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 .
Status of Claims
Applicant filed an amendment on June 27, 2025. Claims 1-18 were pending in the Application. Claims 1, 6-7, 12-13, and 18 are amended. No new claims have been added. Claims 2-3, 8-9, and 14-15 have been canceled, with claims 4-5, 10-11, and 16-17 remaining canceled. Claims 1, 7, and 13 are the independent claims, the remaining claims depend on claims 1, 7, and 13. Thus, claims 1, 6-7, 12-13, and 18 are currently pending. After careful and full consideration of Applicant arguments and amendments, the Examiner finds them to be moot and/or not persuasive.
Response to Arguments
In the context of Claim Interpretation, Intended Use, paragraph 15 (claims 6, 12, and 18) of the Non-Final Rejection Office Action dated April 07, 2025, Applicant has not adequately amended to render the Claim Interpretation, Intended Use, moot. Paragraph 15 (claims 6, 12, and 18) recites an intended use of the “processor”. Examiner hereby maintains the Claim Interpretation, Intended Use, paragraph 15 (claims 6, 12, and 18) of the Non-Final Rejection Office Action dated April 07, 2025.
In the context of Claim Interpretation, Intended Use, paragraph 16 (claim 7) of the Non-Final Rejection Office Action dated April 07, 2025, Applicant has not adequately amended to render the Claim Interpretation, Intended Use, moot. Paragraph 16 (claim 7) recites an intended use of the “system”. Examiner hereby maintains the Claim Interpretation, Intended Use, paragraph 16 (claim 7) of the Non-Final Rejection Office Action dated April 07, 2025.
In the context of Claim Interpretation, Intended Use, paragraph 17 (claim 12) of the Non-Final Rejection Office Action dated April 07, 2025, Applicant has not adequately amended to render the Claim Interpretation, Intended Use, moot. Paragraph 17 (claim 12) recites an intended use of the “processor”. Examiner hereby maintains the Claim Interpretation, Intended Use, paragraph 17 (claim 12) of the Non-Final Rejection Office Action dated April 07, 2025.
In the context of Claim Interpretation, Nonfunctional Descriptive Material, paragraph 19 of the Non-Final Rejection Office Action dated April 07, 2025, Applicant has not adequately amended to render the Claim Interpretation, Nonfunctional Descriptive Material, moot. The language “indicates …” merely describes the update statuses. Examiner hereby maintains the Claim Interpretation, Nonfunctional Descriptive Material, paragraph 19 of the Non-Final Rejection Office Action dated April 07, 2025.
In the context of 35 U.S.C. §101, Applicant does not necessarily agree with this rejection and traverses the rejection. Applicant is of the opinion that the claims are statutory and respectfully asserts that “amended claim 1 is not reasonably directed to any of the subgroupings under the certain methods of organizing human activity group to qualify as an abstract idea under the 2019 Guidance; aspects of the present disclosure are directed to resolving some of the technical drawbacks associated with conventional Unified Payment Interface (UPI), which is static in nature; non-limiting exemplary aspects of the present disclosure are directed to increasing a probability of successful fulfillment of an electronic transaction based on a selection of a particular UPI account by an AI model among a plurality of UPI accounts based on patterns of corresponding banks’ server health, stability and connectivity, and geographic parameters; and an ordinary artisan would reasonably understand that improving a likelihood of success in performing an electronic transaction and reduced utilization of computing resources as being directed to an improvement in technology, Applicant submits that proposed claim 1 is directed to a practical application, and claims 7 and 13 have been amended to include features similar to amended claim 1, and are allowable at least for reasons similar to claim 1.”
Initially, the Examiner would like to point out that the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106, which applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if "the elements of the claim ... contain an "inventive concept" sufficient to 'transform' the claimed abstract idea into a patent-eligible application." (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed to" two-prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim "applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception," i.e., whether the claim integrates the judicial exception into a practical application. (MPEP §2106.04 II.A.1. and II.B.2.).
The specification, (PG Pub US 20240202735 A1, para 11), provides evidence as to what the claimed invention is directed. In this case, the specification, (‘735 A1, para 11), discloses subject matter that generally relates to analyzing a set of data for a recommendation of at least one optimized payment mode for the processing of the payment, and is grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)”, in prong one of step 2A. (MPEP §2106.04 II.A.1.).
Claim 1 provides additional evidence, and recites the method limitations of “installing, on a … of the user, … for performing … transaction, … associating the user with a plurality of … accounts with a plurality of different banks, wherein one of the plurality of accounts is set as a default account for processing the … transaction; receiving, …, a request to process the … transaction; receiving, …, a set of data associated with past transactions made by the user, wherein the set of data includes each of user transaction history, bank … stability history of the plurality of different banks, bank … health of the plurality of different banks, bank … connectivity of the plurality of different banks, and geographic parameters; analyzing, …, the set of data received and checking for patterns related to successful transactions, failed transactions and frequent transactions; continuously updating, …, statuses of the plurality of … accounts associated with the user and storing, in a plurality of … hosting … and connected …, a continuously updated status for each of the plurality of … accounts associated with the user, wherein each of the continuously updated statuses indicate each of the user transaction history, the bank … stability history of the plurality of different banks, the bank … health of the plurality of different banks, the bank … connectivity of the plurality of different banks, and the geographic parameters corresponding to each of the plurality of … accounts; identifying and selecting, …, … account among the plurality of … accounts associated with the user that best ensures successful fulfillment of the … transaction based on the continuously updated status for each of the plurality of … accounts associated with the user stored in the plurality of … in view of the patterns related to successful transactions, failed transactions and frequent transactions in view of the continuously updated status, wherein the … account selected is different from the set default account, and wherein … selects the … account based on the continuously updated each of the user transaction history, the bank … stability history of the plurality of different banks, the bank … health of the plurality of different banks, the bank … connectivity of the plurality of different banks, and the geographic parameters; and performing, …, the … transaction utilizing the … account selected among the plurality of … accounts, wherein the … account selected corresponds to different … accounts at different times”, which represent the abstract idea of “identifying and selecting an optimal account in performing a transaction.” (MPEP §2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim, such as “a dynamic Unified Payment Interface (UPI)”, “a smart payment processing (SPP) device”, “a processor”, “a scheduler”, “a network”, “a client device”, “a communication interface”, “an electronic transaction”, “bank server”, “a trained AI model”, “the plurality of servers”, “an UPI application”, and “a plurality of servers hosting databases”, represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use or technological environment. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “identifying and selecting an optimal account in performing a transaction.”
With respect to the limitation “installing, on a client device of the user, an UPI application for performing an electronic transaction …”, the claim lacks technological details regarding how “installing an UPI application for performing an electronic transaction” on a client device of a user is performed and, is therefore, no more than “apply it”. (MPEP § 2106.05(f)(1)).
Examiner notes the basis of the rejection was, and is not as any mental process covering performance in the mind, but classified as an abstract idea, “identifying and selecting an optimal account in performing a transaction”, grouped under “Certain Methods of Organizing Human Activity, commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)”.
With respect to the additional elements operating in a non-conventional and non-generic way and reflecting an improvement to a particular technological environment, the cited additional elements represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use or technological environment. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “identifying and selecting an optimal account in performing a transaction.” The claims are not directed to improving computers or related technologies, but improving the abstract idea of “identifying and selecting an optimal account in performing a transaction”. For potential improvement in an abstract idea “identifying and selecting an optimal account in performing a transaction”, it is important to keep in mind that an improvement in the abstract idea itself (e.g. an identifying and selecting an optimal account in performing a transaction concept) is not an improvement in technology. (MPEP § 2106.04(d)(1)). Therefore, claim 1 is non-statutory.
Claim 7 recites the abstract idea of “identifying and selecting an optimal account in performing a transaction”, as well as the additional elements of “a system”, “a dynamic Unified Payment Interface (UPI)”, “a smart payment processing (SPP) device”, “a processor”, “a scheduler”, “a plurality of databases hosting databases”, “a network”, “a client device”, “a communication interface of the SPP device”, “a communication interface of a client device”, “an electronic transaction”, “a bank server”, “a trained AI model”, “a plurality of servers”, “an UPI application”, and “a plurality of servers hosting databases”, which represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use or technological environment. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “identifying and selecting an optimal account in performing a transaction.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of “identifying and selecting an optimal account in performing a transaction” using computer technology (e.g., “a smart payment processing (SPP) device” and “a plurality of servers”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05 I A (f) & (h)). Therefore, claim 7 is non-statutory.
Claim 13 recites the abstract idea of “identifying and selecting an optimal account in performing a transaction”, as well as the additional elements of “a dynamic Unified Payment Interface (UPI)”, “a smart payment processing (SPP) device”, “a processor”, “a scheduler”, “a network”, “a client device”, “a communication interface of the SPP device”, “an electronic transaction”, “a bank server”, “a trained AI model”, “a plurality of servers”, “an UPI application”, and “a plurality of servers hosting databases”, which represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use or technological environment. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “identifying and selecting an optimal account in performing a transaction.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of “identifying and selecting an optimal account in performing a transaction” using computer technology (e.g., “a bank server” and “a non-transitory computer readable storage medium”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05 I A (f) & (h)). Therefore, claim 13 is non-statutory.
Finally, Examiner notes the basis of the rejection is Alice, by applying the subject matter eligibility analysis and flowchart according to MPEP § 2106. And, based on this standard, the claims are non-statutory, and correctly rejected under 35 U.S.C. § 101.
Claim Interpretation – Intended Use
Regarding claim 1, Examiner notes that the following limitation: “installing, …, an UPI application for performing …, wherein one of plurality of accounts is set as a default account for processing …” are intended uses of the “UPI application” and the “one of plurality of accounts”, respectively, and therefore carries limited patentable weight. Additionally, similar language is recited in claims 12 and 18. (MPEP § 2103 I C).
Regarding claim 6, Examiner notes that the following limitation: “recommending, by the processor, at least one action to be performed …” is an intended use of the “processor”, and therefore carries limited patentable weight. Additionally, similar language is recited in claims 12 and 18. (MPEP § 2103 I C).
Regarding claim 7, Examiner notes that the following limitation: “wherein the system performs: …” is an intended use of the “system”, and therefore carries limited patentable weight. (MPEP § 2103 I C).
Regarding claim 12, Examiner notes that the following limitation: “the processor further executes: …” is an intended use of the “processor”, and therefore carries limited patentable weight. (MPEP § 2103 I C).
Regarding claim 13, Examiner notes that the following limitation: “A non-transitory computer readable storage medium storing instructions … the instructions comprising executable code which, when executed by a processor of a smart payment processing (SPP) device, performs: installing …; receiving …; receiving …; analyzing …; continuously updating …; identifying and selecting …; and performing …” The limitation “performs” refers to the “executable code”, and not the processor of a smart payment processing (SPP) device. Therefore, the claim merely describes the executable code’s intended use. Additionally, similar language is recited in claim 18. (MPEP § 2103 I C).
Claim Interpretation – Nonfunctional Descriptive Material
Regarding claim 1, Examiner notes that the following limitation: “continuously updating, …, wherein the continuously update statuses indicate each of the user transaction history, the bank server stability history of the plurality of different banks, the bank server health of the plurality of different banks, the bank server connectivity of the plurality of different banks, and the geographic parameters corresponding to each of the plurality of UPI accounts”. The language “indicates …” merely describes the update statuses. Additionally, similar language is recited in claims 7 and 13. (MPEP § 2111.05 I).
Claim Interpretation – No Patentable Weight
In regards to claim 1, the claim is directed to a method comprising “identifying and selecting, …, and wherein the trained AI model selects the UPI account …”, which is directed to the limitation happening at the trained AI model. The trained AI model is not part of the system of claim 7, therefore, claim 1 does not have patentable weight. Additionally, similar language is recited in claims 7 and 13. (MPEP § 2103 I C).
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, 6-7, 12-13, and 18 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1 and 6 are directed to a “method”; claims 7 and 12 are directed to a “system”; and claims 13 and 18 are directed to a “non-transitory computer readable storage medium”. Therefore, these claims are directed to one of the four statutory categories of invention.
Claim 1 recites “identifying and selecting an optimal account in performing a transaction”, which is a form of commercial or legal interactions (i.e., organizing human activity), and therefore, an abstract idea. Specifically, the claim recites “installing, on a … of the user, … for performing … transaction, … associating the user with a plurality of … accounts with a plurality of different banks, wherein one of the plurality of accounts is set as a default account for processing the … transaction; receiving, …, a request to process the … transaction; receiving, …, a set of data associated with past transactions made by the user, wherein the set of data includes each of user transaction history, bank … stability history of the plurality of different banks, bank … health of the plurality of different banks, bank … connectivity of the plurality of different banks, and geographic parameters; analyzing, …, the set of data received and checking for patterns related to successful transactions, failed transactions and frequent transactions; continuously updating, …, statuses of the plurality of … accounts associated with the user and storing, in a plurality of … hosting … and connected …, a continuously updated status for each of the plurality of … accounts associated with the user, wherein each of the continuously updated statuses indicate each of the user transaction history, the bank … stability history of the plurality of different banks, the bank … health of the plurality of different banks, the bank … connectivity of the plurality of different banks, and the geographic parameters corresponding to each of the plurality of … accounts; identifying and selecting, …, … account among the plurality of … accounts associated with the user that best ensures successful fulfillment of the … transaction based on the continuously updated status for each of the plurality of … accounts associated with the user stored in the plurality of … in view of the patterns related to successful transactions, failed transactions and frequent transactions in view of the continuously updated status, wherein the … account selected is different from the set default account, and wherein … selects the … account based on the continuously updated each of the user transaction history, the bank … stability history of the plurality of different banks, the bank … health of the plurality of different banks, the bank … connectivity of the plurality of different banks, and the geographic parameters; and performing, …, the … transaction utilizing the … account selected among the plurality of … accounts, wherein the … account selected corresponds to different … accounts at different times”. (MPEP §2106.04 II.A.1.).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP §2106.04 II.A.2.), the additional elements of the claim, such as “a dynamic Unified Payment Interface (UPI)”, “a smart payment processing (SPP) device”, “a processor”, “a scheduler”, “a network”, “a client device”, “a communication interface”, “an electronic transaction”, “bank server”, “a trained AI model”, “the plurality of servers”, “an UPI application”, and “a plurality of servers hosting databases”, do not improve computers or computer technology, and represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use or technological environment. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “identifying and selecting an optimal account in performing a transaction.”
With respect to the limitation “installing, on a client device of the user, an UPI application for performing an electronic transaction …”, the claim lacks technological details regarding how “installing an UPI application for performing an electronic transaction” on a client device of a user is performed and, is therefore, no more than “apply it”. (MPEP § 2106.05(f)(1)).
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself, and do no more than implement the abstract idea using a computer. Viewed as a whole, the elements recited in the claim merely describe the concept of “identifying and selecting an optimal account in performing a transaction” using computer technology (e.g., “a processor” and “a trained AI model”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05 I A (f) & (h)). Therefore, claim 1 is non-statutory.
Claim 7 recites the abstract idea of “identifying and selecting an optimal account in performing a transaction”, as well as the additional elements of “a system”, “a dynamic Unified Payment Interface (UPI)”, “a smart payment processing (SPP) device”, “a processor”, “a scheduler”, “a plurality of databases hosting databases”, “a network”, “a client device”, “a communication interface of the SPP device”, “a communication interface of a client device”, “an electronic transaction”, “a bank server”, “a trained AI model”, “a plurality of servers”, “an UPI application”, and “a plurality of servers hosting databases”, which represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use or technological environment. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “identifying and selecting an optimal account in performing a transaction.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of “identifying and selecting an optimal account in performing a transaction” using computer technology (e.g., “a smart payment processing (SPP) device” and “a plurality of servers”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05 I A (f) & (h)). Therefore, claim 7 is non-statutory.
Claim 13 recites the abstract idea of “identifying and selecting an optimal account in performing a transaction”, as well as the additional elements of “a dynamic Unified Payment Interface (UPI)”, “a smart payment processing (SPP) device”, “a processor”, “a scheduler”, “a network”, “a client device”, “a communication interface of the SPP device”, “an electronic transaction”, “a bank server”, “a trained AI model”, “a plurality of servers”, “an UPI application”, and “a plurality of servers hosting databases”, which represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use or technological environment. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to implementing the acts of “identifying and selecting an optimal account in performing a transaction.”
When analyzed under step 2B (MPEP 2106.05 I.A.), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of “identifying and selecting an optimal account in performing a transaction” using computer technology (e.g., “a bank server” and “a non-transitory computer readable storage medium”). Therefore, the use of these additional elements do no more than employ a computer as a tool to implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05 I A (f) & (h)). Therefore, claim 13 is non-statutory.
Dependent claims 6, 12, and 18 further describe the abstract idea of “identifying and selecting an optimal account in performing a transaction”. Specifically, they recite “… recommending, …, at least one action to be performed based on a transactions history of the user.” The additional element of “the processor of the SPP device” does no more than employ a computer as a tool to implement the abstract idea and/or does no more than generally link the abstract idea to a particular field of use or technological environment. And, as it does no more than employ a computer as a tool to implement the abstract idea, it does not improve the functioning of the computer or computer technology.
Hence, claims 1, 6-7, 12-13, and 18 are not patent eligible.
Claim Rejections - 35 USC § 112
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, 6-7, 12-13, and 18 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 pre-AIA the applicant regards as the invention.
Unclear Scope
Claim 1 recites “installing, …, an UPI application for performing …” However, the claim does not identify what performs the installing. According to MPEP § 2173.05(g), “Notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite … For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. ...Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim.” As a result, it is not clear what is performing the functionality of installing. Therefore, the scope of claim 1 is unclear. Dependent claim 6, which depend from claim 1, is also similarly rejected. (MPEP § 2173.05(g) and In re Zletz, 893 F.2d 319,321 (Fed. Cir. 1989)).
Claim 1 recites “installing …, wherein one of the plurality of accounts is set …” However, the claim does not identify what performs the is set. According to MPEP § 2173.05(g), “Notwithstanding the permissible instances, the use of functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite … For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. ...Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim.” As a result, it is not clear what is performing the functionality of is set. Therefore, the scope of claim 1 is unclear. Additionally, similar language is recited in claims 7 and 12. Dependent claim 6, which depends from claim 1; dependent claim 12, which depends from claim 7; and dependent claim 18, which depends from claim 13, are also similarly rejected. (MPEP § 2173.05(g) and In re Zletz, 893 F.2d 319,321 (Fed. Cir. 1989)).
Claim 7 recites “receiving, … and by the processor of the SPP device …”. It is not clear whether the processor of the SPP device or the system, or some combination thereof, is performing the step of receiving. MPEP § 2173.02 I recites “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph is appropriate.” Therefore, the scope of claim 7 is unclear. Dependent claim 12, which depends from claim 7, is also similarly rejected. (MPEP § 2173.02 I and In re Zletz, 893 F.2d 319,321 (Fed. Cir. 1989)).
Means-Plus-Function
Claim 7 recites “a communication interface of the SPP device configured to communicate …”
The claim limitations above do not use the word "means" but is being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitations use generic placeholders that are coupled with functional language, "acts", without reciting sufficient structures to perform the recited functions and the generic placeholders are not preceded by structural modifiers.
These claim limitations invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. However, the written description, (US 20240202735 A1), fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph. Dependent claim 12, which depends from claim 7, is also similarly rejected.
Applicant may:
Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph;
Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. § 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP § 608.01 (o) and § 2181.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Rao et al (U. S. Application Publication Patent No. 20220020049 A1) – Artificial Intelligence (AI) Based Payments Processor
Rao discloses an Artificial Intelligence (AI) based payments processing system analyzing data from a user's purchase invoice to identify a combination of payment modes to be used to pay for the user's purchases thereby maximizing the savings to the user while accounting for the user preferences. A savings oriented model including a mix and match model and a dynamic decision tree scoring model generates a savings based best offer suggesting the payment modes to be used by analyzing the user's purchases based on the offers associated with the purchased products. A user behavior model generates a user behavior based best offer by further accounting for user preferences. Based on the user's autopay settings, the payments processing system may automatically initiate payment for the user's purchases or may display the best offers to the user before initiating the payments
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 STEVEN CHISM whose telephone number is (571) 272-5915. The examiner can normally be reached during 9:00 AM – 3:00 PM Monday – Thursday, EST.
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/STEVEN R CHISM/Examiner, Art Unit 3692
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692