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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/31/26 has been entered.
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the 2019 PEG, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: 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.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “maintaining…a guest table storing, for each user of a plurality of users, a remaining amount of credit based on an amount of credit purchased and an amount of credit redeemed, a bill item locator table storing labels to identify line items payable by house credit accounts and line items unpayable by house credit accounts, and a bonus table storing, for each hospitality establishment of a plurality of hospitality establishments, current bonus offers available; receiving…a check number associated with an invoice; receiving a selection of a first tip item associated with a first gratuity amount; identifying at least one first line item in the invoice associated with a payment tender using the labels stored in the bill item locator table; identifying at least one second line item in the invoice associated with a house credit account associated with a hospitality establishment using the labels stored in the bill item locator table; identifying at least one third line item in the invoices associated with at least one charge unpayable from the house credit account by using a classifier to identify a data type of the at least one third line item and in response to a failure to determine the at least one third line item is unpayable from the house credit account based on the classifier; comparing at least one amount of the at least one third line item with a predetermined percentage of a total amount of the invoice, computing an additional gratuity based on the invoice and the first gratuity amount; accessing…the invoice associated with the check number…by transmitting…a request for the voice…; and receiving…invoice data from the POS; receiving…a first partial payment…; receiving…a second partial payment…; ” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity.
Similarly, the claim language “maintaining…a guest table storing, for each user of a plurality of users, a remaining amount of credit based on an amount of credit purchased and an amount of credit redeemed, a bill item locator table storing labels to identify line items payable by house credit accounts and line items unpayable by house credit accounts, and a bonus table storing, for each hospitality establishment of a plurality of hospitality establishments, current bonus offers available; receiving…a check number associated with an invoice; receiving a selection of a first tip item associated with a first gratuity amount; identifying at least one first line item in the invoice associated with a payment tender using the labels stored in the bill item locator table; identifying at least one second line item in the invoice associated with a house credit account associated with a hospitality establishment using the labels stored in the bill item locator table; identifying at least one third line item in the invoices associated with at least one charge unpayable from the house credit account by using a classifier to identify the at least one third line item and in response to a failure to determine the at least one third line item is unpayable from the house credit account based on the classifier; comparing at least one amount of the at least one third line item with a predetermined percentage of a total amount of the invoice,; computing an additional gratuity based on the invoice and the first gratuity amount” can be performed in human mind. Any process that can be performed in the human mind falls into the category of mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “causing a detailed invoice user interface to be displayed by the first client device, and causing an upsell user interface to be displayed by the first client device based on the house credit account charge being higher than an amount of house credit remaining in a house credit account associated with the user; causing payment comprising the first partial payment and the second partial payment to be tendered with the POS system associated with the invoice; the processor, POS system, the credit redemption payment server; the first client device; network, API.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of processing and outputting data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the processor, POS system, the credit redemption payment server; the first client device are caused to perform these steps. The processor, POS system, the credit redemption payment server, the first client device, network and API, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible insignificant post-solution activities. For instance, the steps of “causing a detailed invoice user interface to be displayed by the first client device; causing a payment review user interface to be displayed by the first client device and causing an upsell user interface to be displayed by the first client device based on the house credit account charge being higher than an amount of house credit remaining in a house credit account associated with the user…; causing payment comprising the first partial payment and the second partial payment to be tendered with the POS system associated with the invoice” are directed to insignificant post-solution activities of outputting data (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016). Lastly, the limitations “wherein the detailed invoice user interface comprises: a payment tender amount due based on the at least one line item associated with the payment tender, a house credit amount due based on the at least one line item associated with the house credit account and the first partial payment, and plurality of selectable tip items associated with a plurality of gratuity amounts to be added to the invoice; wherein the plurality of selectable tip items includes the first selectable tip item and the plurality of gratuity amounts includes the first gratuity amount; and causing a payment review user interface to be displayed by the first client device, wherein the payment review user interface comprises: a payment tender charge based on the additional gratuity and the payment tender amount due, and a house credit account charge based on the house credit amount due; wherein the amount of house credit remaining in the house credit account based on the guest table, and wherein the upsell user interface comprises: a first selectable item to purchase house credit equal to a difference between the house credit account charge and the amount of house credit remaining in the house credit account; and a second selectable item to purchase house credit at an amount associated with a bonus offer, wherein the amount associated with the bonus offer is based on the bonus table” are recited to merely narrow the scope of the abstract idea. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 is the generically recited “The processor, POS system, the credit redemption payment server, the first client device, network and API.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0088. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 3, 5-6, 8, 11, 13-14, 16 and 20 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claim 7 and 15 recite additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). Lastly, the limitations 2, 4, 10, 12, 18-19 recite a combination of mental task and mere data gathering steps considered to be insignificant extra-solution activities.
Response to Arguments
Applicant's arguments filed on 03/31/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claims merely involve rather than recite an abstract idea, the examiner disagrees. The claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “maintaining…a guest table storing, for each user of a plurality of users, a remaining amount of credit based on an amount of credit purchased and an amount of credit redeemed, a bill item locator table storing labels to identify line items payable by house credit accounts and line items unpayable by house credit accounts, and a bonus table storing, for each hospitality establishment of a plurality of hospitality establishments, current bonus offers available; receiving…a check number associated with an invoice; receiving a selection of a first tip item associated with a first gratuity amount; identifying at least one first line item in the invoice associated with a payment tender using the labels stored in the bill item locator table; identifying at least one second line item in the invoice associated with a house credit account associated with a hospitality establishment using the labels stored in the bill item locator table; identifying at least one third line item in the invoices associated with at least one charge unpayable from the house credit account by using a classifier to identify a data type of the at least one third line item and in response to a failure to determine the at least one third line item is unpayable from the house credit account based on the classifier; comparing at least one amount of the at least one third line item with a predetermined percentage of a total amount of the invoice, computing an additional gratuity based on the invoice and the first gratuity amount; accessing…the invoice associated with the check number…by transmitting…a request for the voice…; and receiving…invoice data from the POS; receiving…a first partial payment…; receiving…a second partial payment…; ” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity.
Similarly, the claim language “maintaining…a guest table storing, for each user of a plurality of users, a remaining amount of credit based on an amount of credit purchased and an amount of credit redeemed, a bill item locator table storing labels to identify line items payable by house credit accounts and line items unpayable by house credit accounts, and a bonus table storing, for each hospitality establishment of a plurality of hospitality establishments, current bonus offers available; receiving…a check number associated with an invoice; receiving a selection of a first tip item associated with a first gratuity amount; identifying at least one first line item in the invoice associated with a payment tender using the labels stored in the bill item locator table; identifying at least one second line item in the invoice associated with a house credit account associated with a hospitality establishment using the labels stored in the bill item locator table; identifying at least one third line item in the invoices associated with at least one charge unpayable from the house credit account by using a classifier to identify the at least one third line item and in response to a failure to determine the at least one third line item is unpayable from the house credit account based on the classifier; comparing at least one amount of the at least one third line item with a predetermined percentage of a total amount of the invoice; computing an additional gratuity based on the invoice and the first gratuity amount” can be performed in the human mind. Any process that can be performed in the human mind falls into the category of mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Applicant's citation of Example 39 of the 2019 PEG is unpersuasive, because the claims at issue in Example 39 are readily distinguishable over the instant claims. The claims in Example 39 do not recite any of the judicial exceptions enumerated in the 2019 PEG. However, as stated above, the pending claims are directed to both fundamental economic practice and a mental process.
In response to applicant’s argument that the claims reflect technological improvements, the examiner disagrees. The examiner contends that there is a clear difference between the improvement in computer functionality, on one hand, and the use of existing computer as tools to perform a particular task, on the other. The alleged advantages and improvements that the applicant touts do not concern an improvement to computer technology and capabilities but instead relate to an alleged improvement in computer-based process; that is, a process in which a computer is used as a tool in its ordinary capacity which is to process data. (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept’’); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract application realm’).
As per the argument that the amended independent claims describe an integrated technological solution…, the examiner disagrees. The elements recited by the claims above provide a commercial solution and not a technical solution. As the Federal Circuit explained in Bancorp Svcs., LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012), both Research Corp. and SiRF Tech, involved improvements to the underlying technology itself. That is not the case here. Rather here, as in Bancorp, the claimed invention merely uses the underlying computer technology in its ordinary capacity to perform processes “more efficiently.” See Bancorp, 687 F.3d at 1279.
In response to applicant’s argument that the present claims are directed to subject matter that the patent trial and appeal Board has found to be patent eligible, citing Ex parte Annakov, the examiner disagrees. The examiner contends that the decision in Annakov is premised on Enfish. However, in Enfish, the claims were held to be patent-eligible because the claimed solution was directed to improvements in computer technology with database software designed as a "self-referential" table. The patent claims here do not address improvements in computer technology with database software designed as a "self-referential" table, so Enfish is not applicable. In contrast, the instant claims also provide a generically computer-implemented solution to a communication/business-related or economic problem. As such, applicant's citation of Annakov is unpersuasive.
Applicant's citation of DDR is unpersuasive because the claims at issue in DDR are readily distinguishable over the instant claims. The examiner contends that while the patent claims in DDR Holdings, as described by the Court, involve conventional computers and the Internet, the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. “[T]he claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” However, this is just not the case with the claimed subject matter, where a generic computer is being applied to carry out the abstract idea.
Applicant’s citation of Enfish is unpersuasive because the claims at issue in Enfish are readily distinguishable over the instant claims. In Enfish, the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. However, in the present case, the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
Lastly, applicant's citation of Core Wireless is unpersuasive because the claims at issue in Core Wireless are readily distinguishable over the instant claims. The examiner contends that in Core Wireless, the claims are directed to an improved user interface for computing devices. The claims recite that the summary window “is displayed while the one or more applications are in an un-launched state,” a requirement that the device applications exist in a particular state. These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer. There is no such improvement in the claimed display interface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. 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, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695