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 .
Response to Arguments
Applicant argues that the claims have been amended and this amendment overcomes the 101 rejection because it integrates any alleged judicial exception into a practical application. Examiner respectfully disagrees and notes that generating a token to represent a bank account number does not provide any technical improvement to the computer or any improvement to the technological field. Tokenizing the customer’s bank account number provides a business or security improvement in that the token provides protections for the customer’s personal bank account information, however, this does not provide any improvement to the functioning of the computer or any improvement to the technological field. The generation and utilization of the token is recited at a high level of generality and is merely used to identify the customer’s bank account and describes the manner in which the funding transaction is processed. Therefore, the claims do not provide a practical application or significantly more than the abstract idea.
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 the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-4 and 6-10 are directed to a method, claims 11-19 are directed to a system and claim 20 is directed to a non-transitory computer-readable storage medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite an abstract idea of adding a user’s online bank account to a merchant wallet and tokenizing the account information, which is an abstract idea. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain methods of organizing human activity abstract idea grouping is defined as concepts related to fundamental economic principles or practices, commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas as they relate to adding a customers bank account information to a merchant’s wallet, tokenizing the account information and completing a funding transaction.
More specifically, the following non-underlined claim elements recite the abstract idea while the underlined, bolded claim elements recite additional elements according to MPEP 2106.04(a).
Claim 1 is representative of claims 11 and 20.
Claim 1. A method for integrating pay by bank services, comprising:
receiving, at a merchant computer program for a merchant executed on a user electronic device, a request to add funds to a merchant account or wallet;
receiving, at the merchant computer program, a selection to add an online banking account to the merchant account or wallet;
receiving, at the merchant computer program, a selection of a funding amount;
receiving, at the merchant computer program, a selection of a user financial institution;
receiving, at the merchant computer program, user login credentials for the user financial institution;
receiving, at the merchant computer program and from a user financial institution backend, one or more bank accounts associated with the user login credentials;
receiving, at the merchant computer program, a selection of one of the bank accounts;
generating, by a merchant financial institution backend, a token for the selected bank account by generating a unique identifier for the selected bank account, associating the unique identifier with the selected bank account, and storing the association between the unique identifier and the selected bank account;
receiving, at the merchant computer program, the token for the selected bank account from the merchant financial institution backend;
storing, by the merchant computer program, the token in a merchant wallet;
routing, by the merchant computer program, a funding transaction for the funding amount using the token; and
conducting, by the merchant computer program, the funding transaction
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional element(s) of the claim(s) such as merchant computer program, user electronic device, user financial institution backend, merchant financial institution backend and merchant wallet are merely used as circuitry and tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of data gathering related to adding a customer’s bank account information, tokenizing the bank account information and conducting a funding transaction. Viewed as a whole, the use of processing circuitry, user devices, computer programs and backend computers as a tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer and devices performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of using a merchant computer program, user electronic device, user financial institution backend, merchant financial institution backend and merchant wallet to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea adding a customer’s bank account information, tokenizing the bank account information and conducting a funding transaction. As discussed above, taking the claim elements separately, these additional elements perform(s) the steps or functions of data gathering related to adding a customer’s bank account information, tokenizing the bank account information and conducting a funding transaction. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of conducting a funding transaction using tokens linked to a customer’s bank account. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent Claims 2, 12 includes additional elements of a merchant user interface in a browser or application. However, these additional elements are merely used as tools to perform the abstract idea and it amounts to no more than mere instructions to apply the exception using generic computer components. These additional elements fail to recite a practical application or significantly more than the abstract idea because it merely uses a computer as a tool to perform the abstract idea.
Dependent Claims 3, 6-10, 13 and 15-19 further describes the abstract idea of providing login credentials in the process of adding the users bank account information, placing restrictions on the use of the funding token and processing the funding transaction. These claims do not introduce any new additional elements. Therefore, the claims do not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Dependent Claims 4 and 14 includes additional elements of a lightbox or an iFrame. However, these additional elements are merely used as tools to perform the abstract idea and it amounts to no more than mere instructions to apply the exception using generic computer components. These additional elements fail to recite a practical application or significantly more than the abstract idea because it merely uses a computer as a tool to perform the abstract idea.
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.
Claim(s) 1-4, 9-14 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Purves et al (U.S. 2017/0270519).
As per Claims 1 and 20, Purves et al discloses a method for integrating pay by bank services, comprising:
receiving, at a merchant computer program for a merchant executed on a user electronic device, a request to add funds to a merchant account or wallet (Figure 4, 0004, 0035);
receiving, at the merchant computer program, a selection to add an online banking account to the merchant account or wallet (Figure 4, 0004, 0035);
receiving, at the merchant computer program, a selection of a funding amount (0026, 0029);
receiving, at the merchant computer program, a selection of a user financial institution (0004, 0036, 0039);
receiving, at the merchant computer program, user login credentials for the user financial institution (0004, 0029, 0032, 0036. 0039;
receiving, at the merchant computer program and from a user financial institution backend, one or more bank accounts associated with the user login credentials (0004, 0024, 0039);
receiving, at the merchant computer program, a selection of one of the bank accounts (0004, 0040);
generating, by a merchant financial institution backend, a token for the selected bank account by generating a unique identifier for the selected bank account, associating the unique identifier with the selected bank account, and storing the association between the unique identifier and the selected bank account (0025, 0040-0041);
receiving, at the merchant computer program, payload data for the selected bank account from the merchant financial institution backend (0040-0041);
storing, by the merchant computer program, the token in a merchant wallet (0042) ;
routing, by the merchant computer program, a funding transaction for the funding amount using the token (0041); and
conducting, by the merchant computer program, the funding transaction (0041).
Purves et al discloses receiving payload data representing the customers bank account/payment device from token service provider but does not specifically disclose receiving the token. Venot et al discloses a method and system for provisioning consumer payment credentials to merchants requesting tokens and teaches receiving, at the merchant computer program the token which represents the consumers payment data (0015, 0037-0038).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the application to modify the method of Purves et al to include tokenizing the consumers payment data by a backend financial institution and providing the actual token to the merchant for the purpose of protecting the consumers payment data. Venot et al indicates that payment tokens replace primary account numbers (PAN) with alternate values and are used to prevent the unauthorized access to a cardholder’s primary account number (PAN) during a payment process.
As per Claim 2, Purves et al further discloses wherein the request to add funds to the merchant account or wallet, the selection to add the online banking account to the merchant account or wallet, the selection of the funding amount, and the selection of the user financial institution are received in a merchant user interface in a browser or application (Figures 3-9).
As per Claim 3, Purves et al further discloses herein the user login credentials comprise a username and password and/or a token (Figure 6, 0004, 0032, 0036, 0039).
As per Claim 4, Purves et al further discloses wherein the one or more bank accounts associated with the user login credentials are presented in a lightbox or an iFrame (Figures 5-9, 0035).
As per Claim 9, Purves et al further discloses wherein the funding transaction comprises an automated clearing house (ACH) transaction (Figures 5, 8 showing the ability to use a Debit card, 0032)
As per Claim 10, Purves et al further discloses wherein the merchant computer program is configured to optimize a payment route for the funding transaction (0041).
As per Claim 11, Purves et al discloses system comprising:
A user electronic device executing a merchant computer program (Figure 1 (103), 0024, 0032)
A user financial institution backend executing a user financial institution computer program and in communication with an account database (0029, 0036-0037, 0039)
A merchant backend for a merchant executing a merchant computer program and in communication with a merchant wallet (Figure 1 (104), 0026, 0029)
A merchant financial institution backend executing a merchant financial institution computer program and in communication with a vault (Figure 1 (106), 0024-0025).
A payment network (Figure 1; wherein
the merchant computer program receives a request to add funds to a merchant account or wallet (Figure 4, 0004, 0035);
the merchant computer program receives a selection to add an online banking account to the merchant account or wallet (Figure 4, 0004, 0035);
the merchant computer program receives a selection of a funding amount (0026, 0029);
the merchant computer program receives a selection of a user financial institution (0004, 0036, 0039);
the merchant computer program receives user login credentials for the user financial institution and authenticates the user using the login credentials (0004, 0029, 0032, 0036. 0039);
the user financial institution computer program retrieves one or more bank accounts associated with the user login credentials and communicates the one or more bank accounts to the merchant computer program (0004, 0024, 0039);
the merchant computer program receives a selection of one of the bank accounts and the user financial institution computer program communicates the selected bank account to the merchant financial institution computer program (0004, 0040);
the merchant financial institution computer program generates a token by generating a unique identifier for the selected bank account, and storing the association between the unique identifier and the selected bank account in the vault (0025, 0040-0041);
the merchant computer program receives payload data for the selected bank account from the merchant financial institution computer program (0040-0041);
the merchant computer program stores the token in a merchant wallet (0042) ;
the merchant computer program routes a funding transaction for the funding amount using the token over the payment network (0041); and
the merchant computer program conducts the funding transaction (0041).
Purves et al discloses receiving payload data representing the customers bank account/payment device from token service provider but does not specifically disclose receiving the token. Venot et al discloses a method and system for provisioning consumer payment credentials to merchants requesting tokens and teaches receiving, at the merchant computer program the token which represents the consumers payment data (0015, 0037-0038).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the application to modify the method of Purves et al to include tokenizing the consumers payment data by a backend financial institution and providing the actual token to the merchant for the purpose of protecting the consumers payment data. Venot et al indicates that payment tokens replace primary account numbers (PAN) with alternate values and are used to prevent the unauthorized access to a cardholder’s primary account number (PAN) during a payment process.
As per Claim 12, Purves et al further discloses wherein the request to add funds to the merchant account or wallet, the selection to add the online banking account to the merchant account or wallet, the selection of the funding amount, and the selection of the user financial institution are received in a merchant user interface in a browser or application (Figures 3-9).
As per Claim 13, Purves et al further discloses herein the user login credentials comprise a username and password and/or a token (Figure 6, 0004, 0032, 0036, 0039).
As per Claim 14, Purves et al further discloses wherein the one or more bank accounts associated with the user login credentials are presented in a lightbox or an iFrame (Figures 5-9, 0035).
As per Claim 18, Purves et al further discloses wherein the funding transaction comprises an automated clearing house (ACH) transaction (Figures 5, 8 showing the ability to use a Debit card, 0032)
As per Claim 19, Purves et al further discloses wherein the merchant computer program is configured to optimize a payment route for the funding transaction (0041).
Claim(s) 6-8 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Purves et al (US 2017/0270519) and Venot et al (US 2021/0117965) as applied to claims 1 and 11 above, and further in view of Tesser et al (US 2021/0158327).
As per Claims 6-8 and 15-17, Purves et al and Venot et al disclose a merchant token system for use in financial transaction, however do not disclose restrictions placed on the use of the token including limiting the use of the token to a particular merchant, number of uses or a dollar amount. Tesser et al discloses a token based system for payments and includes restrictions place on the token to limit the use of the token to particular merchants, number of uses, or a dollar amount (0019, 0023, 0050).
Therefore, it would have been obvious to one having ordinary skill in the art at the effective filing date of the application to modify the combination of Purves et al and Venot et al to include placing various restrictions on the use of the token in order to place protections on the unauthorized use of token that the consumer desires.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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 John Hayes whose telephone number is (571)272-6708. The examiner can normally be reached Monday-Thursday 6:00AM-4:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tariq Hafiz can be reached on (571) 272-5350. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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