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 .
Status of the Claims
Claims 21-24, 26-29, 31-33, 35-38, and 40, are presented for examination. Applicant filed a response to non-final Office action on 11/24/2025 amending independent claims 21, 31, and 40. In light of Applicant’s amendments, Examiner has withdrawn the previous § 101 and § 103 rejections. Examiner has, however, established new § 101 rejection for claims 21-24, 26-29, 31-33, 35-38, and 40, in the instant Office action. Since the new § 101 rejection was necessitated by Applicant’s amendment of independent claims 21, 31, and 40, the instant rejection of claims 21-24, 26-29, 31-33, 35-38, and 40, is FINAL rejection of the claims.
Examiner's Remarks
Patent Eligibility under § 101: Applicant states in pages 15-16 of Applicant’s arguments:
Contrary to what the Office Action alleges, the claims do not recite an abstract idea. Specifically, the disclosed systems and methods improve at least the functioning of a computing device (e.g., the mobile computing device) by providing a payment application usable for one or more payment transactions, wherein the payment application is installed on a computing device associated with a unique user, identifying one or more transaction patterns in historical transaction data by a trained pattern recognition model to output a unique transaction category of the unique user based on the identified one or more transaction patterns, receiving location data captured by the payment application installed on the computing device, wherein the location data is captured as the present transaction is occurring in real-time, and wherein the present transaction is associated with the unique user, and wherein the location data captured by the payment application as the present transaction is occurring in real-time comprises global positioning data of the computing device indicating a physical location of the computing device based on device identifying data of the computing device, determining a geographic location of the unique user based on the physical location of the computing device and the device identifying data of the computing device, and generating at least one prediction for a purchasing behavior of the unique user based on the unique transaction category associated with the unique user and the geographic location of the unique user.
Further, the disclosed systems and methods improve at least the functioning of a computing device (e.g., the mobile computing device) by authenticating a unique code encoding a tokenized primary account number associated with a unique user, the code generated by the payment application installed on the computing device, receiving the primary account number associated with the unique user from an account issuer based on authenticating the unique code, processing the present transaction using the primary account number based on transaction data associated with the present transaction, and transmitting a status of the present transaction for display within the payment application installed on the computing device, as recited in the amended claims. Contrary to what the Office Action alleges, the claims therefore do not recite an abstract idea.
Examiner respectfully disagrees. As before, Applicant’s claimed limitations – as amended – are not patent eligible under § 101 because they lack details and specifics as to how a technological solution is carried out. The newly amended features do not change this. For example, there is no recitation for how the location information is collected – only that it is received from a computing device. Further, instant recited claim limitations do not improve a functioning of a computing device, but use a computing device in solving a business problem. As such, instant claims are not patent eligible under § 101. Applicant is invited to set up an interview with Examiner to discuss this matter further.
Prior Art under § 102 and § 103:
The closest prior art reference of record – Rahman (US 10,956,940 B2) – discloses:
A mobile device of an individual can record the GPS data of the individual. The mobile device can be connected to a central system. The central system can receive the recorded GPS data. The central system can predict, by using a trained predictive model and based on transaction history of the individual and the GPS data, categories of likely purchases by the individual. The central system can generate or reproduce offers from merchants of the predicted categories that are located within a threshold distance from a current location of the individual. The central system can send the generated offers to the mobile device that can display the generated offers in real-time.
Another prior art reference of record – Tieken (US 8,788,429 B2) – discloses:
Methods, systems, and devices for secure transaction management are provided. Embodiments include a method for providing secure transactions that include receiving an identifier of a financial account at a payment processor system. A token may be generated that is linked with the identifier of the financial account at the payment processor system. The identifier of the financial account and the token may be stored securely at the payment processor system. The token may be transmitted without the identifier of the financial account to at least a recipient system or a recipient device where the token replaces the identifier of the financial account.
However, Rahman and Tieken – alone or in combination with each other or with other references – do not teach all the limitations of independent claims 21, 31, and 40, as an ordered combination of steps.
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 21-24, 26-29, 31-33, 35-38, and 40, are rejected under 35 USC § 101 because they are directed to non-statutory subject matter. The rationale for this finding is explained below.
The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself or a patent-eligible application of the judicial exception. See Alice Corp., 134 S. Ct. at 2355,110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is referred to as the Mayo test or the Alice/Mayo test (“the test”), is described in detail in Manual of Patent Examining Procedure (”MPEP”) (see MPEP § 2106(III) for further guidance). The step 1 of the test: It need to be determined whether the claims are directed to a patent eligible (i.e., statutory) subject matter under 35 USC § 101. Step 2A of the test: If the claims are found to be directed to a statutory subject matter, the next step is to determine whether the claims are directed to a judicial exception i.e., law of nature, natural phenomenon, and abstract idea (Prong 1). If the claims are found to be directed to an abstract idea, it needs to be determined whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong 2). Step 2B of the test: If the claims are directed to a judicial exception, the next and final step is to determine whether the claims recite additional elements that amount to significantly more than the judicial exception.
Step 1 of the Test:
When considering subject matter eligibility under 35 USC § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. Here, the claimed invention of claims 21-24 and 26-29 is a series of steps, which is method (i.e., a process) and, thus, one of the statutory categories of invention. Further, the claimed invention of claims 31-33 and 35-38 is a system, which is also one of the statutory categories of invention. Still further, the claimed invention of claim 40 is a non-transitory computer readable media, which is also one of the statutory categories of invention.
Conclusion of Step 1 Analysis: Therefore, claims 21-24, 26-29, 31-33, 35-38, and 40, are statutory under 35 USC § 101 in view of step 1 of the test.
Step 2A of the Test:
Prong 1: Claims 21-24, 26-29, 31-33, 35-38, and 40, however, recite an abstract idea of payment management of mobile payments. The creation of payment management of mobile payments, as recited in the independent claims 21, 31, and 40, belongs to certain methods of organizing human activity (i.e., commercial interactions) that are found by the courts to be abstract ideas. The limitations in independent claims 21, 31, and 40, which set forth or describe the recited abstract idea, are found in the following steps:
“authenticating the unique code with an account issuer” (claims 21, 31, and 40);
“determining a geographic location of the unique user based on the physical location of the computing device and the device identifying data of the computing device” (claims 21, 31, and 40);
“generating at least one prediction for a purchasing behavior of the unique user based on the unique transaction category associated with the unique user and the geographic location of the unique user” (claims 21, 31, and 40);
“generating, based on the at least one prediction for the purchasing behavior, at least one value added service associated with a merchant, the merchant associated with the unique transaction category” (claims 21, 31, and 40); and
“processing the present transaction using the primary account number based on transaction data associated with the present transaction” (claims 21, 31, and 40).
Prong 2: In addition to abstract steps recited above in Prong 1, independent claims 21, 31, and 40, recite additional elements:
“one or more processors” (claim 21, 31, and 40);
“one or more computer readable media storing instructions which, when executed by the one or more processors, cause the one or more processors to perform operations” (claim 31);
“a non-transitory computer readable medium storing instructions which, when executed by one or more processors of a payment management system, cause the one or more processors to perform a method” (claim 40); and
“a payment application installed on a computing device associated with a unique user” (claims 21, 31, and 40).
These additional elements are recited at a high level of generality (i.e., as a generic processor performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using generic computer components. Also, the following additional limitations recite insignificant extra solution activity (for example, data gathering):
“receiving a plurality of historical transaction data linked to the unique user” (claims 21, 31, and 40);
“providing the plurality of historical transaction data to a pattern recognition model trained to identify one or more transaction patterns in the plurality of historical transaction data and output a unique transaction category of the unique user based on the identified one or more transaction patterns” (claims 21, 31, and 40);
“receiving a unique code from a point of sale (POS) terminal associated with a present transaction occurring in real-time, the unique code encoding a tokenized primary account number associated with the unique user, wherein the unique code is generated by the payment application” (claims 21, 31, and 40);
“receiving a primary account number associated with the unique user from the account issuer based on authenticating the unique code” (claims 21, 31, and 40);
“receiving location data captured by the payment application, wherein the location data is captured as the present transaction is occurring in real-time using the payment application installed on the computing device, and wherein the present transaction is associated with the unique user, and wherein the location data captured by the payment application computing device as the present transaction is occurring in real-time comprises global positioning data of the computing device indicating a physical location of the computing device based on device identifying data of the computing device” (claims 21, 31, and 40);
“transmitting the at least one value added service for display within a menu of the payment application installed on the computing device associated with the present transaction occurring in real-time” (claims 21, 31, and 40); and
“transmitting a status of the present transaction for display within the payment application installed on the computing device” (claims 21, 31, and 40).
These additional limitations do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception. The additional elements/limitations of independent claims 21, 31, and 40, here do not render improvements to the functioning of a computer or to any other technology or technical field (see MPEP § 2106.05(a)), nor do they integrate the abstract idea into a practical application under MPEP § 2106.05(b) (particular machine); MPEP § 2106.05(c) (particular transformations); or MPEP § 2106.05(e) (other meaningful limitations). Further, the combination of these additional elements/limitations is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements/limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Conclusion of Step 2A Analysis: Therefore, independent claims 21, 31, and 40, are non-statutory under 35 USC § 101 in view of step 2A of the test.
Step 2B of the Test: The additional elements of independent claims 21, 31, and 40, (see above under Step 2A – Prong 2) are well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. The Applicant’s Specification describes these additional elements in following terms:
[0093] Figures 20A and 20B illustrate a Computer System 2000, which is suitable for implementing embodiments of the present invention, including payment management systems. Figure 20A shows one possible physical form of the Computer System 2000. Of course, the Computer System 2000 may have many physical forms ranging from a printed circuit board, an integrated circuit, and a small handheld device up to a huge super computer. Computer system 2000 may include a Monitor 2002, a Display 2004, a Housing 2006, a Disk Drive 2008, a Keyboard 2010, and a Mouse 2012. Disk 2014 is a computer-readable medium used to transfer data to and from Computer System 2000. [0094] In addition to the standard desktop, or server, computer system illustrated, it is fully within the scope of this disclosure that any computer system capable of the required storage and processing demands would be suitable for embodying the present invention. This may include tablet devices, smart phones, pin pad devices, and any other computer devices, whether mobile or even distributed on a network (i.e., cloud based).
[0095] Figure 20B is an example of a block diagram for Computer System 2000. Attached to System Bus 2020 are a wide variety of subsystems. Processor(s) 2022 (also referred to as central processing units, or CPUs) are coupled to storage devices, including Memory 2024. Memory 2024 includes random access memory (RAM) and read-only memory (ROM). As is well known in the art, ROM acts to transfer data and instructions uni-directionally to the CPU and RAM is used typically to transfer data and instructions in a bi-directional manner. Both of these types of memories may include any suitable of the computer-readable media described below. A Fixed Disk 2026 may also be coupled bi-directionally to the Processor 2022; it provides additional data storage capacity and may also include any of the computer-readable media described below. Fixed Disk 2026 may be used to store programs, data, and the like and is typically a secondary storage medium (such as a hard disk) that is slower than primary storage. It will be appreciated that the information retained within Fixed Disk 2026 may, in appropriate cases, be incorporated in standard fashion as virtual memory in Memory 2024. Removable Disk 2014 may take the form of any of the computer-readable media described below.
[0096] Processor 2022 is also coupled to a variety of input/output devices, such as Display 2004, Keyboard 2010, Mouse 2012 and Speakers 2030. In general, an input/output device may be any of: video displays, track balls, mice, keyboards, microphones, touch-sensitive displays, transducer card readers, magnetic or paper tape readers, tablets, styluses, voice or handwriting recognizers, biometrics readers, or other computers. Processor 2022 optionally may be coupled to another computer or telecommunications network using Network Interface 2040. With such a Network Interface 2040, it is contemplated that the Processor 2022 might receive information from the network, or might output information to the network in the course of performing the above-described payment management for mobile payments. Furthermore, method embodiments of the present invention may execute solely upon Processor 2022 or may execute over a network such as the Internet in conjunction with a remote CPU that shares a portion of the processing.
[0098] In sum, the present disclosure provides systems and methods for payment management supporting mobile payments . . . The payment manager system interfaces with payment systems, account issuers and point of sales terminals in order to facilitate payments made using a payment application on a smart phone, and further to generate predictions for consumer behavior to drive value added services.
This is a description of general-purpose computer. Further, the additional limitations of “receiving,” “providing,” and “transmitting” information amount to no more than mere instructions to apply the exception using generic computer components. For the same reason these additional limitations are not sufficient to provide an inventive concept. The additional limitations of “receiving,” “providing,” and “transmitting” information were considered insignificant extra-solution activity in Step 2A – Prong 2. Re-evaluating here in Step 2B, they are also determined to be well-understood, routine, and conventional activity in the field. Similarly to OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network), and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), the additional limitations of independent claims 21, 31, and 40, “receive,” “provide,” and “transmit” information over a network in a merely generic manner. The courts have recognized “receiving,” “providing,” and “transmitting” information functions as well-understood, routine and conventional when claimed in a merely generic manner. Therefore, the additional elements/ limitations of independent claims 21, 31, and 40, are well-understood, routine, and conventional. Further, taken as combination, the additional elements/limitations add nothing more than what is present when the additional elements/limitations are considered individually. There is no indication that the combination provides any effect regarding the functioning of the computer or any improvement to another technology.
Conclusion of Step 2B Analysis: Therefore, independent claims 21, 31, and 40, are non-statutory under 35 USC § 101 in view of step 2B of the test.
Dependent Claims: Dependent claims 22-24 and 26-29 depend on independent claim 21; and dependent claims 32-33 and 35-38 depend on independent claim 31. The elements in dependent claims 22-24, 26-29, 32-33, and 35-38, which set forth or describe the abstract idea, are:
“the plurality of historical transaction data comprises at least one of: a transaction location, a transaction amount, a transaction frequency, a transaction time, and a transaction identity” (claims 22 and 32: further narrowing the recited abstract idea);
“determining the unique transaction category associated with the unique user comprises assigning the unique user to a pre-existing transaction category from a listing of available transaction categories” (claim 23: further narrowing the recited abstract idea);
“each of the available transaction categories is associated with specific transaction criteria” (claim 24: further narrowing the recited abstract idea);
“assigning the unique user to a pre-existing transaction category from a listing of available transaction categories, wherein each of the available transaction categories is associated with specific transaction criteria” (claim 33: further narrowing the recited abstract idea);
“determining the geographic location comprises capturing global positioning system (GPS) data associated with the computing device” (claim 25 and 34: further narrowing the recited abstract idea);
“generating the at least one prediction for the purchasing behavior of the unique user further comprises generating the at least one prediction based on the plurality of historical transaction data” (claims 26 and 35: further narrowing the recited abstract idea);
“the plurality of historical transaction data comprises an indication of a frequent goods-purchasing time and a frequent goods-purchasing location” (claims 27 and 36: further narrowing the recited abstract idea);
“the at least one value added service comprises a discount coupon or a deal for a goods transaction” (claims 28 and 37: further narrowing the recited abstract idea); and
“transmitting the at least one value added service to the payment application further comprises integrating the at least one value added service into the payment application” (claims 29 and 38: further narrowing the recited abstract idea).
Conclusion of Dependent Claims Analysis: Dependent claims 22-24, 26-29, 32-33, and 35-38, do not correct the deficiencies of independent claims 21 and 31 and they are, thus, rejected on the same basis.
Conclusion of the 35 USC § 101 Analysis: Therefore, claims 21-24, 26-29, 31-33, 35-38, and 40, are rejected as directed to an abstract idea without “significantly more” under 35 USC § 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hammad (AU 2013315510 B2) discloses: “The Cloud-based Virtual Wallet NFC Apparatuses, methods and systems ("EAE") transform user enhanced security transaction initiation requests using EAE components into time-limited, session-specific transaction bounding tokens. In some implementations, the disclosure provides a processor-implemented method of transforming a transaction bounding token request into transaction bounded tokens and purchase authorizations.”
Collinge (AU 2013243805 B2) discloses: “A method for generating and provisioning payment credentials to a mobile device lacking a secure element includes: generating a card profile associated with a payment account, wherein the card profile includes at least payment credentials corresponding to the associated payment account and a profile identifier; provisioning, to a mobile device lacking a secure element, the generated card profile; receiving, from the mobile device, a key request, wherein the key request includes at least a mobile identification number (PIN) and the profile identifier; using the mobile PIN; generating a single use key, wherein the single use key includes at least the profile identifier, an application transaction counter, and a generating key for use in generating a payment cryptogram valid for a single financial transaction; and transmitting the generated single use key to the mobile device.”
Xiaolin Zheng and Deren Chen, "Study of mobile payments system," EEE International Conference on E-Commerce, 2003. CEC 2003., Newport Beach, CA, USA, 2003, pp. 24-27.
Dahlberg, Tomi, et al. "Past, present and future of mobile payments research: A literature review." Electronic commerce research and applications 7.2 (2008): 165-181.
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRPI H. KANERVO whose telephone number is 571-272-9818. The examiner can normally be reached on Monday – Friday, 10 am – 6 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIRPI H KANERVO/Primary Examiner, Art Unit 3691