DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/14/25 has been entered.
Status of the Claims
This office action is submitted in response to the RCE filed on 11/14/25.
Examiner notes that this application is a continuation of 16/932457 and 14/609546, the latter of which is now US Patent No. 10776802.
Examiner further notes Applicant’s priority date of 1/30/15, which stems from the aforementioned parent applications.
Examiner further notes that Applicant filed a Terminal Disclaimer on 9/8/23.
Examiner further notes the previous withdrawal of prior art on 10/26/23.
None of the claims have been amended.
Claims 5, 12, and 18 have been cancelled.
Therefore, claims 1-4, 6-11, 13-17, and 19-23 are currently pending and have been examined.
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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4, 6-11, 13-17, and 19-23 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.
Independent claims 1, 8, and 15, in part, describe an invention comprising: providing a user with an ordered series of questions requesting their consent to collect their transactional data; receiving the user’s selections; determining a selection of the user that identifies entities that can access their transaction data; determining a user selection of a consent period; modifying the transaction that according to the level of consent granted by the user; determining a consent expiration date based on the user responses; and deleting the user’s transaction data when the consent period expires. As such, the claims are directed to the abstract idea of incentivizing users to give their consent to transactional data collection, which, pursuant to MPEP 2106.04, is aptly categorized as a method of organizing human activity (i.e., sales and marketing activities) and a mental process. Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
Next, the aforementioned claims recite additional elements that are associated with the judicial exception, including: receiving transaction data in real time; transmitting a set of instructions to the POS to display the questions to a user; displaying a first stage (i.e. first question) of a consent matrix to the user; displaying a second stage (i.e. second question) of the consent matrix; receiving user selections; writing/storing the transactional data in a database, transmitting a transaction authorization response for a transaction; using an API to authenticate a user; and preventing access if the user is not properly authenticated. Dependent 7, 14, and 20 further describe a process for receiving a request to view the data from the transaction from the entity and providing a GUI to the entity. Examiner understands these limitations to be insignificant extrasolution activity. (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Cf. Diamond v. Diehr, 450 U.S. 175, 191-192 (1981) ("[I]nsignificant post-solution activity will not transform an unpatentable principle in to a patentable process.”).
The aforementioned claims also recite additional elements that include: “one or more computing devices” associated with an “acquirer processor” for executing the method, a “memory” for storing executable instructions, a “POS device” for facilitating a purchase and transmitting data, a “display” for presenting the consent matrix (questions) to the user, a “user interface” for presenting questions and data to the user; and a “database” for storing transaction data. Dependent claims 7, 14, and 20 further disclose a “graphical user interface” for displaying data according to the scope of consent. These limitations are recited at a high level of generality, and appear to be nothing more than generic computer components. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984.
Furthermore, looking at the elements individually and in combination, under Step 2A, Prong Two, the claims as a whole do not integrate the judicial exception into a practical application because they fail to: improve the functioning of a computer or a technical field, apply the judicial exception in the treatment or prophylaxis of a disease, apply the judicial exception with a particular machine, effect a transformation or reduction of a particular article to a different state or thing, or apply the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. Rather, the claims merely use a computer as a tool to perform the abstract idea(s), and/or add insignificant extra-solution activity to the judicial exception, and/or generally link the use of the judicial exception to a particular technological environment (e.g. computers connected to a POS network).
Next, under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered both individually and as an ordered combination, do not amount to significantly more than the abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Simply put, as noted above, there is no indication that the combination of elements improves the functioning of a computer (or any other technology), and their collective functions are facilitated by generic computer implementation.
Additionally, pursuant to the requirement under Berkheimer, the following citations are provided to demonstrate that the additional elements, identified as extra-solution activity, amount to activities that are well-understood, routine, and conventional. See MPEP 2106.05(d).
Writing/Storing data in a memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); 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).
Outputting/Displaying data to a user. Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); MPEP 2106.05(g)(3).
Utilizing an API key to authenticate a user and/or prevent their access if not authenticated. See https://www.fortinet.com/resources/cyberglossary/api-key.
Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and are ineligible under 35 USC 101.
Claims 2-4, 6-7, 9-11, 13-14, 16-17, and 19-23 are dependent on the aforementioned independent claims, and include all the limitations contained therein. These claims do not recite any additional technical elements, and simply disclose additional limitations that further limit the abstract idea with details regarding the scope of user consent, the scope of incentives, procuring the consent, transacting the discount, displaying data, and presenting the consent questions to the user in a particular sequence. Thus, the dependent claims merely provide additional non-structural details that fail to meaningfully limit the claims or the abstract idea(s).
Therefore, claims 1-4, 6-11, 13-17, and 19-23 are not drawn to eligible subject matter, as they are directed to an abstract idea without significantly more.
Relevant Prior Art
The following references are made of record and not relied upon, as they are deemed to be pertinent to Applicant’s disclosure.
Knowles et al. (20140025391), directed to a method of enhanced transaction processing.
Ortiz et al. (9747608), directed to a method for providing data to third parties.
Kingston et al. (20130218694), directed to a method for services for exceeding account thresholds via a POS device.
Ortega et al. (20130013477), directed to a method of exchanging financial services information and of communication between customers and providers.
Response to Arguments
Applicant’s arguments regarding the sufficiency of the claims under 35 USC 101 remain unpersuasive.
Applicant’s solitary argument focuses on the allegation that the claims are eligible in view of the holding in Ex parte Guillaume Desjardins. Examiner disagrees. In Desjardins, the invention was directed to a method for sequentially training models while preserving previously learned knowledge, an approach to prevent catastrophic forgetting of model parameters learned from prior tasks. Examiner notes that the features of the instant application are completely unrelated to machine learning, much less any of the aforementioned features claimed in Desjardins. In fact, the specification is entirely devoid of any mention of machine learning and/or artificial intelligence.
Contrary to Applicant’s attempts to portray the invention in a more technical light, the claimed method is nothing more than a process that allows users to monetize their transactional data by providing consent to collect it. The claims do not recite any technical features associated with the data collection or security. As such, the invention merely amounts to collecting data, capturing a user’s consent, and dumping the data once a period of time expires.
As previously noted, Examiner finds that the “improvement” to which the Applicant refers is a business improvement rather than an improvement to a technological or technical field. Furthermore, Applicant has not provided any evidence that the programming related to their “improvement” would entail anything atypical from conventional programming. And, as the Federal Circuit clearly stated, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014).
Furthermore, there is no indication in the specification that any technologically novel or inventive hardware is required to perform the method. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d. at 1336 (focusing on whether the claim is “an improvement to [the] computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity”). Simply put, “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359); see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d at 1367 (“claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept”). Thus, in sum, “the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” Elec. Power Grp., 830 F.3d at 1354.
Finally, Examiner notes that every step of the invention could easily be performed manually, and is not necessarily entrenched in technology. Features such as the “real-time” collection and transmission of data are merely facilitated by a generic processor.
For at least these reasons, the rejection under 35 USC 101 is sustained.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 CHRISTOPHER BUSCH whose telephone number is (571)270-7953. The examiner can normally be reached M-F 10-7.
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/CHRISTOPHER C BUSCH/Examiner, Art Unit 3621
/WASEEM ASHRAF/Supervisory Patent Examiner, Art Unit 3621