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 .
Status of the Claims
Claims 1-7 and 9-20 are currently pending.
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 1-7 and 9-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
Claims 1-7 and 9-20 are within the four statutory categories. Claims 1-7 and 9-11 are drawn to a method for processing qualifying expenses for tax-advantaged accounts, which is within the four statutory categories (i.e. process). Claims 12-19 are drawn to a system for processing qualifying expenses for tax-advantaged accounts, which is within the four statutory categories (i.e. machine). Claim 20 is drawn to a non-transitory medium for processing qualifying expenses for tax-advantaged accounts, which is within the four statutory categories (i.e. machine).
Prong 1 of Step 2A
Claim 1, which is representative of the inventive concept, recites: A method, comprising:
receiving, by one or more processors and from a terminal at a point of sale within a retail location, a creation request to create a tax-advantaged account (TAA), associated with a TAA balance, for authorizing a transaction at the terminal, the creation request specifying an initial contribution amount for the transaction, an account holder, an expenditure amount, a funding account, and a login credential for an external account;
creating, by the one or more processors, a first encrypted tracking value representing a first authorization of payment from the funding account to the TAA balance and a second encrypted tracking value representing a second authorization of payment from the TAA balance to a provider account to enable immediate and secure transfers from the TAA upon creation from the terminal at the point of sale within the retail location;
locking, by the one or more processors, a record of the initial contribution amount at the funding account until completion of a transfer of the expenditure amount to the provider account via a peer-to-peer funding mechanism;
transferring, by the one or more processors, via the peer-to-peer funding mechanism, and using the first encrypted tracking value, the initial contribution amount from the funding account to the TAA;
accessing, by the one or more processors, the external account via an application programming interface (API) using the login credential to determine a plurality of historical transactions that occurred in the external account prior to the creation of the TAA and at least two historical transactions of the plurality of historical transactions that correspond to a qualified expense occurring prior to the creation of the TAA;
receiving, by the one or more processors and from the terminal, a confirmation of a first eligible portion for a first historical transaction of the at least two historical transactions and a second eligible portion for a second historical transaction of the at least two historical transactions;
storing, by the one or more processors, a claim covering an aggregated deposit amount based on the first eligible portion and the second eligible portion;
transferring, by the one or more processors, via the peer-to-peer funding mechanism, and using the second encrypted tracking value, the aggregated deposit amount from the external account to the TAA to create a first bank record corresponding to the first eligible portion and a second bank record corresponding to the second eligible portion and immediately transferring the aggregated deposit amount from the TAA back to the external account;
associating, by the one or more processors, the claim with the first bank record and the second bank record; and
transferring in real time, by the one or more processors, the expenditure amount from the TAA to the provider account via the peer-to-peer funding mechanism.
The underlined limitations as shown above, given the broadest reasonable interpretation, cover the abstract idea of a certain method of organizing human activity because they recite fundamental economic practices (i.e. hedging, insurance, mitigating risk – in this case, the aforementioned steps of setting up a TAA, creating first and second tracking values representing first and second authorizations of payments, locking a record of the initial contribution amount of the TAA until completion of the transfer of the expenditure amount to a provider, transferring the initial contribution amount from the funding account to the TAA, accessing the external account to determine a plurality of historical transactions corresponding to a qualified expense, storing a claim covering an aggregated deposit amount based on the first and second eligible portions for the historical transactions, transferring of the aggregated deposit amount from the external account to the TAA, the creation of the first and second bank records corresponding to the first and second eligible portions, transferring the aggregated deposit amount from the TAA back to the external account, associating the claim with the first and second bank records, and transferring the expenditure amount from the TAA to the provider account recites the fundamental economic/insurance practice of documenting reimbursements for expenses), and/or managing personal behavior or relationships or interactions between people (i.e. social activities, teaching, and following rules or instructions – in this case, the aforementioned steps of setting up a TAA, creating first and second tracking values representing first and second authorizations of payments, locking a record of the initial contribution amount of the TAA until completion of the transfer of the expenditure amount to a provider, transferring the initial contribution amount from the funding account to the TAA, accessing the external account to determine a plurality of historical transactions corresponding to a qualified expense, receiving a confirmation of a first and second eligible portion for a first and second historical transaction, storing a claim covering an aggregated deposit amount based on the first and second eligible portions for the historical transactions, transferring of the aggregated deposit amount from the external account to the TAA, the creation of the first and second bank records corresponding to the first and second eligible portions, transferring the aggregated deposit amount from the TAA back to the external account, associating the claim with the first and second bank records, and transferring the expenditure amount from the TAA to the provider account recite following rules or instructions to determine a claim and bank association and for processing a claim for an eligible expense incurred between a patient and a healthcare provider), e.g. see MPEP 2106.04(a)(2). Any limitations not identified above as part of the abstract idea are deemed “additional elements,” and will be discussed in further detail below.
Furthermore, the abstract idea for Claims 12 and 20 is identical as the abstract idea for Claim 1, because the only difference between Claims 1, 12, and 20 is that Claim 1 recites a method, whereas Claim 12 recites a system, and Claim 20 recites a non-transitory computer-readable device.
Dependent Claims 2-7, 9-11, and 13-19 include other limitations, for example Claims 2 and 13 recite types of transactions, Claim 3 recites types of transactions and login credentials and gathering data for additional operations to further determine a qualified expense, Claims 4 and 14 recite creating a list of eligible transactions, Claims 5 and 15 recite receiving an input eligible portion for each transaction in the list of eligible transactions, Claims 6-7 and 16-17 recite operations pertaining to an over-contribution, and Claims 9 and 18 recite operations pertaining to the API, Claim 10 recites a type of data structure, and Claims 11 and 19 recite types of structural elements that receive the indication of the qualified expense, but these only serve to further narrow the abstract idea, and a claim may not preempt abstract ideas, even if the judicial exception is narrow, e.g. see MPEP 2106.04, and/or do not further narrow the abstract idea and instead only recite additional elements, which will be further addressed below. Hence dependent Claims 2-7, 9-11, and 13-19 are nonetheless directed towards fundamentally the same abstract idea as independent Claims 1 and 12.
Prong 2 of Step 2A
Claims 1, 12, and 20 are not integrated into a practical application because the additional elements (i.e. the non-underlined limitations above – in this case, the point-of-sale terminal, the processors, the electronic device, the API, the peer-to-peer funding mechanism, and the fact that the first and second tracking values are encrypted) amount to no more than limitations which:
amount to mere instructions to apply an exception – for example, the recitation of the processors, the API executed by the processors, the electronic device, and the point-of-sale terminal, which amounts to merely invoking a computer as a tool to perform the abstract idea, e.g. see [0038] and [00136]-[00146] of the as-filed Specification, see MPEP 2106.05(f); and/or
generally link the abstract idea to a particular technological environment or field of use – for example, the claim language of utilizing a peer-to-peer funding mechanism, and the claim language of the account being a tax-advantaged account, and the first and second tracking values being encrypted, which amounts to limiting the abstract idea to the field of electronic healthcare financing and/or encryption, see MPEP 2106.05(h).
Additionally, dependent Claims 2-7, 9-11, and 13-19 include other limitations, but these limitations also amount to no more than mere instructions to apply an exception (e.g. the API calls recited in dependent Claims 9, 11, and 18, the types of devices recited in Claims 11 and 19), generally linking the abstract idea to a particular technological environment or field of use (e.g. the types of transactions recited in dependent Claims 4-7 and 14-17), and/or do not include any additional elements beyond those already recited in independent Claims 1 and 12, and hence also do not integrate the aforementioned abstract idea into a practical application.
Hence Claims 1-7 and 9-20 do not include additional elements that integrate the judicial exception into a practical application.
Step 2B
Claims 1, 12, and 20 do not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because the additional elements (i.e. the non-underlined limitations above – in this case, the point-of-sale terminal, the processors, the electronic device, the API, the peer-to-peer funding mechanism, and the fact that the first and second tracking values are encrypted), as stated above, are directed towards no more than limitations that amount to mere instructions to apply the exception, and/or generally link the abstract idea to a particular technological environment or field of use, wherein the additional elements comprise limitations which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrated by:
The present Specification expressly disclosing that the structural additional elements are well-understood, routine, and conventional in nature:
[0038] and [00136]-[00146] of the Specification discloses that the additional elements (i.e. the point-of-sale terminal, the processors which execute the API, the electronic device) comprise a plurality of different types of generic computing systems;
Relevant court decisions: The functional limitations interpreted as additional elements are analogized to the following examples of court decisions demonstrating well-understood, routine and conventional activities, e.g. see MPEP 2106.05(d)(II):
Receiving or transmitting data over a network, e.g. see Intellectual Ventures v. Symantec – similarly, the additional elements include a plurality of entities that exchange data and funds over a network, for example via a peer-to-peer funding mechanism, e.g. see [0035]-[0038], [0045], and [00143] of the present Specification;
Electronic recordkeeping, e.g. see Alice Corp v. CLS Bank – similarly, the additional elements merely recite tracking the association between a claim and bank records; and/or
Determining an estimated outcome and setting a price, e.g. see OIP Techs. v. Amazon, Inc. – similarly, the additional elements recite determining particular expenditure amounts for qualified expenses to ultimately be transferred to the provider account.
Dependent Claims 2-7, 9-11, and 13-19 include other limitations, but none of these limitations are deemed significantly more than the abstract idea because the additional elements recited in the aforementioned dependent claims similarly amount to mere instructions to apply the exception (e.g. the API calls recited in dependent Claims 9, 11, and 18, the types of devices recited in Claims 11 and 19), generally link the abstract idea to a particular technological environment or field of use (e.g. the types of transactions recited in dependent Claims 4-7 and 14-17), and/or the limitations recited by the dependent claims do not recite any additional elements not already recited in independent Claims 1 and 12, and hence do not amount to “significantly more” than the abstract idea.
Hence, Claims 1-7 and 9-20 do not include any additional elements that amount to “significantly more” than the judicial exception.
Thus, taken alone, the additional elements do not amount to significantly more than the abstract idea identified above. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, Claims 1-7 and 9-20 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Subject Matter Free From Prior Art
Claims 1-7 and 9-20 are not presently rejected under 35 U.S.C. 102 or 103, and hence would be in condition for allowance if amended to overcome the rejections presented under 35 U.S.C. 101. The following represents Examiner’s characterization of the most relevant prior art references and the differences between the present claim language and the prior art references in view of 35 U.S.C. 102 and/or 103:
With regards to 35 U.S.C. 102 and/or 103, the following represents the closest prior art to the claimed invention, as well as the differences between the prior art and the limitations of the presently claimed invention.
Romanini (US 2011/0145007) teaches the creation of a Health Savings Account (HSA), wherein a member inputs various member information including member identification information (i.e. an account holder), a periodic percentage contribution (i.e. an initial funding amount), an identification of a claim (i.e. an expenditure amount), and login information for a website that incorporates insurance and banking information (i.e. either of which may be interpreted as external accounts), e.g. see Romanini [0024] and [0034]-[0035]. Additionally, Romanini teaches enabling the member to access a claims history via the website, wherein the member may select at least one claim from the claim history to be paid out from the HSA, e.g. see Romanini [0036]-[0038]. Additionally, the system of Romanini teaches transferring funds, for example via an Electronic Funds Transfer (ETF) transaction, from an HSA to a financial institution affiliated with an insurance provider, and further that the insurance provider subsequently transfers an amount to a healthcare provider using the funds received from the HSA, e.g. see Romanini [0039].
Bhavsar (US 2019/0325527) teaches enabling a user to create Tax Advantaged Accounts (TAAs) to pay for qualified expenses, e.g. see Bhavsar [0018]-[0019]. Additionally, Bhavsar teaches transferring of funds from a TAA to a provider for a qualified expense, e.g. see Bhavsar [0027]. Furthermore, the functions of the system are accessed via a UI portal using an encrypted login/password combination or other appropriate identification methodology, e.g. see Bhavsar [0036].
Kashyap (US 2009/0055224) teaches enabling an employer to set up an HSA for an employee, e.g. see Kashyap [0046] and [0117], wherein the employee may access the functions of the system via logging in to a website, e.g. see Kashyap [0123]. Additionally, Kashyap enables the transferring of money into and withdrawing of money from the HAS, e.g. see Kashyap [0087]-[0090] and [0095].
HSA Bank (“Health Savings Account (HSA) Overview,” 2016 HSA Bank) teaches setting up an HSA online using a username and password, wherein the HSA may be funded by various sources including a payroll deduction, an online transfer, a personal check, or from another HSA, MSA, or IRA. HSA Bank further teaches that the funds from the HSA are intended to pay for qualified medical expenses. Additionally, HSA Bank teaches utilizing a debit card loaded with funds to transfer the funds to other entities to pay for the qualified expenses.
However, none of the aforementioned references teach the feature of “transferring…via the peer-to-peer funding mechanism, and using the second encrypted tracking value, the aggregated deposit amount from the external account to the TAA…and immediately transferring the aggregated deposit amount from the TAA back to the external account.” That is, none of Romanini, Bhavsar, Kashyap, and HSA Bank teach, for example, transferring funds from an HSA or TSA to a bank or other external account to create first and second bank records, and then immediately transmitting the funds back to the HSA or TSA from the bank or other external account.
The aforementioned references are understood to be the closest prior art. Various aspects of the present invention are known individually, but for the reasons disclosed above, the particular manner in which the elements are claimed, when considered as an ordered combination, distinguishes from the aforementioned references and hence the invention recited in Claims 1-7 and 9-20 is not considered to be a non-novel and/or obvious variant of the inventions taught by the closest prior art references.
Response to Arguments
Applicant’s arguments, see Remarks, filed February 23, 2026, with respect to the rejections of Claims 1-7 and 9-20 under 35 U.S.C. 101 have been fully considered but are not persuasive.
Applicant first alleges that the claimed invention is patent eligible because it is not properly interpreted as reciting fundamental economic principles and/or managing personal behavior or relationships or interactions between people, specifically because the claimed limitations could not previously be performed at a point-of-sale within a retail location and because the claimed invention does not involve activity of at least a single person, e.g. see pgs. 14-16 of Remarks – Examiner disagrees.
Examiner initially notes that, as shown above, the peer-to-peer funding mechanism and the encryption are not themselves characterized as part of the abstract idea, but rather are characterized as additional elements. However, this should not be conflated with the requirements under 35 U.S.C. 102 and/or 103. That is, the peer-to-peer funding mechanism is not the sole basis for Examiner indicating subject matter free from prior art, but rather the invention as a whole including the peer-to-peer funding mechanism is novel and/or non-obvious for the reasons disclosed above. Examiner also notes that the peer-to-peer funding mechanism does not represent the inventive concept and neither the Claims nor the Specification provides any details regarding the peer-to-peer funding mechanism beyond merely reciting that it is used for the transfer of funds. That is, Applicant has not invented a unique/particular type of peer-to-peer funding mechanism, but instead recites using any type of peer-to-peer funding to perform the transfer of the funds. Hence, the peer-to-peer funding mechanism does not, by itself, impart eligibility to the claimed invention.
Regarding fundamental economic practices, Examiner notes that the term “fundamental” is not used in the sense of necessarily being “old” or “well-known,” as even a new/novel economic practice may still nonetheless recite a fundamental economic concept, e.g. see MPEP 2106.04(a)(2)(II)(A). Hence, despite the claimed invention reciting limitations that have been deemed novel and/or non-obvious, they nonetheless recite “fundamental economic practices” because they recite limitations that include documenting reimbursements for expenses incurred for medical services. Examiner further notes 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,” and specifically, a finding of a lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that claimed invention is therefore patent eligible. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101, e.g. see MPEP 2106.05I(I).
Regarding managing personal behavior including following rules or instructions, Examiner asserts that the claimed invention does recite limitations that at least “involve activity of a single person” because they recite rules or instructions for determining payments corresponding to medical services. For example, [0003] of the as-filed Specification discloses that “a qualified medical expense may include the cost of diagnosis, cure, mitigation, treatment, or prevention of disease such as payment for legal medical services rendered by physicians, pharmacists, and other medical practitioners.” That is, the claimed limitations “involve activity of at least a single person” insofar as they involve reimbursing/paying healthcare providers for services provided to patients. Furthermore, Examiner notes that the examples of managing personal behavior and following rules or instructions also include filtering content, e.g. see MPEP 2106.04(a)(2)(II)(C), which does not “involve activity of a single person” in the way that Applicant alleges because the claim language at issue in Bascom also did not recite any particular user input, but instead recited various hardware elements implementing a filtering scheme for data communicated over a network. Hence, a claim explicitly reciting a human user actively performing particular steps is not necessarily required in order for it to recite managing personal behavior.
Applicant further alleges that the claimed invention is patent eligible because the claim language integrates any abstract idea into a practical application, specifically because the peer-to-peer funding mechanism improves the functionality of a point-of-sale terminal within the retail location, e.g. see pgs. 16-18 of Remarks – Examiner disagrees.
[0008]-[0010] of the as-filed Specification discloses that problems with legacy systems include an individual “[missing] out on any tax-savings related to a qualified expense” and “[providing] account holders with the ability to create qualified expenses from past expenditures,” [0045] of the as-filed Specification discloses that the claimed invention immediately funds the TAA and immediately pays a provided from the funded TAA, [0049] of the as-filed Specification discloses that the system “[determines] qualified expenses that occurred previously,” and [0106]-[0107] of the as-filed Specification disclose that the peer-to-peer transaction system immediately renders payment to the provider and eliminates delays that would otherwise occur prior to retailers receiving payment from the TAA. However, the aforementioned problems of “missed savings” and “delay in payment” are business/commercial/economic problems, and furthermore are problems that have existed since long before the advent of any type of computer technology and hence are not properly deemed technological problems. Additionally, the improvement of “increased security” is, at most, “increased financial security” or increased security for the transferring of funds, and hence is also a business/commercial/economic improvement and/or an improvement to the abstract idea itself, rather than a technological improvement, and an improvement in the abstract idea itself is not an improvement in technology, e.g. see MPEP 2106.05(a)(II). Similarly, the improvement of enabling the creation and funding of a TAA at a retail location represents an improvement to a business, rather than an improvement to technology because the improvement is not in the point-of-sale terminal itself, but rather merely an improvement to the convenience of using the terminal because the claims now recite that the terminal is located at a retail location.
Applicant also alleges that the claimed invention is patent eligible because it recites significantly more than an abstract idea, specifically because the peer-to-peer funding mechanism is unconventional, e.g. see pgs. 18-21 of Remarks – Examiner disagrees.
A claim may recite significantly more than an abstract idea when it entails an unconventional technical solution to a technological problem, e.g. see MPEP 2106(II), and/or it includes an unconventional technical solution which results in an improvement to the functioning of a computer or to other technology or technical field, e.g. see MPEP 2106.05(a). As stated above, neither the Claims nor the Specification disclose any details regarding the peer-to-peer process beyond merely disclosing that the system uses some sort of peer-to-peer funding mechanism in order to immediately fund the TAA, e.g. see [0106] of the as-filed Specification. That is, the peer-to-peer funding mechanism is not properly characterized as unconventional because, given the broadest reasonable interpretation, any conventional computer system that puts two computers/entities in communication with each other may be interpreted as a “peer-to-peer” system. Hence, at most, the claimed invention claims the use of a conventional technology (i.e. “peer-to-peer” connections) for a specific purpose (i.e. transferring of funds) in a specific setting (i.e. at a retail location), and is properly characterized as performing well-understood, routine, and conventional activity, e.g. see MPEP 2106.05(d).
Furthermore, as stated above, the point-of-sale terminal is any one of “a card-swiping machine, laptop computer, desktop computer, mobile device, or other suitable computing device,” e.g. see [0038] of the as-filed Specification. That is, the point-of-sale terminal represents merely invoking a generic computer as a tool to perform the abstract idea. Additionally, each of the additional elements of the ordered combination of additional elements merely performs its expected function – that is, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
For the aforementioned reasons, Claims 1-7 and 9-20 are rejected under 35 U.S.C. 101.
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 P GO whose telephone number is (703)756-1965. The examiner can normally be reached Monday-Friday 9am-6pm Pacific.
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/JOHN P GO/Primary Examiner, Art Unit 3681