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 . This office action is in response to Applicant’s response filed June 02, 2026 in which claims 1, 8, 21, and 28-30 are amended. Claims 7, 14-20 and 27 were previously cancelled. Thus, claims 1-6, 8-13, 21-26 and 28-30 are pending in the application.
Claim Rejections - 35 USC § 101
2. 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 1-6, 8-13, 21-26 and 28-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The Examiner has identified independent system Claim 1 as the claim that represents the claimed invention for analysis and is similar to independent Claims 8 and 21.
The claims 1-6 and 28 are directed to a system, claims 8-13 and 29 are directed to a method and claims 21-26 and 30 are directed to a non-transitory computer-readable storage medium which are one of the statutory categories of invention (Step 1: YES).
The claim 1 recites : a computing device comprising a processor and a memory; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least: determine that a first transaction has been authorized for an account, the first transaction including a first authorization amount and a merchant identifier and wherein the first transaction was initiated from a point-of-sale device associated with the merchant identifier; determine that the merchant identifier is included in a set of merchant identifiers associated with a transaction modification program; receive a transaction modification from an application executing on a client device, the transaction modification comprising a second authorization amount; generate an authorization request comprising the second authorization amount, the first authorization amount, and the merchant identifier; authorize a second transaction based at least in part on the authorization request, wherein authorizing the second transaction causes a transfer of the first authorization amount and the second authorization amount from the account to a merchant account associated with the merchant identifier; and reverse the first transaction. These limitations (with the exception of italicized portions), when considered collectively as an ordered combination, is a process that covers Certain methods of organizing human activity such as Commercial or legal interactions. Determining that a transaction has been authorized for an account and sending a notification regarding a transaction modification is a commercial interaction. The claim also recites a computing device, a processor, a memory, a point-of-sale device and an application executing on a client device which do not necessarily restrict the claim from reciting an abstract idea. That is, other than, a computing device, a processor, a memory, a point-of-sale device and an application executing on a client device, nothing in the claim precludes the steps from being performed as a method of organizing human activity. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim 1 recites an abstract idea (Step 2A: Prong 1: YES).
This judicial exception is not integrated into a practical application. The additional elements of a computing device, a processor, a memory, a point-of-sale device and an application executing on a client device result in no more than simply applying the abstract idea using generic computer elements. The specification describes the additional elements of a computing device, a processor, a memory, a point-of-sale device and an application executing on a client device to be generic computer elements (see [0021], Fig. 10). Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements of a computing device, a processor, a memory and an application executing on a client device are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). 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. Hence, the claims as a whole are not integrated into a practical application. Therefore, the claim 1 is directed to an abstract idea (Step 2A - Prong 2: NO).
The claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of a computing device, a processor, a memory, a point-of-sale device and an application executing on a client device are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component (MPEP 2106.05(f)). The additional elements, when considered separately and as an ordered combination, does not add significantly more (also known as an “inventive concept”) to the exception. 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. Thus, claim 1 is not patent eligible (Step 2B: NO).
Similar arguments can he extended to other independent claims 8 and 21 and hence the claims 8 and 21 are rejected on similar grounds as claim 1. In addition, claim 21 also recites a non-transitory computer-readable storage medium that amounts to generic computer implementation.
Dependent claims 2-6, 9-13, 22-26 and 28-30 are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations only narrow the abstract idea further and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. Dependent claims 2-6, 9-13, 22-26 and 28-30 do not recite any new additional elements that are not present in independent claim 1, 8 and 21 and hence do not require further analysis under Prong Two of Step 2A and Step 2B.
Viewing the claim limitations as a combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as a combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-6, 8-13, 21-26 and 28-30 are ineligible.
Prior Art
3. The prior art rejection is withdrawn in the Office action dated September 29, 2025 based on the claim amendments. An updated search was conducted but does not result in a prior art rejection at this time.
Response to Arguments
4. Applicant's arguments filed dated 06/02/2026 have been fully considered but they are not persuasive due to the following reasons:
5. With respect to the rejection of all claims under 35 U.S.C. 101 with regards to Step 2A, Prong 1 (pages 17-19), Applicant argues that, “Claims 1-6, 8-13, 21-26, and 28-30 Are Not Directed to a Judicial Exception.”
Examiner respectfully disagrees and notes that as explained in the 101 analysis above, the steps of the claim, is a process that, under their broadest reasonable interpretation, covers Certain methods of organizing human activity such as commercial or legal interactions. These limitations (with the exception of italicized portions), is a process that covers Certain methods of organizing human activity such as Commercial or legal interactions. Also, the examples of "commercial or legal interactions" listed in remarks (pages 18-19) are only for illustrative purposes and not meant to be exhaustive. For instance, determining that a transaction has been authorized for an account and sending a notification indicating that the transaction is modifiable is a commercial interaction. The claim also recites a computing device, a processor, a memory, a point of sale device and an application executing on a client device which do not necessarily restrict the claim from reciting an abstract idea. That is, other than, a computing device, a processor, a memory and an application executing on a client device, nothing in the claim precludes the steps from being performed as a method of organizing human activity. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
6. With respect to the rejection of all claims under 35 U.S.C. 101 with regards to Step 2A, Prong 2 (pages 19-23), Applicant argues that, “the claim as a whole integrates the exception into a practical application.”
The Examiner respectfully disagrees. The Examiner would like to point out that according to 2019 Patent Eligibility Guidelines (2019 PEG), limitations that are indicative of integration into a practical application include:
• Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition - see Vanda Memo
• Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
• Effecting a transformation or reduction of a particular article to a different state or thing -see MPEP 2106.05(c)
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
In the instant case, the judicial exception is not integrated into a practical application, because none of the above criteria is met. The amended limitations of the claims do not result in computer functionality improvement or technical/technology improvement when the underlying abstract idea is implemented using technology. The amendments to the claims only further define the data being used however a specific abstract idea is still an abstract idea.
All the features in the Applicant’s claims can at best be considered an improvement in the abstract idea. Modifying a transaction by adding a tip is part of an abstract idea and does not lead to the practical application. The present claims are disclosing a business solution, not a technical solution to a technical problem. The advantages over conventional systems are directed towards improving the abstract idea. The specification describes the additional elements of a computing device, a processor, a memory, a point of sale device and an application executing on a client device to be generic computer elements (see Fig. 10, [0021]). Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements of a computing device, a processor, a memory, a point of sale device and an application executing on a client device, are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). There is no indication in Applicants’ claims that any specialized hardware or other inventive computer components are required. The additional elements of the instant underlying process, when taken in combination, together do not amount to substantially more than the sum of the functions of the elements when each is taken alone. 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. Hence, the claims as a whole are not integrated into a practical application.
The invention in Desjardins improved the operation of the machine learning model. Hence, when considered as a whole, independent claim 1 integrated an abstract idea into a practical application. In Desjardins, “when evaluating the claim as a whole, we discern at least the following limitation of independent claim 1 that reflects the improvement: "adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task." We are persuaded that constitutes an improvement to how the machine learning model itself operates, and not, for example, the identified mathematical calculation.” Unlike Desjardins, claims here are not directed to "an improvement in computer functionality" or an "improvement to how the machine learning models itself operates" that would make them patent eligible (see page 17). The instant claims do not even recite the machine learning model in any of the claims. Hence, Desjardins is not applicable.
7. With respect to the rejection of all claims under 35 U.S.C. 101 with regards to Step 2B, (pages 24-26), Applicant states that, “Claims 1-6, 8-13, and 21-26 are Patent-Eligible Under Step 2B”
One of the guidelines issued by the Office to determine if the claims recite additional elements which are not well understood, routine or conventional and hence, amount to significantly more than an abstract idea, is the USPTO guidelines of April 19, 2018 incorporating the Berkheimer memo (Berkheimer memo, hereinafter).
According to the Berkheimer memo,
In a step 2B analysis, an additional element (or combination of elements) is not well understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional elements). This option should
be used only when the examiner is certain, based upon his or her personal knowledge, that the additional elements) represents well-understood, routine, conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).
The claim simply applies the abstract idea using generic computer elements as a tool (see MPEP 2106.05(f)). The additional elements in the claim are a computing device, a processor, a memory, a point of sale device and an application executing on a client device. As per the rejection above, the specification describes the additional elements of a computing device, a processor, a memory, a point of sale device and an application executing on a client device to be generic computer elements (see Fig. 10, [0021]). Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. There is no indication in Applicants’ claims that any specialized hardware or other inventive computer components are required. The fact that a general purpose computing system, suitably programmed, may be used to perform the claimed method and the fact that the claims at issue do not require any nonconventional computer, network, or other components, or even a “non-conventional and non-generic arrangement of known, conventional pieces” but merely call for performance of the claimed functions “on a set of generic computer components, satisfies the Berkheimer memo requirement that the additional elements are conventional elements (as outlined in criterion 1 of the Berkheimer memo). The additional elements of the instant underlying process, when taken in combination, together do not amount to substantially more than the sum of the functions of the elements when each is taken alone. Hence, the claims do not recite significantly more than an abstract idea.
8. Applicant further states that (pages 25-26), “amended claim 1 of the present application can be related to Subject Matter Eligibility Example 35, claim 2, which is found to be eligible at Step 2B of the subject matter eligibility test.”
Examiner respectfully disagrees. Claim 2 of Example 35 aims to solve the problem of fraud by impersonation at the ATM by employing a sequence of nonconventional technical steps. Whereas the conventional verification process at an ATM involved entering a PIN, the limitations of Claim 2 depart from this conventional process by having the ATM generate random code, the mobile device generating an image with encrypted code data in response to random code and then making the determination on whether transaction should process. This constituted significantly more than entering PIN on a keypad.
In contrast, the current invention does not describe any problems similar to fraud by impersonation at an ATM. Nor do the claims describe any technical steps such as generating an image with encrypted code data to overcome fraudulent impersonators. Instead, the alleged improvement recited in the claims is an abstract idea. Hence, the claimed subject matter does not amount to significantly more than the abstract idea and is not subject matter eligible.
For these reasons and those discussed in the rejection, the rejections under 35 U.S.C. 101 are maintained.
Examiner Request
9. The Applicant is request to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 U.S.C. §112(a) or §112 1st paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Conclusion
10. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BHAVIN SHAH whose telephone number is (571)272-2981. The examiner can normally be reached on M-F 9AM-6PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.D.S./Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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