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 .
Response to Amendment
2. The Amendment filed on June 02, 2026 has been entered. Claims 1, 3-5, 9, and 28-31 have been amended. Claims 10-27 and 32-39 have been canceled and claims 40-54 have been newly added. Claims 2, 6-8, 11, 15-17, 20, and 24-26 were previously cancelled. Thus, claims 1, 3-5, 9, 28-31, and 40-54 are pending and rejected for the reasons set forth below.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1, 3-5, 9, 28-31, and 40-54 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.
In sum, claims 1, 3-5, 9, 28-31, and 40-54 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the January 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a machine (claims 1, 3-5, 9, 28-31, and 40-54). Therefore, we proceed to step 2A, Prong 1.
Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability. Here, the claims recite the abstract idea of storing payment information for a user in a digital wallet in association with various payees and initiating a payment with a particular payee using the stored payment information by:
receiving, from a,…,associated with a payor, in response to one or more first interactions by the payor,…, a transaction request to initiate a financial transaction between the payor and a payee, the transaction request comprising identifying information associated with the payor, identifying information associated with the payee, and initial transaction information regarding the payment financial transaction requested;
identifying, based at least upon the identifying information associated with the payor, a digital wallet associated with the payor;
querying one or more digital wallet databases storing information for the digital wallet associated with the payor;
receiving, from the one or more digital wallet databases, identifying information associated with one or more pre-approved payees that have been preapproved for automatic initiation of financial transactions without requiring transaction-specific approval from the payor;
in an instance in which additional payee information about the payee is needed to determine whether the payee is one of the one or more pre-approved payees that have been preapproved by the payor for automatic initiation of financial transactions without requiring transaction-specific approval from the payor:
sending a request for the additional payee information to the payor…;
receiving, from the payor…, in response to one or more second interactions by the payor with,…, the additional payee information about the payee; and
modifying at least one digital wallet database of the one or more digital wallet databases for the digital wallet associated with the payor to include therein the additional payee information received from the payor,…, in response to the one or more second interactions by the payor with the,…, of the payor,…,;
determining based at least upon the identifying information associated with the payee and the additional payee information about the payee if received from the payor,…, that the payee is not one of the one or more pre-approved payees that have been pre-approved by the payor for automatic initiation of financial transactions without requiring transaction-specific approval from the payor; and
disallowing initiation of the financial transaction between the payor and the payee and refraining from providing transaction instructions…
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes fundamental economic practices or principles and commercial or legal interactions (e.g., storing payment information for a user in a digital wallet in association with various payees and initiating a payment with a particular payee using the stored payment information).
Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). Therefore, the claim is directed to an abstract idea.
Under the 2019 PEG step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as: a “device,” “user interface,” and “processor,” do not amount to an innovative concept since, as stated above in the step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. (See, e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. (See, e.g., MPEP §2106.05 I.A.); (see also, paragraph [0022] of the specification). Independent claims 40, 45, and 50 are very similar to independent claim 1 and so the analysis for claim 1 also applies to claims 40, 45, and 50. Claims 40, 45, and 50 includes additional elements such as a non-transitory computer readable medium which stores program instructions which is being used to apply the abstract idea.
Dependent claims 3-5, 9, 28-31, 41-44, 46-49, 51-54 have all been considered and do not integrate the abstract idea into a practical application. Dependent claim 3 recites limitations that further define the abstract idea noted in claim 1 as it describes providing a generic notification that a payment has been disallowed based on the payee not being one that has been pre-approved. Dependent claim 4 recites limitations that further define the abstract idea noted in claim 1 as it describes all of the digital wallet data that being stored and that is associated with one or more payees. Dependent claim 5 recites limitations that further define the abstract idea noted in claim 1 as it describes what the request to initiate a payment entails. This would be all of the information necessary to carry out the payment including whether or not the payment is with a pre-approved payee.
Dependent claim 9 recites limitations that further define the abstract idea noted in claim 1 as it describes what the payor device is specifically. It can be any one of a mobile phone, a smartphone, a tablet, a laptop, a desktop, a virtual assistant device, a smart television, a smart home device, or an Internet-of-Things (IoT) device. Dependent claim 28 recites limitations that further define the abstract idea noted in claim 1 as it describes providing transaction instructions to initiate a transaction. Dependent claim 29 recites limitations that further define the abstract idea noted in claim 1 as it describes determining whether additional authentication information is needed to carry out a transaction. Dependent claim 30 recites limitations that further define the abstract idea noted in claim 1 as it describes use of additional transaction information that has been input to the device. Dependent claim 31 recites limitations that further define the abstract idea noted in claim 1 as it describes providing a notification when the transaction has been initiated. Dependent claims 41, 46, and 51 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe requiring completion of an authorization process. Dependent claims 42, 47, and 52 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe dynamically updating the payees stored in the wallet to then add or remove payees form the one or more pre-approved payees. Dependent claims 43, 48, and 53 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe disallowing transfer of funds to an external account. Dependent claims 44, 49, and 54 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe requiring a second tier of authentication information if a payee is not one of the one or more pre-approved payees.
The additional elements of the dependent claims merely refine and further limit the abstract idea of the independent claims and do not add any feature that is an “inventive concept” which cures the deficiencies of their respective parent claim under the 2019 PEG analysis. None of the dependent claims considered individually, including their respective limitations, include an “inventive concept” of some additional element or combination of elements sufficient to ensure that the claims in practice amount to something “significantly more” than patent-ineligible subject matter to which the claims are directed.
The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field (e.g., the field of computer coding technology is not being improved); the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., simply claiming the use of a computer and/or computer system to implement the abstract idea).
Prior Art Not Relied Upon
5. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. (See MPEP §707.05). The Examiner considers the following reference pertinent for disclosing various features relevant to the invention, but not all the features of the invention, for at least the following reasons:
Venot et al. (U.S. Pub. No. 2021/0117965) teaches methods and systems for facilitating provisioning of consumer payment credentials to token requestors such as digital wallet account or a merchant account.
Response to Arguments
6. Applicant’s arguments filed on June 02, 2026 have been fully considered.
Applicant’s arguments concerning the 35 U.S.C. §101 rejection of the claims, including supposed deficiencies in the rejection, are not persuasive. Applicant argues that “Rather, Claim 1 recites specific technical steps of querying digital wallet databases, receiving pre-approved payee information from those databases, and modifying the databases to incorporate additional payee information - steps that are tied to the specific technical architecture of the digital wallet system. New Claims 40, 45, and 50 recite a digital wallet that is structurally configured to disallow all financial transactions with non-pre-approved payees, even if unauthorized access is gained. These features go well beyond the Examiner's characterization and are not accurately described as merely "storing payment information" and "initiating a payment.” (See Applicant’s Arguments, p. 15). However, the heart of this invention is carrying out a financial transaction in order to determine what kind of transaction it is and whether to approve it. Without a transaction taking place, there can be no invention. The recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes fundamental economic practices or principles and commercial or legal interactions (e.g., storing payment information for a user in a digital wallet in association with various payees and initiating a payment with a particular payee using the stored payment information).
Applicant next argues that “Even assuming, without conceding, that the claims recite an abstract idea at Step 2A Prong One, Applicant submits that the claims as amended integrate any such abstract idea into a practical application at Step 2A Prong Two.” (See Applicant’s Arguments, p. 15). However, merely including a physical apparatus that comprising generic hardware components doesn’t make this invention patent eligible under 35 U.S.C. §101. It does not prevent it from being an abstract idea because these generic hardware components are being used merely to carry out the abstract idea itself. Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). Therefore, the claim is directed to an abstract idea. However, transmitting a request for data (“transaction information”) and then responding using input by a user does not integrate the abstract idea into a practical application. There is very little user input being conducted in this invention. The claim limitations do not point to specific interactions and just generically state “one or more first interactions…” Instead, what is mainly occurring is the initiation of a payment being made to a pre-approved payee and disallowing this payment if the payee is not a pre-approved payee. A comparison is made to the data sought and then it is implemented to carry out the payment (or to deny payment).
Applicant also argues that “In the alternative, even if the claims were found to be directed to an abstract idea at Step 2A, Applicant submits that the claims recite significantly more than the abstract idea at Step 2B. The specific security configuration of the digital wallet (i.e., disallowing all transactions with non-preapproved payees even when unauthorized access is gained) is not well-understood, routine, or conventional.” (See Applicant’s Arguments, p. 19). Structurally limiting transactions to certain payees is not a technological improvement. It is unclear how this is a “structural” improvement as opposed to a business decision allowing for certain entities to be approved in terms of carrying out transactional activities with them.
Therefore, the rejection under 35 U.S.C. §101 is maintained.
Conclusion
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 Amit Patel whose telephone number is (313) 446-4902. The Examiner can normally be reached Mon - Thu 8 AM - 6 PM EST. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Matthew Gart, can be reached at (571) 272-3955. The Examiner’s fax number is (571) 273-6087. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Amit Patel/
Examiner, Art Unit 3696
/EDWARD CHANG/Primary Examiner, Art Unit 3696
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