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 1-4,6-16,18 and 19 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application and do not include additional elements that are sufficient to amount to significantly more than the judicial exception based on the analysis that follows:
PNG
media_image1.png
608
975
media_image1.png
Greyscale
Step 1
Yes. The claims are directed to one or more of the following; methods and products.
Step 2A-Prong 1
The claim are directed to the abstract idea of sending a status notification of a payment to a payor. Claim 10 is the representative claim and based up its language, the abstract idea includes that following steps. The elements beyond the abstract idea marked.
(As Amended) A client device comprising: at least one processor; and one or more modules executable by the at least one processor to:
receive, by a communication transceiver of the client device, a transaction notification of a data transaction;
extract, by the at least one processor, a time value from a transaction timestamp associated with the data transaction;
perform, by the at least one processor, a comparison to a time difference threshold of a time difference between a delivery time of the transaction notification and the extracted time value for the data transaction, the delivery time corresponding to a notification viewable trigger corresponding to a time value that an event is detected via one or more sensors of the client device indicating a user of the client device is in a position to view the transaction notification on the client device;
process, by the at least one processor, the transaction notification based at least in part on the comparison of the time difference to the time difference threshold to generate a processed transaction notification; and cause the processed transaction notification to be output via a display system of the client device.
The above steps are directed to certain methods of human activity.
Step 2A-Prong 2
No. The claims as a whole merely use a computer as a tool to perform the abstract idea. The computing components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as a tool to implement the steps.
For example, only a programmed general purpose computing device is needed to implement the claimed process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
Furthermore, the abstract idea is merely being linked to a particular technological environment, i.e., a manufacturing environment. Employing well known technology within a manufacturing environment to execute the abstract idea, even when limiting the use of the abstract idea to this environment, does not integrate the exception into a practical application or add significantly more. Additionally, there is no improvement to the functioning of a computer or technology. The identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool ("apply it") to implement the abstract idea. (See, e.g., MPЕР §2106.05(f)). Therefore, the claim is directed to an abstract idea.
Step 2B
Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claims, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claims do not provide an inventive concept. See MPEP 2111.04 " machine claim where "the written description makes clear that 'adapted to,' as used in the [patent] application, has a narrower meaning, viz., that the claimed machine is designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles." In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a "‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention." Id. However, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)).
As to the sensor, even if the sensor were not a conventional device, the use thereof for the purpose of delaying the sending of the notification. Mansfield US Patent Publication 20160050535 is support for the conventional use of a sensor for this purpose. P[0129] In some examples, the sender 104 instructs the communication module 134 to send the communication 102 to the recipient 106. In some examples, the communication module 134 can delay sending the communication 102 to the recipient 106 by a specified amount of time, e.g., five minutes, ten minutes, thirty minutes, or another amount of time, to avoid tempting the recipient 106 to read the communication while driving. In some examples, the communication module 134 can send a notification to alert the recipient that the communication 102 will be sent at a particular time, or to notify the recipient to access the communication 102 (e.g., through a link) when it is safe to do so.
The dependent claims do not add additional components beyond the independent claims and are rejected using the same analysis of the independent claim.
System claims 14-16, 18-20 are the server side devices of the method claims and expressly include the processor and memory needed to create the massage within the method claim. The claims are rejected based in the same analysis under 2A and 2B for the receiving device.
The client device claims 1-6, 8-9 are the receiving side equivalent to the method claims, where the device claims include a processor. Accordingly, the claims are rejected based on the same analysis under 2A and 2B of the method claims.
Moreover the additional components beyond the abstract idea both individually and in combination amount to no more than generally described high level equipment to perform the abstract idea. Merely performing the abstract idea using on using one of more of the components cannot provide an inventive concept.
Response to Arguments
In the Office Action, the Office has failed to identify which of the enumerated groupings of abstract ideas that the claims allegedly fall into (See e.g., Office Action, p. 3). Instead, the Office merely provides a conclusory assertion that the claimed subject matter is "directed to the abstract idea of sending a status notification of a payment to a payor" (Id.). Absent any indication in the Office Action that the claims fall within any of the groupings of abstract ideas, Applicant submits that, according to the MPEP, the claims do not recite in abstract idea.
The unbolded steps above describe a fundamental economic practice, commercial interactions, and managing interactions between people, and therefore a certain method of organizing human activity. Further, the limitations, as drafted, describe a process that, under its broadest reasonable interpretation, covers performance of the limitation by a human analog but for the recitation of generic computer components. That is, other than the recitation of the account database, receiving device, querying module of the processing server, and control module of the processing server, nothing in the claims precludes the steps from practically being performed by a human analog. For example, but for this language, the claim encompasses performing periodic savings with transaction controls by a human analog. Here, the mere nominal recitation of the generic computer components does not take the claim limitation out of the “certain methods of organizing human activity” grouping. As such, the claims recite an abstract idea under prong one. The analysis proceeds to Step 2A Prong Two.
Prong two consists of determining whether the claim recites additional elements that integrate the judicial exception into a practical application. The claim recites the following additional elements:
The processor , the transceiver , the sensor and the client device.
The additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. They do not integrate the judicial exception into a practical application because they do not impose any meaningful limits on practicing the abstract idea. As such, the claims are directed to the abstract idea. The analysis proceeds to Step 2B.
Eligibility Analysis, Step 2B
Step 2B consists of determining whether the claim provides an inventive concept by considering whether the additional elements go beyond what is well-understood, routine, and conventional activity.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (see MPEP 2106; see also USPTO: July 2015 Update: Subject Matter Eligibility):
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));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”);
iii. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
In the case of the instant claims when broadly construed in the light of the specification , the generic application of the additional components similarly does not make the invention patent-eligible. Note that the disclosure recites general computer products which are suitable to perform the claimed method (see eg. para. 0048-0052). The senor is defined broadly and can include sensing whether the powered on and/or powered on and turned on to receive notifications. Moreover, the specification does not contribute any technically-specific computer algorithm or code, but rather merely states that the claimed steps may be performed by the generic coponents with the expectation that one of ordinary skill in the art would be capable of implementation without further instruction. The use of computing devices in this manner is merely what computers do, ie. performing repetitive calculations, receiving, processing, and storing data, and automating mental tasks, and does not change the analysis. Whilst the implementation of such a solution may include the use of generic technical features, these merely serve their well-understood functions as would be recognized by one of ordinary skill in the art in the technical field under consideration. As such, the claims' invocation of the computer merely amounts to the limiting of the use of the abstract idea to a particular technological environment.
Here, the involvement of the generic phone components does not amount to significantly more than the abstract idea because the mere recitation of a generic computer cannot transform a patent-eligible abstract idea into a patent-eligible invention. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The computer components are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components in this manner does not impose any meaningful limit on the computer implementation of the abstract idea. 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 a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
As discussed with respect to Step 2A Prong Two, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. The additional elements are recited at a high level of generality, as discussed above. The same analysis applies here in Step 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.
Applicant is encouraged to schedule an interview on the case. The examiner left a voice message on Wednesday Feb 4th 2026 to this effect.
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 RICHARD C WEISBERGER whose telephone number is (571)272-6753. The examiner can normally be reached Monday - Thursday 10AM-8PM PCT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson can be reached at 571-270-0580. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
RICHARD C. WEISBERGER
/RICHARD C WEISBERGER/ Primary Examiner, Art Unit 3693