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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/19/2026 has been entered.
Claim Status
Claims 1-4, 6-14, and 16-20 are currently pending and are presented for examination on the merits.
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, 6-14, and 16-20 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-4, 6-14, and 16-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards the use of an online peer-to-peer messaging/payment application for conducting a transaction, and inviting a user to subscribe, download, or enroll in a service in order to interact with that user. These are long-standing commercial practices previously performed by humans (e.g., consumers, etc.) manually and via generic computing. For example, CASH APP, PAYPAL, etc. are examples of online peer-to-peer payment transaction apps that have messaging capability. In CASH APP, for example, a recipient is able through selection of an activated button, to choose to receive the funds into their bank account when the funds transfer is valid. One can send a message along with the payment, such that CASH APP could be considered a “messaging application.” As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—server, a messaging app, invoking an approval button, verifying based on user or recipient attribute, sending invitation to subscribe when recipient is deemed not on the messaging application, verifying validity of transaction based on user and recipient belonging to a chat group, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software in do what’s been previously done. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional/extraneous elements offered by the independent and dependent claims either further delineate the abstract idea, recite insignificant extra-solution activity, or instruct the artisan to apply it (the abstract idea) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-14, and 16-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. More particularly, Claim 1 (and like) is rejected because the added language (“determine that the recipient is subscribed . . . based . . . on . . . accepting the invitation”) is not supported by the original disclosure. The specification at ¶ [0030], provides displaying a “query prompting the provider to invite transfer recipient 331 to joint and subscribe . . . and indicat[ing] that the transaction will be applied once the transfer recipient has accepted . . . .” As such, this limitation will be interpreted as determining the recipient is subscribed, after accepting the invitation. The dependent claims fail to cure, and are likewise rejected. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-4, 6-14, and 16-20 are rejected under 35 U.S.C. §103 as being unpatentable over US 2008/0006685 to Rackley III et al, in view of US 2021/0350446 to D’Haenens et al. (“D”), and further in view of US 10,909,582 to Brandt et al.
With respect to Claims 1, and 11, Rackley teaches a system, comprising: a memory storing multiple instructions; and one or more processors configured to execute the instructions (FIG. 1), and a computer-implemented method (FIGS. 1, 8), comprising: receiving, in a server ([0136]; MFTS) hosting a messaging application ([0107], FIG. 21), a selection of a transaction recipient by a user of the messaging application (FIG. 19); when the first transaction is validated, providing, by the server, the user of the messaging application with an approval button for accepting the transaction (FIG. 20, confirm buttons); applying, by the server, the first transaction when the user of the messaging application accepts (“confirms”) the first transaction.
Though it teaches determining approval of a transaction based on buyer information and confirming approval at merchant ([0020]), Rackley fails to expressly teach, but D teaches disabling an approval button when a transaction is not validated. [0004];[0060] D further discusses the need to enable mobile devices to communicate and cooperate with another device, e.g., to execute a task. [0002] it would have been obvious to one of ordinary skill in the art to modify Rackley to include disabling an approval button when a transaction is not validated in order to facilitate the mobile devices cooperation with another device in completing the task only when validated.
Rackley fails to expressly teach verifying, by a server, a valid first transaction with the recipient by inviting the recipient to subscribe when the recipient is not subscribed to the messaging application, and validating a second transaction by verifying that the user and recipient belong to a chat group (e.g., “verifying, by the server, that the user . . . applying, by the server, the second transaction”). Brandt, however, teaches establishing an authentication circle via a server (col 15, ln 52), that includes natural language processing of chat bot (col 43, ln 5-43), that authenticates a transaction or financial goal including by inviting a user to join the circle (col 41, ln 53-col 42, ln 54) and verifying whether the user and recipient are a part of the circle (col 53, ln 7-17), which would have taught one of ordinary skill in the art the added limitations.
Brandt further teaches determine that the recipient is subscribed to the messaging application based at least in part on the recipient accepting the invitation to subscribe, and applying the first transaction when . . . the recipient is subscribed to the messaging application. (col 16, ln 59-66, “The messaging module 160 may receive indications that an invitation or solicitation has been accepted, and in some implementations, may initiate the appropriate next steps”)
Brandt discusses that conventional payment systems are slow and inconvenient (col 1, ln 27-50). It would have been obvious to one of ordinary skill in the art to modify Rackley to include validating by inviting the recipient to subscribe to an authentication circle or chat group, and verifying that the parties belong to the circle or chat group, in order to provide a more convenient and faster mode of executing a transaction, as taught by Brandt.
With respect to Claim 2, Rackley teaches wherein the first transaction is a funds transfer (FIG. 19), and applying the transaction comprises sending a message to the user of the messaging application confirming that the funds transfer was successful, including a checkmark. ([0153])
With respect to Claims 3, and 12, though it teaches the payee canceling payment from the user (FIG. 20), Rackley fails to expressly teach wherein verifying a validity of the first transaction comprises verifying that the user of the messaging application is not blocked by the transaction recipient. D teaches that the “mobile device 106 may be blocked from submitting payment for the products 128 that customer 104 added to digital cart 110 until merchant device 114 has determined whether or not a validation requirement 140 associated with one or more of the products 128 has been satisfied.” [0023] Moreover, “payment authorization” at [0250] teaches payee blocking payer. Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify the teachings of Rackley to include confirming that the recipient has not blocked the payer.
With respect to Claims 4, and 14, Rackley teaches wherein the user of the messaging application is in a first jurisdiction and the transaction recipient is in a second jurisdiction, and verifying a validity of the first transaction comprises verifying that the first transaction is allowed between the first jurisdiction and the second jurisdiction. (FIG. 19 “ACH;” [0014], “. . .institutions where ever they may go” teaches allowing inter-jurisdictional payments; moreover “ACH” allows certain jurisdictional transactions; [0168]).
With respect to Claim 6, Rackley teaches wherein verifying the validity of the first transaction is based on at least one of a user attribute and a first transaction recipient setting in the messaging application (FIG. 21;[0394-96], verifying sufficient funds is a user attribute).
With respect to Claim 7, Rackley teaches wherein applying the first transaction when the user of the messaging application accepts the transaction comprises encrypting a dataset with transaction data and transferring the dataset to a funds account of the transaction recipient. ([0259-60];[0265-66];[0287])
With respect to Claim 8, Rackley teaches wherein applying the first transaction comprises sending the user of the messaging application a link to a third-party fund transfer application. ([0278], clickable link; [0473])
With respect to Claim 9, and 13, Rackley teaches wherein the first transaction is a financial transaction, and applying the first transaction comprises transferring a fund into an account of the transaction recipient. (FIG. 20)
With respect to Claim 10, Rackley teaches sending a message to the user of the messaging application that the first transaction was canceled, when the transaction is not validated. [0153], teaching the opposite;[0295];[0298]
With respect to Claim 16, Rackley teaches providing, with a client device, a request for a transaction with a recipient via a messaging application hosted by a remote server (FIGS. 19, 20); receiving, from the remote server (MFTS), a transaction authorization request, the transaction authorization request comprising an approval button for accepting the transaction by a user of the messaging application (FIG. 19,20, confirm button).
Rackley fails to expressly teach, but D teaches approving the transaction by the user of the messaging application when the approval button is enabled by the remote server. [0004];[0060] D further discusses the need to enable mobile devices to communicate and cooperate with another device, e.g., to execute a task. [0002] it would have been obvious to one of ordinary skill in the art to modify Rackley to include disabling an approval button when a transaction is not validated in order to facilitate the mobile devices cooperation with another device in completing the task only when validated.
Rackley fails to expressly teach but Brandt teaches “verifying a validity of the transaction with the recipient based on verifying that a user of the messaging application and the transaction recipient belong to a chat group in the messaging application.” See Claim 1 above.
With respect to Claim 17, Rackley teaches wherein the transaction authorization request from the remote server includes an invite recipient to network button, and when the recipient is not subscribed to the messaging application, further comprising activating the invite recipient to network button in the client device. [0389]
With respect to Claim 18, Rackley teaches wherein the approval button in the transaction authorization request is disabled, further comprising receiving, from the remote server, a message indicating that the transaction has been canceled. [0153], teaching the opposite;[0295];[0298]
With respect to Claim 19, Rackley teaches receiving, from the remote server, a link to a third-party funding application. ([0278], clickable link; [0473])
With respect to Claim 20, Rackley teaches wherein the transaction is a fund transfer, further comprising allowing the remote server to access a personal fund account to apply the fund transfer to a recipient account. ([0031];[0120])
Response to remarks
Applicant’s remarks submitted on 01/07/2026 have been fully considered, but are not persuasive where objections/rejections are maintained. The claims have been amended primarily to add determination that the recipient has accepted the invitation to subscribe, etc. A § 112 rejection has been added because the specification fails to sufficiently support the amendment. The § 101 rejection is maintained, because determine that a recipient or user is subscribed is known in the art, as it is a pre-requisite to be enrolled, subscribed or otherwise have an active account to execute conventional peer-to-peer applications. Inviting a user to join an application so as to facilitate usage thereof, and verifying that both belong to the authorized users (circle, chat group, etc.), in order to complete a task fails to offer an innovative concept. Blocking a sender by a user also fails to provide an innovative concept (see, e.g., prior art rejections of record, including US 2016/011765 to Davis ([0388] “the privacy settings may specify a “blocked list” of users that should not be allowed to access certain information”). Applying same in the context of a transaction fails to offer a practical application or technical solution to a technical problem. As per the prior art, Brandt further teaches the amended limitations, in that it determines whether an invitation has been accepted (in order to complete a task) throughout its disclosure. Brandt teaches an authentication circle for conducting a transaction or otherwise meeting a financial goal; it includes inviting users to join the circle, and the term authenticating circle teaches the verification of the second transaction limitation added to the independent claims. As such, the amendment fails to overcome the outstanding §§ 101 and 103 rejections. The cited references would teach, one or ordinary skill in the art, armed with the state of the art at the time of filing, each and every limitation of the claims. Under the broadest reasonable interpretation, Rackley expressly teaches verification of the transaction based on a user attribute, and more particularly, that there is sufficient balance in the payment source account, which is a user attribute. [0394] Brandt teaches an authentication circle and chat communication. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI). Also, please note that US 2011/0196797 to Liwerant has been added to the record, as a result of an updated search.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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/WILLIAM J JACOB/Examiner, Art Unit 3696
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