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 .
DETAILED ACTION
Status of the Claims
Claim 1-11,13,14,19 are amended
Claims 1-20 are pending
The rejection under 35 USC 101 is maintained.
Response to Applicant Remarks
Applicant’s well-articulated remarks have been considered but are unpersuasive for the reasons below.
Regarding the rejection under 35 USC 101, the examiner notes that Applicant has added limitations directed to receiving real time transaction rate information from payment providers in communication with a merchant system and displaying the rate information and an offer. The examiner suggests that this limitation does not constitute more than receiving and displaying information. In the context of the invention, the recited steps are understood to take place prior to a customer selecting a payment method for completing a payment transaction. The examiner suggests affirmatively amending the claim to recite this selection and completion of the payment transaction. Communicating with the payment provider in real time to obtain rate information prior to the customer selecting the payment source and completing the transaction would be understood to be somewhat unusual and meaningful limitation in combination with this workflow.
Applicant’s amendments are addressed by the newly cited art.
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 1-20 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. Regarding independent claims 1,8,15 the claimed invention recites an abstract idea without significantly more. The claims recite the abstract idea of comparing payment methods which is a mental process. Other than reciting a processor and device nothing in the claims precludes the steps from being performed mentally. But for the processor and device the limitations on receive transaction information regarding customer transaction, determine transaction rate with potential payment method, identify offer, generate data and display including rate and offer is a process that under its broadest reasonable interpretation could be performed by mentally but for the recitation of generic computer elements. If claim limitations, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Further the above limitations related to comparing payment methods stripped of the identified additional and insignificant elements could also be considered a “Method of Organizing Human Activity” relating to the managing human behavior and interactions. (fundamental economic practice) Thus, the claims recite an abstract idea.
The judicial exception is not integrated into a practical application. The computers are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components. The additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computer environment is not a practical application of the abstract idea and does not take the claim out of the mental process or method of organizing human activity grouping.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of the abstract idea into a practical application, the additional element of processor or device amounts to no more than mere instructions to apply the exception using a generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. Collecting, analyzing and displaying information, and receiving and transmitting over a network are conventional in the computing arts. (MPEP 2106.05h; See also MPEP 2106.05, Alice v. CLS, “. Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). The claims are not patent eligible.
Regarding the dependent claims, these claims are directed to limitations which serve to limit the payment comparison steps. The subject matter of claims 2/9 (system uses API), 3/10 ( customer device application), 4/11 (retrieve transaction rate), 5/12 (real time retrieving), 6/13/20 (register entity, receive and store offer from entity) , 7/14 (provide payment incentive based on registering), 15 (transaction information received prior to customer providing payment based on merchant registration), 16 (transaction information received prior to customer payment based on transaction processing entity registration), 17 (display data via devices), 18 (receive transaction information after customer has provided payment method) appear to add additional steps to the abstract idea, implemented by generic computers. Although claims 2/9/3/10/17 describe further aspects of the system architecture, at the level they are claimed, they do not appear to be an improvement to technology beyond implementation by generic computers. (MPEP 2106.05, Alice v. CLS, “. Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”) These claims neither introduce a new abstract idea nor additional limitations which are significantly more than an abstract idea. They provide descriptive details that offer helpful context, but have no impact on statutory subject matter eligibility.
Therefore the limitations on the invention, when viewed individually and in ordered combination are directed to in-eligible subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5,8-12,17-19 are rejected under 35 U.S.C. 103 as being unpatentable
Shah 20160225011 in view of
Slusser 20170004481 in view of
Lowes, 2/2023,
https://web.archive.org/web/20230206235438/https://www.lowes.com/l/Credit/consumer-credit-center)
Regarding Claim 1,
one or more processors coupled to one or more memory devices, the one or more memory devices having instructions stored thereon that, when executed by the one or more processors, cause the one or more processors to:
Shah is directed to a system for tracking purchases and potential rewards for payment card users. (Shah, para 0021, “[0021] Rewards, offers, or other incentives may be tracked using a third party web-based facility 101. The facility 101 may have a database 102 for tracking and storing information about the user's rewards.”)
receive transaction information regarding a customer transaction associated with one or more of a transaction processing entity, a merchant, or a payment network provider, the transaction information including a potential payment method;
(Shah, para 0028, “[0028] When a user wishes to make a purchase, the user may be on-line or at a physical retail store. The principles of the present disclosure remain the same in both instances. The information about the user's programs has been gathered and stored in the database 102 and is available when the user wishes to make a purchase. In one example, the user presents a clerk at a retail store with an item for purchase. The user identifies himself or herself, using a store account number, a phone number used by the store account, or some other way, such as by swiping a debit card or a credit card, inputting alternative payment facilitation information, or scanning an EMV card or an RFID chip or fob, or the like. This identifies the user so that the user's rewards, offers, or other incentives may be checked. The clerk then scans a bar code or other indicia of the article. The retail store's computer system then searches for a price for the item and displays the price to the user on a retail or point-of-sale terminal of the retail store. With the price known, the system now searches for the user's rewards, offers, or other incentive to see which rewards, offers, or other incentive the user can apply from the user's rewards, offers, or other incentive programs. If the user is on-line, and the user has logged in to an account of an on-line retailer, the user will be known to the merchant/seller, and the earlier step of identifying the user may not be necessary. [0029] When the store's computer system has searched for the user's rewards, information may be retrieved as shown in the example of FIG. 2.”)
determine a transaction rate associated with the potential payment methodin real-time or near real-time via an application programming interface (API) between the merchant computing system and at least one of a payment provider computing system associated with a payment provider or a transaction processing device associated with a transaction processing entity, … and a rewards rate associated with the corresponding potential payment method;
Shah , para 0051, “[0051] In one embodiment, the user may present the item for purchase and use one of his or her credit cards, debit cards, or other account available to the user to pay for a desired purchase. The merchant's system may then conduct the search for the best card or account before transmitting information concerning the purchase to the credit card network or to the financial institution that issues the card. In this embodiment, the merchant's system may contact the third party facility to conduct the search for the best method for payment. In another embodiment, the merchant's system may have a database of rewards for the user and may be able to conduct the search without directly contacting the third party facility. This system is more accurate, of course, if the merchant's system, and database, is updated frequently, e.g., daily, to keep track of the various rewards, points, alerts and other information needed to keep current. If available, the user's offer system may be searched for any available offers already selected and stored by the user (e.g. which they may have forgotten), soon-to-expire offers, or the like. “; para 0021, “This information may be accessed through the database 102, accessed through an API to receive exported underlying information, and the like. The exported underlying information can be complete card information, categories of rewards, offers, or incentives available, a unique identifier, and the like.”)
identify an offer associated with the one or more of the transaction processing entity, the merchant, or the payment network provider;
(Shah, para 0040, “[0040] The user, as discussed, is able to review the balances and rewards, offers, or other incentives possible in the various accounts and cards of which the user is a member. Instead of the exercise depicted for FIGS. 3-4 of calculating the rewards, it would be easier if the third party facility or the App discussed above could perform these calculations and present a result, or a series of results, so that the user would be better able to decide which card or account to use to make the purchase.”)
generate display data including the transaction rate and the offer; and
transmit the display data to at least one of the transaction processing device , the merchant computing system, or a customer device associated with a customer, the display data configured to cause the transaction rate and the offer to be displayed by the at least one of the transaction processing device, the merchant computing system, or the customer device.
(Shah, para 0054, “The results of the search may then be presented 85 to the user. In these figures, and in the claims, it is understood that the “user” may be the person contemplating purchasing the product or the service. In some instances, however, if the user is at a physical store and a clerk is assisting the person, the results of the search may be presented to the clerk, e.g., on the store's point-of-sale terminal, so that the clerk can assist the person in making the decision of which card or account to use. The clerk may then relay the results to the user or cause the user to view a POS or other screen displaying the results.”; para 0058 “ [0058] In an embodiment, when the user goes through a purchase in-store, when the user swipes the card, based on one of the POS, Card Swipe, Payment Gateway or Authorization channel, the user may be notified to use an alternative card, such as either on the payment terminal or via mobile notification. When the user uses the in-store mobile payment application to pay for the purchase, the user can be notified to use an alternative card either, such as through a mobile API integration in the payment application, via mobile notification during authorization call, and the like.”)
Shah does not explicitly disclose
each of the plurality of transaction rates comprising an interchange rate associated with a corresponding potential payment method of the plurality of potential payment methods,
Slusser is directed to a system for displaying card fees to a card user. (Slusser, background). Slusser discloses different institutions may impose different rates for a card transaction. (Slusser, para 0104, “[0104] In one embodiment of the present invention, the step of automatically indicating alternative credit card and/or debit card issuing banks having lower interchange rates for the specific transaction further includes presenting information via the web-based graphical user interface “GUI” (or other interface) showing a comparison of a multiplicity of alternative card types and/or issuing banks that provide lower interchange rates, and where applicable lower convenience fees, for the specific transaction. Also, the interchange rates associated with each of those cards is displayed. In another embodiment, other steps are included for prompting the cardholder to input multiple card numbers from different cards into separate fields in a web-based GUI (or other interface); with a subsequent step of the system automatically generating a new convenience fee for each card number inputted by the cardholder and received by the server associated with the system. Preferably, for multiple card number entries, the cardholder is presented and provides an input to select the desired card number and associated convenience fee, approve the transaction, submit electronically and complete the transaction.”) It would have been obvious to one of ordinary skill in the art before the filing date of the invention to combine Shah with the fee determination of Slusser with the motivation of obtaining cardholder approval of fees. (Slusser, summary).
Shah does not explicitly disclose
an interest rate associated with the corresponding potential payment method,
However, the limitation is obvious in view of Lowes. Lowes discloses a merchant payment card offer could entail a discount and special interest rate for a customer. (Lowes, p.1,
https://web.archive.org/web/20230206235438/https://www.lowes.com/l/Credit/consumer-credit-center, “Thinking about applying for the Lowe’s Advantage Card? If you want a card with rewards and advantages like 5% off* when you shop, or 6 months Special Financing** on purchases of $299 or more, or 84 fixed monthly payments with reduced APR† financing on purchases of $2,000 or more, a Lowe’s Advantage Credit Card may be right for you.”) It can be seen that all the claimed elements are taught by Shah, Slusser or Lowes. Merchant cards by Lowes does not change the functions taught by Shah or Slusser. Purchasing could be performed the same way independent whether the parties had a merchant card. Since the function of the elements in Shah, Slusser and Lowes do not interfere with each other the results would be predictable. It would have been obvious to one of ordinary still in the art to include in the system of Shah and Slusser merchant cards as taught by Lowes since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding Claim 2, Shah, Slusser and Lowes disclose the system of claim 1.
wherein the display data is transmitted to one of the transaction processing device or the merchant computing system, and
(Shah, para 0054, “The results of the search may then be presented 85 to the user. In these figures, and in the claims, it is understood that the “user” may be the person contemplating purchasing the product or the service. In some instances, however, if the user is at a physical store and a clerk is assisting the person, the results of the search may be presented to the clerk, e.g., on the store's point-of-sale terminal, so that the clerk can assist the person in making the decision of which card or account to use. The clerk may then relay the results to the user or cause the user to view a POS or other screen displaying the results.”;
receiving the transaction information regarding the customer transaction is performed as part of an API interaction between the provider computing system and the one of the transaction processing device or the merchant computing system.
(Shah, para 0021, “[0021] Rewards, offers, or other incentives may be tracked using a third party web-based facility 101. The facility 101 may have a database 102 for tracking and storing information about the user's rewards. The database may also include information about clients of the facility, e.g., merchants or others who may wish to use the marketing services of the third party. The facility may also be application based, i.e., it may be useful to have an application on the user's computer or mobile device to assist in tracking and presenting earned and potential rewards to the user or card-member. The facility may store in its database 102 information about each consumer's programs and rewards. The facility may also store information on what is offered by each of the user's reward programs for a variety of possible purchases. In some embodiments, the user may have aggregated their reward program/credit card/financial instruments through a universal payment facility or digital smart card (e.g. Plastc, Coin, Apple Pay, MasterPass). This information may be accessed through the database 102, accessed through an API to receive exported underlying information, and the like. The exported underlying information can be complete card information, categories of rewards, offers, or incentives available, a unique identifier, and the like.”)
Regarding Claim 3, Shah discloses the system of claim 1.
wherein the instructions further cause the one or more processors to provide an application to the customer device, and wherein the display data is transmitted to the customer device via the application.
(Shah, para 0021, “The facility may also be application based, i.e., it may be useful to have an application on the user's computer or mobile device to assist in tracking and presenting earned and potential rewards to the user or card-member.”)
Regarding Claim 4, Shah, Slusser and Lowes disclose the system of claim 1.
wherein the instructions further cause the one or more processors to:
retrieve, in response to receiving the transaction information, the transaction rate from one or more third-party computing systems associated with one or more of a second provider, the merchant, the transaction processing entity, or the payment network provider,
(Shah, para 0005, “The method includes steps of storing a result of the search for the product or the service, accepting a request with the at least one computer for a search for rewards for purchasing the product or the service, the rewards provided by at least one of: a seller of the product or the service, a credit card company, and a debit card company, and then presenting results of the search for rewards to the user. The result may be stored in volatile memory or non-volatile memory.”)
Regarding Claim 5, Shah, Slusser and Lowes disclose the system of claim 4.
wherein retrieving the transaction rate is performed in real-time.
(Shah, para 0059, “Indeed, the disclosed processes, methods, purchase flows or steps represent an improvement in the technology to enable real-time presentation of rewards, offers, or incentives and the processing of such rewards, offers, or incentives, either with or without the application of goals, preferences, rules, constraints, limitations, or filters, to assist a user in selecting a financial instrument with which to execute a transaction.”; para 0027, “[0027] Credit card companies and debit card companies or other alternative payment facilitation systems and methods (e.g. Paypal, Bitcoin, etc.) 107 may also desirably keep in touch with the facility 101 in order to constantly update their offers and incentives and keep all portions of the facility up-to-date on their offerings.”)
Regarding Claim 8-12,
See prior art rejections of claim 1-5
Regarding Claim 17, Shah, Slusser and Lowes disclose the method of claim 8.
See prior art rejection of claim 1.
Regarding Claim 18, Shah, Slusser and Lowes disclose the method of claim 8.
wherein the transaction information is received after the customer has provided the potential payment method for completion of the customer transaction, and wherein the display data is transmitted to the at least one of the transaction processing device, the merchant computing system, or the customer device responsive to receiving the transaction information and prior to completing the customer transaction using the potential payment method.
(Shah, para 0028, “The user identifies himself or herself, using a store account number, a phone number used by the store account, or some other way, such as by swiping a debit card or a credit card, inputting alternative payment facilitation information, or scanning an EMV card or an RFID chip or fob, or the like. This identifies the user so that the user's rewards, offers, or other incentives may be checked.”)
Regarding Claim 19,
See prior art rejection of claim 1.
Claims 6,7,13,14,15,16,20 are rejected under 35 U.S.C. 103 as being unpatentable over Shah 20160225011 in view of Slusser in view of Lowes in view of Wang 20090299820
Regarding Claim 6, Shah, Slusser and Lowes disclose the system of claim 1.
the offer incentivizing the customer to utilize a specific payment method to complete customer transactions; and
She prior art rejection of claim 1.
Shah does not explicitly disclose
wherein the instructions further cause the one or more processors to:
receive a registration request from the one or more of the transaction processing entity, the merchant, or the payment network provider, the registration request being associated with a payment method incentive program;
register the one or more of the transaction processing entity, the merchant, or the payment network provider for the payment method incentive program by creating and storing a registered account corresponding to the one or more of the transaction processing entity, the merchant, or the payment network provider;
receive the offer from the one or more of the transaction processing entity, the merchant, or the payment network provider, …
store the offer in the registered account.
Wang is directed to a system for delivering advertising and incentives to customers making a purchase. (Wang, abstract, para [0045] (8) A Consumer Reward and/or Incentive system Component. The Consumer Reward and/or Incentive System Component can reward the consumer/purchaser with a portion of a commission fee charged to the selling merchant and also reward consumers for helping refer new consumer and merchant members.”; para 0064, “[0064] 1.1. Registration unit: A Registration Unit 121 allows merchants to self register with the system and become merchant affiliates. The registration unit can be implemented in software and can perform registration steps that include creating a merchant account with owner credentials. The unit also allows the merchant affiliate to create a plurality of business associates and assign them with credentials. During the registration, a merchant signing up can also specify the transaction tracking options, such as credit card terminal tracking, service provider's own virtual terminal tracking, manual tracking, etc. In this process, the billing procedure is set up so that the service provider can properly charge and withdraw funds for commissions earned. The registration process can also include initialization steps in which the registering merchant can create a business profile and set up commission and consumer incentive reward plan(s). During the registration process, the new merchant affiliate can also elect to create and publish special offers as well as creating and publishing a merchandizing catalog (for example published as "regulars" or "regular offers" in the system).”) It would have been obvious to one of ordinary skill in the art before the filing date of the invention to combine Shah, Slusser and Lowes with the merchant registration of Wang with the motivation of obtaining third party services. Id.
Regarding Claim 7, Shah, Slusser, Lowes and Wang disclose the system of claim 6.
provide a payment method incentive application to at least one of the transaction processing device or the merchant computing system …
wherein the display data is transmitted to the one of the transaction processing device or the merchant computing system via the payment method incentive application.
(Shah, para 0024, “The integration with the retailer may be Javascript or API integration at the checkout page. In embodiments, applications and aspects of the system may integrate at the physical store, such as through POS terminal integration, the card authorization flow, the payment gateway of the acquirer, or in-store mobile payment application through API.”)
Shah does not explicitly disclose
based on registering the at least one of the transaction processing entity or the merchant for the payment method incentive program, and
See prior art rejection of claim 6. The examiner understands that merchant participation in a customer incentive system may be contingent upon merchant registration first.
Regarding Claim 13,14,
See prior art rejections of claim 6,7
Regarding Claim 15, Shah, Slusser, Lowes and Wang disclose the method of claim 13.
wherein the transaction information 1s received prior to the customer providing a payment method for completing the customer transaction
See prior art rejection of claim 1.
…based on the merchant being registered for the payment method incentive program.
See prior art rejection of claim 6. The examiner understands that merchant participation in a customer incentive system may be contingent upon merchant registration first.
Regarding Claim 16, Shah, Slusser, Lowes and Wang disclose the method of claim 13.
wherein the transaction information 1s received prior to the customer providing a payment method for completing the customer transaction
See prior art rejection of claim 1.
Shah does not explicitly disclose
based on the transaction processing entity being registered for the payment method incentive program.
The examiner notes that Shah discloses obtaining incentive information from a transaction processing entity. (See prior art rejection of claim 1). Shah does not explicitly disclose registration of the entity. However, the limitation is obvious in view of the overall teaching of Wang. Wang is directed to a system for delivering advertising and incentives to registered customers making a purchase. (Wang, abstract, para [0045] (8) A Consumer Reward and/or Incentive system Component. The Consumer Reward and/or Incentive System Component can reward the consumer/purchaser with a portion of a commission fee charged to the selling merchant and also reward consumers for helping refer new consumer and merchant members.”; para 0064, “[0064] 1.1. Registration unit: A Registration Unit 121 allows merchants to self register with the system and become merchant affiliates. The registration unit can be implemented in software and can perform registration steps that include creating a merchant account with owner credentials. The unit also allows the merchant affiliate to create a plurality of business associates and assign them with credentials. During the registration, a merchant signing up can also specify the transaction tracking options, such as credit card terminal tracking, service provider's own virtual terminal tracking, manual tracking, etc. In this process, the billing procedure is set up so that the service provider can properly charge and withdraw funds for commissions earned. The registration process can also include initialization steps in which the registering merchant can create a business profile and set up commission and consumer incentive reward plan(s). During the registration process, the new merchant affiliate can also elect to create and publish special offers as well as creating and publishing a merchandizing catalog (for example published as "regulars" or "regular offers" in the system).”) Although the art does not explicitly disclose registering the payment processor entity, Wang teaches that it is known to participate in a system (e.g., a merchant) by affirmatively registering for it. Having another known entity (a payment processor) register to participate in the system is believed to be obvious. The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
Regarding Claim 20,
See prior art rejection of claim 6.
Conclusion
THIS ACTION IS MADE FINAL. 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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/ALLEN C CHEIN/Primary Examiner, Art Unit 3627