DETAILED ACTION
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 Claims
This action is in reply to the amended claims filed on 9/5/2025, wherein:
Claims 1, 7, and 11 have been amended;
Claims 2-4, and 8-10, have been cancelled;
Claims 5 and 6, remain as original or previously presented;
Claims 1, 5-7, and 11 are currently pending and have been examined.
Claim Objections
Applicant’s amendments to Claim 1 resolve the objections to Claims 1-6 due to minor informalities, and the previous objections are withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Applicant’s claim amendments resolves the interpretation of the claims as invoking 35 U.S.C. 112(f), and the previous interpretation is withdrawn.
.
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.
Applicant’s amendments to claims 7-11 resolve the previous rejections of the claims under 35 U.S.C. 101 as "software per se", and the previous “software per se” rejections are withdrawn.
Claims 1, 5-7, and 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a method and system for recommending a payment which is considered a judicial exception because it falls under Certain Methods of Organizing Human Activity such as commercial or legal interactions including agreements in the form of contracts and business relations. This judicial exception is not integrated into a practical application as discussed below and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
This rejection follows the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed Reg 4, January 7, 2019, pp. 50-57 (“2019 PEG”).
Analysis
Step 1 (Statutory Categories) – 2019 PEG pg. 53 (See MPEP 2106.03)
Claims 1, 5-7, and 11 are directed to the statutory category of a process.
Step 2A, Prong 1 (Do the claims recite an abstract idea?) – 2019 PEG pg. 54
For independent claim 1, the claim recites an abstract idea of: recommending a payment. The steps of: A method for recommending a payment means using a device, the method comprising: acquiring payment information associated with at least one payment means of a user; analyzing a consumption pattern of the user based on the payment information; identifying a group associated with the user by applying an algorithm, to the consumption pattern; identifying a reference consumption pattern by performing collaborative filtering using a model based on the user and other users included in the identified group; predicting a future consumption pattern of the user based on the reference consumption pattern and attributes of the identified group, the attributes comprising demographic attributes and consumption-related attributes of the identified group; and determining a payment means to recommend to the user based on the predicted future consumption pattern, when considered collectively as an ordered combination, recite the abstract idea of determining a payment.
For independent claim 7, the claim recites an abstract idea of: determining a payment. The steps of: A system for recommending a payment means, the system: configured to acquire payment information associated with at least one payment means of a user; analyze a consumption pattern of the user based on the payment information; and identify a group associated with the user by applying a algorithm to the consumption pattern; and identify a reference consumption pattern by performing collaborative filtering using a model based on the user and other users including in the identified group; predict a future consumption pattern of the user based on the reference consumption pattern and attributes of the identified group, the attributes comprising demographic attributes and consumption-related attributes of the identified group; and determine a payment means to recommend the user based on the predicted future consumption pattern, when considered collectively as an ordered combination, recite the abstract idea of determining a payment.
Independent claims 1 and 7, as drafted, are a process that, under the broadest reasonable interpretation, covers Certain Methods of Organizing Human Activity, since they recite commercial or legal interactions including agreements in the form of contracts and business relations. For independent claim 1, the steps of: A method for recommending a payment means using a device, the method comprising: acquiring payment information associated with at least one payment means of a user; analyzing a consumption pattern of the user based on the payment information; identifying a group associated with the user by applying an algorithm, to the consumption pattern; identifying a reference consumption pattern by performing collaborative filtering using a model based on the user and other users included in the identified group; predicting a future consumption pattern of the user based on the reference consumption pattern and attributes of the identified group, the attributes comprising demographic attributes and consumption-related attributes of the identified group; and determining a payment means to recommend to the user based on the predicted future consumption pattern, considered collectively as an ordered combination, is a process that, under the broadest reasonable interpretation, covers Certain Methods of Organizing Human Activity such as commercial or legal interactions including agreements in the form of contracts and business relations. Based on similar reasoning and rationale, the steps of Independent claim 7 also recite Certain Methods of Organizing Human Activity. Hence all the steps of the claim, considered collectively as an ordered combination, fall under the abstract idea of Certain Methods of Organizing Human Activity. If the claim limitations, under the broadest reasonable interpretation, cover Certain Methods of Organizing Human Activity, but for the recitation of computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Other than reciting the abstract idea, the independent claims recite additional elements including generic computer components such as “a device comprising a processor and a memory, a non-linear clustering algorithm based on unsupervised learning, a latent factor model, and a system comprising at least one processor”, and nothing in the claims precludes the steps from being performed as Certain Methods of Organizing Human Activity. Accordingly, the independent claims recite an abstract idea.
Dependent claims 5, 6, and 11 recite similar limitations as independent claims 1 and 7; and when analyzed as a whole are held to be patent ineligible under 35 U.S.C 101 because the additional recited limitations only refine the abstract idea further. For instance, in claims 5 and 11, the limitations of: wherein the determining of the payment means includes calculating user suitability of benefits to be provided to the user by the determined payment means, under the broadest reasonable interpretation, are further refinements of Certain Methods of Organizing Human Activity such as commercial or legal interactions including agreements in the form of contracts and business relations, because these further describe how the recommended payment means are determined.
In claim 6, the limitations of: records a computer program for executing the method of claim 1, under the broadest reasonable interpretation, are further refinements of Certain Methods of Organizing Human Activity such as commercial or legal interactions including agreements in the form of contracts and business relations because this describes one way of implementing the method.
Other than reciting the abstract idea, the dependent claims recite similar additional elements as the independent claims including generic computer components, such as “a non-transitory computer-readable recording medium, and the at least one processor”. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, but for the recitation of computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Step 2A, Prong 2 (Does the claim recite additional elements that integrate the judicial exception into a practical application?) – 2019 PEG pg. 54
This judicial exception is not integrated into a practical application. In particular, independent claims 1 and 7 only recite the additional elements of “a device comprising a processor and a memory, a non-linear clustering algorithm based on unsupervised learning, a latent factor model, and a system comprising at least one processor”. A plain reading of Figures 1-2, and associated descriptions in the specification in at least: page 6 stating “payment means recommendation system 200…may include an information acquisition unit 210, a consumption pattern management unit 220, a recommendation management unit 230, a communication unit 240 and a control unit 250…which may program modules that communicate with an external system”, pages 6-7 of the specification stating “program modules may be…in the form of an operating system, an application module, or another program modules, and may be physically stored in various known memory devices,…may be stored in a remote memory devices,…program modules include routines, subroutines, programs, objects, components, data structures, etc.”, page 7 of the specification stating “payment means recommendation system 200 may be implemented within the device 300 or a server (not shown) or included in an external system (not shown)”, page 3 of the specification stating “a non-transitory computer-readable medium that records a computer program for executing the method”, and page 9 of the specification stating “clustering algorithm based on unsupervised learning according to the embodiment of the present invention may be a density-based spatial clustering of applications with a noise (DBSCAN) algorithm”, reveals that generic processors may be used to execute the claimed steps. The additional elements of “a device comprising a processor and a memory, a non-linear clustering algorithm based on unsupervised learning, a latent factor model, and a system comprising at least one processor” are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)) and limits the judicial exception to a particular environment (See MPEP 2106.05(h)). Mere instructions to apply an exception using a generic computer component and limiting the judicial exception to a particular environment doesn’t integrate the abstract idea into a practical application in Step 2A. Hence, independent claims 1 and 7 are directed to an abstract idea.
Dependent claims 5, 6, and 11, recite similar additional elements as the independent claims including generic computer components, such as “a non-transitory computer-readable recording medium, and the at least one processor”. The judicial exception is not integrated into a practical application because the additional elements in the dependent claims are also recited at a high-level of generality such that it amounts to more no more than mere instructions to apply the exception using generic computer components. Therefore, the additional elements do not integrate the abstract idea into a practical application because they also do not impose any meaningful limits on practicing the abstract idea. Also, the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement of the functioning of a computer system itself; the claims do not effect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) – 2019 PEG pg. 56
Independent claims 1 and 7 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “a device comprising a processor and a memory, a non-linear clustering algorithm based on unsupervised learning, a latent factor model, and a system comprising at least one processor” to perform the steps of independent claim 1 for: A method for recommending a payment means using a device, the method comprising: acquiring payment information associated with at least one payment means of a user; analyzing a consumption pattern of the user based on the payment information; identifying a group associated with the user by applying an algorithm, to the consumption pattern; identifying a reference consumption pattern by performing collaborative filtering using a model based on the user and other users included in the identified group; predicting a future consumption pattern of the user based on the reference consumption pattern and attributes of the identified group, the attributes comprising demographic attributes and consumption-related attributes of the identified group; and determining a payment means to recommend to the user based on the predicted future consumption pattern, and based on similar reasoning and rationale for the steps of independent claim 7, amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)) and limits the judicial exception to the particular environment of computers (See MPEP 2106.05(h)). The additional elements of the instant underlying process, when taken in combination, together do not offer significantly more than the sum of the functions of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept in Step 2B.
Further, MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)); are well-understood routine and conventional, similar to the independent claims which recite: “acquiring payment information associated with at least one payment means of a user”. Furthermore, MPEP 2106.05(d)(ii) provides that performing repetitive calculations (see Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values), and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims”)) are well-understood, routine, conventional activity, similar to the claimed limitations of the independent claims for: “analyzing a consumption pattern of the user…, identifying a group associated with the user…, identifying a reference consumption pattern…, predicting a future consumption pattern of the user…, and determining a payment means… ”. Furthermore, the steps for “recommend to the user based on the predicted future consumption pattern” are merely presenting results of an analysis akin to Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016) and are only generally linking the use of the judicial exception to a particular technological environment (see MPEP 2106.05(h)). Therefore, independent claims 1 and 7 are not patent eligible.
In addition, the dependent claims 5, 6, and 11 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of the dependent claims of: “a non-transitory computer-readable recording medium, and the at least one processor” to perform the claimed limitations, amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)). Similar to the independent claims, mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Also, for the same reasoning as the independent claims, the additional elements of the limitations of the dependent claims, when considered individually and as an ordered combination, together do not offer significantly more than the sum of the functions of the elements when each is taken alone and the dependent claims as a whole, do not amount to significantly more than the abstract idea itself. Dependent claim 6 recite limitations for: “records a computer program for executing the method…”, which are electronic record keeping, storing and retrieving information in memory that are well understood and conventional functions (see MPEP 2106(d)(ll)). Dependent claims 5, and 11 also recite limitations for: provided to the user…”, which are well understood and conventional functions for receiving or transmitting data over a network (see MPEP 2106(d)(ll)). Dependent claims 5 and 11 also recite limitations for: “calculating user suitability of benefits…”, which are akin to performing repetitive calculation which are well understood and conventional functions (see MPEP 2106(d)(ll)). For these reasons, dependent claims 2-6, and 8-11 also are not patent eligible under 35 U.S.C. 101.
Subject Matter Overcoming 35 USC §102/§103
Claims 1, 5-7, and 11 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 101 set forth in this Office Action.
The following is an examiner’s statement of reasons for subject matter of independent claims 1 and 7 overcoming the prior art rejections under 35 USC §102/§103.
The closest prior art of record is KR20210148656 to Seo et al. (hereinafter referred to as Seo machine translation), KR 2017-0017298 to Kwak (hereinafter referred to as Kwak machine translation), US 11,488,225 to Barbour et al. (hereinafter referred to as Barbour), and US 12,014,391 to Zarakas et al. (hereinafter referred to as Zarakas). Allowable subject matter is indicated because none of the prior art of record, alone or in combination, appears to teach or fairly suggest or render obvious the combination set forth in independent claims 1 and 7. For independent claim 1, the prior art of Seo machine translation, Kwak machine translation, Barbour, and Zarakas specifically do not disclose: “”. Similar reasoning and rationale apply to the other independent claim 7. Dependent claims 5, 6, and 11 are allowable over the prior art by virtue of their dependency on an allowed claim.
Response to Arguments
Applicant’s arguments with respect to claims 1, 5-7, and 11 have been fully considered by the Examiner. Applicant’s arguments and amended claims have been considered with respect to the previous claim objections and interpretation of the claims as invoking 35 U.S.C. 112(f), and the previous objections and claim interpretations have been withdrawn. Examiner finds Applicant’s arguments regarding the rejections of amended independent claims 1 and 7 under 35 U.S.C 103 persuasive and the rejections pursuant to 35 U.S.C. 103 are withdrawn as further detailed above. Applicant’s arguments with respect to the rejection of claims 1, 5-7, and 11 under 35 USC 101 have been fully considered by the Examiner. However, the Examiner does not find the Applicant’s arguments persuasive, and therefore the rejections of claims 1, 5-7, and 11 under 35 USC 101 are maintained.
The Applicant argues that under Prong 1 of Step 2A, that the amended claims do not recite a judicial exception because the claims recite a technologically rooted solution and the Examiner’s interpretation oversimplified the invention and failed to consider the claims as a whole. Applicant further argues on page 8 of their Remarks that the amended claims do not fall into any of the three enumerated judicial exceptions such as Certain Methods of Organizing Human activity. The Applicant further states on pages 8-9 of their remarks, that the limitations of the independent claims under Prong 2 of Step 2A are indicative of integration into a practical application because they provide improvements in the functionality of the recommendation system by grouping users via unsupervised learning to enable discovery of latent group behaviors which is a specific improvement in computer functionality. Applicant further argues that the algorithms are used in a novel combination that is not a generic or routine process; and they provide for improved computer functionality similar to McRo and DDR Holdings. Applicant further argues on pages 9 and 10 of their Remarks that the limitations of the claims are indicative of an inventive concept under Step 2B of the 2019 PEG because the claimed limitations when combined together and considered as a whole, provide an improvement to a technical field and amount to significantly more than well-known, routine and customary instructions executed in generic computers. Applicant further states that the specific steps and data transformations involving unsupervised machine learning transform the behavioral data into predictive models that yield personalized, technically driven outputs. Applicant further argues that the claimed limitations are distinguishable from Electric Power Group, LLC, and BuySAFE, Inc., because the recited claims utilize specific machine learning models that improve the functionality and performance of the recommendation system.
Examiner respectfully disagrees with Applicant’s argument that the claimed limitations do not recite any of the groupings of abstract ideas; and that the Examiner failed to consider the claims as a whole. Under Prong 1 of the 2019 PEG, the claims do fall under the abstract idea of Certain Method of Organizing Human Activity. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions including agreements in the form of contracts and business relations, but for the recitation of additional elements including generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Under the broadest reasonable interpretation, the claims recite commercial or legal interactions including agreements in the form of contracts and business relations. Recommending a payment means is creating contractual agreements for participants in a business relationship.
Examiner respectfully disagrees with Applicant’s arguments that the claimed limitations are indicative of integration into a practical application under Prong 2 of Step 2A. Using a computer to: analyze payment information and consumption patterns of users to predict a future consumption pattern and recommend a payment means, is nothing more than executing instructions to apply the exception to a computer. This is interpreted by the Examiner as using a computer as a tool to perform an abstract idea (See MPEP 2106.05(f)). The additional elements of “a device comprising a processor and a memory, a non-linear clustering algorithm based on unsupervised learning, a latent factor model, and a system comprising at least one processor” are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)). There is no improvement to the claimed computer elements, or to any other technology or technical field. The only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task. Also, just because claims may be novel over prior art does not mean they are not directed to an abstract idea. Cf. Intellectual Ventures ILLCv. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016). Therefore, the claimed limitations do not meet the criteria or considerations as indicative of integration into a practical application.
Examiner also respectfully disagrees with Applicant’s argument that the claims are patent eligible similar to McRO. The court in McRO held that the claims were directed at specific rules that resulted in an improvement to the technology of computer generated lip synchronization which improved the existing technological process. The claims at issue in McRO described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, allowing the computer to perform a function not previously performable by a computer. In the instant application, the Examiner fails to see where the technological improvement is because the limitations are directed towards steps performed on a computer, and the functioning of the additional elements or technological processes themselves are not improved as a whole.
Examiner respectfully disagrees with Applicant’s further argument that the invention is integrated into a practical application because the independent claims include an ordered combination of elements similar to DDR Holdings, LLC v. Hotels.com, L.P., which when taken together recite an invention that is not merely the routine or conventional use of the internet. The claims here are not like those the Court found patent eligible in DDR, in which the inventive concept was the modification of conventional mechanics behind website display to produce a dual-source integrated hybrid display. The Applicant’s claims here do not improve computer functionality, address problems unique to the Internet, or require an arguably inventive device or technique for displaying information. Furthermore, Examiner respectfully disagrees with Applicant’s arguments that the claimed utilization of unsupervised learning algorithms provides an improvement to the functionality of system. Applicant’s claims are similar to claim 2 of Example 47 which included receiving training data, using the computer to discretize the continuous training data to generate input data, training the artificial neural network using the input data, and detecting anomalies using the trained artificial neural network; which represented mere instructions to implement an abstract idea on a computer. Furthermore, the Federal Circuit in Recentive Analytics, Inc., v. Fox Corp., Appeal No. 2023-2437 (Fed. Cir. Apr. 18, 2025), held that “patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101”. Similar to Recentive Analytics, Inc., Applicant’s claims are ineligible under 35 U.S.C 101 because they fail to provide improvements to the claimed models.
Examiner respectfully disagrees with Applicant’s further argument under Step 2B of the PEG, that the amended claim limitations recite additional elements that amount to an inventive concept that renders the claims patent eligible because the claims utilize specific machine learning models that improve the functionality and performance of the recommendation system. As stated previously, using a computer to: analyze payment information and consumption patterns of users to predict a future consumption pattern and recommend a payment means, is nothing more than executing instructions to apply the exception to a computer. The additional elements of “a device comprising a processor and a memory, a non-linear clustering algorithm based on unsupervised learning, a latent factor model, and a system comprising at least one processor” amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. In addition, as indicated further in the final rejection above, the claimed limitations under MPEP 2106.05(d)(ii) amount to well-understood routine and conventional activities of: receiving and transmitting data over a network, the performance of repetitive calculations, and presenting results of an analysis. As stated previously, Applicant’s claimed limitations fail to provide a technological improvement. The claimed combination of steps and additional elements are specified at a high level of generality and amount to simply appending well-understood, routine, and conventional activities previously known to the industry. Therefore, the Applicant’s claimed limitations are not distinguishable from Electric Power Group, LLC, and BuySAFE, Inc., v. Google. Therefore, the rejections of claims 1, 5-7, and 11 under 35 USC 101 are maintained
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 Paul Schwarzenberg whose telephone number is (313) 446-6611. The examiner can normally be reached on Monday-Thursday (7:30-6:30).
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/PAUL S SCHWARZENBERG/Primary Examiner, Art Unit 3695 9/26/2025
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