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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/02/26 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 33-52 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 MPEP § 2106, 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. See MPEP 2106.03.
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 33 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 “store an image of a customer in association with an indication of an identity of the customer…; verify that an identity of the person matches the identity of the customer based on the receiving of the first indication and based on a comparison of the person to the image…; generate…a tab data structure corresponding to the identity of the customer based on the authentication of the customer; add, to the tab data structure over a period of time, a plurality of items associated with the merchant that the customer selects over a course of the period of time based on receipt…of a plurality of inputs corresponding to the plurality of items across a plurality of times within the period; and send, after the period of time in response to receiving the signal indicating that the customer authorizes processing payment for the plurality of items, an aggregation of the plurality of items identified in the tab data structure as a combined purchase record…; send…a notification to the customer device, wherein the notification identifies the tab data structure and indicates that authorization is required for processing payment for the plurality of items; receive…a signal indicating that the customer authorizes processing payment for the plurality of items identified in the tab data structure” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. The examiner further contends that the limitations “verify that an identity of the person matches the identity of the customer based on the receiving of the first indication and based on a comparison of the person to the image…; generate…a tab data structure corresponding to the identity of the customer based on the authentication of the customer; add, to the tab data structure over a period of time, a plurality of items associated with the merchant that the customer selects over a course of the period of time based on receipt of a plurality of inputs corresponding to the plurality of items across a plurality of times within the period; and send, after the period of time and based on the authentication of the customer, an aggregation of the plurality of items identified in the tab data structure as a combined purchase record…” are steps that can be performed in the human mind. Actions that can be performed in the human mind fall into the category of a 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 “receive a first indication that a person matching the image has arrived within a proximity of a merchant device associated with a merchant; receive a second indication that the person is no longer within the proximity of the merchant device; database, processor, payment service system, server and processing server.” These additional elements, considered in the context of claim 33 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting 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 database, processor and processing server are caused to perform these steps. The database, processor, payment service system, server, and processing server, 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 extra-solution activity. For instance, the steps of “receive a first indication that a person matching the image has arrived within a proximity of a merchant device associated with a merchant; receive a second indication that the person is no longer within the proximity of the merchant device,” when considered as a whole, are a mere data gathering step considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Thus, it is determined that claim 33 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 33 are the generically recited “database, processor, payment service system, server, customer device, merchant device and processing server.” 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 pages 44-47. 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 33 and are rejected using the same rationale as in claim 33 above. More specifically, dependent claims 34, 37, 39, 42, 46, 48 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 35, 41, 43-44, 49 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, dependent claims 50-52, when considered as a whole, are a mere data gathering step considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity).
Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 33-52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No.9,959,529. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantially the same limitations and are directed to the same subject matter. While the pending claims are seemingly broader than those in the U.S. Patent No.9,959,529, they recite substantially the same limitations that are not patentably distinct from each other.
Response to Arguments
Applicant's arguments filed on 07/02/26 have been fully considered but they are not persuasive.
In response to applicant argument, citing Core wireless, that the claim is not directed to an abstract idea, the examiner disagrees. The examiner contends that the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “store an image of a customer in association with an indication of an identity of the customer…; verify that an identity of the person matches the identity of the customer based on the receiving of the first indication and based on a comparison of the person to the image…; generate…a tab data structure corresponding to the identity of the customer based on the authentication of the customer; add, to the tab data structure over a period of time, a plurality of items associated with the merchant that the customer selects over a course of the period of time based on receipt…of a plurality of inputs corresponding to the plurality of items across a plurality of times within the period; and send, after the period of time in response to receiving the signal indicating that the customer authorizes processing payment for the plurality of items, an aggregation of the plurality of items identified in the tab data structure as a combined purchase record…; send…a notification to the customer device, wherein the notification identifies the tab data structure and indicates that authorization is required for processing payment for the plurality of items; receive…a signal indicating that the customer authorizes processing payment for the plurality of items identified in the tab data structure” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. The examiner further contends that the limitations “verify that an identity of the person matches the identity of the customer based on the receiving of the first indication and based on a comparison of the person to the image…; generate…a tab data structure corresponding to the identity of the customer based on the authentication of the customer; add, to the tab data structure over a period of time, a plurality of items associated with the merchant that the customer selects over a course of the period of time based on receipt of a plurality of inputs corresponding to the plurality of items across a plurality of times within the period; and send, after the period of time and based on the authentication of the customer, an aggregation of the plurality of items identified in the tab data structure as a combined purchase record…” are steps that can be performed in the human mind. Actions that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
The examiner further contends that all the recited components/devices are merely being applied to carry out the abstract idea.
The examiner further 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.
In response to applicant’s argument that the claims implement a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “receive a first indication that a person matching the image has arrived within a proximity of a merchant device associated with a merchant; receive a second indication that the person is no longer within the proximity of the merchant device; database, processor, payment service system, server and processing server.” These additional elements, considered in the context of claim 33 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting 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 database, processor and processing server are caused to perform these steps. The database, processor, payment service system, server, and processing server, 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 extra-solution activity. For instance, the steps of “receive a first indication that a person matching the image has arrived within a proximity of a merchant device associated with a merchant; receive a second indication that the person is no longer within the proximity of the merchant device,” when considered as a whole, are a mere data gathering step considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Thus, it is determined that claim 33 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.
Applicant's citation of Example 21 is unpersuasive, as the claims at issue in Example 21 are readily distinguishable over the instant claims. The examiner contends that the remote alert display functionality is not just a conventional system being applied to the abstract idea. Rather it constitutes an additional element, which integrates the judicial exception into a practical application. However, the “database, processor, payment service system, server, customer device, merchant device and processing server,” recited in the pending claims are recited generically and being applied to carry out the abstract.
Similarly, applicant’s citation of Cosmokey Solutions is unpersuasive because the claims at issue in Cosmokey Solutions are readily distinguishable over the instant claims. The claim in Cosmokey Solutions is found to be directed to non-abstract authentication improvement that departs from earlier approaches to solve a specific computer problem “using a second communication channel for checking an authentication function that is implemented in a mobile device of the user. But no such improvement is found in the pending claims. The additional element in the pending claim “receive an indication that a person matching the image has arrived within a proximity of a device associated with a merchant,” when considered as a whole, is a mere data gathering step considered to be an insignificant extra-solution activity.
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 improvement touted by the applicant does 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’).
Regarding the argument that the final office action violates Berkheimer, the examiner did not rely upon 2106.05(d) considerations. Instead the examiner stated the additional elements of the claim were mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on "the draftsman’s art").
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
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