DETAILED ACTION
This action is responsive to papers filed on 7/24/2025.
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 .
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 1-6, 8-12, 14, and 17-21 are rejected under 35 U.S.C. 101 because, while the claims herein are directed to a method and/or system, which could be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes), the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Regarding claim 1, the claim recites, in part, authorize a transaction request associated with a user transaction account of a user; generate a transaction notification notifying the user having a transaction account with an issuer that the transaction request has been authorized; receive a request to split an amount associated with the transaction request with one or more contacts of the user; identify the one or more contacts associated with the user by generating a user interface prompting the user to designate the one or more contacts associated with the user from a contact list; determine that a contact of the one or more contacts fails to have a contact transaction account; generate a funds request notification comprising a split amount associated with the transaction request and a consent link for consenting to receive a card acquisition offer; transmit the funds request notification to contact associated with the one or more contacts; generate an account creation link for creating the contact transaction account with the issuer system in response to receiving consent to receive the card acquisition offer, the account creation link being generated to cause to download in response to being selected; transmit the account creation link; provision the contact transaction account for the contact; deduct the split amount from the contact transaction account; generate a summary user interface comprising at least a summary of payments by the one or more contacts; cause the summary user interface to be rendered; in response to the summary user interface being rendered such that at least a part of the summary of payments is obscured, modify the summary user interface by at least relocating the summary of payments; and in response to the summary user interface being modified, cause the summary user interface to be rendered.
Regarding claim 8, the claim recites, in part, generating a transaction notification notifying a user having a transaction account with an issuer that a transaction has been authorized; receiving a request to split a transaction amount associated with the transaction with a plurality of contacts; identifying the plurality of contacts by generating a user interface prompting the user to designate the plurality of contacts from a contact list; determining that a first contact of the plurality of contacts fails to have a first transaction account; generating a first funds request notification comprising a split amount associated with the request to split the transaction amount and a consent link for consenting to receive a card acquisition offer; transmitting the first funds request notification to a first plurality of contacts; generating a second funds request notification comprising the split amount associated with the request to split the transaction amount; transmitting the second funds request notification to a remaining plurality of contacts from the plurality of contacts; generating an account creation link for creating the first transaction account with the issuer system in response to receiving consent to receive the card acquisition offer from the first client device, wherein the account creation link is generated to cause to download upon selection; transmitting the account creation link; provisioning the first transaction account associated with the first contact of the plurality of contact; debiting the split amount from the first transaction account associated with the first contact of the plurality of contacts; debiting the split amount from a second transaction account associated with a second contact of the plurality of contacts; generating a summary user interface comprising at least a summary of payments by the plurality of contacts; causing the summary user interface to be rendered; in response to the summary user interface being rendered such that at least a part of the summary of payments is obscured, modifying the summary user interface by at least relocating the summary of payments; and in response to the summary user interface being modified, causing the summary user interface to be rendered.
Regarding claim 14, the claim recites, in part, generate a transaction notification notifying a user having a transaction account with an issuer that a transaction has been authorized; transmit the transaction notification to a user; receive, via interactions with the transaction notification, a first request to split a transaction amount associated with the transaction; identify a contact associated with the first request to split the transaction amount by generating a user interface prompting the user to designate the contact associated with the first request to split the transaction amount; determine a split amount to request from the contact; generate a funds notification request including the split amount, a second request to pay the split amount associated with the transaction, and a consent link for consenting to receive a card acquisition offer; transmit the funds notification request to a contact; generate an account creation link for creating a contact transaction account in response to receiving consent to receive the card acquisition offer from the contact, wherein selection of the account creation link causes to download; transmit the account creation link to the contact; provision the contact transaction account to the contact; receive the split amount associated with the contact transaction account of the contact; credit the transaction account by the split amount; generate a summary user interface comprising at least a summary of payments by the one or more contacts; cause the summary user interface to be rendered; in response to the summary user interface being rendered such that at least a part of the summary of payments is obscured, modify the summary user interface by at least relocating the summary of payments; and in response to the summary user interface being modified, cause the summary user interface to be rendered.
The limitations, as drafted and detailed above, is directed towards splitting of charges between users that may or may not have accounts, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and more specifically commercial interactions including sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of issuer system (claims 1, 8, 14), mobile device (claim 1), client device (claims 1, 8, 14), issuer mobile application (claims 1, 8, 14), computing device (claims 1, 14), processor (claim 8), memory (claim 1), and non-transitory computer readable medium (claim 14). The additional technical elements above are recited at a high-level of generality (i.e. as a generic processor performing a generic computer function of authorizing, generating, receiving, identifying, determining, transmitting, provisioning, deducting, causing…to be rendered, and modifying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. There are no additional functional limitations to be considered under prong two.
Accordingly, the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see Vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) 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).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the
judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes).
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using issuer system (claims 1, 8, 14), mobile device (claim 1), client device (claims 1, 8, 14), issuer mobile application (claims 1, 8, 14), computing device (claims 1, 14), processor (claim 8), memory (claim 1), and non-transitory computer readable medium (claim 14) to perform the claimed functions amounts to no more than mere instructions to apply the exception using a generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on a computer, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent- eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat' l Ass' n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires a general purpose computer (see Applicant specification Paragraphs 0041-0042, 0082); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility.
The dependent claims 2-6, 9-12, and 17-21 appear to merely limit one or more interactions with the transmission notification, a “voice personal assistant” interface, communication with a third-party to determine contacts present at a location, transmitting a second funds request notification to a contact that has a loyalty points account, debiting the loyalty points account, generation of a summary of payments, ways of identifying contacts, and specification of what the split amount is based on, and therefore only limit the application of the idea, and not add significantly more than the idea (i.e. “PEG” Step 2B=No).
The issuer system (claims 1, 8, 14), mobile device (claim 1), client device (claims 1, 8, 14), issuer mobile application (claims 1, 8, 14), computing device (claims 1, 14), processor (claim 8), memory (claim 1), and non-transitory computer readable medium (claim 14) are each functional generic computer components that perform the generic functions of authorizing, generating, receiving, identifying, determining, transmitting, provisioning, deducting, causing…to be rendered, and modifying, all common to electronics and computer systems.
Applicant's specification does not provide any indication that the issuer system (claims 1, 8, 14), mobile device (claim 1), client device (claims 1, 8, 14), issuer mobile application (claims 1, 8, 14), computing device (claims 1, 14), processor (claim 8), memory (claim 1), and non-transitory computer readable medium (claim 14) are anything other than generic, off-the-shelf computer components. Therefore, the claims do not amount to significantly more than the abstract idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1-6, 8-12, 14, and 17-21 are not patent eligible.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 8-12, 14, 17-21 and 23-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,710,115 and U.S. Patent No. 10,915,881. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same subject matter, perform the equivalent functions and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other. Further the invention of this application is broadening the invention of the prior two patents making them obvious variants.
Allowable Subject Matter
Claims 1-6, 8-12, 14, 17-21 and 23-25 as currently written are allowable over prior art. However, the rejections on the grounds of double patenting and under 35 U.S.C. 101 are currently pending and represent a barrier to allowability. The allowable features are directed towards the further limiting of the amended claim language in combination with the previously presented claim language. Examiner notes that any amendments made to the claims in an attempt to correct pending rejections or to broaden the claims could drastically alter the claim scope and could open up the possibility of prior art being applied in a future action.
EXAMINER NOTE: Claims 23-25 are not rejected under 35 U.S.C. 101 (due to Paragraph 0097 of the specification, in which a technical improvement to the interface is provided), and merely depend from claims that are rejected under 101. Incorporating the claim language from these claims into the independent claims, along with the filing of a terminal disclaimer, will likely result in a notice of allowance.
EXAMINER NOTE: Examiner called Applicant’s representative Marlena Burt on 10/27/2025 to suggest an Examiner’s amendment rolling up claims 23-25 into the independent claims. However, an Office Action was requested in order to give Applicant time to consider options.
Response to Arguments
Applicant argues “The MPEP 2106.04(a)(2)(II) clarifies that "not all methods of organizing human activity are abstract ideas"; defining the sub-group of Commercial or Legal Interactions to "... include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations." It also provides the following as examples of Commercial and Legal Interactions", “The above is an enumerated list of examples of Commercial or Legal Interactions, but the MPEP 2106.04(a)(2)(II) further clarifies that this grouping is limited to activity that falls within the enumerated sub-groupings of fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior and relationships or interactions between people, and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances”, and “the Office Actions fails to show that claims 1, 8, and 14, and their dependent claims respectively, fall within the enumerated list of Commercial Interactions”. However, the examples given in the MPEP are just that, examples. The MPEP does not state that any abstract ideas must be identical to the examples given. Rather, the MPEP states that an abstract idea should fall within a grouping and subgrouping and should not be expanded beyond that. As stated in the rejection above, Examiner has placed the abstract idea into Certain Methods of Organizing Human Activity, and more specifically commercial interactions including sales activities or behaviors. The claims recite transaction charge splitting. Transactions are irrefutably commercial interactions, as a transaction is a result of making a sale. Likewise, splitting a transaction charge is also a commercial interaction, as money is changing hands between parties. Therefore, Examiner has not expanded the abstract idea activity beyond the enumerated subgroupings, and the rejection is still proper.
Applicant argues “Amended claim 1 recites a practical application by including elements such as…[lists numerous claim limitations]…these elements serve to ensure that the claim as a whole is more than a drafting effort designed to monopolize the exception”. However, Applicant provides no reasoning as to why any of the claim elements listed integrate the abstract idea into a practical application. In lieu of any specific arguments, Examiner does not see any practical application exhibited by these elements.
Applicant cites Paragraph 0003 of the instant specification and argues “claim 1 improves the operation of a transaction network and transaction network devices by "allow[ing] consumers to transfer funds between each other" after a transaction has been authorized and completed. Applicant's Specification at Para. [0003] ("[lI]t may be cumbersome to request funds from different individuals that use payment applications from different providers, wherein the different providers are not affiliated with the transaction account used for the payment.")”. However, the improvement outlined by Paragraph 0003 of the specification is merely an improvement to the abstract idea of Certain Methods of Organizing Human Activity, and specifically the commercial interactions. In the SAP decision (See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)), the courts found that an improvement made to the abstract idea is not patent eligible. SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because there are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non- abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract. Applicant further points to Paragraph 0003 as evidence of a practical application. However, there is nothing in this paragraph that is capable of integrating the abstract idea into a practical application, since the improvement of the invention is to ineligible subject matter.
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 MICHAEL BEKERMAN whose telephone number is (571)272-3256. The examiner can normally be reached 9PM-3PM EST M, T, TH, F.
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/MICHAEL BEKERMAN/Primary Examiner, Art Unit 3621