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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/25/2025 has been entered.
Response to Amendment
Applicant’s “Response to Amendment and Reconsideration” filed on 11/25/2025 has been considered.
Claims 22, 33 are canceled. Claims 41-42 are added. Claims 21, 23-32, 34-42 are pending in this application and an action on the merits follows.
Double Patenting
The nonstatutory 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 nonstatutory 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); In re Thorington, 418 F.2d 528, 163 USPQ 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 21, 23-32, 34-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,704,640. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claim is directed to the same invention, only broader in scope, and are anticipated by the claims in the ‘640 patent.
Claim 1 of U.S. Patent No. 11,704,640 recites:
A method comprising: receiving, by one or more servers of a payment service and from a first point-of-sale (POS) device associated with a first merchant via a network, an indication of an unpaid invoice for a first transaction conducted at the first POS device between a customer and the first merchant, the unpaid invoice associated with a customer identifier; storing, by the one or more servers and in a database, the indication of the unpaid invoice; receiving, by the one or more servers and from a second point-of-sale (POS) device associated with a second merchant different from the first merchant, via the network, transaction data for a second transaction occurring at the second POS device between the customer and the second merchant, the transaction data including the customer identifier, wherein the second merchant is different from the first merchant; at least partly responsive to receiving the transaction data and based at least in part on the customer identifier, identifying, in the database and by the one or more servers, the unpaid invoice; generating, by the one or more servers, a customer notification after completion of the second transaction, wherein the customer notification includes an invitation to pay the unpaid invoice; causing presentation, by the one or more servers, of the customer notification on at least one of a display of the second POS device or a display of a customer device associated with the customer; and based at least in part on payment of the unpaid invoice, sending, by the one or more servers, a merchant notification to the second merchant that the invoice has been paid.
Claim 21 of the present application recites:
A method comprising: transmitting, from a first merchant point-of-sale (POS) device of a first merchant and to one or more servers of a payment processing service, transaction data for a transaction occurring at the first merchant POS device between a customer and the first merchant, the transaction data including a customer identifier; receiving, by the first merchant POS device and from the one or more servers of the payment processing service, data associated with an unpaid invoice associated with the customer identifier and a historical transaction, wherein the historical transaction is conducted between the customer and a second merchant via a second merchant POS device; and based at least in part on the data associated with the unpaid invoice, causing presentation, by the first merchant POS device and on a display of the first merchant POS device, an invoice payment invitation for the customer to make a payment on the unpaid invoice, receiving, at the first merchant POS device, input comprising invoice payment information associated with the payment of the unpaid invoice, wherein the payment on the unpaid invoice is facilitated via communication between the first merchant POS device, the second merchant POS device, the one or more servers of the payment processing service, and a card network; and transmitting, by the first merchant POS device and to the one or more servers, the invoice payment information, wherein transmitting the invoice payment information to the one or more servers causes a notification to be sent to the second POS device indicating that the unpaid invoice has been paid at the first merchant POS device.
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 21, 23-32, 34-42 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Regarding claims 21, 23-32, 34-42, under Step 2A claims recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Under Step 2A (prong 1), and taking claims 21, 32, 38 as representative for example recite:
transmitting, from a first merchant point-of-sale (POS) device of a first merchant and to one or more servers of a payment processing service, transaction data for a transaction occurring at the first merchant POS device between a customer and the first merchant, the transaction data including a customer identifier;
receiving, by the first merchant POS device and from the one or more servers of the payment processing service, data associated with an unpaid invoice associated with the customer identifier and a historical transaction, wherein the historical transaction is conducted between the customer and a second merchant via a second merchant POS device; and based at least in part on the data associated with the unpaid invoice,
causing presentation, by the first merchant POS device and on a display
of the first merchant POS device, an invoice payment invitation for the customer to make a payment on the unpaid invoice, receiving, at the first merchant POS device, input comprising invoice payment information associated with the payment of the unpaid invoice, wherein the payment on the unpaid invoice is facilitated via communication between the first merchant POS device, the second merchant POS device, the one or more servers of the payment processing service, and a card network; and transmitting, by the first merchant POS device and to the one or more servers, the invoice payment information, wherein transmitting the invoice payment information to the one or more servers causes a notification to be sent to the second POS device indicating that the unpaid invoice has been paid at the first merchant POS device.
These limitations recite organizing human activity, such as commercial activities of facilitating the management of invoices and financial transaction between buyers and seller. The claims recite a method of a first merchant collecting unpaid invoices from a customer and a second merchant during a transaction. Collecting financial information, displaying a paymet request, processing a payment and notifying another party are activities directed to a fundamental economic practice (i.e. collections) and are grouped as a certain method of organizing human interactions, specifically the grouping of commercial and legal interactions (including business relations).
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. The Examiner acknowledges that representative claims 21, 32, 38 do recite additional elements, including: POS devices, server, processors, card network, display.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, the additional elements are insufficient to integrate the abstract idea into a practical application because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (prong 2), claims do not integrate the recited exception into a practical application (see again: 2019 Revised Patent Subject Matter Eligibility Guidance).
Even considered as an ordered combination (as a whole), the additional elements of dependent claims 23-31, 34-37, 39-42 do not add anything further than when they are considered individually.
In view of the above, claims 21, 23-32, 34-42 do not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claims, taken individually or as a whole the additional elements of claim 21, 32, 38 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Furthermore, the additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the additional elements utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data
storing or retrieving information
Further, see MPEP 2106.05(f), “Other examples where the courts have found the additional elements to be mere instructions to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process include: i. A commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357, 110 USPQ2d 1976, 1983 (2014); Gottschalk v. Benson, 409 U.S. 63, 64, 175 USPQ 673, 674 (1972); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);”.
See MPEP 2106.05(d), “i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); 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); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));”
Even considered as an ordered combination (as a whole), the additional elements of dependent claims 23-31, 34-37, 39-42 do not add anything further than when they are considered individually.
In view of the above, claims 21, 23-32, 34-42 do not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Response to Arguments
Applicant’s arguments, see Remarks, filed 11/25/2025, with respect to the §101 rejection have been fully considered and are not persuasive.
Applicant argues that the claims are not directed to an abstract idea because they involve technologically rooted improvements, networked POS devices, and invoice management modules.
Examiner does not agree. When viewed as a whole, the claims are directed to managing unpaid invoices, presenting payment invitations, processing payment and sending notifications. These activities are directed to organizing human financial activity, intermediate settlement and managing commercial interactions. Such subject matter has consistently been held to be abstract (see Alice, Bilski, Ultramercial). The use of computers, POS devices, servers, databases and networks does not change the fundamental character of the claims which is directed to business practice.
Applicant asserts that the claims improve POS devices and enable functionality “previously not possible” such as cross-merchant invoice payment and notification.
Examiner does not agree. The claims merely retrieve invoice data, display a payment invitation, receive payment input, transmit payment confirmation and send notifications. These are generic computer functions performed using conventional POS devices, servers, databases, APIs and payment networks. The alleged “technical improvement” is simply automating a business process (cross-merchant invoice payment) using standard computing components, which does not integrate abstract idea into a practical application.
Patent eligibility under 101 is a distinct from novelty and non-obviousness. Novelty does not convert a business method into a technical invention. The claims may be novel but they are still directed to organizing human activity using generic computer components.
Applicant relies on Bascom and argues that the claims recite “non-conventional and non-generic arrangement” of components.
Examiner does not agree. Unlike Bascom the present claims do not recite a specific system architecture, do not define a novel placement of functionality, do not specify any unconventional technical configuration and merely combine conventional POS devices, servers, databases and payment networks in their ordinary roles.
Furthermore, Applicant’s arguments focus on what the system does (paying invoices across merchants) not HOW it does so in a technically way. No factual dispute under Berkheimer is raised.
Applicant argues that the claims “affect a physical change in funds”.
However, courts have repeatedly held that financial transactions, account balance changes and money transfers are abstract economic effects not technological improvements. The proves addressed is how to collect unpaid invoices from customers more conveniently which is a business problem implemented with generic technology.
Allowable Subject Matter
Claim 21, 23-32, 34-42 are patentable over the prior art of record. Accordingly, although these claims remain rejected for double patenting and subject matter eligibility, the Examiner has not made a prior art rejections under 35 USC §102 or §103 with respect to these claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MILENA RACIC whose telephone number is (571)270-5933. The examiner can normally be reached M-F 7:30am-4pm EST.
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/MILENA RACIC/Patent Examiner, Art Unit 3627
/FLORIAN M ZEENDER/Supervisory Patent Examiner, Art Unit 3627