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
The following is in response to the arguments filed with the RCE filed 06/03/2026. Claims 1-20 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/03/2026 has been entered.
Prior Art
The prior art does not disclose: wherein the set of sub-parties is not a party to the preconfigured contract between the funding party and the first party and the data further comprises a set of tasks to be performed for the funding party; receive data defining a logical structure between the first party and the set of sub-parties and store the data defining the logical structure in the memory of the apparatus, the logical structure based on a contractual relationship between the first party and the set of sub-parties; receive, from the first party, request data comprising a tuple defining at least one of a payment request, a payment party, and a payment amount, receipt of the request data indicative of at least one task being complete; process, using the processor of the apparatus, the request data to parse a set of payment information for the first party and the set of sub-parties; compare the payment information to the data defining the data structure and determining at least one entry in the data structure that comprises an approved funding source of the payment request; execute a payment order to at least the first party and the set of sub-parties, wherein execution of the payment order transfers a payment associated with the at least one completed task and funded by the funding instance directly to both the first party and the set of sub-parties; and modify at least one entry of the data structure, to reflect execution of the payment order.
The closest prior art is Dulori (2020/00234380). The closet NPL is “Mobile payments: Current and emerging regulatory and contracting issues, “ R Kemp - Computer Law & Security Review, 2013 – Elsevier.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 6 recite(s) defining, receiving, storing, performing, processing, comparing, executing, and modifying steps carried out by a processor and apparatus, which can be any computer, and thus, it is a general purpose computer carrying out the steps of claim. (See Spec. p. 12, line 29 to p.13, line 11).
Claim 6 falls into the category of commercial interactions (hierarchical payment structures—Spec. p.1, line 5). The claim is directed to a judicial exception to an abstract idea.
Independent claims 1 and 11 recite a medium and apparatus and mimic independent claim 6 and are patent ineligible.
None of the dependent claims, 2-5, 7-10 nor 12-20, alters the outcome that the claimed inventions are directed to ineligible abstract ideas, as the dependent claims fall within the abstract idea of executing payment orders.
The additional wherein steps of claim 6 do not add more to the claim to take it out of the realm of abstraction. The steps are performed to execute payment to the correct recipients. The claim does not integrate the judicial exception into a practical application. Claim 6 recite(s) receiving, defining, storing, performing, processing, comparing, executing, and modifying steps carried out by a processor and apparatus, which can be any computer, and thus, it is a general purpose computer carrying out the steps of claim. (See Spec. p. 12, line 29 to p.13, line 11).
Claims 1-20 are ineligible.
Response to Arguments
Applicant's arguments filed 6/3/2026 have been fully considered but they are not persuasive.
The Applicant argues that the claims recite a practical application (rem 13-16). In response, the Examiner respectfully disagrees.
Regarding impermissibly oversimplifying the claims (rem 13), Examiner respectfully disagrees. By applicant’s own admission, the claimed invention is a technical solution to a business problem previously solved by hand. The solution is to use a digital wallet. The specification is silent to technological implementation details for an improved digital wallet payment protocol. The computer-related limitations are described at a high level in the Specification without any meaningful detail about their structure or configuration. As such, computer-related limitations are not sufficient to integrate the judicial exception into a practical application.
Accordingly, the claim as a whole does not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Examiner does not agree with applicant that the invention solves a technical problem. The claims are not directed to a technical problem but rather a business problem (contractual payments) which is solved by a computing environment that decouples the flow of funds from contractual privity. The Specification discloses that the operation of the steps can be performed by computer program instructions provided to a general purpose computer (see originally filed specification page 12 lines 29-30). As such, the Specification does not disclose an improvement to these computer components themselves. The improvement touted by applicant is an improvement to the field of finance, specifically contractual payments, rather than an improvement to the computer components used to make the payments or enforce contracts. The computer components are not improved. And “[n]o matter how much of an advance in the . . . field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” SAP Am., 898 F.3d at 1163. Although applicant argues that the invention’s ability to replace a flawed manual structure a technical improvement, there is no evidence that this ability is a result of improvement to the computing environment.
Regarding the “hierarchical logical structure, for example, the specification defines on page 10 lines 11-15 of the originally filed specification “The logical structure can be based on, enshrined in or otherwise determined on the basis of a contractual relationship between the parties. For example, a contractual relationship for the provision of goods or services to the first party 101 can form the basis of part of a logical structure that defines a hierarchical structure representing the disposition of the parties with respect to one another”
Regarding applicant’s argument the claims recite “specific machine readable control structures” Examiner can find no recitation of a machine readable control structure. The specification does not provide for the technological implementation details nor do the claims recite the technological implementation details and are merely directed to intended results. Further, applicant argues technology while the claims, read in light of the specification and given the broadest reasonable interpretation, describe payment relationships between parties and not technology related hierarchical logic not an improvement to the technology but an improvement to the business problem of payments in a construction contract with sub-contractors. Thus, because the Specification describes the additional elements in general terms, without describing the particulars, the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of the Specification, as quoted above.
Additionally, the specification does not provide for any technological improvements to the digital wallets but the use of the digital wallets in how the wallets are known to be used, for secure payments.
With regards to applicant’s argument “the claims control execution of electronic payments” (rem 16), Examiner respectfully disagrees. Attorney arguments cannot take the place of evidence in the record. Must provide facts to back up your position.
Regarding applicant’s arguments with respect to the advisory action (rem 16), directed to the response to applicant’s argument directed to specific ordered combination of steps, Examiner respectfully disagrees. By applicant's own admission, the steps are not specific and can be adjusted or rearranged depending on the specific details of a contract (see original specification page 12, lines 20-25 "Although the flow diagrams described above show a specific order of execution, the order of execution may differ from that which is depicted. Blocks described in relation to one flow chart may be combined with those of another flow chart. In some examples, some blocks of the flow diagrams may not be necessary and/or additional blocks may be added "
With regards to applicant’s arguments relating Berkheimer (rem 18), Examiner has not based the eligibility rejection on well understood, routine and conventional. As such, the arguments with respect to Berkheimer are moot.
Applicants argue that the § 101 rejection cannot be sustained because the Examiner has presented no supporting evidence that the claims are directed to a patent-ineligible abstract idea. Applicants, thus, ostensibly maintain that because there is no evidentiary support of record for the Examiner’s findings, the Examiner has failed to establish a prima facie case of patent-ineligibility (id.).
Examiner is aware of no controlling authority that requires the Office to provide factual evidence to support a finding that a claim is directed to an abstract idea. Nor, contrary to Applicant’s suggestion that there is any such requirement. Instead, the Federal Circuit has repeatedly noted that “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. Id.', see also Chester v. Miller,906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when the rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Stewart discloses hierarchical payment structures. Clemens et al. disclose payment management. Harrison et al. disclose a method for noncustodial trading of digital assets of a digital asset exchange. Sarin discloses multi tenants payment refresh tokens.
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 Kelly Campen whose telephone number is (571)272-6740. The examiner can normally be reached Monday-Thursday 6am-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached at 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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Kelly S. Campen
Primary Examiner
Art Unit 3691
/KELLY S. CAMPEN/ Primary Examiner, Art Unit 3691
Prosecution Insights