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 .
Claim Status
Claims 1-20 are currently pending and are presented for examination on the merits.
Claim objection
Claim 8 is objected to at “the payment recipient computer application and via the transceiver, a communication initiation from the payment sender computer application.” Is this missing a verb or gerund, such as “receives”?
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 1-20 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, 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. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., apparatus, system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, which are statutorily recognized categories of invention, and as such, patent eligible.
Under Step 2a-prong 1, Claims 1-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards requesting money from those in proximity and receiving same from at least one. This is a long-standing commercial practice previously performed by humans (e.g., consumers, family members, etc.) manually, and via generic computing. For example, this has long been accomplished verbally and manually amongst family and/or friends, and the conveyance of money is an economic transaction (e.g., remuneration, remittance, etc.). As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—computer, listening device, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. Using a listening mode to determine those who would provide the requested amount (e.g., equivalent to family, friends, or other affinity group) merely supplants human discernment. And invoking or activating a listening mode in the recipient’s mobile device (in order to effectuate purchase) is also a generic computing technology (e.g., a Web Bluetooth API plus web page with JavaScript) at the time of filing. See, e.g., US 2022/0327516. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
As per the instant invention, the limitations, “wherein the transceiver cannot receive communications when it is not in listening mode,” fails to offer an innovative concept or significantly more by itself. This clarifying scope fails to add substantively to the claim scope, as the phrase “enters a listening mode” inherently teaches the inability to receive communications when not in listening mode. This also supplants human capability to enter/exit an area/proximity wherein listening is/is not possible, with generic computing technology, as broadcasting and listening were well known computing/technological capabilities at the time of filing. See, prior art references of record.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. §103 as being unpatentable over US 2013/0278622 to Sun et al., in view of US 2014/0101043 to Cincera.
With respect to Claims 1, 8, and 15, Sun teaches a non-transitory computer readable storage medium (FIG. 13), a system (FIG. 13), and method for proximity-based mobile device person-to-person payments ([0101];[0121];[0129]; FIGS. 6, 13), comprising: receiving, at a payment recipient computer application executed on a payment receiving mobile device, entry of a requested payment amount for a payment from a payment recipient from a payment sender ([0121];[0129]); causing the payment receiving mobile device to enter a listening mode ([0024];[0091], see NFC usage throughout); receiving, by the payment recipient computer application, a communication from a payment sender computer application executed by a payment sending mobile device ([0101];[0121]); wirelessly communicating, by the payment recipient computer application, the requested payment amount ([0121]) to the payment sender computer application; wirelessly receiving, by the payment recipient computer application and from the payment sender computer application, payment information ([0121]); and executing, by the payment recipient computer application, the payment using the payment information ([0121]).
Sun fails to expressly teach, but Cincera teaches “in response to the receipt of the requested payment amount, enabling . . . and via an operating system of the payment receiving mobile device, a transceiver . . . to enter a listening mode; and via the transceiver . . . initiation . . .” ([0017];[0051], claim 7 therein). Cincera further teaches “entry of” data using sound-based communication (throughout). Cincera teaches causing an electronic device to enter a listening mode when an application is invoked on the device and enabling the device to participate in a payment transaction ([0051-52]; claim 7 therein), which teaches the device being unable to receive the communication when not in listening mode. Cincera discusses that other options for completing payment transactions may be unavailable, unreliable, and/or inconvenient. [0002] As such, it would have been obvious to one of ordinary skill in the art to modify Sun, to include invoking a mobile device to enter into a listening mode without user intervention, so as to be more reliable and convenient.
With respect to Claims 2, 9, and 16, Sun teaches receiving, by the payment recipient computer application via the transceiver, an identification of the payment sender. ([0129];[0146])
With respect to Claims 3, 10, and 17, Sun teaches communicating, by the payment recipient computer application, a reason for the payment to the payment sender computer application using the transceiver. ([0121], optional description)
With respect to Claims 4, 11, and 18, Sun teaches wherein the payment sender computer application is configured to verify the requested payment amount before communicating the payment information to the payment recipient computer application. ([0077];[0112], tokens and barcodes both can be used to authenticate transaction information before sending token or barcode)
With respect to Claims 5, and 12, Sun teaches wherein the payment information comprises a payment sender token. ([0077], see token discussion throughout)
With respect to Claims 6, 13, and 19, Sun teaches wherein the payment recipient computer application executes a tokenized payment using the payment sender token ([0077], see token discussion throughout).
With respect to Claims 7, 14, and 20, Sun teaches wherein the payment information comprises a debit card identifier, and the non-transitory computer readable storage medium further includes instructions stored thereon, which when read and executed by the one or more processors, cause the one or more computer processors to execute the payment using a debit network. ([0129])
Response to remarks
Applicant’s remarks submitted on 08/27/2025 have been fully considered, but are not persuasive where objections/rejections are maintained. The amendment primarily adds the “entry of” of data such as payment amount, and enabling, “via an operating system . . .” a transceiver to enter listening mode. As per § 101, the claim amendment fails to overcome patent ineligibility. Entering information such as the “amount” requested further delineates the abstract idea and is well-known, routine, and conventional (see prior art references of record). For example, in Cincera, sound-based communication is used to enter information. Moreover, using an operating system further delineates the abstract idea and is well-known routine and conventional, where online transactions are involved (see prior art references of record). The claim limitations directed to causing the mobile device to enter into a listening mode, wherein the device is not able to receive communication when not in listening mode, fails to offer an innovative concept, as this capability was widely utilized at the time of filing. As noted Web Bluetooth API has been specifically developed to that end. Several publications have been added to the prior art references of record that teach causing a device to enter into a listening mode, it is inherent that the device is not able to receive the same communications when not in listening mode. It is not clear what additional scope this amendment is intended to capture. The application in this peer-to-peer payment context is insufficient to effect patentability. The solution offered leverages generic technology to reap the benefits of that technology in a conventional manner. Recitation of hedging, mitigating risk, etc. is not required. It is noted with respect to Example 21, that the instant activation step is not coupled with time sensitive matter as was presented in that example, and no argument by Applicant contrarily has been put forth. With respect to Example 46, a technical solution is not presented in the instant case; instead a business method is being performed across generic computing technology (e.g., short range communication/broadcasting technology). As per the prior art rejection, Cincera teaches the limitations added by the instant amendment. It teaches causing a device to enter into a listening mode, which when coupled with Sun, teaches one of ordinary skill in the art each and every limitation of the instant claims. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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, Matthew Gart can be reached on 5712723955. 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 http://pair-direct.uspto.gov. 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.
/WILLIAM J JACOB/Examiner, Art Unit 3696