DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 12, 2026 has been entered.
Status of Claims
This action is in response to the RCE filed on March 12, 2026.
Claims 1-21 are pending.
Claim 20 have been cancelled.
Claim 21 is a new claim.
There is no prior art rejection for claims 1-19 and 21 at this time.
Response to Arguments
Applicant's arguments filed March 12, 2026 have been fully considered but they are not persuasive. Applicant argues that the declaration submitted by David Whitmire is sufficient to overcome the 35 USC §101 rejection. Examiner disagrees.
The declaration under 37 CFR 1.132 filed March 12, 2026 is insufficient to overcome the rejection of claims 1-19 and 21 based upon 35 USC §101 as set forth in the last Office action for the following reasons.
Paragraph 5 on pages 4-5 of the declaration, Mr. Whitmire states that “the ‘383 application addresses specific market failures that arise when payment-method selection is rigid and refund processing is decoupled from the original payment vehicle” and “This creates an information -asymmetry problem and a behavioral-friction problem.” He also cites to the “nudge theory” in paragraph 10, page 7. These issues and problems that Mr. Whitmire is alluding are business related problems and the instant application is addressing these business problems with business solutions. These are not technical problems rooted in computer technology or technical field.
Addressing paragraphs 9 and 10, the problem that is being addressed by current invention is a business problem (abstract) not a technical problem. Selecting a refund path is a business solution to a business problem. Displaying a refund path and amount of a transaction is not a technical solution to a technical problem. There is nothing unconventional about displaying a refund path and amount of a transaction.
Mr. Whitmire further describes on page 9 that the invention “also directly addresses adverse selection and moral hazard…” Again, these are business related concepts with business related solutions that the current invention addresses.
Paragraphs 11-12 on pages 10-12, Mr. Whitmire argues that the current invention “is more than mere instructions to apply an exception under MPEP 2106.05(f).” However, the claims recite generic computer hardware being used as one skilled in the arts would use generic computer hardware. Information gathering and display paradigm maybe novel, however that does not make the claims patent eligible under 35 USC §101.
Therefore, for these reasons and the reasons given above, the rejection of these claims under 35 USC §101 is maintained.
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 1-19 and 21 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory patent ineligible subject matter. (See, Alice and MPEP §2106)
Claims 1-19 and 21 are rejected under 35 U.S.C. §101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. (MPEP §2106)
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined as Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter) (MPEP §2106.03). Here, the claims are directed to the statutory category of a process (claims 1-10) and a machine (claims 11-19 and 21). Therefore, we proceed to Step 2A, Prong 1. (MPEP §2106)
Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. (MPEP §2106.04) Here, the independent claims, at their core, recite the abstract idea of:
receiving an indication of the transaction associated with a purchase of a product from a merchant via a value card of a customer, the value card being usable to support multiple transaction types including a debit purchase or a credit purchase;
receiving an indication of selected transaction type indicating whether the transaction is to be treated as an instance of the debit purchase or the credit purchase;
directing funds to the merchant in an amount of the transaction;
selectively processing the transaction with respect to the customer based on the selected transaction type;
storing a transaction record indicating the amount of the transaction and the selected transaction type;
receiving a product return indication;
retrieving the transaction record to determine the amount of the transaction and the selected transaction type;
automatically determining a refund path based on the selected transaction type in response to a match of the amount of the transaction and a refund amount of the product return indication, and a match of the merchant associated with the transaction and a merchant associated with the product return indication;
in response to no match of the transaction and the refund amount of the product return indication, or no match of the merchant associated with the transaction and the merchant associated with the product return indication, automatically causing display at … the consumer of the amount of the transaction simultaneous with display of both a first selectable display element to, responsive to selection of the first selectable display element, display a list of recent loans and a second selectable display element to, responsive to selection of the first selectable display element, indicate that the refund amount is not associated with a loan at a communication device of the customer; and
processing the product return based on the refund path determined.
Here, the recited abstract idea falls within one or more of the three enumerated categories of patent ineligible subject matter (MPEP §2106.04), to wit: certain methods of organizing human activity, which includes the sub-category of commercial interactions involving sales/purchase activities or behaviors (e.g., in the claims: processing a payment transaction between a customer and a merchant for a purchase, including the customer’s use of a value card and selection of a debit or credit payment type for the transaction, including sending funds to the merchant for payment for the purchase and storing a transaction record, including receiving indication of a purchased product return and matching the purchase and refund amounts and merchant information from the purchase transaction and return indicator, where no match of the refund amount or merchant information causes display to the customer of the transaction amount and various loan data and selectable elements related to the loan data, and then processing the requested product return).
Under Step 2A, Prong 2 the recited additional elements are evaluated to determine whether they provide an integration of the recited abstract idea into a practical application. (i.e., whether they provide a technological solution). (MPEP §2106.04) Here, the recited additional elements, such as: a “user interface”, a customer “communication device”, various “processing circuitry” and various generated “instructions” configured to cause various data to be displayed, and including various user input selection functions, do not provide a technological improvement since the claims are simply using each of these additional elements, which are recited in the claims at a high degree of generality, as a tool to carry out the recited abstract idea (i.e., “apply it”) on a computer, using a memory device and/or a database, on a data or communication network, on a display device or user interface, or on another computing device listed above, and/or via software programming, where the additional elements are not being technologically improved but simply perform generic computer data receipt and processing/analysis steps, data storage and communication steps, and/or outputting/displaying steps such as those typically used in a general purpose computer, a computing system, a display or user interface for displaying and inputting data, and/or a computer or communication network. Thus, the claims do not provide an integration into a practical application. See Applicant’s Specification paragraphs 34 and 52-55.
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed. (i.e., provide an inventive concept). (MPEP §2106.05) Here, the recited additional elements, identified above in the Step 2A, Prong 2 analysis, do not amount to an inventive concept since, as stated above in the Step 2A, Prong 2 analysis, where the additional elements are not being technologically improved or provide a technological improvement, but rather, the claims are simply using the above-described additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer, using a memory device and/or a database, on a data or communication network, or on another computing device listed above, and/or via software programming, where the additional elements are specified at a high level of generality as simply facilitating and/or performing generic computer data receipt and processing/analysis steps, data inputting steps, data storage and communication steps, and/or data outputting/displaying steps such as those typically used in a general purpose computer, a computing system, a display or user interface, and/or a computer or communication network, where the additional elements are being used in the claims to simply implement the abstract idea and are not themselves being technologically improved, and therefore do not provide something “significantly more.” (See e.g., MPEP §2106.05 I.A.) See Applicant’s Specification paragraphs 34 and 52-55.
The dependent claims simply further refine and limit the abstract idea recited by the independent claims, from which these claims respectively directly or indirectly depend, where the abstract idea is described above.
Claims 2 and 12 simply further refine the abstract idea by requiring that funds are debited from a customer account in processing the purchase transaction payment or are treated as a loan to the customer, where either payment path is simply a type of payment being used in the merchant transaction and is not a technological solution to a technological problem. Therefore, these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 3 and 13 simply further refine the abstract idea by requiring that a refund involves a credit to the customer’s payment account for a debit purchase and involves restructuring a loan repayment terms for a credit purchase, which are simply different methods used to refund a customer for a purchase product and are not a technological solution to a technological problem. Therefore, these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 4, 5, 7, 8, 14, 15 and 17 simply further refine the abstract idea by requiring that loan repayment terms are adjusted for a customer for a product return based on differing adjustments to the loan under differing conditions, and such adjusted terms may be displayed on a customer device, which are not technological solutions to a technological problem, and therefore these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 6 and 16 simply further refine the abstract idea by requiring that the purchased product be among other purchased products being financed via a loan, and where the terms of the loan are adjusted depending on differing conditions. There is no technological solution being provided to a technological problem, but rather, a financial solution. Therefore, these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 9, 10, 18, 19 and 21 simply further refine the abstract idea by requiring that a refund path for the customer is determined under differing financial conditions, including whether there is a matching or not a matching of certain transaction data (amount, merchant information), without providing any technological improvement. Therefore, these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Thus, neither the independent claims nor the dependent claims, viewed individually and as a whole, including consideration of all the limitations of each claim viewed both individually and in combination, add any additional element or provide any subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter, nor do the claims provide something significantly more than the recited abstract idea to which the claims are directed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAHID R MERCHANT whose telephone number is (571)270-1360. The examiner can normally be reached M-F 7:30-5.
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/Shahid Merchant/ Supervisory Patent Examiner, Art Unit 3684
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