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 .
Continued Examination under 37 CFR §1.114
2. A request for continued examination under 37 CFR §1.114, including the fee set forth in 37 CFR §1.17(e), was filed on January 30, 2026 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in 37 CFR §1.17(e) has been timely paid, the finality of the previous Office action dated November 19, 2025 has been withdrawn pursuant to 37 CFR §1.114 and the submission filed on January 30, 2026 has been entered. Claims 1, 3, 5, 10, 12, 14, 19, 21, 23, 28, 32, and 36 have been amended. Claims 2, 6-8, 11, 15-17, 20, and 24-26 have been cancelled. No new claims have been added. Thus, claims 1, 3-5, 9-10, 12-14, 18-19, 21-23, and 27-39 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, 9-10, 12-14, 18-19, 21-23, and 27-39 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, 9-10, 12-14, 18-19, 21-23, and 27-39 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 process (claims 10, 12-14, 17-18, and 32-35), a machine (claims 1, 3-5, 9, and 30-31), and a manufacture (claims 19, 21-23, 27, and 36-39), where the machine and the manufacture substantially directed to the subject matter of the process. (See, e.g., MPEP §2106.03). 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;
determining, based at least upon the information and further based upon one of pay or preferences or payee preferences, whether the payment is with a pre-approved payee from among the one or more payees;
identifying, based at least upon the identifying information associated with the payor, a digital wallet associated with the payor, the digital wallet storing identifying information associated with one or more pre-approved payees that have been pre-approved 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;
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,” 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 10 and 19 are very similar to independent claim 1 and so the analysis for claim 1 also applies to claims 10 and 19. Claim 19 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, 12-14, 18, 21-23, and 27-39 have all been considered and do not integrate the abstract idea into a practical application. Dependent claims 2, 11, and 20 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe providing a generic notification that a payment has been initiated based on it being a pre-approved payee, which is the criteria used to make a payment. Dependent claims 3, 12, and 21 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe providing a generic notification that a payment has been disallowed based on the payee not being one that has been pre-approved. Dependent claims 4, 13, and 22 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe all of the digital wallet data that being stored and that is associated with one or more payees. Dependent claims 5, 14, and 23 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe 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 claims 6, 15, and 24 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe automatically initiating a payment using digital wallet data. Dependent claims 7, 16, and 25 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe providing a notification to the user device regarding initiation of a payment. This notification is a generic way to alert a user that something has occurred.
Dependent claims 9, 18, and 27 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe 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 claims 28, 32, and 36 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe providing transaction instructions to initiate a transaction. Dependent claims 29, 33, and 37 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe determining whether additional authentication information is needed to carry out a transaction. Dependent claims 30, 34, and 38 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe use of additional transaction information that has been input to the device. Dependent claims 31, 35, and 39 are nearly identical to one another and all recite limitations that further define the abstract idea noted in claim 1 as they describe providing a notification when the transaction has been initiated.
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 January 30, 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 “Applicant respectfully submits that the above-highlighted features of amended independent
Claim 1 recite a practical application of causing a user device to present a transaction platform (e.g., an online shopping platform) to a user via a user interface, causing the user device to present various payment options to the user via the user interface once the user indicates they would like to initiate a transaction with a payee, and programmatically determine, by using processors to compare transaction information to merchant/biller account information stored in the digital wallet, whether the payee is a pre-authorized merchant/biller, to enable the processing of a transaction via a user interface at the user device while securitizing the use of the digital wallet for transactions between only the user and pre-authorized merchants/billers. This represents a technical solution and improvement that is not well-understood, routine, or conventional.” (See Applicant’s Arguments, pp. 19-20). 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). Even the new amendments which describe that the payee is not one of the one or more pre-approved payees does not integrate the abstract idea into a practical application.
Therefore, the rejection under 35 U.S.C. §101 is maintained.
Conclusion
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/Amit Patel/
Examiner
Art Unit 3696
/EDWARD CHANG/Primary Examiner, Art Unit 3696