DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1-20 are pending.
This office action is being issued in response to the Applicant's filing(s) on 7/12/2024.
3. Claim Objections
Claims 1, 8 and 15 are objected to because of the following informalities: lack of antecedent basis.
Claim 1 recites “selecting, by the computing device, the data cell of the plurality data cells comprising payment device data associated with the sub-chain.”
However, there is no earlier recitation of a data cell of the plurality data cells comprising payment device data associated with the sub-chain in Claim 1.
Claim 8 and 15 are objected to based upon similar claim language.
Appropriate correction is requested.
4. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a method comprising:
transmitting, by the computing device, a broadcast message to the plurality of data cells based on a selection of an option of the payment device, the broadcast message indicating occurrence of a transaction event within the trusted network involving the option;
generating, by the computing device, a sub-chain of the trusted chain associated with the transaction event relating to the option;
selecting, by the computing device, the data cell of the plurality data cells comprising payment device data associated with the sub-chain; and
closing, by the computing device, the sub-chain based on a detected completion of the transaction event.
Method claims are defined by the method steps being actively performed (i.e., transmitting a broadcast message and closing a sub-chain), not method steps performed in the past (i.e., based upon a selection of an option and a detected completion of the transaction event). Examiner notes that the method does not recite an active method step of receiving a selection of an option or detecting completion of the transaction. Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claims 8 and 15 have similar issues.
Claim 1 recites a method comprising:
selecting, by the computing device, the data cell of the plurality data cells comprising payment device data associated with the sub-chain.
Examiner notes that the computing device selects (i.e., identifies, picks or chooses) the data cell but does not perform any function based upon the selection. If a computing device accesses a data cell of a plurality of data cells, the computing device has selected the data cell from among the plurality of data cells.
Claims 8 and 15 have similar issues.
Claim 2 recites a method wherein generating the trusted chain comprises:
receiving, by the computing device, a plurality of user identifiers and user consent associated with the user from a creator of the trusted chain;
wherein the option is derived from the payment device data of the payment device of at least one trusted member of the trusted network.
Claim elements (plurality of user identifiers and user consent) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., option is derived). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claims 9 and 16 have similar issues.
Claim 4 recites a method wherein the at least one trusted member confirms a participation in the option via the link.
Method claims are defined by the method steps being actively performed (e.g., confirming a participation in the option via the link), not method steps possibly performed in the past or potentially in the future. Claiming method steps in the past or the future tense can be interpreted as the method steps possibly performed in the future are outside the scope of the claimed method.
Claims 11, 18 and 19 have similar issues.
Claim 5 recites a method wherein closing the sub-chain comprises:
receiving, by the computing device, an indicator associated with a guest checkout option pertaining to the option; and
transmitting, by the computing device, a shopping cart link associated with the guest checkout option to the user.
Claim elements (that the received data is an indicator associated with a guest checkout option pertaining to the option and the transmitted data is a shopping cart link) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 12 has similar issues.
5. 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 *** are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system to perform a method and/or computer-readable medium containing instructions, when executed, causes a computer to perform a method comprising:
generating, …, a trusted chain comprising a plurality of data cells, the data cells including at least payment device data of a payment … associated with a user within a trusted network;
transmitting, …, a broadcast message to the plurality of data cells based on a selection of an option of the payment …, the braodcast message indicating occurrence of a transaction event within the trusted network involving the option;
generating, …, a sub-chain of the trusted chain associated with the transaction event relating to the option;
selecting, …, the data cell of the plurality data cells comprising payment … data associated with the sub-chain; and
closing, …, the sub-chain based on a detected completion of the transaction event.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to document a financial transaction which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a computing device (Claim(s) 1, 8 and 15), a payment device (Claim(s) 1, 8 and 15), a processor (Claim(s) 15), and a memory (Claim(s) 15).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Dependent Claim(s) 2-7, 9-14 and 16-20 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 8 and 15. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of a node (Claim(s) 6 and 13).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
6. Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a method comprising:
generating, by a computing device, a trusted chain comprising a plurality of data cells, the data cells including at least payment device data of a payment device associated with a user within a trusted network.
What are data cells?
The specification recites that data cells are composed of nodes (“a first node of the data cell”). See para. 56.
The standard and ordinary definition of a node is a physical device, any computer, server or connected device that runs the protocol software and participates in maintaining the network. The specification appears to support that interpretation. See para. 37. Nodes are hardware.
However, a computing device can assign or transmit data cells to nodes but a computing device cannot generate nodes (i.e., other computing devices).
Additionally, the Examiner notes that the standard and ordinary definition of a data cell is a basic unit of data storage, where individual pieces of information reside, such as an Excel spreadsheet cell. A data cell is a unit of data.
But how can a data cell (i.e., unit of data) be composed of nodes (i.e., a physical device)?
Claim 1 recites a method comprising:
transmitting, by the computing device, a broadcast message to the plurality of data cells based on a selection of an option of the payment device, the broadcast message indicating occurrence of a transaction event within the trusted network involving the option;
Similarly, is the computing device transmitting a broadcast message to a node (i.e., a physical device capable of receiving a broadcast message) or is the computing device recording/storing a broadcast message (i.e., data) in a data cell (i.e., a basic unit of data storage)?
Claims 8 and 15 have similar issues.
Claim 1 recites a method comprising:
generating, by the computing device, a sub-chain of the trusted chain associated with the transaction event relating to the option;
selecting, by the computing device, the data cell of the plurality data cells comprising payment device data associated with the sub-chain; and
closing, by the computing device, the sub-chain based on a detected completion of the transaction event.
What is meant by closing the sub-chain?
If the sub-chain is data, once the data has been generated (i.e., two method steps previously) the sub-chain is by default closed (i.e., generation of data has concluded).
Claims 8 and 15 have similar issues.
Appropriate correction is requested.
7. Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ziedan (US PG Pub. 2019/0180308) in view of Vaughn (US PG Pub. 2023/0230091)
Regarding Claim 1, Ziedan discloses a computer-implemented method for maximizing payment options comprising:
generating, by a computing device, a trusted chain (blockchain) comprising a plurality of data cells (blocks), the data cells (blocks) including at least payment device data (account identifier) of a payment device with a user within a trusted network. (see abstract);
transmitting, by the computing device, a broadcast message to the plurality of data cells (nodes) based on a selection of an option of the payment device (selection of a reward scheme criteria or social savings community), the broadcast message indicating occurrence of a transaction event within the trusted network involving the option (transaction data). (see para. 26, 39 and 47);
generating, by the computing device, a block of the trusted chain (blockchain) associated with the transaction event relating to the option. (see para. 39 and 47);
selecting, by the computing device, the data cell (block) of the plurality data cells (blockchain) comprising payment device data (account identifier) associated with the block (see para. 56); and
closing (completing), by the computing device, block based on a detected completion of the transaction event (by adding transaction data). (see para. 18 and 31).
Xiedan does not explicitly teach a sub-chain, although a sub-chain is a subset of a blockchain. Every blockchain, which consists of blocks, can be subdivided into sub-chains, a child chain comprising less than all blocks comprising parent chain.
Regardless, Vaughn discloses a blockchain can be subdivided into sub-chains. (see para. 37).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed application to have modified Ziedan by incorporating sub-chains, as disclosed by Vaughn, as blockchains can inherently be subdivided into sub-chains.
Regarding Claim 2, Ziedan discloses a method wherein generating the trusted chain (blockchain) comprises:
receiving, by the computing device, a plurality of user identifiers (account identifiers) and user consent (agree to join) associated with the user from a creator of the trusted chain. (see abstract; para. 5);
wherein the option is derived from the payment device data of the payment device of at least one trusted member of the trusted network. (see para. 26, 39 and 47).
Regarding Claim 3, Ziedan discloses a method wherein:
the data cell (block) comprising payment device data associated with the sub-chain comprises a link to the option (reward amount). (see para. 34);
wherein the link is one or more of a deal payment link, a payment device option amount (reward amount), and an address of the user. (see para. 34).
Regarding Claim 4, Ziedan discloses a method wherein the at least one trusted member confirms a participation in the option (reward amount) via the link. (see para. 31).
Regarding Claim 5, Ziedan does not teach a method comprising receiving, by the computing device, an indicator associated with a guest checkout option pertaining to the option; or transmitting, by the computing device, a shopping cart link associated with the guest checkout option to the user.
Vaughn discloses a method comprising:
receiving, by the computing device, an indicator associated with a guest checkout option (random ID or masked IDs) pertaining to the option. (see para. 248); and
transmitting, by the computing device, a shopping cart link associated with the guest checkout option to the user. (see para. 233).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed application to have modified Ziedan and Vaughn by incorporating the receipt and transmission of any transaction data, as disclosed by Vaughn, allowing for inclusion and storage of any data within the trusted chain.
Regarding Claims 6-7, Ziedan does not teach a method comprising mapping, by the computing device, a pointer of the sub chain to a first node of the data cell comprising payment device data; generating, by the computing device, a data cell mapping; or adding, by the computing device, the data cell mapping and the data cell comprising payment device data associated with the sub chain to the trusted chain.
Vaughn discloses a method comprising:
mapping, by the computing device, a pointer (record pointers or pointer) of the sub chain to a first node of the data cell (block) comprising payment device data. (see para. 258, 939 and 1865);
generating, by the computing device, a data cell mapping (pointers or pointer). (see para. 258, 939 and 1865); and
adding, by the computing device, the data cell mapping (pointers or pointer) and the data cell comprising payment device data associated with the sub chain to the trusted chain. (see para. 258, 939 and 1865);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed application to have modified Kiedan and Vaughn by incorporating mapping of data elements, as disclosed by Vaughn, allowing for location and retrieval of data within the trusted chain.
Regarding Claims 8-20, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
8. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RYAN D. DONLON can be reached at (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 March 2, 2026