DETAILED ACTION
Status of the Claims
1. This action is in response to the application filed on January 30, 2024.
2. The claims were preliminarily amended.
3. Claims 1-28 have been canceled.
4. Claims 29-48 are newly added.
5. Claims 29-48 are currently pending and have been examined.
Notice of Pre-AIA or AIA Status
6. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
7. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 29-48 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 29-48 of U.S. Patent No. 11,928,664, formerly Application 16/874,450. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader than the previously patented claims and are anticipated by the instant claims as seen in exemplary Independent Claim 29 of the instant claim set versus Claim 29 of the previously presented claim set (now Claim 1 of the issued patent) and substantially similarly in Independent Claim 39 of each claim set (now Claim 11 of the issued patent):
Instant Claim 29
US Patent 11,928,664 - Claim 1
Differences
A system for processing a cardless transaction comprising:
A system for processing a cardless transaction at an Automated Teller Machine (ATM), comprising:
Instant claim is broader and does not indicate where the cardless transaction is occurring
one or more memory devices storing instructions; and
one or more memory devices storing instructions; and
None
one or more processors configured to execute the instructions to:
one or more processors configured to execute the instructions to:
None
identify, at a server comprising the one or more processors, each of a mobile device and a transaction device via a scanning, by a user of the mobile device, of an identifier displayed on the transaction device, and based on the identifying, establish a communicative connection between the mobile device, the transaction device, and the server;
identify, at a server comprising the one or more processors, each of a mobile device and an ATM via a scanning by a user of the mobile device of a randomly-generated identifier displayed on the ATM, and based on the identification, establish a communicative connection between the mobile device, the ATM, and the server;
The instant claims are broader than the previously patented claims by reciting a transaction device (encompassing any type of transaction device) instead of an ATM (a specific type of transaction device) and noting that an identifier is displayed versus the previously recited randomly-generated identifier.
receive, at the server, user credentials from the mobile device;
receive, at the server, a list request for accounts associated with the user from the mobile device, the list request including user credentials;
The previously patented claims recited a list request for accounts, where the list request included user credentials
determine, at the server, one or more accounts associated with the user credentials;
determine, at the server, one or more accounts associated with the user credentials;
None
transmit, from the server, account information for each of the one or more accounts associated with the user credentials to the mobile device;
transmit, from the server, account information for each of the one or more accounts associated with the user credentials to the mobile device;
None
receive, at the server, a selected account from the mobile device, the selected account being selected by the user from the one or more accounts associated with the user credentials;
receive, at the server, a selected account from the mobile device, the selected account being selected by the user from the one or more accounts associated with the user credentials transmitted to the mobile device;
The transmission has already occurred in the instant claims
determine, at the server, a substitute value corresponding to the selected account, the substitute value being a first string generated during a registration of the selected account, the substitute value being distinct from the account number of the selected account;
determine, at the server, a substitute value corresponding to the selected account, the substitute value being a first alphanumeric string generated during a registration of the selected account, the substitute value representing an account number of the selected account, the substitute value being distinct from the account number of the selected account;
The previous claims specified that the first string was alphanumeric. The instant claims could encompass any type of string
generate, at the server, a token associated with the user credentials, the token comprising a second string representing the user credentials;
generate, at the server, a dynamic token associated with the user credentials, the dynamic token comprising a second alphanumeric string representing the user credentials;
The instant claims require any token with any type of string, whereas the previous claims required a dynamic token and an alphanumeric string
transmit a transaction request to the transaction device from the server, wherein the account number of the selected account and the user credentials are not communicated to the transaction device, the transaction device being configured to:
- determine the account information of the selected account using the substitute value;
- verify the user credentials using the dynamic token; and
- transmit the account information of the selected account and one or more transaction parameters to a payment network.
transmit a transaction request to the ATM from the server, the transaction request including one or more transaction parameters, the substitute value, and the dynamic token such that the account number of the selected account and the user credentials are not communicated to the ATM;
- determine, at the ATM, the account information of the selected account using the substitute value received in the transaction request;
- verify, at the ATM, the user credentials using the dynamic token received in the transaction request; and
- transmit from the ATM the account information of the selected account and the one or more transaction parameters to a payment network.
The instant claim notes the transmission of a transaction request to any transaction device, as opposed to an ATM in the previous claims. The details of what are in the transaction request have not been claimed in the instant claim set.
The instant claims are broader and are anticipated by the previously issued patent.
Drawings
8. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
- In Figure 2A, the drawing uses reference character 101A which does not appear in the specification.
- In Figure 3C, the drawing uses reference character 300C which does not appear in the specification.
- In Figure 3D, the drawing uses reference character 353 which does not appear in the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation – Broadest Reasonable Interpretation
9. In determining patentability of an invention over the prior art, all claim limitations have been considered and interpreted using the “broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims.” See In re Prater and Wei, 162 USPQ 541, 550 (CCPA 1969); MPEP § 2111. Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. See In re Prater, 162 USPQ 541, 550-51 (CCPA 1969); MPEP § 2111. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 26 USPQ2d 1057 (Fed. Cir. 1993). See also MPEP 2173.05(q) All claim limitations have been considered. Additionally, all words in the claims have been considered in judging the patentability of the claims against the prior art. See MPEP 2143.03.
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
Claim limitations that contain statement(s) such as “if, may, might, can, could”, are treated as containing optional language. As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted.
Claim limitations that contain statement(s) such as “wherein, whereby”, that fail to further define the steps or acts to be performed in method claims or the discrete physical structure required of system claims.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope.
Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009). See MPEP 2111.04, 2143.03. The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Preamble (MPEP 2111.02);
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby” (MPEP 2111.04)
Contingent limitations (MPEP 2111.04)
Printed matter (MPEP 2111.05) and
Functional language associated with a claim term (MPEP 2181)
Examiner notes that during examination, “claims … are to be given their broadest reasonable interpretation consistent with the specification, and … claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” See In re Bond, 15 USPQ 1566, 1568 (Fed. Cir. 1990), citing In re Sneed, 218 USPQ 385, 388 (Fed. Cir. 1983). However, "in examining the specification for proper context, [the examiner] will not at any time import limitations from the specification into the claims". See CollegeNet, Inc. v. ApplyYourself, Inc., 75 USPQ2d 1733, 1738 (Fed. Cir. 2005). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984), citing In re Prater, 162 USPQ 541, 550 (CCPA 1969).
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following language is interpreted as not further limiting the scope of the claimed invention.
The preamble of the instant claim 29 recites "[a] system for processing a cardless transaction comprising:”
The preamble of the instant claim 39 recites “[a] computer-implemented method for processing a cardless transaction, comprising:”
In general, a preamble limits the invention if it recites essential structure or steps, or if it is "necessary to give life, meaning, and vitality" to the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co. 51 USPQ2d 1161 (Fed. Cir. 1999), Catalina Marketing International Inc. v. Coolsavings.com Inc., 62 USPQ2d 1781 (Fed. Cir. 2002). Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or an intended use for the invention, the preamble is not a claim limitation given patentable weight. Rowe v. Dror, 42 USPQ2d 1550 (Fed. Cir. 1997); Catalina Marketing International Inc. v. Coolsavings.com Inc., 62 USPQ2d 1781 (Fed. Cir. 2002); Bell Communications Research, Inc. v. Vitalink Communications Corp., 34 USPQ2d 1816 (Fed. Cir. 1995) If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) See MPEP 2111.02
In the instant case, “for processing a cardless transaction” as recited in the preamble only states a purpose and/or the intended use of the invention and accordingly is not being assigned any patentable weight.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
10. Claims 29-48 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 29 recites the limitation "the dynamic token" in the penultimate limitation. There is insufficient antecedent basis for this limitation in the claim. The previous reference in the claim is to “a token” and there is no further reference to the token being dynamic. Claim 39 has a substantially similar issue which is similarly rejected. Dependent Claims 32-34 and 42-44 also refer to “the token”. For purposes of examination, further references to “the token” will be interpreted as referring to the “a token” in the generate step and not referring to “the dynamic token”. Appropriate correction is required.
Substantially similarly in Claims 29 and 39 (as referenced herein with respect to Claim 29),
recites “determine, at the server, a substitute value corresponding to the selected account, the substitute value being a first string generated during a registration of the selected account, the substitute value representing an account number of the selected account, the substitute value being distinct from the account number of the selected account”. If the substitute value is a first string generated during a registration of the selected account (not claimed in the method or system recited) then how is it being determined at this juncture? Is this intended to be a retrieval step ? Or is there some other step occurring in the claim that is not recited? Clarification and correction is required. Claim 39 recites a substantially similar issue which is similarly rejected.
Dependent claims 30-38 and 40-48 are further rejected as based upon a rejected base claim.
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.
11. Claims 29-48 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
ANALYSIS:
STEP 1:
Does the claimed invention fall within one of the four statutory categories of invention (process, machine, manufacture or composition matter?
Claim 29 recites a system claim. Claim 39 recites a method claim.
STEP 2A:
Prong One: Does the Claim Recite A Judicial Exception (An Abstract Idea, Law of Nature or Natural Phenomenon)? (If Yes, Proceed to Prong Two, If No, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material)
Claim 29 recites the abstract idea of processing a transaction. The idea is described by the following limitations:
identify, via scanning by a user an identifier displayed;
receive user credentials;
determine one or more accounts associated with the user credentials;
transmit account information for each of the one or more accounts associated with the user credentials;
receive a selected account, the selected account being selected by the user from the one or more accounts associated with the user credentials;
determine a substitute value corresponding to the selected account, the substitute value being a first string generated during a registration of the selected account, the substitute value representing an account number of the selected account, the substitute value being distinct from the account number of the selected account;
generate a token associated with the user credentials, the token comprising a second string representing the user credentials; and
transmit a transaction request, wherein the account number of the selected account and the user credentials are not communicated
determine the account information of the selected account using the substitute value;
verify the user credentials using the dynamic token; and
transmit the account information of the selected account and one or more transaction parameters.
Claim 39 recites the abstract idea of processing a transaction. The idea is described by the following limitations:
identifying, via a scanning by a user an identifier displayed;
receiving user credentials;
determining one or more accounts associated with the user credentials;
transmitting account information for each of the one or more accounts associated with the user credentials;
receiving a selected account, the selected account being selected by the user from the one or more accounts associated with the user credentials;
determining, a substitute value corresponding to the selected account, the substitute value being a first string generated during a registration of the selected account, the substitute value representing an account number of the selected account, the substitute value being distinct from the account number of the selected account;
generating a token associated with the user credentials, the token comprising a second string representing the user credentials; and
transmitting a transaction request wherein the account number of the selected account and the user credentials are not communicated
determining the account information of the selected account using the substitute value;
verifying the user credentials using the dynamic token; and
transmitting the account information of the selected account and one or more transaction parameters.
Under a BRI, the claims may involve no more than processing transactions for a user utilizing substituted values that refer to user and payment credentials via systemization recited at a high level.
As a result, the abstract ideas describe certain methods of organizing human activity.
As to certain methods of organizing human activity, the steps involve fundamental economic practices (transaction processing, mitigating risk) and managing personal behavior or relationships (following rules or instructions)
In the case of the instant claims, for example, the claims may reflect no more than a user entering their user credentials into their mobile device, receiving a selection of accounts and selecting an account for which a substitute value was stored and using a token to represent their user credentials to a transaction device, for instance an ATM. (Step 2A – Prong 1: Yes, the claims are abstract)
Prong Two: Does the Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application of the Exception? (If Yes, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material. If No, Proceed to Step 2B)
The claims do not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, are not applying the judicial exception with, or by use of a particular machine, are not effecting a transformation or reduction of a particular article to a different state or thing, and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Claim 29 recites one or more memory devices storing instructions; one or more processors; a server comprising the one or more processors; a mobile device; a transaction device; and a payment network.
Claim 39 recites a server; a mobile device; a transaction device; and a payment network.
In particular, the claims only recite one or more memory devices storing instructions, one or more processors, a server comprising the one or more processors, a mobile device, a transaction device, and a payment network which are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, Claims 29 and 39 are directed to an abstract idea without a practical application. (Step 2A – Prong 2: No, the additional claimed elements are not integrated into a practical application)
STEP 2B: If there is an exception, determine if the claim as a whole recites significantly more than the judicial exception itself.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); ii) performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."); iii) electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); iv) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; v) electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and vi) a web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015). (MPEP §2106.05(d)(II))
This listing is not meant to imply that all computer functions are well‐understood, routine, conventional activities, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible. Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). On the other hand, courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic. (MPEP §2106.05(d)(II) – emphasis added)
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016); shuffling and dealing a standard deck of cards, In re Smith, 815 F.3d 816, 819, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014); identifying undeliverable mail items, decoding data on those mail items, and creating output data, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017); presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015) (MPEP 2106.05(d))
Here, the steps are receiving or transmitting data over a network; storing and retrieving information in memory and electronically scanning or extracting data– all of which have been recognized by the courts as well-understood, routine and conventional functions.
The claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry.
For the next step of the analysis, it must be determined whether the limitations present in the claims represent a patent-eligible application of the abstract idea. A claim directed to a judicial exception must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself.
For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of “well-understood, routine, [and] conventional activities previously known to the industry.” Further, “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention.”
Applicant’s specification discloses the following:
“Mobile device 101 represents a portable device usable by a user for communication purposes. Mobile device 101 may be implemented as a cellular phone, smartphone, wearable computer, personal digital assistant (PDA), personal media player (PMP), or the like. Mobile device 101 may comprise, for example, a touchscreen display, a non-touchscreen display, a keyboard, a pointing device, or other input device. Mobile device 101 may communicate with network 105 using a wireless network, a mobile network, a satellite network, or the like. Mobile device 101 can communicate with other devices, such as credential processor 107, credential issue 108, or transaction device 103, over network 105.” (See Applicant Spec para 29)
“Mobile device 101 may comprise storage for software that, when executed, causes mobile device 101 to send and/or receive information from devices such as transaction device 103. The software may be implemented in a variety of ways. In one example embodiment, the software may be operable to send and/or receive information from other devices using wireless protocols. For example, the software can be configured to enable mobile device 101 to send and/or receive information over a Bluetooth connection, over a wireless network connection (e.g., 802.11 a/b/g/n), using Near-Field Communication (NFC), or other standard or proprietary communication protocol. The software may also be configured to enable the receipt of information visually. For example, mobile device 101 may have camera connected to it or scanner functionality, and may capture information encoded in an image or a visual symbol displayed on transaction device 103 (such as a barcode).” (See Applicant Spec para 30)
“A database connected to credential processor 107 stores a substitute value associated with the user credentials. The substitute value may take any form, for example, alphanumeric, alphabetic, numeric, text, hash-based, or binary. In some embodiments, the substitute value may be formed such that transaction device 103 recognizes it as associated with a particular network (such as payment network 113). A substitute value corresponding to a user’s account is distinct from the actual account credentials of the account.” (See Applicant Spec para 41)
“Fig. 4 illustrates example computer system 400 for implementing the disclosed embodiments. Each component depicted in these figures (e.g., mobile device 101, transaction device 103, credential processor 107, credential issue 108, domestic bank 111, payment network 113, and receiver 115) may be implemented as illustrated in computer system 400. In some embodiments, the components in Fig. 4 may be duplicated, substituted, or omitted. In some embodiments, system 400 can be implemented, as appropriate, as a cellular phone, a mobile device, a POS (point-of-sale) device, a transaction device, an ATM, a cash-dispensing, pre-paid card loading or reload, check cashing or deposit, or other value-dispensing device, a server, a wireless device, or any other system that includes at least some of the components of Fig. 4. Each of the components in Fig. 4 can be connected to one another using, for example a wired interconnection system such as a bus.” (See Applicant Spec para 97)
Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions appear to be implemented using conventional computer systemization.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claims do not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The independent claims 29 and 39 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent Claims 30-38 and 40-48 further define the abstract idea that is presented in the respective independent Claims 29 and 39 and are further grouped as certain methods of organizing human activity and are abstract for the same reasons and basis as presented above. No additional hardware components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generic systemization as presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Therefore, the dependent claims are also directed to an abstract idea .
Thus, Claims 29-48 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Relevant Prior Art of Record Not Currently Being Applied
A prior art search was conducted, however did not result in a prior art rejection at this time. The following references are considered pertinent to Applicant’s invention.
Laracey (US PG Pub. 2012/0160912) – Embodiments of the invention relate to systems, methods, processes, computer program code, and means for using mobile devices to conduct transactions with ATM devices or other cash dispensing devices. (See Laracey para 11) In some embodiments, a mobile device configured using features of the present invention may be capable of initiating ATM transactions, including cash withdrawals or the like. (See Laracey para 11)
Kobres et al. (US PG Pub. 2013/0124411) (“Kobres”) – discloses his invention as to techniques for automated transactions. (See Kobres Abstract) A customer pre-stages a financial transaction with a financial service and subsequently visits an ATM and automatically acquires a code from the ATM that is then sent to a mobile transaction service for verification and to identify the staged financial transaction. (See Kobres Abstract) The ATM interacts with the customer via the mobile device and interacts with the financial service to complete the transaction for the customer at the ATM. (See Kobres Abstract)
Varadarajan (US PG Pub. 2011/0238573) – discloses a method and system for conducting automatic teller machine (ATM) transactions without the use of an ATM card, using a mobile user device. (See Varadarajan Abstract) The mobile user device communicates with an ATM, a provider interface or a network and the ATM communicates with the mobile user device through a contact or contactless means, which may include communication through any wireless connection such as RFID, Bluetooth, or other near field communication means, or through a USB port or other means of contact. (See Varadarajan Abstract) A mobile user device may provide transaction information or authentication information to an ATM or to an authentication system in communication with an ATM. (See Varadarajan Abstract) The transaction may be associated with the user’s ATM account or another account. (See Varadarajan Abstract) The mobile device user device may generate a dynamic value which may be used as a password, an authentication value, an account identifier or a transaction identifier. (See Varadarajan Abstract)
Labrou et al. (US PG Pub. 2006/0206709) (“Labrou”) – discloses a method and an apparatus performing the method that is provided by authenticating a mobile device communicably connectable to a wireless network by an authentication parameter from a secure transaction server (STS), as a mobile device authenticator; providing an STS correlation between a personal identification entry (PIE) and the mobile device authenticator; and inputting, by a user, the PIE and a provider action, to the mobile device authenticator to transmit a transformed secure user authenticable authorization request to the STS over the wireless network to authorize an action with a provider. (See Labrou Abstract)
Conclusion
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/AMBREEN A. ALLADIN/Primary Examiner, Art Unit 3691 April 1, 2026
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