Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Here applicant filed an amendment on 11/12/25. Claims 1-6, 8,10,12-17 were pending. Claims 1,10,12,13,15-17 are amended. Claims 7,9,11 were canceled. Thus claims 1-6, 8,10,12-17 remain pending. After careful consideration of the applicant arguments and amendments, the examiner finds them to be moot and/or non-persuasive. This action is a Final rejection.
Claim Objections
Claims 1, 17 are to because of the following informalities: see below. Appropriate correction is required.
Claim 17 is drafted as a system claim but the steps are “method” type steps using “ing” rather than system type elements such as a processor and memory.
Further in claims 1, and 17 “detecting that the mobile device has entered a low power mode, the low power mode characterized by a lack of power for running a user interface, an operating system or both … such that. (or is a choice of one or both)
In claims 1, 17 applicant uses “if” which is a choice and thus may not occur if the merchant is not included.
Claims 1, 17 “the listing or merchant types” – should be “of” likely because “or” does not make sense.
Claims 1, 17 “allows the user to not support payments in the low power mode at merchant terminals not included in the listing of merchant types”. This is a double negative which is also confusing. Applicant should positively recite this condition.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims, 1-6, 8, 10, 12-17 are rejected under 35 USC 112(b)
Claims 1, 17 uses the term “a terminal retained by the merchant”, then “a merchant terminal” and later “the terminal” and “the “merchant terminal” and “merchant terminals” In claim 2, “the terminal and claim 3 “the terminal”. Claim 4 “a unique terminal” Claim 12 “the terminal”.
The use of the term terminal is not consistent as it lacks antecedent basis. Is a terminal retained by a merchant a merchant terminal and if so, the referral to merchant terminal is mixed and confusing. Are there just merchant terminals as in one or more or are there merchant terminals and terminals retained by the merchant. For examination purposes “terminal” will be treated generically.
Correction is required.
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 1-6,8,10,12-17 are rejected because they are directed to an abstract idea without significantly more.
Step 2A prong one- although the claims are method and mobile device (system) type claims which are statutory classes.
Claim 1 will be exemplified recites the abstract limitations;
1. (Currently Amended) A method, at …, of assigning a preferred payment application stored on the … to a merchant, the method comprising the steps of: storing multiple payment applications on the …, each of the multiple payment applications being associated with a unique application identifier; receiving a selection of [a] one or more merchant types at the mobile device; receiving a selection from a user of the preferred payment application via a user interface of the …, the preferred payment application being one of the multiple payment applications stored on the … ; mapping the preferred payment application to the merchant by creating a record on the mobile device containing an application identifier and a merchant identifier listing the selected one or more merchant types, the application identifier being the unique application identifier associated with the preferred payment application; assigning a highest priority value to the record that contains the application identifier, which identifies the preferred payment application; presenting the … by the user to … retained by the merchant; detecting that the … has entered a low power mode, the low power mode characterized by a lack of power for running a user interface, an operating system, or both on the …, such that a user of the … cannot select a desired payment application during low power mode; identifying an execution of a transaction at a …;determining in the low power mode whether … is included in the listing of merchant types in the merchant identifier within the record containing the unique application identifier associated with the preferred payment application with the highest priority value; and processing a transaction at .. automatically using the preferred payment application identified by the application identifier in the low power mode if the … determines that the … is included in the listing or merchant types; wherein the step of determining whether the … is included in the listing of merchant types allows the user to not support payments in the low power mode at … not included in the listing of merchant types in the merchant identifier within the record containing the unique application identifier associated with the preferred payment application with the highest priority value,
Here the non- abstract elements are a “mobile device” and a “terminal” and “merchant terminal”
The broadest reasonable interpretation covers the performance of certain methods of organizing human activities which is a fundamental economic practice.
The components of “mobile device” and “terminal” are just applying generic computer components to the abstract idea. The recitation of generic components does not necessarily preclude a claim from reciting an abstract idea however,
The judicial exception is not integrated into a practical application. (step 2a prong 2) n particular the extra elements are recited at a high level of generality. The use of the generic computing elements results in no more than instructions to apply the exception.
Step 2B (no the claims do not provide significantly more)
The claims nor the dependent claims 6,8,10,12-16 themselves do not contain significantly more even in ordered combination with the independent claims. Thus the claims are not patent eligible.
It is noted that the examiner found the inventive concept of low power mode usage for a transit application and respective workarounds for the device going into low power mode and then being able to complete the transaction without penalty, see page 7 lines 20-25. The examiner recommended by interview that the applicant could incorporate the technology or elements to obtain a compliant set of claims.
Claim Rejections - 35 USC § 103
Not applied, the most relevant art of record is;
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim(s) 1-6,8,10,12-14,17 is/are rejected under 35 U.S.C. 103 as being unpatentable over
over US Patent 9760871 to Pourfallah in view of US Patent to Anderson 9064246 and US Patent Publication to Hall 20130084803
As per claim 1, Pourfallah discloses;
storing multiple payment applications on the mobile device, each of the multiple payment applications being associated with a unique application identifier; (col. 6 lines 45-55, prepaid card, mobile payment app etc.)
receiving a selection of [a] one or more merchant types at the mobile device; (col. 50 lines 1-10)
receiving a selection from a user of the preferred payment application via a user interface of the mobile device,
the preferred payment application being one of the multiple payment applications stored on the mobile device;
(col. 49 preferences for account)
mapping the preferred payment application to the merchant by creating a record on the mobile device containing an application identifier and a merchant identifier listing the selected one or more merchant types,
Pourfallah(col. 44 lines 50-60 mapping)
the application identifier being the unique application identifier associated with the preferred payment application;
Pourfallah(col. 53 and col. 143 lines 30-35)
assigning a highest priority value to the record that contains the application identifier, which identifies the preferred payment application;
Pourfallah(col. 150 rank the accounts in priority order and fig. 5d, 573)
if the mobile device determines that the merchant terminal is included in the listing or merchant types;
Pourfallah(col. 53 and col. 143 lines 30-35)
Here while Pourfallah discloses; a merchant list;
Anderson teaches a list of prearranged payment options
whether the merchant terminal is included in the listing of merchant types in the merchant identifier within the record containing the unique application identifier associated with the preferred payment application with the highest priority value;
not included in the listing of merchant types in the merchant identifier within the record containing the unique application identifier associated with the preferred payment application with the highest priority value
Anderson(fig. 2 208, “a list of prearranged payment options…” also col. 4 lines 1-10, if the default one is not used, others are offered)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the payment teachings of Pourfallah with the list of payment applications or options of Anderson for the motivation of “paying using a variety of methods” col. 1 lines 30-35)
In regards to low power mode, Pourfallah and Anderson do not disclose what Hall teaches;
presenting the mobile device by the user to a terminal retained by the merchant; detecting that the mobile device has entered a low power mode,
the low power mode characterized by a lack of power for running a user interface, an operating system,
or both on the mobile device, such that a user of the mobile device cannot select a desired payment application during low power mode;
identifying an execution of a transaction at a merchant terminal;
determining in the low power mode
and processing a transaction at the terminal automatically using the preferred payment application identified by the application identifier
in the low power mode
wherein the step of determining whether the merchant terminal is included in the listing of merchant types allows the user to not support payments in the low power mode at merchant terminals
Hall( the device can work as a regular phone but, in low power mode it can act as a tag or card emulation mode, 0026, note the “or” is a choice, and allows is a capability)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the card teachings of Pourfallah with the NFC enabled phone of Hall for the motivation of allowing a mobile device on low power mode to conduct transactions. (0007)
Claim 17 is similar to claim 1.
As per claim 2 Pourfallah discloses; The method of claim 1, further comprising the steps of: receiving a record request message from the terminal; and sending a record containing the application identifier and the merchant identifier(s) to the terminal.
Pourfallah(col. 106 lines 55-end)
As per claim 3 Pourfallah discloses; The method of claim 1, further comprising the steps of:
receiving a record request message from the terminal; and sending a plurality of records, each record containing one of the unique application identifier, and at least one record containing a merchant identifier. Pourfallah(col. 9 lines 45-60)
As per claim 4 Pourfallah discloses; The method of claim 1, wherein the merchant identifier identifies one of a unique merchant, a unique terminal or a group of merchants. Pourfallah(col. 119 lines 5-15) As per claim 5 Pourfallah discloses; The method of claim 4, wherein the merchant identifier identifies a group of merchants using a merchant category code.
Pourfallah(col. 119 lines 5-15)
As per claim 6 Pourfallah discloses; The method of claim 1, wherein the step of receiving a selection of a merchant at the mobile device comprises receiving an input from the user via the user interface of the mobile device. Pourfallah (col. 119 user interface lines 60-65)
As per claim 8 Pourfallah discloses;
The method of claim 1, wherein the step of creating a record containing the application identifier and the merchant identifier comprises adding the merchant identifier to a record containing the application identifier.
(here “the application identifier” is minimally supported such that the examiner cannot determine what the application identifier is, for example see fig. 2 description, the best the examiner can determine is that this is the name of the application? Col. 11 lines 45-50)
As per claim 10 Pourfallah discloses; The method of claim 9, further comprising the step of terminating the transaction process if no associated merchant identifier is found.
Pourfallah(col. 57 lines 15-20, a default payment account method, fig. 6B, “if” is a choice, if the merchant identifier is found then no default application)
As per claim 12 Pourfallah discloses;
The method of claim 11, (as per 112D, it likely is claim 1) wherein the step of searching the one or more records for the default payment application comprises performing, at the terminal, a payment application selection following standard processes. Pourfallah(col. 57, lines 15-20 describes a default payment account that is accessed by b2bpay sever application, here “default payment application” is taken to be a default payment type and “standard processes” are taken to be broadly any process as “standard processes” are not limited by any specific type of standard)
As per claim 13 Pourfallah discloses;
The method of claim 9, (assumed to be claim 1) wherein the merchant identifier identifies one of a unique merchant, a unique merchant location or a group of merchants.
Pourfallah(col. 4 lines 30-35 merchant category control, or tends to broaden this limitation)
As per claim 14 Pourfallah discloses; The method of claim 13 (assumed to be claim 1), wherein the merchant identifier identifies a group of merchants using a merchant category code.
Pourfallah(col. 4 lines 30-35 merchant category control, col. 23, lines 40-45, “category code”)
Claim(s) 15, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over
over US Patent 9760871 to Pourfallah in view of US Patent to Anderson 9064246 and US Patent Publication to Hall 20130084803 and US Patent Publication to Purves 20130054454
As per claim 15, Here Pourfallah discloses; The method of claim 9 (assumed to be claim 1), wherein the merchant identifier identifies a … merchant of a transit system. (col. 5 of Pourfallah discloses “merchant”, the applicant using the term transit merchant does not create a specific requirement that would be different for such a merchant) Here in the context of transit, Purves (0054) teaches the term transit accounts for a transit merchant.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate transit merchant type applications into the merchant disclosure of Pourfallah for the motivation of creating non expiring accounts for merchant transaction.
Claim 16 is similar to claim 1 in that Pourfallah lacks the transit aspect of transit merchant.
Purves 0054 teaches transit applications. Here in the context of transit, Purves (0054) teaches the term transit accounts for a transit merchant. It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate transit merchant type applications into the merchant disclosure of Pourfallah for the motivation of creating non expiring accounts for merchant transaction.
Response to Arguments
Here applicant filed an amendment on 11/12/25. Claims 1-6, 8,10,12-17 were pending. Claims 1,10,12,13,15-17 are amended. Claims 7,9,11 were canceled previously. Thus claims 1-6, 8,10,12-17 remain pending. After careful consideration of the applicant arguments and amendments, the examiner finds them to be moot and/or non persuasive. This action is a Final rejection.
In regards to 35 USC 101, moot in view claim objection and rejections under 35 USC 112(b) and updated 35 USC 101. Applicant needs to further show the connection between the low power mode and the ability to use the user terminal. As of the current filing the only elements are the cell phone and the merchant terminal. While Desjardins may be considered precedential to the applicant, the examiner has not received specific instructions to change the analysis based on this for business methods type patents. However, it is hoped that further guidance in combination with applicant amendment should be able to overcome the rejection. In regards to the low power mode itself, Hall is offered to show the actual concept is known.
In regards to the technical benefits, it was pointed out that some clarification is required in regards to “one or more”, “if”, merchant terminals etc. For example as argued, “ a user can specify” which is not recited.
In regards to the applicant arguments under 35 USC 103(a), the examiner is in agreement regarding low power mode and thus Hall is offered in view of amendment. Thus applicant arguments are moot in view of amendment.
This action is a Final rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Swing-Pay: One Card Meets All User Payment and Identity Needs: A Digital Card Module using NFC and Biometric Authentication for Peer-to-Peer Payment”, 2016 IEEE consumer electronics magazine
“Card-based Macropayment for Mobile Phones”, IEEE 2006
Applicant's amendment necessitated the new ground(s) 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE I EBERSMAN whose telephone number is (571)270-3442. The examiner can normally be reached 8:00 am - 5:00 pm Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693