. [0002]).” See pg. 13 of applicant’s arguments/ remarks as filed 05/18/26.). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention provides (a) a technical solution to a technical problem; and (b) improvements in the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
Applicant’s alleged “solution”/ “improvement” does not improve upon the computer’s capabilities/ functionality or any other technology or technical field. The provision of choice with respect to payments/ plurality of payment scenarios is not a technology based “solution”/ “improvement” as applicant suggests, but instead is directed to the underlying abstract idea (i.e., providing payment scenarios) as noted above.
Mere instructions to implement an abstract idea on a computer, merely using a computer as a tool to perform an abstract idea or an equivalent of an “apply it” rationale are not indicative of integration into a practical application. See also, MPEP §2106.05 (f).
The role of the device is limited to necessary data gathering and outputting (e.g., “utilizing a payment scenario information interactive beacon to electronically transmit information to a mobile device when said mobile device is within a transmission range, said information comprising: access information such that said mobile device can electronically initiate an inquiry; and a provision to automatically include customer identification information with said inquiry”; “electronically transmitting, from said mobile device, said customer identification information including said automatically generated location information”; and ”transmitting said plurality of customized payment scenarios with associated terms to said mobile device”;). The role of the device is limited to selecting a particular data source or type of data to be manipulated (e.g., “automatically generating, at said mobile device and in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information”;).
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information (e.g., “utilizing a payment scenario information interactive beacon to electronically transmit information to a mobile device when said mobile device is within a transmission range, said information comprising: access information such that said mobile device can electronically initiate an inquiry; and a provision to automatically include customer identification information with said inquiry”; “electronically transmitting, from said mobile device, said customer identification information including said automatically generated location information”;
and “transmitting said plurality of customized payment scenarios with associated terms to said mobile device; receiving a completed agreement for a selected payment scenario of said plurality of customized payment scenarios with said associated terms;
providing said selected payment scenario during a checkout process”;); analyzing it (e.g., “automatically generating, at said mobile device and in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information”; “utilizing said customer identification information to perform a credit prescreen; generating, based on a result of said credit prescreen, a plurality of payment scenarios with associated terms, wherein said plurality of payment scenarios comprises at least one payment scenario related to said credit prescreen and at least one payment scenario unrelated to said credit prescreen; utilizing said customer identification information to identify a customer data file and obtain customer behavior information therefrom; utilizing said obtained customer behavior information to customize said plurality of payment scenarios with associated terms”; and “completing a transaction with said selected payment scenario.”
); and displaying certain results of the collection and analysis merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
NOTE: Contrary to applicant’s characterization, all elements of applicant’s claim have been considered. Most of applicant’s claimed invention is indicative of the abstract idea (i.e., “utilizing ….. to electronically transmit information ….. when said mobile device is within a transmission range, said information comprising: access information such that said mobile device can electronically initiate an inquiry; and
a provision to automatically include customer identification information with said inquiry;
automatically generating, ….. in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information; electronically transmitting ….. said customer identification information including said automatically generated location information; utilizing said customer identification information to perform a credit prescreen; generating, based on a result of said credit prescreen, a plurality of payment scenarios with associated terms, wherein said plurality of payment scenarios comprises at least one payment scenario related to said credit prescreen and at least one payment scenario unrelated to said credit prescreen; utilizing said customer identification information to identify a customer data file and obtain customer behavior information therefrom; utilizing said obtained customer behavior information to customize said plurality of payment scenarios with associated terms; transmitting said plurality of customized payment scenarios with associated terms …..; receiving a completed agreement for a selected payment scenario of said plurality of customized payment scenarios with said associated terms;
providing said selected payment scenario during a checkout process; and
completing a transaction with said selected payment scenario.”). The abstract idea was considered as part of PRONG 1. As noted on pg. 6 above, the combination of additional elements (i.e., “The claim recites the combination of additional elements of the “payment scenario information interactive beacon” being utilized to electronically transmit “to a mobile device”. The claim recites the combination of additional elements of the “automatically generating” step occurring “at said mobile device”. The claim recites the combination of additional elements of at least one “electronically transmitting” step being “from said mobile device”. The claim recites the combination of additional elements of the “transmitting” being “to said mobile device”.) were considered as part of PRONG 2.
(3)Applicant argues the claimed invention provides an inventive concept (i.e., The claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 05/25/22 does not provide any indication that the “payment scenario information interactive beacon” and “mobile device” are anything other than generic, off-the-shelf computer components, see at least Fig. 1A and para. [0250]. Furthermore, the prosecution history of the instant application provides Butvin, US Pub. No. 2021/0065160; Kurani, US Pat. No. 10,679,285; Kim, 10,796,363; Sulkowski, US Pub. No. 2005/0102221 and Zhao, US Pub. No. 2015/0073911 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “utilizing ….. to electronically transmit”; “electronically transmitting”; “transmitting”; “providing”, “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “automatically generating”, “utilizing ….. to perform”; “generating”; “utilizing ….. to identify”; “utilizing ….. to customize”; “completing”, etc. step(s) as claimed) are well understood, routine and conventional. Butvin, abstract, Fig. 4E, [0031] [0032] [0034] [0035] [0043 [0064] [0071] [0072] [0073] [0075] [0076] [0077] [0078] [0088] [0089] [0090] [0093] [0094] [0098] [0113] [0115] [0120] [0122] [0123] [0128] [0129] [0133] [0220] [0243] [0249] [0250] [0251] [0255] [0261] [0262] [0263] [0266] [0267] [0268] [0269] [0270] [0271] [0272] [0273] [0274] [0276] [0278] [0280] [0281] [0284] [0285]. Kurani, col. 2, line 60+ - col. 3, line 22; col. 7, lines 10 - 23; col. 9, lines 27 - 41; col. 10, line 64+ - col. 11, line 23; col. 14, lines 13 - 27. Kim, col. 28, lines 39 - 49. Sulkowski, [0010] [0013] [0014] [0022] [0078] [0083]. Zhao, abstract, [0010]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “utilizing ….. to electronically transmit”; “electronically transmitting”; “transmitting”; “providing”, “receiving”, etc. step(s) as claimed); and (b) data processing (e.g., “automatically generating”, “utilizing ….. to perform”; “generating”; “utilizing ….. to identify”; “utilizing ….. to customize”; “completing”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 9 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
(4) Applicant argues the claimed invention was not considered “as a whole”.
NOTE: Contrary to applicant’s characterization, all elements of applicant’s claim have been considered. Most of applicant’s claimed invention is indicative of the abstract idea (i.e., “utilizing ….. to electronically transmit information ….. when said mobile device is within a transmission range, said information comprising: access information such that said mobile device can electronically initiate an inquiry; and
a provision to automatically include customer identification information with said inquiry;
automatically generating, ….. in response to said inquiry, location information selected from the group consisting of: Global Positioning Satellite based location information, WiFi based location information, Cellular based location information and beacon based location information; electronically transmitting ….. said customer identification information including said automatically generated location information; utilizing said customer identification information to perform a credit prescreen; generating, based on a result of said credit prescreen, a plurality of payment scenarios with associated terms, wherein said plurality of payment scenarios comprises at least one payment scenario related to said credit prescreen and at least one payment scenario unrelated to said credit prescreen; utilizing said customer identification information to identify a customer data file and obtain customer behavior information therefrom; utilizing said obtained customer behavior information to customize said plurality of payment scenarios with associated terms; transmitting said plurality of customized payment scenarios with associated terms …..; receiving a completed agreement for a selected payment scenario of said plurality of customized payment scenarios with said associated terms;
providing said selected payment scenario during a checkout process; and
completing a transaction with said selected payment scenario.”). The abstract idea was considered as part of PRONG 1. As noted on pg. 6 above, the combination of additional elements (i.e., “The claim recites the combination of additional elements of the “payment scenario information interactive beacon” being utilized to electronically transmit “to a mobile device”. The claim recites the combination of additional elements of the “automatically generating” step occurring “at said mobile device”. The claim recites the combination of additional elements of at least one “electronically transmitting” step being “from said mobile device”. The claim recites the combination of additional elements of the “transmitting” being “to said mobile device”.) were considered as part of PRONG 2.
NOTE: Just to reiterate, the role of the “payment scenario information interactive beacon” and “mobile device” were not considered as part of the PRONG 1 abstract idea analysis. The role of the “payment scenario information interactive beacon” and “mobile device” were considered as additional elements under the PRONG 2 analysis. As discussed in further detail below, the “payment scenario information interactive beacon” and “mobile device” are merely used as a tool to perform the abstract idea. See also, MPEP §2106.05 (f). Furthermore, the “payment scenario information interactive beacon” and “mobile device” are limited to insignificant extra-solution activity. See also, MPEP §2106.05 (g).
All elements of applicant’s claimed invention were considered and applicant’s claimed invention has been considered as a whole. In particular, the elements directed to the judicial exception (i.e., abstract idea) were considered under 2(A), PRONG 1. See at least pgs. 4 - 7 above. The combination of additional elements were considered under 2(A), PRONG 2. See at least pgs. 7 - 8 above. In particular, the inventive concept under 2(B). See at least pgs. 8 - 9 above. Dependent claims 2 - 9. See at least pg. 9 above.
Conclusion
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
