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 .
DETAILED ACTION
This communication is in response to the application filed on 30 August 2023. Claims 1-20 are currently pending. The rejections are as stated below.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted in this application on 30 August 2023 and 01 May 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs are being considered by the examiner. The initialed copies of the1449s are enclosed herewith.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of Patent No. US 11669828 B1 and claims 1-16 of Patent No. US 11829994 B1. The claims of the instant application and the patents mentioned above are drawn to methods and corresponding systems for selecting credit card account offers and presenting a user with an option to accept and activate the credit card account offer. Although the conflicting claims are not identical, they are not patentably distinct from each other, because they recite means or steps that are substantially the same and would have been obvious to one of ordinary skill in the art.
Furthermore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, the claims of the instant application are not identical to claims 1-20 of Patent No. US 11669828 B1 and claims 1-16 of Patent No. US 11829994 B1, but they are not patently distinct.
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 non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Claim 1 (exemplary) recites a series of steps for selecting credit card account offers and presenting a user with an option to accept and activate the credit card account offer.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception.
Independent system claims 1, recites the limitations of retrieving by a financial institution information pertaining to an existing account of a user; projecting a profitability of the financial institution from the user based on a projected number of transactions of the user, wherein the projected number of transactions is determined based on a transaction history of the user; based on the retrieved information and the projected profitability being above a predefined threshold, underwriting the user for a credit card offer; selecting a set of credit card offer terms for the credit card offer based on the underwriting; creating a credit card account for the user, the credit card account having an account number associated therewith; and activating the credit card account in response to a first use after a provisioning of a credit card.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via transactional activities/interactions (such as a fundamental economic concept or managing interactions between people), but for the recitation of generic computer components, nothing in the claim precludes the limitations from practically being performed by a method of organizing human activity which includes commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations). These limitations are directed to an abstract idea because they are commercial or legal interactions or sales activities (selecting a set of credit card offer terms for the credit card offer to the user) A marketing or sales activity is performed when initiating, generating and executing a transaction. If a claim limitation covers commercial or legal interactions but for the recitation of generic computer components, then it falls within the "Certain Methods of Organizing Activity" grouping of abstract ideas. See MPEP § 2106.04(a)(2).
Accordingly, independent claim 1 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of a financial institution computing system and a mobile wallet to perform the steps. The processor (claims 1 and 15) and a circuit, the circuit being communicatively coupled to a database and a network interface (claim 8) in the steps are recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data. This generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(h). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a server (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the server at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(h).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1, 8 and 15. Furthermore, dependent claims 2-7, 9-14 and 16-20 do not add limitations that meaningfully limit the abstract idea.
Claims 2, 9 and 16 recite the step of modifying the selected set of credit card offer terms to incorporate at least one credit card offer term that is tailored to the user based on information regarding the user, which further defines the abstract idea and are rejected under the same rational of claim 1.
Claims 3, 10 and 17 recite the step of presenting the user with a depiction of at least a portion of the modified set of credit card offer terms, the depiction being proximate to an interaction point configured to receive a user preference to accept or decline the at least the portion of the modified set of credit card offer terms, which further defines the abstract idea and are rejected under the same rational of claim 1.
Claims 4, 11 and 18 recite the step of receiving an indication of the user's acceptance of the selected set of credit card offer terms, which further defines the abstract idea and are rejected under the same rational of claim 1.
Claims 5, 12 and 19 recite the step of enabling a provisioning of the credit card in real-time or near real-time, which further defines the abstract idea and are rejected under the same rational of claim 1.
Claims 6 and 13 recite, wherein the retrieving is done without any prompting by the user, which further defines the abstract idea and are rejected under the same rational of claim 1.
Claims 7, 14 and 20 recite the step of identifying at least one credit preference of the user based on information stored, wherein the selected set of credit card offer terms is selected based on the at least one credit preference, which further defines the abstract idea and are rejected under the same rational of claim 1.
Lastly, the dependent claims 2-7, 9-14 and 16-20, recite the same additional elements of claim 1 (a financial institution computing system, a mobile wallet and a database) to perform the steps and are rejected under the same rational of claim 1 above. The claims merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic computer to merely carry out the abstract idea itself.
Accordingly, claims 1-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) 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.
Claims 1, 3-6, 10, 11, 13, 15 and 16 are rejected under 103 as being unpatentable over Mullen (US 2012/0290449 A1) in view of Rose et al. (US 2012/0078766 A1) and further in view of O'Leary (US 2013/0191278 A1).
Claims 1, 8 and 15, Mullen teaches a computer-implemented method and a corresponding system, comprising the steps of:
retrieving, by a financial institution computing system associated with a financial institution, information pertaining to an existing account of a user (Mullen: [0115], [0123], [0149] – “a mobile device may access network devices (e.g., issuer servers) associated with each virtual payment card stored within the mobile device…a mobile device may collect information (e.g., credit limit and credit available) associated with each virtual payment card stored within a memory of the mobile device” – “network entities [e.g., a credit card issuer's server (a financial institution), see [0123]] may examine virtual cards and related information [i.e., “information pertaining to an existing account”] that may be stored within a memory of a mobile device…”);
selecting, by the financial institution computing system, a set of credit card offer terms for the credit card offer (Mullen: [0149] – “A credit offer may, for example, be extended to a user of a mobile device to add a payment card to the user's mobile device. A credit offer (e.g., credit offer 2306) may, for example, be extended to a user of a mobile device to replace a virtual card (e.g., virtual payment card 2304) that already exists within the user's mobile device…network entities may examine virtual cards and related information that may be stored within a memory of a mobile device and attempt to sway the user of the mobile device to opt into another virtual card offer that may be better for the user (e.g., the new virtual card may offer a lower interest rate [i.e., “credit card offer terms”] than a user's current virtual payment card).”);
creating, by the financial institution computing system, a credit card account for the user, the credit card account having an account number associated therewith (Mullen: [0150], Figs. 23-24 – once a user selects YES to accept a credit card offer, a mobile device may communicate with an issuer for payment card offer 2306 to open (i.e., create) the new payment account being offered – Figs. 23-24 show that the credit cards added/included in the mobile wallet are associated with an account number).
Mullen fails to teach the steps of projecting, by the financial institution computing system, a profitability of the financial institution from the user based on a projected number of transactions of the user, wherein the projected number of transactions is determined by the financial institution computing system based on a transaction history of the user; based on the retrieved information and the projected profitability being above a predefined threshold, underwriting, by the financial institution computing system, the user for a credit card offer.
Rose teaches the steps of projecting, by the financial institution computing system, a profitability of the financial institution from the user based on a projected number of transactions of the user, wherein the projected number of transactions is determined by the financial institution computing system based on a transaction history of the user; based on the retrieved information and the projected profitability being above a predefined threshold, underwriting, by the financial institution computing system, the user for a credit card offer (Rose: [0003-0004, 0153-0159 and 0199] – “… calculating a future value of the customer, the future value based upon the probability of purchase for at least one product or service and a measure of profitability for the at least one product or service, the measure of profitability identified based at least in part from the identified segment for the customer; determining that the future value exceeds at least one second threshold; and determining that the customer is eligible for at least one recommended next action based upon the determination that the probability of purchase exceeds at least one first threshold and the determination that the future value exceeds at least one second threshold, wherein each recommended next action includes an offering of a new product or service for the customer or a modification to an existing product or service of the customer…” – [0210], “…In a first of the two-part process, a statistical modeler may obtain historical data, including transaction data and non-transaction data, from a variety of different sources, and including any of databases 110a-n. It will be appreciated that the data sources from which historical data may be received may include data sources beyond those that are available for use with block 215. In this regard, the data sources for the historical data may be from a number of financial institutions or non-financial institutions. Based upon the historical data, the statistical modeler can then identify those variables from the historical data that may appear to be predictive”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the credit card offer method, as taught by Mullen, the steps of projecting, by the financial institution computing system, a profitability of the financial institution from the user based on a projected number of transactions of the user, wherein the projected number of transactions is determined by the financial institution computing system based on a transaction history of the user; based on the retrieved information and the projected profitability being above a predefined threshold, underwriting, by the financial institution computing system, the user for a credit card offer, as taught by Rose, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. It further would have been obvious to one of ordinary skill in the art at the time of filing to modify Mullen, to include the teachings of Rose, in order to enhance the functionality and/or accuracy of the system by providing the user with a product/service optimization (Rose, abstract).
Both Mullen and Rose fail to teach activating, by the financial institution computing system, the credit card account in response to a first use of a mobile wallet after a provisioning of a credit card to the mobile wallet.
O'Leary teaches the card can be automatically activated upon … the user's first use of the card (O'Leary: [0102 and 0106].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the credit card offer method, as taught by Mullen, the ability to activate, by the financial institution computing system, the credit card account in response to a first use of a mobile wallet after a provisioning of a credit card to the mobile wallet, as taught by O'Leary, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. It further would have been obvious to one of ordinary skill in the art at the time of filing to modify Mullen/Rose, to include the teachings of O'Leary, in order to enhance the functionality and/or flexibility of the system by providing the user with a system that is user friendly.
Claims 2, 9 and 16, Mullen teaches the step of modifying, by the financial institution computing system, the selected set of credit card offer terms to incorporate at least one credit card offer term that is tailored to the user based on information regarding the user (Mullen: [0149-0151] and figure 23, - “… for example, network entities may examine virtual cards and related information that may be stored within a memory of a mobile device and attempt to sway the user of the mobile device to opt into another virtual card offer that may be better for the user (e.g., the new virtual card may offer a lower interest rate than a user's current virtual payment card…”).
Claims 3, 10 and 17, Mullen teaches the step of presenting, by the financial institution computing system, the user with a depiction of at least a portion of the modified set of credit card offer terms, the depiction being proximate to an interaction point configured to receive a user preference to accept or decline the at least the portion of the modified set of credit card offer terms (Mullen: [0149-0151], Fig. 23 – GUI 2300 shows the user’s mobile wallet including a credit card offer with a portion of its terms, i.e., no annual fee. The GUI 2300 also shows four input options – including options to accept (YES) or decline (NO) the credit card offers);
Claims 4, 11 and 18, Mullen teaches the step of receiving, by the financial institution computing system, an indication of the user's acceptance of the selected set of credit card offer terms (Mullen: [0150-0151], Fig. 23 – a user opts to accept the new credit offer by selecting a YES option in GUI 2300).
Claims 5, 12 and 19, Mullen teaches the step enabling, by the financial institution computing system, a provisioning of the credit card to the mobile wallet in real-time or near real-time. (Mullen: [0150], Figs. 23-24 – once a user selects YES to accept a credit card offer, a mobile device may communicate with an issuer for payment card offer 2306 to open (i.e., create) the new payment account being offered – Figs. 23-24 show the credit cards added/included in the mobile wallet and capable of being used to complete purchases, see [0152-0153]).
Claims 7, 14 and 20, Mullen teaches the step of identifying, by the financial institution computing system, at least one credit preference of the user based on information stored in a database, wherein the set of credit card offer terms is selected based on the at least one credit preference (Mullen: [0162]).
Claims 6 and 13 are rejected under 103 as being unpatentable over Mullen (US 2012/0290449 A1) in view of Rose et al. (US 2012/0078766 A1) and further in view of O'Leary (US 2013/0191278 A1) and further in view of Jones (US 2004/0117300 A1).
Claims 6 and 13, Mullen fails to the step of retrieving is done without any prompting by the user.
Jones teaches the step of retrieving is done without any prompting by the user (Jones: [0053-0054]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Jones with Mullen, Rose and O'Leary for the reasons identified above with respect to claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nolte eta 1. US 10296907 B1 "Methods and systems described in this disclosure generally relate to presentation of electronic offers that are viewable on financial instruments (e.g., credit cards and debit cards) by users."
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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