DETAILED ACTION
The present application, filed on 1/16/2024 is being examined under the AIA first inventor to file provisions.
The following is a FINAL Office Action in response to Applicant’s amendments filed on 11/14/2025.
a. Claims 1, 3-26 are amended
b. Claims 2 are cancelled
Overall, Claims 1, 3-26 are pending and have been considered below.
Claim Rejections - 35 USC § 101
35 USC 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, 3-26 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1, 3-19 are directed to a computer implemented method, and claims 20-26 are directed to a computer implemented method.
Thus, on its face, each independent claim and the associated dependent claims are directed to a statutory category of invention.
[INDEPENDENT CLAIMS]
Per Step 2A.1. Independent claim 1 is rejected under 35 USC 101 because the independent claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The limitations of the independent claim 1 recite an abstract idea, shown in bold below:
[A] A method for processing, on behalf of a merchant, a payment from a consumer for a transaction, wherein the payment is in the form of a digital currency
[B] setting a first payment threshold condition, wherein the first payment threshold conditionis a first underpayment threshold condition;
[C] receiving, through a secured API interface, from the merchant a request to process the payment, the request including an invoiced amount;
[D] detecting in real time a transaction entry representing the payment from the consumer on a distributed ledger, wherein the transaction entry includes an amount of the digital currency from the consumer;
[E] performing a payment differential detection process to determine a difference between the invoiced amount and the amount of the digital currency;
[F] determining whether the difference satisfies the first payment threshold condition; and
[G] automatically causing the transaction to be confirmed, through the secure API interface, to the merchant in response to the difference satisfying the first payment threshold condition.
Independent claim 1 recites: monitoring for a transaction ([D]); detect a payment differential ([E]); check if the payment differential satisfies a preset condition ([F]); confirm payment if the condition is satisfied ([G]), which, based on the claim language and in view of the application disclosure, represents a process aimed at: “making digital currency payments for e-commerce transactions based on predetermined conditions”.
This is a combination that, under its broadest reasonable interpretation, covers agreements in the form of sales activities or behaviors, business relationships (e-commerce), which falls under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is reasonable to conclude that independent claim 1 recites an abstract idea that corresponds to a judicial exception.
[INDEPENDENT CLAIMS – QUALIFIERS]
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)).
For example, the qualifiers “wherein the payment is in the form of a digital currency”, “wherein the first payment threshold condition is a first underpayment threshold condition “, “wherein the transaction entry includes an amount of the digital currency from the consumer;” as applied to transaction parameters, are nothing more than (a) descriptive limitations of claim elements, such as describing the nature, structure and/or content of other claim elements, or (b) general links to the computing environment, which amount to instructions to “apply it,” or equivalent (MPEP 2106.05(f)).
These qualifiers of the independent claims do not preclude from carrying out the identified abstract idea “making digital currency payments for e-commerce transactions based on predetermined conditions”, and do not serve to integrate the identified abstract idea into a practical application.
[INDEPENDENT CLAIMS – ADDITIONAL STEPS]
The additional steps in the independent claims, shown not bolded above, recite: setting payment conditions ([B), receiving a request to make a payment ([C]). When considered individually, they amount to nothing more than receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(f)(2)).
Therefore, the additional steps of independent claim 1 do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Independent claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1 are deemed ineligible.
Independent claim 20 is rejected under 35 USC 101 because the independent claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The limitations of the independent claim 20 recite an abstract idea, shown in bold below:
[A] A method for processing, on behalf of a merchant, a payment from a consumer for a transaction, wherein the payment is in the form of a digital currency:
[B] setting a payment delay threshold condition;
[C] receiving, through the API interface, from the merchant a request to process the payment, the request including an invoiced amount;
[D] detecting in real time a transaction entry representing the payment from the consumer on a distributed ledger, wherein the transaction entry includes an amount of the digital currency from the consumer;
[E] performing a payment timing determination process to determine whether the transaction entry meets the payment delay threshold condition;
[F] automatically causing the transaction to be confirmed, through the secure API interface, to the merchant in response to the transaction entry meeting the payment delay threshold condition.
Independent claim 20 recites: monitoring for a transaction ([D]); determine payment timing parameters ([E]); confirm payment if the condition is satisfied ([F]), which, based on the claim language and in view of the application disclosure, represents a process aimed at: “making digital currency payments for e-commerce transactions based on predetermined conditions”.
This is a combination that, under its broadest reasonable interpretation, covers agreements in the form of sales activities or behaviors, business relationships (e-commerce), which falls under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is reasonable to conclude that independent claim 1 recites an abstract idea that corresponds to a judicial exception.
[INDEPENDENT CLAIMS – QUALIFIERS]
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)).
For example, the qualifiers “wherein the payment is in the form of a digital currency”, “wherein the transaction entry includes an amount of the digital currency from the consumer;” as applied to transaction parameters, are nothing more than (a) descriptive limitations of claim elements, such as describing the nature, structure and/or content of other claim elements, or (b) general links to the computing environment, which amount to instructions to “apply it,” or equivalent (MPEP 2106.05(f)).
These qualifiers of the independent claims do not preclude from carrying out the identified abstract idea “making digital currency payments for e-commerce transactions based on predetermined conditions”, and do not serve to integrate the identified abstract idea into a practical application.
[INDEPENDENT CLAIMS – ADDITIONAL STEPS]
The additional steps in the independent claims, shown not bolded above, recite: setting a time window for the payment operation ([B]), receiving a payment request over a payment amount ([C]). When considered individually, they amount to nothing more than receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(f)(2)).
Therefore, the additional steps of independent claim 1 do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Independent claim 20x does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 20 are deemed ineligible.
[DEPENDENT CLAIMS]
Dependent claim 5 recites:
[A] confirming the transaction for the amount of the digital currency from the consumer.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 5 is deemed ineligible.
Dependent claim 6 recites:
[A] setting a second underpayment threshold condition;
[B] determining, where the difference does not satisfy the first underpayment threshold condition, whether the underage satisfies the second underpayment threshold condition; and
[C] causing the transaction to be confirmed to the merchant in response to the underage satisfying the second underpayment threshold condition.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are similar in scope to the limitations of the independent claim, which have been considered as part of the Step 2A1 examination and found to be directed to an abstract idea, as defined by MPEP 2106.04-07.
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 6 is deemed ineligible.
Dependent claim 7 recites:
[A] confirming the transaction for the invoiced amount.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are similar in scope to the limitations of the independent claim, which have been considered as part of the Step 2A1 examination and found to be directed to an abstract idea, as defined by MPEP 2106.04-07.
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 7 is deemed ineligible.
Dependent claim 8 recites:
[A] generating a refund payment to the consumer for the amount of the digital currency in response to the difference not satisfying the first payment threshold condition.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 8 is deemed ineligible.
Dependent claim 9 recites:
[A] generating, where the difference does not satisfy the first payment threshold condition, a notification of an amount of the difference;
[B] prompting the merchant for a confirmation to accept the amount of the difference; and
[C] causing the transaction to be confirmed to the merchant in response to the confirmation to accept the amount of the difference.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are similar in scope to the limitations of the independent claim, which have been considered as part of the Step 2A1 examination and found to be directed to an abstract idea, as defined by MPEP 2106.04-07.
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 9 is deemed ineligible.
Dependent claim 11 recites:
[A] setting a payment delay threshold condition;
[B] determining whether a timing of the transaction entry satisfies the payment delay threshold condition
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 11 is deemed ineligible.
Dependent claim 13 recites:
[A] confirming the transaction for the invoiced amount; and
[B] generating a refund payment to the consumer for the overage amount.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 13 is deemed ineligible.
Dependent claim 14 recites:
[A] confirming the transaction for the amount of the digital currency from the consumer including the overage.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are similar in scope to the limitations of the independent claim, which have been considered as part of the Step 2A1 examination and found to be directed to an abstract idea, as defined by MPEP 2106.04-07.
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 14 is deemed ineligible.
Dependent claim 16 recites:
[A] retrieving an exchange rate between the digital currency and a fiat currency in response to receiving from the merchant a request to process the payment;
[B] retrieving an updated exchange rate between the digital currency and the fiat currency after a delay;
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(d) II)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 16 is deemed ineligible.
Dependent claim 17 recites:
[A] generating, where the difference does not satisfy the first underpayment threshold condition, a modified transaction for the consumer.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 17 is deemed ineligible.
Dependent claim 21 recites:
[A] retrieving an exchange rate between the digital currency and a fiat currency in response to receiving from the merchant a request to process the payment,
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(d) II)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 21 is deemed ineligible.
Dependent claim 22 recites:
[A] setting a payment amount threshold condition;
[B] performing a payment differential detection process to determine a difference between the invoiced amount and the amount of the digital currency;
[C] determining whether the difference between the invoiced amount and the amount of the digital currency meets the payment amount threshold condition;
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are similar in scope to the limitations of the independent claim, which have been considered as part of the Step 2A1 examination and found to be directed to an abstract idea, as defined by MPEP 2106.04-07.
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 22 is deemed ineligible.
Dependent claim 23 recites:
[A] setting a payment amount threshold condition; and
[B] performing, in response to the transaction entry not meeting the payment delay threshold condition, a payment differential detection process to determine a difference between the invoiced amount and the amount of the digital currency;
[C] determining whether the difference between the invoiced amount and the amount of the digital currency meets the payment amount threshold condition; and
[D] causing the transaction to be confirmed to the merchant in response to the difference between the invoiced amount and the amount of the digital currency meeting the payment amount threshold condition.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are similar in scope to the limitations of the independent claim, which have been considered as part of the Step 2A1 examination and found to be directed to an abstract idea, as defined by MPEP 2106.04-07.
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 23 is deemed ineligible.
Dependent claim 24 recites:
[A] retrieving an updated exchange rate between the digital currency and the fiat currency
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(d) II)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 24 is deemed ineligible.
Dependent claim 25 recites:
[A] the merchant sets the payment delay threshold condition.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 25 is deemed ineligible.
Dependent claim 26 recites:
[A] the payment processor sets the payment delay threshold condition.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making digital currency payments for e-commerce transactions based on predetermined conditions”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”).
Therefore, dependent claim 26 is deemed ineligible.
Dependent claims 3-4, 10, 12, 15, 18-19, 25-26 recite:
wherein the underpayment threshold condition is set according to an amount of underage that the merchant is willing to accept in order to complete the transaction.
wherein the underpayment threshold condition is set according to an amount of underage that the payment processor is willing to accept in order to process the transaction on behalf of the merchant.
wherein the difference is an underage.
wherein the first payment threshold condition is an overpayment threshold condition and where the difference between the invoiced amount and the amount of the digital currency is an overage.
wherein the digital currency is a cryptocurrency, and wherein the distributed ledger is a blockchain.
wherein the modified transaction comprises an additional payment equal to the underage.
wherein the modified transaction comprises a reduced quantity of goods or services for the transaction.
These further elements in the dependent claims do not perform any claimed method steps. They describe the nature, structure and/or content of other claim elements – the first payment threshold condition; the underpayment threshold condition; the difference; the first payment threshold condition; the digital currency; the distributed ledger; the modified transaction, and as such, cannot change the nature of the identified abstract idea (“making digital currency payments for e-commerce transactions based on predetermined conditions”), from a judicial exception into eligible subject matter, because they do not represent significantly more (see MPEP 2106.07). The nature, form or structure of the other claim elements themselves do not practically or significantly alter how the identified abstract idea would be performed and do not provide more than a general link to a technological environment.
Therefore, dependent claims 3-4, 10, 12, 15, 18-19, 25-26 are deemed ineligible.
When the dependent claims are considered as a whole, as an ordered combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements, which form the abstract concept, are set forth in the independent claims. The fact that the computing devices and the dependent claims are facilitating the abstract concept is not enough to confer statutory subject matter eligibility, since their individual and combined significance do not transform the identified abstract concept at the core of the claimed invention into eligible subject matter. Therefore, it is concluded that the dependent claims of the instant application, considered individually, or as a as a whole, as an ordered combination, do not amount to significantly more (see MPEP 2106.07(a)II).
In sum, Claims 1, 3-26 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claims 1, 3-26 are directed to non-statutory subject matter because the subject matter disclosed is software per se. The applicant is advised to implement a particular hardware component such as a computer in the body of the claim language to the claimed system in order to overcome the rejections.
Claims 1, 3-26 recite method directed to purely mental steps. In order for a method to be considered a "process" under §101, a claimed process must either: (1) be tied to another statutory class (such as a particular apparatus) or (2) transform underlying subject matter (such as an article or materials). Diamond v. Diehr, 450 U.S. 175, 184 (1981); Parker v. Flook, 437 U.S. 584, 588 n.9 (1978); Gottschalk v. Benson, 409 U.S. 63, 70 (1972); Cochrane v. Deener, 94 U.S. 780, 787-788 (1876). If neither of these requirements is met by the claim, the method is not a patent eligible process under §101 and is non-statutory subject matter. Thus, to qualify as a statutory process, the claim should positively recite the other statutory class (the thing or product) to which it is tied, for example, by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter that is being transformed, for example, by identifying the material that is being changed to a different state. The applicant is advised to implement a particular apparatus such as a computer in the body of the claim language to perform the claimed method in order to overcome the rejections.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION – The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 3-26 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed (In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989)). Claims 1, 20 are rejected for being amended to recite the acronym API without reciting its meaning along with its first use. Although the meaning of this term is currently known, that meaning can change over time, rendering the claims indefinite.
The remainder of the claims are rejected by virtue of dependency. The reference is provided for the purpose of compact prosecution.
Claim Rejections - 35 USC § 103
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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, if the difference 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 the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-5, 8-26 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al (US 2014/0358756), in view of Mullins et al (US 11,295,359).
Regarding Claim 1: Chiu discloses: A method for processing, on behalf of a merchant, a payment from a consumer for a transaction based on crypto-currency exchange rate discrepancy {see at least [0125] compensating the client for potential losses due to the exchange rate}, wherein the payment is in the form of a digital currency, the method comprising:
setting a first payment threshold condition; {see at least [0115] threshold number based on value (reads on payment threshold condition)}
wherein the first payment threshold condition is a first underpayment threshold condition; {see at least [0092], [0125] compensating the client for potential losses due to the exchange rate (reads on underpayment condition)}
receiving, though a secured API interface {see at least fig4, rc322, [0103] API}, from the merchant a request to process the payment, the request including an invoiced amount; {see at least [0004] request for transaction}
detecting
performing a payment differential detection process to determine a difference between the invoiced amount and the amount of the digital currency; {see at least [0078] compensate for adverse exchange rates; [0113] identified surplus or deficit}
determining whether the difference satisfies the first payment threshold condition; and {see at least [0119] threshold level is satisfied}
automatically causing the transaction to be confirmed, through the secure API interface {see at least fig4, rc322, [0103] API}, to the merchant in response to the difference satisfying the first payment threshold condition. {see at least [0119] wholesale settlement trade executed. Chiu fails to explicitly disclose the conditional claim limitation; however, it is reasonable to assume that one of ordinary skills in the art will realize that the transaction will be executed and confirmed if the condition is satisfied – see MPEP 2123 and MPEP 2144.01}
Chiu does not disclose, however, Mullins discloses:
… wherein the transaction entry includes an amount of the digital currency from the consumer; {see at least (11)/[3:1-22] cryptocurrency payments}
… distributed ledger … {see at least fig1B, rc145, (25)/[6:10-36] blockchain network, distributed ledger}
… real time … {see at least (95)/[27:69-28:19] perform in real time}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Chiu to include the elements of Mullins. One would have been motivated to do so, in order to create more payment options. In the instant case, Chiu evidently discloses making payments. Mullins is merely relied upon to illustrate the functionality of digital currency in the same or similar context. Since both making payments, as well as digital currency are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Chiu, as well as Mullins would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, th