DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 2-21 are pending.
Claims 2, 4, 6, 10, 12, 18, 20 and 21 were amended or newly added in the Applicant’s filing on 3/09/2026.
This office action is being issued in response to the Applicant's filing on 3/09/2026.
3. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/09/2026 has been entered.
4. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 2 recites a system performing operations comprising:
determining, based on the payment acceptance mechanism, first configuration data that configures an application on the communication device for an executable process, wherein the executable process is usable to process a transaction with the merchant device in association with the geo-fenced area using the payment acceptance mechanism and a data communication operation, and wherein the first configuration data enables an output component of the communication device to be configured for wirelessly communicating with the merchant device using the payment acceptance mechanism;
instructing the communication device to be configured, using the first configuration data, for processing the transaction via the payment acceptance mechanism using the executable process
…
determining, based on the detected payment acceptance mechanism, second configuration data that configures the merchant device for use of the payment acceptance mechanism for processing the transaction with the communication device;
…
instructing the merchant device to be configured, using the second configuration data, for processing the transaction via the payment acceptance mechanism based on an indication of the transaction between the user and the merchant on the merchant device.
Claim 2 is a system claim. The recited system generates data (i.e., configuration data) and transmits instructions to the communication device and a merchant device to utilize the data. However, the communication device and the merchant device are not component elements of the system (i.e., the device(s) are outside the scope of the system). As such, the functions performed by the communication device and merchant device (i.e., device(s) outside the scope of the system) are outside the scope of the system.
Stated in an alternative manner, while the system generates data designed to result in the device(s) performing certain functions when executed, and while the system instructs the device(s) to utilize the data, the broadest reasonable interpretation of the system claim does not require that the device(s) actually utilizes the data.
If the device(s) do not implement the received instructions, if the device(s) do not utilize the data, the data is nonfunctional descriptive material and is not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 18, due to similar language, results in a similar interpretation.
Claim 10 recites a method comprising:
determining, based on the payment acceptance mechanism, first configuration data that configures an application on the communication device for an executable process, wherein the executable process is usable to process a transaction with the merchant device in association with the geo-fenced area using the payment acceptance mechanism and a data communication operation, and wherein the first configuration data enables an output component of the communication device to be configured for wirelessly communicating with the merchant device using the payment acceptance mechanism;
instructing the communication device to be configured, using the first configuration data, for processing the transaction via the payment acceptance mechanism using the executable process
…
determining, based on the detected payment acceptance mechanism, second configuration data that configures the merchant device for use of the payment acceptance mechanism for processing the transaction with the communication device;
…
instructing the merchant device to be configured, using the second configuration data, for processing the transaction via the payment acceptance mechanism based on an indication of the transaction between the user and the merchant on the merchant device.
Under the broadest reasonable interpretation, a user device and merchant device are instructed to be configured using the configuration data for processing a transaction (i.e., instructions are issued to the user device and merchant device). That does not necessarily mean that the devices implement the instructions to configure themselves to process the transaction.
If the device(s) do not implement the received instructions, if the device(s) do not utilize the data (i.e., the configuration data), the data is nonfunctional descriptive material and are is functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claim 2 recites a system performing operations comprising:
automatically populating at least one data field with merchant information in the mobile application for payment processing with the merchant device using the one of the plurality of payment acceptance mechanisms and the data communication operation;
Claim elements (i.e., the data elements stored in data field(s)) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claims 5, 6, 10 and 18, due to similar language, result in a similar interpretation.
Claim 10 recites a method comprising:
processing the transaction using the mobile application, the one of the plurality of payment acceptance mechanisms, and the digital token received from the merchant device.
Method claims are defined by the method steps being actively performed (i.e., receiving the digital token), not method steps performed in the past (i.e., received). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 4 recites a system wherein the geo-fenced area comprises one of a plurality of geo-fenced areas for the merchant corresponding to different items available from the merchant, and wherein the determining that the user is located in the geo-fenced area comprises detecting a wireless connection between the user device and a wireless transceiver associated with the geo-fenced area from a plurality of wireless transceivers associated with the plurality of geo-fenced areas.
Claim 2 recites a system comprising a memory and a processor, and the executed instructions results in processing data pertaining to geo-fenced areas. The fact that geo-fenced areas correspond to different items available from the merchant does not narrow the scope of the geo-fenced areas, as the different items available from the merchant are not functionally involved in the processes performed by the system.
Claim 15 recites a method wherein the offer includes a discount for an item purchase in the transaction while the user is in the geo-fenced area.
Claim elements (i.e., contents of the offer) pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
5. 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 2-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
The claim(s) recite(s) a method, a system to perform a method and/or computer-readable medium containing instructions, when executed, perform a method comprising:
detecting an entry of a user … into a[n] … area of a merchant;
determining a merchant associated with the … area … and a merchant … … to interact with the user … in the … area;
determining a plurality of payment acceptance mechanisms available … on the user … for use with the merchant …;
determining one of the plurality of payment acceptance mechanisms usable between the user … and the merchant …;
generating [data] for a payment instrument of the user based pm the one of the plurality of payment acceptance mechanisms, wherein [data] is exchangeable for a payment authorization of a transaction between the user and the merchant;
…
… populating at least one data field with merchant information … for payment processing with the merchant … using one of the plurality of payment acceptance mechanisms …;
…
detecting that the user … is within a distance to the merchant … within a distance to the merchant … within the … area …
instructing the merchant … for processing the transaction via the one of the plurality of payment acceptance mechanisms based on an indication of the transaction between the user and the merchant …; and
processing the transaction using … the one of the plurality of payment acceptance mechanisms and [the data] received from the merchant.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to process a payment transaction which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Examiner notes that processing payments is a court-provided example of a fundamental economic practice. See MPEP §2106.04(a)(2)(II)(A), citing Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017).
Additionally, these limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to process a payment transaction which qualifies as a commercial or legal interaction (e.g., a merchant transaction), and/or managing personal behavior or relationships or interactions between people (e.g., between a user and a merchant), both subcategories of certain methods of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(B); MPEP §2106.04(a)(2)(II)(C).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of a communication device or user device (Claim(s) 2, 10 and 18), a merchant device (Claim(s) 2, 10 and 18), an application or mobile application (Claim(s) 2, 10 and 18), a communication device (Claim(s) 2, 10 and 18), a digital token (Claim(s) 2, 10 and 18), a memory (Claim(s) 2), processor(s) (Claim(s) 2), a geo-fenced area (Claim(s) 2, 10 and 18), a data communication operation (Claim(s) 2, 10 and 18) and short-range wireless communication (Claim(s) 2, 10 and 18).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
DEPENDENT CLAIMS
Dependent Claim(s) 3-9, 11-17 and 19-21 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 2, 10 and 18. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of a wireless transceiver (Claim(s) 4 and 20) and an online payment processor (Claim(s) 9).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Appropriate correction is requested.
6. 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim(s) 2-16, 18, 19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giles (US PG Pub. 2016/0092858).
Regarding Claim 10, Giles discloses a method comprising:
detecting an entry of a user device of a user into a geo-fenced area of a merchant. (see para. 55);
determining a merchant (identity of merchant) associated with the geo-fenced area and a merchant device of the merchant (merchant subsystem) that is usable to interact with the user device in the geo-fenced area. (see para. 55);
determining a plurality of payment acceptance mechanisms (list of payment credentials) available via a mobile application executing on the user device for use with the merchant device. (see para. 38);
determining one of the plurality of payment acceptance mechanisms (a recommended payment credential or actual credential) usable between the user device (electronic device) and the merchant device (merchant subsystem). (see abstract; para. 45);
generating a digital token (virtual credential) based on the one of the plurality of payment acceptance mechanisms (payment credential or actual credential), wherein the digital token is exchangeable for a payment authorization of a transaction between the user and the merchant. (see para. 45);
determining, based on the one or more of the plurality of payment acceptance mechanisms (payment credential or actual credential), first configuration data (configuration priorities) that configures the mobile application for the one or more of the plurality of payment acceptance mechanisms. (see para. 45 and 46);
wherein the first configuration data (configuration priorities) enables an output (NFC) component of the user device to be configured for wirelessly communicating with the merchant device using the one or more payment acceptance mechanisms and a data communication (NFC) operation. (see para. 45 and 46);
instructing the user device to be configured, using the configuration data (configuration priorities), for processing the transaction via the one of the plurality of payment acceptance mechanisms. (see para. 45 and 46);
transmitting a digital token (virtual credential requested by and provisioned) to the mobile application on the user device. (see para. 45 and 46);
populating at least one data field (in a table) with merchant information (merchant context information) in the mobile application for payment processing with the merchant device using the one of the plurality of payment acceptance mechanisms and the data communication operation. (see para. 48);
determining second configuration data (merchant key) that configures the merchant device (merchant subsystem) for use of the one of the plurality of payment acceptance mechanisms for processing the transaction with the user device (electronic device). (see fig. 6; para. 48);
detecting that the user device of the user is within a distance to the merchant device within the geo-fenced area based on one or more short-range wireless communications from the user device. (see para. 47 and 55-56);
instructing the merchant device to be configured, using the second configuration data (merchant key), for processing the transaction via the one of the plurality of payment acceptance mechanisms based on an indication of the transaction between the user and the merchant on the merchant device. (see fig. 6; para. 48);
processing the transaction using the mobile application, the one of the plurality of payment acceptance mechanisms (payment credentials), and the digital token (virtual credential) received from the merchant device. (see fig. 6; para. 45, 53 and 55).
Giles does not explicitly teach a method wherein fields are automatically populated, although Giles does disclose multiple method steps being performed automatically. (see para. 55 and 65).
Regardless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Giles by performing the method step automatically or via automated means. See MPEP §2144.04 (III).
Giles does not explicitly teach a method wherein the second configuration data (merchant key) to configure the merchant device is determined based one of the plurality of payment acceptance mechanisms, although Giles discloses that the merchant device is tied to one of the plurality of payment acceptance mechanisms (payment credentials that may be accepted or preferred or otherwise recommended by merchant). (see para. 38).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Giles by basing the second configuration data for the merchant, as disclosed by Giles, with the payment acceptance mechanisms accepted by the merchant, as disclosed by Giles, thereby relating two merchant data elements that are already related.
Regarding Claim 11, Giles discloses a method comprises determining whether the user is authorized to process the transaction (via user authentication). (see para. 31).
Regarding Claim 12, Giles discloses a method wherein the configuration data comprises user account data (primary account number) for the at least one data field, and wherein the user account data includes user information for the transaction and an identification of the payment instrument (primary account) for the digital token. (see para. 59).
Regarding Claim 13, Giles discloses a method wherein the plurality of payment acceptance mechanisms includes at least one of a scannable code for the digital token or a wireless token transmission (NFC) of the digital token (payment token or virtual credential). (see para. 20).
Regarding Claims 14-15, Giles discloses a method comprises providing an offer associated with the transaction in the mobile application; and wherein the offer includes a discount (5% discount) for an item purchase in the transaction while the user is in the geo-fenced area. (see para. 55).
Regarding Claim 16, Giles discloses a method comprises providing merchant information for the merchant (merchant context information) in the mobile application (display) to the user. (see para. 57).
Regarding Claim 2, such claim recites substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Regarding Claim 3, Giles discloses a system wherein the operations further comprise:
determining that the user is permitted to conduct the transaction using the communication device in the geo-fenced area based at least on a past transaction by the user at a past transaction location (see para. 55),
wherein the processing the transaction is further based on the determining that the user is permitted to conduct the transaction. (see fig. 6).
Regarding Claim 4, Giles discloses a system wherein:
the geo-fenced area corresponds to an item (product) available from the merchant. (see para. 38); and
determining that the user is located in the geo-fenced area comprises detecting a wireless connection between the communication device and a wireless transceiver (location subsystem) associated with the geo-fenced area from a plurality of wireless transceivers (location subsystem). (see para. 20).
Giles does not explicitly teach a system wherein there is a plurality of geo-fenced areas; each geo-fenced area corresponded to a different product; or a plurality of wireless transceiver is associated with a plurality of geo-fenced areas.
It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to have modified Giles by duplicating claim elements contained in Giles (e.g., the first transceiver associated with a first geo-fenced area, the first geo-fenced area associated with a first item) to create additional claim elements (e.g., a second transceiver associated with a second geo-fenced area, a second geo-fenced area associated with a second item) wherein each additional claim element would serve the same function as the original claim element. In the combination each element, original element and additional element, would merely have performed the same function as it did previously, and one of ordinary skill in the art at the effective filing date of the invention would have recognized that the results of the combination were predictable. see MPEP §2144.04 (VI)(B).
Regarding Claim 5, Giles discloses a system wherein the operations comprise populating one or more fields (credential data) in the application on the communication device with at least a portion of the merchant data (identification of the merchant) based on the detecting that the application has been initiated. (see para. 51 and 59-60).
Regarding Claim 6, Giles discloses a system wherein:
the at least the portion of the merchant data populated in the at least one data field comprises at least one of a merchant account identifiers for the merchant (identification of the merchant) or merchant information for the merchant. (see para. 20, 51 and 59-60), and
wherein the payment acceptance mechanism utilizes one of a displayable code comprising encoded data for the digital token or a wireless communication mechanism (wi-fi network) for the digital token. (see para. 20 and 38).
Regarding Claim 7, Giles discloses a system wherein the first payment mechanism comprises one of a displayable code comprising encoded data for the digital token of the user or a wireless token communication mechanism (NFC) for the payment token (payment token or virtual credential). (see para. 20, 51 and 59-60).
Regarding Claim 8, Giles discloses a system wherein the application is associated with an online payment processor (acquiring bank or financial institution) corresponding to the system that provides payment services to the user through a payment account of the user, and wherein the processing the transaction comprises issuing a payment to a merchant account of the merchant from the payment account of the user using the online payment processor. (see fig. 5; para. 22 and 40).
Regarding Claim 9, 18-19 and 21, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
Claim(s) 17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giles, as applied to Claims 10 and 18 above, and further in view of Burrell (US PG Pub. 2014/0326783).
Regarding Claim 17, Giles discloses a method wherein the merchant is determined from a plurality of merchants based on a past interaction by the user with the merchant. (see para. 55).
Giles does not teach a method wherein the geo-fenced area includes a plurality of merchants.
Burrell discloses a method wherein:
the geo-fenced area includes a plurality of merchants. (see para. 43-44); and
the merchant is determined from a plurality of merchants based on a past interaction by the user with the merchant (in retrieved receipts). (see para. 35-36 and 46-47).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified Giles by incorporating the usage of past interaction information to determine which merchant of multiple merchants, as disclosed by Burrell, thereby anticipating the potential merchant with whom a transaction is to be conducted.
Regarding Claim 20, such claims recite substantially similar limitations as claimed in previously rejected claims and, therefore, would have been obvious based upon previously rejected claims.
7. Response to Arguments
Applicant's arguments filed 3/09/2026 have been fully considered but they are not persuasive.
§101 Rejection
As a preliminary matter, Examiner notes that while the claimed invention, as written, generates configuration data for multiple devices which may improve the payment transaction, the claimed invention, as written, does not recite that the multiple devices implement or utilize the configuration data. Examiner directs the Applicant’s attention to the Claim Interpretation section concerning this matter which is discussed in detail.
As such, the majority of the §101 arguments are not commensurate with the scope of the claimed invention, as written.
Step 2A, Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 11-12.
Specifically, the Applicant argues:
The claims provide specific improvements in technology so as to be limited to a practical application that improves over prior systems. The specification describes the problem at paragraphs [0003] and [0004] where merchant devices may utilize specific computing devices, peripherals, and operations to accept data from other devices and/or perform device-to-device data processing. However, synchronizing the merchant's device with a user's mobile device is tedious and time consuming, prone to errors, and often leads to incompatibility and inability to process data when specific data processing mechanisms are unknown or difficult to use. See Arguments, p. 11.
The Examiner respectfully disagrees.
The cited passages in the specification recite:
Users may engage in transactions with merchants in order to purchase items. Traditionally, users were limited to physical payment mechanisms, which included cash or check. Modernly, credit cards and communication technologies have further allowed for additional payment instruments to be used at merchants that possess the proper acceptance mechanisms. However, as technology advances, payment mechanisms used in transactions may involve further processes, and merchants may begin to install or possess the proper infrastructure of various other types of payment instruments or mechanisms to effectuate a payment for a transaction. For example, near field communications (NFC) may allow a user to pre-load or request tokenized data that may be communicated to a merchant device for resolution by "tapping" or placing a communication device having the tokenized data near an NFC device for the merchant. Other methods of payment may also be accepted at certain merchants where the merchant possesses the proper acceptance mechanisms and tools. However, without being aware of the acceptance mechanism available with a merchant or at the merchant's location, the user may choose a merchant where the user cannot complete a transaction using the available payment tools to the user. Additionally, the user may encounter more friction choosing the proper payment tool to use with the merchant without knowledge of the merchant's acceptance mechanisms.
FIG. 1 is a block diagram of a networked system suitable for implementing the processes described herein, according to an embodiment. See para. 3 and 4 – emphasis added.
The cited passages in the specification do not support the Applicant’s assertions.
At best, there is an issue with payment mechanisms as the user may not be aware of the acceptance mechanism available with a merchant. This lack of knowledge may result in more friction (i.e., obstacles that slow down operations, such as payment processing). But the lack of knowledge on the user’s part and the resulting friction does not equate to a technology-based problem.
Applicant further argues:
To address this problem, the limitations recited in the amended claims provide automated synchronization of mechanisms for device-to-device interactions when co-located within a geo-fenced area. Specifically, amended claim 2 recites "generating a digital token associated with a payment instrument of the user based on the payment acceptance mechanism" upon detection of the user in the geo-fenced area. This automatic generation of the digital token based on the detected payment acceptance mechanism provides a technical improvement by preparing the appropriate token format for the specific payment mechanism available at the merchant location, rather than requiring manual selection or configuration. See Arguments, p. 11 – emphasis added.
Finally amended claim 2 recites "determining, based on the detected payment acceptance mechanism, second configuration data that configures the merchant device for use of the payment acceptance mechanism for processing the transaction with the communication device" and "instructing the merchant device to be configured, using the
second configuration data, for processing the transaction via the payment acceptance mechanism." These limitations configure the merchant device to receive the digital token from the communication device, providing coordinated configuration of both devices for compatible device-to-device data processing. See Arguments, p. 12 – emphasis added.
The Examiner respectfully disagrees.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
However, the specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, an improvement to conventional technology or technological processes, or is addressing a technology-based problem.
Additionally, the specification does not provide any evidence that there is even a technical (i.e., technology-based) problem to be solved. For example, the specification does not provide any evidence that existing technology was incapable of performing the claimed functions but for the claimed technical solution.
For example, the specification does not provide any evidence that computer technology was unable to “prepar[e] the appropriate token format for the specific payment mechanism available at the merchant location, rather than requiring manual selection or configuration” or “the merchant device [was unable] to receive the digital token from the communication device.”
Additionally, MPEP §2106.05(f)(1) recites:
Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743 – emphasis added.
Even assuming there was a technical problem, the claims, as written, fail to recite the details of how a technical solution to the technical problem was accomplished.
If there was a technical problem (e.g., existing technology was incapable of performing the claimed functions) then the claims should recite the details of the technical solution (e.g., how existing technology was improved to overcome this inability). However, the claims, as written, provide no such details and merely recite that the claimed functions (i.e., the outcome) are being performed.
For example, if a merchant device was unable to receive the digital token from the communication device due to device configuration issues, the claims should recite the details of the technology-based solution. The claims merely state that a system determines and distributes configuration data to enable the payment process to the respective devices.
Examiner asserts that the claimed invention is analogous to Electric Power Group LLC v. Alstom SA (Fed. Cir. 2016), wherein the court stated:
The claims here are unlike the claims in Enfish. There, we relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas” (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfish, 822 F.3d at 1335-36; see Alice, 134 S. Ct. at 2358-59. That distinction, the Supreme Court recognized, has common-sense force even if it may present line-drawing challenges because of the programmable nature of ordinary existing computers. In Enfish, we applied the distinction to reject the § 101 challenge at stage one because the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 2016 U.S. App. LEXIS 11687, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. see Electric Power Group LLC v. Alstom SA, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) – emphasis added.
The claimed invention is not an improvement to computer technology or computer functionality. Rather, the claimed invention is applying a computer’s existing capabilities to implement a particular abstract idea. As in Electric Power Group, the focus of the claimed invention is not on an improvement in computers as tools but on improving an abstract idea (i.e., perform payment transactions) that use computers as tools.
§103 Rejection
The §103 Rejection has been rewritten and the prior art remapped to account for the newly amended claim language.
7. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached on M-F 9-5.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 April 2, 2026
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