DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for continued examination of application 18/401,687 (01/01/24) filed on 02/06/26.
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 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 - 20 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 a loan request for a loan for the purchase transaction between the user computing device and the merchant computing device;
encrypting a plurality of loan terms to generate one or more digital loan term tokens for the plurality of loan terms for the loan request, the one or more digital loan term tokens representing the plurality of loan terms in an encrypted format; transmitting the one or more digital loan term tokens that generates a transaction package upon a selection of at least one of the one or more digital loan term tokens, the transaction package being represented via a visual code; receiving data representing the transaction package identifying at least one of the one or more digital loan term tokens, wherein the transaction package securely represents a method of payment and a payment interval for the purchase transaction between the user computing device and the merchant computing device, the data of the transaction package comprising one or more payment source tokens associated with one or more payment sources for paying at least a portion of the loan; decrypting at least one of the one or more digital loan term tokens in the transaction package to identify selected loan data for the loan; comparing at least one of the one or more payment source tokens with corresponding token records to identify one or more payment sources for at least the portion of the loan; debiting at least one of the one or more payment sources for the portion of the loan based on the selected loan data; and responsive to debiting at least one of the one or more payment sources for the portion of the loan, crediting an account of a merchant associated with the merchant computing device according to the loan, which is a fundamental economic principles or practices (point-of-sale financing, loan(s)); commercial or legal interactions (point-of-sale financing, loan(s)); and managing personal behavior or relationships or interactions between people (receiving, encrypting ….. to generate, transmitting, decrypting ….. to identify, comparing, debiting, crediting, etc.).
The mere nominal recitation of a “financial institution computing system” 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 a loan request for a loan for the purchase transaction between the user computing device and the merchant computing device; encrypting a plurality of loan terms to generate one or more digital loan term tokens for the plurality of loan terms for the loan request, the one or more digital loan term tokens representing the plurality of loan terms in an encrypted format; transmitting the one or more digital loan term tokens that generates a transaction package upon a selection of at least one of the one or more digital loan term tokens, the transaction package being represented via a visual code; receiving data representing the transaction package identifying at least one of the one or more digital loan term tokens, wherein the transaction package securely represents a method of payment and a payment interval for the purchase transaction between the user computing device and the merchant computing device, the data of the transaction package comprising one or more payment source tokens associated with one or more payment sources for paying at least a portion of the loan; decrypting at least one of the one or more digital loan term tokens in the transaction package to identify selected loan data for the loan; comparing at least one of the one or more payment source tokens with corresponding token records to identify one or more payment sources for at least the portion of the loan; debiting at least one of the one or more payment sources for the portion of the loan based on the selected loan data; and responsive to debiting at least one of the one or more payment sources for the portion of the loan, crediting an account of a merchant associated with the merchant computing device according to the loan.
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 but for the recitation of generic computer components. That is, other than reciting “financial institution computing system”, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “financial institution computing system” language, the claim encompasses the user manually receiving a loan request for a loan for the purchase transaction between the user computing device and the merchant computing device; encrypting a plurality of loan terms to generate one or more digital loan term tokens for the plurality of loan terms for the loan request, the one or more digital loan term tokens representing the plurality of loan terms in an encrypted format; transmitting the one or more digital loan term tokens that generates a transaction package upon a selection of at least one of the one or more digital loan term tokens, the transaction package being represented via a visual code; receiving data representing the transaction package identifying at least one of the one or more digital loan term tokens, wherein the transaction package securely represents a method of payment and a payment interval for the purchase transaction between the user computing device and the merchant computing device, the data of the transaction package comprising one or more payment source tokens associated with one or more payment sources for paying at least a portion of the loan; decrypting at least one of the one or more digital loan term tokens in the transaction package to identify selected loan data for the loan; comparing at least one of the one or more payment source tokens with corresponding token records to identify one or more payment sources for at least the portion of the loan; debiting at least one of the one or more payment sources for the portion of the loan based on the selected loan data; and responsive to debiting at least one of the one or more payment sources for the portion of the loan, crediting an account of a merchant associated with the merchant computing device according to the loan. NOTE: (a) The claim is exclusively from the perspective of a “financial institution computing system”. (b) Although the claim refers to “a user computing device” and “merchant computing device”, the claim is not from the perspective of the “user computing device” and “merchant computing device” and the “user computing device” and “merchant computing device” do not perform any of the positively recited steps or acts required of the claimed invention. The “user computing device” and “merchant computing device” merely interacts with the machine (i.e., “financial institution computing device”) from whose perspective the invention is claimed.
The mere nominal recitation of a “financial institution computing system” 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 the method being “implemented by a financial institution computing system, for point-of-sale financing at time of a purchase transaction involving a user computing device and a merchant computing device, the financial institution computing system, the user computing device, and the merchant computing device being in communication over a network” (preamble only). The claim recites the combination of additional elements of “financial institution computing system” performing each of the positively recited steps or acts. The claim recites the combination of additional elements of the “receiving ….. a loan request” occurring “over the network from a software application executing on the user computing device”. The claim recites the combination of additional elements of the “transmitting ….. the one or more digital loan term tokens” occurring “over a network” and “to the user computing device”. NOTE: Furthermore, it is the “user computing device that generates a transaction package upon a selection of at least one of the one or more digital loan term tokens”. The claimed invention is exclusively from the perspective of the “financial institution computing system”, not the “user computing device” however. The claim recites the combination of additional elements of the “receiving ….. data” occurring “over the network from the merchant computing device”. NOTE: Furthermore, the data was “obtained by the merchant computing device scanning the visual code representing the transaction package”. The claimed invention is exclusively from the perspective of the “financial institution computing system”, not the “merchant computing device” however. Furthermore, “the selection made via the software application executing on the user computing device”. The claimed invention is exclusively from the perspective of the “financial institution computing system”, not the “user computing device” however. The claim recites the combination of additional elements of the token records being “in a token database of the financial institution computing system”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer performing the generic computer functions of (a) data receipt/ transmission (e.g., “receiving”, “transmitting”, etc. step(s) as claimed); and (b) data processing (e.g., “encrypting ….. to generate”, “decrypting ….. to identify”, “comparing”, “debiting”, “crediting”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering point-of-sale financing/ loan data), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “financial institution computing system” is also recited at a high level of generality, and merely automates the step(s). The “financial institution computing system” limitations are 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 01/01/24 does not provide any indication that the “financial institution computing system” is anything other than generic, off-the-shelf computer components, see at least para. [0012] [0017] [0018] [0050] [0062] [0063]. Furthermore, the prosecution history of the instant application provides Douglas, US Pub. No. 2014/0279530; McGough, US Pub. No. 2004/0230; Brown, US Pub. No. 2014/0089191; Don, US Pub. No. 2014/0207654; and Casey, US Pat. No. 8,255,323 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, “transmitting”, etc. step(s) as claimed); and (b) data processing (e.g., “encrypting ….. to generate”, “decrypting ….. to identify”, “comparing”, “debiting”, “crediting”, etc. step(s) as claimed) are well understood, routine and conventional. See Douglas, Figs. 1, 2, 3, 4A, 6, [0005] [0019] [0021] [0022] [0024] [0025] [0030] [0035] [0041] [0049] [0050] [0051] [0053] [0054]. See McGough, abstract, Tables 1,2,3, [0007] [0008] [0015] [0021] [0022] [0023] [0025]. See Brown, [0023] [0026] [0027] [0046] [0056] [0058] [0065] [0072] [0141] [0165] [0181] [0182] [0183] [0186] [0187] [0299]. See Don, [0041] [0043] [0076] [0083]. See Casey, abstract, col. 3, lines 38 - 51, col. 4, lines 12+ - col. 5, line 2; col. 8, lines 4 - 13; col. 9, lines 37+ - col. 10, line 2. 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”, “transmitting”, etc. step(s) as claimed); and (b) data processing (e.g., “encrypting ….. to generate”, “decrypting ….. to identify”, “comparing”, “debiting”, “crediting”, etc. step(s) as claimed) 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). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer. For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 15 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, financial institution computing system claim 16 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as method claims. The component(s) (e.g., “one or more processors”, “memory”) described in independent financial institution computing system claim 16, add nothing of substance to the underlying abstract idea. At best, the product(s) (financial institution computing system) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 17 - 20 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
Double Patenting
Withdrawn in light of applicant’s arguments and/ or amendments.
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claim(s) are not directed to a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
Fundamental economic principles or practices relate to the economy and commerce. The claimed invention encompasses fundamental economic principles or practices as it relates to processing of payments (point-of-sale financing, loan(s)).
The claimed invention encompasses commercial or legal interactions. The claimed invention relates to processing of payments (point-of-sale financing, loan(s)). Processing of payments, in the instant scenario, pertains to agreements in the form of “sales activities or behaviors” and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions (e.g., “receiving”, “encrypting ….. to generate”, “transmitting”, “decrypting ….. to identify”, “comparing”, “debiting”, “crediting”, etc.).
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
The claimed invention is directed to mental processes. The claimed invention encompasses observations, evaluations, judgements and opinions (e.g., “encrypting ….. a plurality of loan terms to generate one or more digital loan term tokens for the plurality of loan terms for the loan request, the one or more digital loan term tokens representing the plurality of loan terms in an encrypted format”; decrypting ….. at least one of the one or more digital loan term tokens in the transaction package to identify selected loan data for the loan; comparing ….. at least one of the one or more payment source tokens with corresponding token records in a token database of the financial institution computing system to identify one or more payment sources for at least the portion of the loan; debiting ….. at least one of the one or more payment sources for the portion of the loan based on the selected loan data; and responsive to debiting at least one of the one or more payment sources for the portion of the loan, crediting ….. an account of a merchant associated with the merchant computing device according to the loan.”) which are examples of mental processes.
Contrary to applicant’s arguments, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aide. Similarly, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Although claims 1 - 20 suggest the steps or acts occur on a computer (i.e., “a financial institution computing system” in method claims 1 - 15; “one or more processors”, “memory” in financial institution computing system claims 16 - 20), nothing forecloses applicant’s claimed invention from being performed by a human and thus applicant’s claimed invention is still directed to a mental process.
See also, MPEP §2106.04(a)(2)(III).
(2)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 (a) provides a technical solution to a technical problem; and (b) provides improvements in the functioning of a computer, or to any other technology or technical field (e.g., “Applicant submits that the claims integrate any purported abstract idea into a practical application because the claimed technology provides a specific technical improvement to the functioning of computing systems executing secure, real-time token processing operations. Without the use of the claimed secure token technology, conventional approaches expose potentially sensitive information through ‘sending paper checks or through a bill pay feature[s],’ (Specification, para. [0002]), resulting in security vulnerabilities.” See pgs. 10 - 11 of applicant’s arguments/ remarks as filed 02/06/26. “….. the claimed technology implements specific operations that improve the functioning and security of computer systems that process sensitive information, thereby integrating any would-be abstract idea into a practical application.” See pg. 12 of applicant’s arguments/ remarks as filed 02/06/26). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention (a) provides a technical solution to a technical problem; and (b) 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.
With respect to applicant’s “solution”/ “improvements”. Processing of payments (point-of-sale financing, loan(s)) is directed to the underlying abstract idea, not the functioning of the computer itself. The devices (e.g., “financial institution computing system”, “user computing device”, “merchant computing device”) are really just proxies for human operators that may perform a similar functions (e.g., financial entity, customer, merchant). What applicant is really arguing is the use of a computer as a tool or the benefits of automation itself.
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).
Contrary to applicant’s arguments, features applicant relies upon are “insignificant”.
For example, they amount to “necessary data gathering and outputting” (e.g., “receiving ….. a loan request for a loan for the purchase transaction between the user computing device and the merchant computing device”; “transmitting ….. the one or more digital loan term tokens ….. that generates a transaction package upon a selection of at least one of the one or more digital loan term tokens, the transaction package being represented via a visual code; receiving ….. data obtained by the merchant computing device scanning the visual code representing the transaction package identifying at least one of the one or more digital loan term tokens, the selection made via the software application executing on the user computing device, wherein the transaction package securely represents a method of payment and a payment interval for the purchase transaction between the user computing device and the merchant computing device, the data of the transaction package comprising one or more payment source tokens associated with one or more payment sources for paying at least a portion of the loan;”).
For example, they are not significant because they are only “nominally or tangentially related to the invention” and do not impose meaningful limits on the claim (e.g., “….. the user computing device that generates a transaction package upon a selection of at least one of the one or more digital loan term tokens, the transaction package being represented via a visual code”; “….. obtained by the merchant computing device scanning the visual code representing the transaction package identifying at least one of the one or more digital loan term tokens, the selection made via the software application executing on the user computing device, wherein the transaction package securely represents a method of payment and a payment interval for the purchase transaction between the user computing device and the merchant computing device, the data of the transaction package comprising one or more payment source tokens associated with one or more payment sources for paying at least a portion of the loan”). NOTE: The contents of the “transaction package” and what that content represents is non-functional descriptive material. See also, MPEP § 2111.05 Nonfunctional Descriptive material. Furthermore, the claimed invention is exclusively from the perspective of the “financial institution computing system”. The intended actions of other, unclaimed devices (i.e., “user computing device”, “merchant computing device”) is only nominally or tangentially related to the claimed invention.
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 ….. a loan request for a loan for the purchase transaction between the user computing device and the merchant computing device”; “transmitting ….. the one or more digital loan term tokens ….. that generates a transaction package upon a selection of at least one of the one or more digital loan term tokens, the transaction package being represented via a visual code; receiving ….. data obtained by the merchant computing device scanning the visual code representing the transaction package identifying at least one of the one or more digital loan term tokens, the selection made via the software application executing on the user computing device, wherein the transaction package securely represents a method of payment and a payment interval for the purchase transaction between the user computing device and the merchant computing device, the data of the transaction package comprising one or more payment source tokens associated with one or more payment sources for paying at least a portion of the loan;”); analyzing it (e.g., “encrypting ….. a plurality of loan terms to generate one or more digital loan term tokens for the plurality of loan terms for the loan request, the one or more digital loan term tokens representing the plurality of loan terms in an encrypted format”; “decrypting ….. at least one of the one or more digital loan term tokens in the transaction package to identify selected loan data for the loan; comparing ….. at least one of the one or more payment source tokens with corresponding token records in a token database of the financial institution computing system to identify one or more payment sources for at least the portion of the loan;
debiting ….. at least one of the one or more payment sources for the portion of the loan based on the selected loan data; and responsive to debiting at least one of the one or more payment sources for the portion of the loan, crediting ….. an account of a merchant associated with the merchant computing device according to the loan.”); and displaying certain results of the collection and analysis 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).
(3) Applicant argues inventive concept (i.e., 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)). Applicant argues the claimed invention is not “well-understood, routine and conventional”.
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 01/01/24 does not provide any indication that the “financial institution computing system” is anything other than generic, off-the-shelf computer components, see at least para. [0012] [0017] [0018] [0050] [0062] [0063]. Furthermore, the prosecution history of the instant application provides Douglas, US Pub. No. 2014/0279530; McGough, US Pub. No. 2004/0230; Brown, US Pub. No. 2014/0089191; Don, US Pub. No. 2014/0207654; and Casey, US Pat. No. 8,255,323 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “receiving”, “transmitting”, etc. step(s) as claimed); and (b) data processing (e.g., “encrypting ….. to generate”, “decrypting ….. to identify”, “comparing”, “debiting”, “crediting”, etc. step(s) as claimed) are well understood, routine and conventional. See Douglas, Figs. 1, 2, 3, 4A, 6, [0005] [0019] [0021] [0022] [0024] [0025] [0030] [0035] [0041] [0049] [0050] [0051] [0053] [0054]. See McGough, abstract, Tables 1,2,3, [0007] [0008] [0015] [0021] [0022] [0023] [0025]. See Brown, [0023] [0026] [0027] [0046] [0056] [0058] [0065] [0072] [0141] [0165] [0181] [0182] [0183] [0186] [0187] [0299]. See Don, [0041] [0043] [0076] [0083]. See Casey, abstract, col. 3, lines 38 - 51, col. 4, lines 12+ - col. 5, line 2; col. 8, lines 4 - 13; col. 9, lines 37+ - col. 10, line 2. 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”, “transmitting”, etc. step(s) as claimed); and (b) data processing (e.g., “encrypting ….. to generate”, “decrypting ….. to identify”, “comparing”, “debiting”, “crediting”, etc. step(s) as claimed) 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). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 2 - 15 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, financial institution computing system claim 16 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as method claims. The component(s) (e.g., “one or more processors”, “memory”) described in independent financial institution computing system claim 16, add nothing of substance to the underlying abstract idea. At best, the product(s) (financial institution computing system) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 17 - 20 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
(4)Applicant argues preemption or that there is not a monopoly on the alleged ‘judicial exception’.
With regard to preemption, the issue comes down to whether the claim is directed to an abstract idea and does it fail the Mayo/Alice step one and step two analysis.
In the instant case, the claims are directed to the concept of receiving, by the financial institution computing system over the network from a software application executing on the user computing device, a loan request for a loan for the purchase transaction between the user computing device and the merchant computing device;
encrypting, by the financial institution computing system, a plurality of loan terms to generate one or more digital loan term tokens for the plurality of loan terms for the loan request, the one or more digital loan term tokens representing the plurality of loan terms in an encrypted format; transmitting, by the financial institution computing system over the network, the one or more digital loan term tokens to the user computing device that generates a transaction package upon a selection of at least one of the one or more digital loan term tokens, the transaction package being represented via a visual code;
receiving, by the financial institution computing system over the network from the merchant computing device, data obtained by the merchant computing device scanning the visual code representing the transaction package identifying at least one of the one or more digital loan term tokens, the selection made via the software application executing on the user computing device, wherein the transaction package securely represents a method of payment and a payment interval for the purchase transaction between the user computing device and the merchant computing device, the data of the transaction package comprising one or more payment source tokens associated with one or more payment sources for paying at least a portion of the loan; decrypting, by the financial institution computing system, at least one of the one or more digital loan term tokens in the transaction package to identify selected loan data for the loan;
comparing, by the financial institution computing system, at least one of the one or more payment source tokens with corresponding token records in a token database of the financial institution computing system to identify one or more payment sources for at least the portion of the loan; debiting, by the financial institution computing system, at least one of the one or more payment sources for the portion of the loan based on the selected loan data; and responsive to debiting at least one of the one or more payment sources for the portion of the loan, crediting, by the financial institution computing system over the network, an account of a merchant associated with the merchant computing device according to the loan which is similar to other (e.g., certain methods of organizing human activity, mental processes) found to be abstract ideas.
The fact that the claims do not preempt all ways of receiving, by the financial institution computing system over the network from a software application executing on the user computing device, a loan request for a loan for the purchase transaction between the user computing device and the merchant computing device; encrypting, by the financial institution computing system, a plurality of loan terms to generate one or more digital loan term tokens for the plurality of loan terms for the loan request, the one or more digital loan term tokens representing the plurality of loan terms in an encrypted format;
transmitting, by the financial institution computing system over the network, the one or more digital loan term tokens to the user computing device that generates a transaction package upon a selection of at least one of the one or more digital loan term tokens, the transaction package being represented via a visual code;
receiving, by the financial institution computing system over the network from the merchant computing device, data obtained by the merchant computing device scanning the visual code representing the transaction package identifying at least one of the one or more digital loan term tokens, the selection made via the software application executing on the user computing device, wherein the transaction package securely represents a method of payment and a payment interval for the purchase transaction between the user computing device and the merchant computing device, the data of the transaction package comprising one or more payment source tokens associated with one or more payment sources for paying at least a portion of the loan; decrypting, by the financial institution computing system, at least one of the one or more digital loan term tokens in the transaction package to identify selected loan data for the loan; comparing, by the financial institution computing system, at least one of the one or more payment source tokens with corresponding token records in a token database of the financial institution computing system to identify one or more payment sources for at least the portion of the loan; debiting, by the financial institution computing system, at least one of the one or more payment sources for the portion of the loan based on the selected loan data; and responsive to debiting at least one of the one or more payment sources for the portion of the loan, crediting, by the financial institution computing system over the network, an account of a merchant associated with the merchant computing device according to the loan in a particular setting does not make them any less abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture, 728 F.3d at 1345.
Therefore, based on the two-part Alice Corp. analysis, there are no meaningful limitations in the claims that transform the exception (i.e., abstract idea) into a patent eligible application.
Conclusion
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
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