DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for reconsideration of application 18/331,849 (06/08/23) filed on 11/26/25.
Claim Objections
Claims 1, 21 and 24 are objected to because of the following informalities:
Claims 1, 21 and 24 recite, “verifying, by the backend computer system, that a refund has not been initiated for a difference beween the current price and the purchase price;”
This should be -- verifying, by the backend computer system, that a refund has not been initiated for a difference [[DELETE beween]] between the current price and the purchase price; -- or something similar.
Typo.
Appropriate correction is required.
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, 7 - 8 and 21 - 26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
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
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
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 NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1, 7 - 8 and 21 - 26 is/are rejected under 35 U.S.C. 101 because 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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention involves receiving, by an issuing financial institution, permission from a customer to interact with a merchant; receiving, from the issuing financial institution, electronic transaction data for a transaction involving a product purchased by the customer from a merchant using a financial instrument issued by the issuing financial institution, the product having a purchase price and a purchase date; receiving a receipt for the transaction; identifying the purchase price for the product from the electronic transaction data and the receipt; retrieving a merchant return policy for the merchant;
determining, based on the purchase date, a return period in which the product is eligible for a return to the merchant from the merchant return policy; and during the return period and on behalf of the customer: periodically retrieving a current price for the product; determining that the current price for the product is less than the purchase price; verifying that a refund has not been initiated for a difference between the current price and the purchase price; automatically initiating the refund to the customer from the merchant for the difference between the current price and the purchase price; and when the refund is complete, saving the completed refund, which is a fundamental economic principles or practices (refund transaction); commercial or legal interactions (refund transaction); and managing personal behavior or relationships or interactions between people (receiving, identifying, retrieving, determining, periodically retrieving, verifying, automatically initiating, saving, etc.).
The mere nominal recitation of technology (e.g., “backend computer system for an issuing financial institution”) does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to receiving, by an issuing financial institution, permission from a customer to interact with a merchant; receiving, from the issuing financial institution, electronic transaction data for a transaction involving a product purchased by the customer from a merchant using a financial instrument issued by the issuing financial institution, the product having a purchase price and a purchase date; receiving a receipt for the transaction; identifying the purchase price for the product from the electronic transaction data and the receipt; retrieving a merchant return policy for the merchant; determining, based on the purchase date, a return period in which the product is eligible for a return to the merchant from the merchant return policy; and during the return period and on behalf of the customer: periodically retrieving a current price for the product; determining that the current price for the product is less than the purchase price; verifying that a refund has not been initiated for a difference between the current price and the purchase price; automatically initiating the refund to the customer from the merchant for the difference between the current price and the purchase price; and when the refund is complete, saving the completed refund.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. Although the claim refers to “backend computer system for an issuing financial institution”, nothing in the claim precludes the steps from practically being performed in the mind. For example, the claim encompasses the user manually receiving, by an issuing financial institution, permission from a customer to interact with a merchant; receiving, from the issuing financial institution, electronic transaction data for a transaction involving a product purchased by the customer from a merchant using a financial instrument issued by the issuing financial institution, the product having a purchase price and a purchase date; receiving a receipt for the transaction; identifying the purchase price for the product from the electronic transaction data and the receipt; retrieving a merchant return policy for the merchant; determining, based on the purchase date, a return period in which the product is eligible for a return to the merchant from the merchant return policy; and during the return period and on behalf of the customer: periodically retrieving a current price for the product; determining that the current price for the product is less than the purchase price; verifying that a refund has not been initiated for a difference between the current price and the purchase price; automatically initiating the refund to the customer from the merchant for the difference between the current price and the purchase price; and when the refund is complete, saving the completed refund. NOTE: (a) The claim is exclusively from the perspective of a “backend computer system for an issuing financial institution”; (b) Although a “transaction authorization system for the issuing financial institution” is mentioned in the claim, the claimed invention is not from the perspective of the “transaction authorization system for the issuing financial institution” and the “transaction authorization system for the issuing financial institution” does not perform any of the positively recited steps or acts required of the claimed invention. The “transaction authorization system for the issuing financial institution” merely interact with the “backend computer system for an issuing financial institution” performing the positively recited steps or acts. (c) Although a “distributed ledger network in which a merchant aggregator system for the merchant aggregator, a merchant system for the merchant, and a third party merchant system for a third party merchant are also participants” are also mentioned in the claim, the claimed invention is not from the perspective of these other entities and these entities do not perform any of the positively recited steps or acts required of the claimed invention. These other entities merely interact with the “backend computer system for an issuing financial institution” performing the positively recited steps or acts.
The mere nominal recitation of technology (e.g., “backend computer system for an issuing financial institution”) does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea). Is not integrated into a practical application.
The claim recites the combination of additional elements of a “backend computer system for an issuing financial institution” performing some of the positively recited steps or acts and “wherein the backend computer system comprises at least one processor and a database, and the backend computer system participates in a distributed ledger network in which a merchant aggregator system for the merchant aggregator, a merchant system for the merchant, and a third party merchant system for a third party merchant are also participants”. The claim recites the combination of additional elements of the electronic transaction data being received “from a transaction authorization system for the issuing financial institution”. The claim recites the combination of additional elements of a receipt being received “from the merchant system or the customer”. The claim recites the combination of additional elements of the merchant return policy for the merchant being retrieved “from the merchant aggregator system using an application programmable interface (API), wherein the merchant system submits its return policy to the merchant aggregator system”. The claim recites the combination of additional elements of a current price for the product being periodically retrieved “from the distributed ledger network, wherein the merchant system and the third party merchant system submit their current prices for the product to the distributed ledger network”. The claim recites the combination of additional elements of the completed refund being saved “to the database”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer being used as a tool to perform the generic computer functions of (a) data receipt/ transmission (e.g., “receiving”, “retrieving”, “periodically retrieving”, etc. step(s) as claimed); and (b) data processing (e.g., “identifying”, “determining”, “verifying”, “automatically initiating”, etc. step(s) as claimed) and (c) data storage (e.g., “saving”)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering refund information), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The language is no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 06/08/23 does not provide any indication there is anything other than generic, off-the-shelf computer components. Furthermore, the prosecution history of the instant application provides Bagayatkar, Haddad, Finnegan, MChale and Starr operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, “retrieving”, “periodically retrieving”, etc. step(s) as claimed); and (b) data processing (e.g., “identifying”, “determining”, “verifying”, “automatically initiating”, etc. step(s) as claimed) and (c) data storage (e.g., “saving”) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “receiving”, “retrieving”, “periodically retrieving”, etc. step(s) as claimed); and (b) data processing (e.g., “identifying”, “determining”, “verifying”, “automatically initiating”, etc. step(s) as claimed) and (c) data storage (e.g., “saving”) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Versata Dev. Group, OIP Techs court decisions cited in MPEP § 2106.05(D) (ii) indicate storing and retrieving information in memory is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Dependent claims 7 - 8 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent system claim 21 and independent non-transitory computer-readable medium claim 24 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claims. The components (e.g., “merchant aggregator system for a merchant aggregator”; “merchant system for a merchant”; “third party merchant system”; “issuing financial institution”; and “a backend computing system comprising at least one processor and a database”) described in independent system claim 21 and the components (e.g., “non-transitory computer readable storage medium”; “one or more computer processors of a backend computer system”) described in independent non-transitory computer readable storage medium claim 24, add nothing of substance to the underlying abstract idea. At best, the product (system; non-transitory computer readable storage medium) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 22 - 23 and 25 - 26 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Response to Arguments
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it provides improvements in the functioning of a computer, or to any other technology or technical field. The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention provides improvements in the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
The “improvements” (e.g., “the claims integrate the alleged judicial exception into the practical application of providing improved digital refunds by periodically retrieving the current price for a product from the distributed ledger network so that the backend computer system can determine whether the current price for the product is less than the purchase price. If it is, the backend computer system automatically initiates a refund to the customer from the merchant for a difference between the current price and the purchase price.” See pg. 9 of applicant’s arguments/ remarks as filed 11/26/25) applicant suggests are really just the benefits of automation itself.
This interpretation is consistent with the prosecution history of the instant application.
For example, para. [0003] of applicant’s specification as filed 6/08/23 recites:
After a customer makes a purchase for an item from a first merchant, a customer may see the same item offered by a second merchant for a lower price. Currently, if the customer wants the lower price, the customer can either return the item to the first merchant for a refund and purchase the item from the second merchant at the lower price, or the customer can request that the first merchant match the lower price. Either option requires considerable effort by the customer, and in the case of the first option, results in waste and inefficiencies.
For example, pg. 10 of applicant’s arguments/ remarks as filed 11/26/25 which states, “As noted, those methods have drawbacks - the customer must identify that there is a lower price, and the customer must also initiate a return or a price match.”
In other words, applicant is arguing the benefits of automating manual tasks that may be performed by/ were historically performed by a human operator (e.g., customer).
For example, claims 1, 7 - 8 and 21 - 26 suggest the steps or acts occur on a computer (i.e., “a backend computer system for an issuing financial institution” comprising “at least one processor” and “a database” in method claims 1, 7 and 8; “a backend computer system for the issuing financial institution” comprising “at least one processor” and “a database” in system claims 21, 22 and 23; “non-transitory computer readable storage medium” having instructions that are executed by “one or more computer processors of a backend computer system” in non-transitory computer readable storage medium claims 24, 25 and 26). There is nothing in the claimed invention as to why technology would be necessary.
Adding the words “apply it” (or an equivalent) with the judicial exception is not
not indicative of integration into a practical application. See also, MPEP § 2106.05(f). Merely using a computer as a tool to perform an abstract idea; and mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application. See also, MPEP §2106.05(f).
The role of the device (e.g., claims 1, 7 - 8 and 21 - 26) is limited to necessary data gathering and outputting (e.g., “receiving, by a backend computer system for an issuing financial institution, permission from a customer to interact with a merchant;
receiving, from a transaction authorization system for the issuing financial institution, electronic transaction data for a transaction involving a product purchased by the customer from a merchant using a financial instrument issued by the issuing financial institution, the product having a purchase price and a purchase date …..; receiving, by the backend computer system, a receipt for the transaction from the merchant system or the customer”; “retrieving, by the backend computer system, a merchant return policy for the merchant from the merchant aggregator system using an application programmable interface (API), wherein the merchant system submits the merchant return policy to the merchant aggregator system”; and “during the return period and on behalf of the customer: periodically retrieving, by the backend computer system, a current price for the product from the distributed ledger network, wherein the merchant system and the third party merchant system submit their current prices for the product to the distributed ledger network”).
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information (e.g., “receiving, by a backend computer system for an issuing financial institution, permission from a customer to interact with a merchant; receiving, from a transaction authorization system for the issuing financial institution, electronic transaction data for a transaction involving a product purchased by the customer from a merchant using a financial instrument issued by the issuing financial institution, the product having a purchase price and a purchase date …..; receiving, by the backend computer system, a receipt for the transaction from the merchant system or the customer”; “retrieving, by the backend computer system, a merchant return policy for the merchant from the merchant aggregator system using an application programmable interface (API), wherein the merchant system submits the merchant return policy to the merchant aggregator system”; and “during the return period and on behalf of the customer: periodically retrieving, by the backend computer system, a current price for the product from the distributed ledger network, wherein the merchant system and the third party merchant system submit their current prices for the product to the distributed ledger network”); analyzing it (e.g., “identifying, by the backend computer system, the purchase price for the product from the electronic transaction data and the receipt”; “determining, by the backend computer system and based on the purchase date, a return period in which the product is eligible for a return to the merchant from the merchant return policy”; and “determining, by the backend computer system, that the current price for the product is less than the purchase price; verifying, by the backend computer system, that a refund has not been initiated for a difference between the current price and the purchase price; automatically initiating, by the backend computer system, the refund to the customer from the merchant for the difference between the current price and the purchase price”) and storing certain results of the collection and analysis (e.g., “when the refund is complete, saving, by the backend computer system, the completed refund to the database.”) merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05(h).
112
Withdrawn in light of applicant’s arguments and/ or amendments.
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.
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/ Primary Examiner, Art Unit 3695