DETAILED ACTION
This is in reference to communication received 16 December 2025. Claims 31 – 40 are pending for examination. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 31 – 40 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.
Independent claim 31, representative of independent claim 21, in part is directed toward a statutory category of invention, the claim appears to be directed toward a judicial exception namely an abstract idea. Claim 31 recites invention directed to process of merchant-user handling an activity of client-user (e.g., checkout initiated by the client-user), performs the settlement of the purchase made by the client-user by providing an invoice or a bill (e.g., amount owed by the client-user at the time of checkout), to the client-user, subsequent to which, client-user authorizes the invoiced-amount to settle their activity which is processed by the merchant. When the payment for the activity settles (e.g., payment was successful), confirmation message is provided to the client-user and the merchant-user, and the invoice is identified as settled.
These limitations describe marketing/sales/advertising activities. A merchant-user generating and presenting of an invoice (e.g., a bill) to the client-user, client-user settling the invoice, indicating record of payment to both, merchant-user and client-user, and marking the transaction as complete which would be the merchant-user (or person) providing, such as a visual presentation of an invoice to the client-user (or a person), processing the payment to satisfy the invoice, and marking the invoice as settled. Causing processing of payment at the time of checkout and providing the confirmation of the payment to the client-user. Causing presentation of the valuation would be the sales team (or person) providing, such settlement of account for the purchase made by a customer at the time of checkout at a POS in merchant’s location.
Next, the aforementioned claims recite additional functional elements that are associated with the judicial exception, including: a first tokenized integrated session is established between platform and the entity management system and user-device to enable transfer of data (e.g., item data, customer data, device-id of the customer (e.g., second-party to the transaction) enabling them to exchange data. After the integrated first session is established (e.g., enablement of data transferring and receiving), an invoice related to the customer purchase is presented to the customer, and after customer initiates the payment for the invoice, payment is processed and the transaction is completed, which, pursuant to MPEP 2106.04, is aptly categorized as a method of organizing human activity (i.e. sales activity).
Represented claim 21, which do recite statutory categories (machine, product of manufacture, for example), the same analysis as above applies to these claims since the method steps are the same. However, the judicial exception is not integrated into a practical application. These claims add the generic computer components (additional elements) of a system comprising user-device, checkout-register communicatively coupled to a platform (claim 21).
The processor, platform, entity-management-system and user-device are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of the processor, memory, and non-transitory machine-readable medium amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
When taken as an ordered combination, nothing is added that is not already present when the elements are taken individually. When viewed as a whole, the marketing activities amount to instructions applied using generic computer components.
As for dependent claims 22 – 30 and 32 – 40, these claims recite limitations that further define the same abstract idea. These claims do not recite any additional technical elements, and simply disclose additional limitations that further limit the abstract idea with details regarding using a link like an URL, QR-code, presentation of information comprising machine-readable code, sound, image or bitmap which is identified by the link, enabling interconnected devices to communication with each other over tokenized-integration-session, define type of transaction related data, enabling user to make purchase using their device, initiate payment for the purchase, and handling of the closing of the transaction. Thus, the dependent claims merely provide additional non-structural (and predominantly non-functional) details that fail to meaningfully limit the claims or the abstract idea(s).
Therefore, claims 21 – 40 are not drawn to eligible subject matter, as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
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 differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 21 – 30 are rejected under 35 U.S.C. 103 as being unpatentable over Hammad et al. US Patent Application Publication 2019/0034921 in view of Susan M. Pandy et al. published article “Adapting to Mobile Wallets: The Consumer Experience” hereinafter to as Pandy and Packtpub published article “What is a multi layered software architecture” hereinafter referred to as Packtpub.
Regarding claim 31 and representative claims 21, Hammad teaches snap mobile payment system and method for enhancing accessibility for electronic transactions, comprising:
a connected device of a user, the connected device providing one or more accessibility features [Hammad, Fig. 4C, 4A and associated disclosure];
a checkout register executing an entity management system (Hammad, at a merchant store, the user may scan barcodes for a number of products, e.g., iota, at a point-of-sale ("POS") terminal in the store, e.g., 103a, and then indicate that the user wishes to checkout the scanned items) [Hammad, 0021, Fig. 4C, 4A and associated disclosure];
a platform remote from the connected device and the checkout register (Hammad, a user in a merchant store may scan a product barcode of the product via a barcode scanner at a point-of-sale terminal.) [Hammad, 0046, Fig. 4A - 4D, 4A and associated disclosure];
wherein the checkout register is configured to:
ring up a plurality of items to determine a final total owed by the user (Hammad, a user, e.g., l0la-b, may wish to purchase products at a merchant store, e.g., 103a, or at a merchant website, e.g., 103b. For example, at a merchant store, the user may scan barcodes for a number of products, e.g., 102a, at a point-of-sale ("POS") terminal in the store, e.g., 103a, and then indicate that the user wishes to checkout the scanned items Hammad further recites, The price and total payable information may also be displayed, along with a QR code 815k that captures the information necessary to effect a snap mobile purchase transaction.) [Hammad, 0021, 0090];
receive an identifier associated with the connected device (Hammad, the QR code and messages sent to/from the QR-code capturing device may include the source ID (e.g., identifier of the device generating the QR code), session ID, merchant ID, item ID (e.g., model number), the charge amount, and/or transacting device ID (e.g., the user's smartphone device).) [Hammad, 0059; also see software code in para 0046]; and
request a first session with the platform in association with the identifier (Hammad, The client may generate a checkout request, e.g., 412, and provide the checkout request, e.g., 413, to the merchant server; In addition, Hammad recites the POS terminal may communicate the information required for submitting a purchase transaction request to a payment network to user device via Bluetooth™, Wi-Fi, SMS, text message, electronic mail, and/or other communication methods) [Hammad, 0046, 0022];
in response to an entity management system of a checkout register associated with a first party to an action detecting a second party is transacting with the entity management system (Hammad, The client may generate a checkout request, e.g., 412, and provide the checkout request, e.g., 413, to the merchant server) [Hammad, 0046]:
receiving at a platform and from the entity management system, a request to establish a first session with the entity management system (Hammad, The merchant server may extract the product data, as well as the client data from the checkout request. In some implementations, the merchant server may query, e.g., 414, a merchant database, e.g., 404, to obtain product data, e.g., 415, such as product pricing, sales tax, offers, discounts, rewards, and/or other information to process the purchase transaction) [Hammad, 0047];
Hammad does not explicitly teach platform establishing sessions between the platform and the entity management system to enable transfer of data. Pandy teaches The U.S. mobile payments environment is expanding, largely driven by the evolution of mobile and digital wallets. Pandy further teaches before making the first mobile payment, the consumer enrolls his payment credentials in a Pay wallet [Pandy, page 6]. In addition, Pandy teaches when a consume makes a transaction with a merchant, a secure session (e.g. Tokenized session) is established between the merchant and a financial institution.
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[Pandy, page 8]
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Hammad by adopting teachings of Pandy to leverage Host Card Emulation (HCE) technology to reduce fraud risk and enhance security.
Hammad in view of Pandy teaches system and method further comprising:
establishing the first session between the platform and the entity management system to enable transfer of data; identifying a connected device of the second party to the action; and establishing an integrated session among the platform, the management system, and the connected device;
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[Pandy, page 8];
Hammad in view of Pandy does not explicitly teach implementing layered application architecture. However, Packtpub teaches Multi layered software architecture is one of the most popular architectural patterns today. It moderates the increasing complexity of modern applications. It also makes it easier to work in a more agile manner. Sometimes called tiered architecture, or n-tier architecture, a multi layered software architecture consists of various layers, each of which corresponds to a different service or integration. Because each layer is separate, making changes to each layer is easier than having to tackle the entire architecture [Packtpub, page 1, 2].
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Hammad in view of Pandy by adopting teachings of Packtpub to implement agile software development using layered architecture to make it easier to make changes to individual layer performing a specific service.
Hammad in view of Pandy and Packtpub teaches system and method further comprising:
executing integration logic in an application and microservice layer of the platform wherein the integration logic instructs the application and microservice layer to provide, via the platform, one or more features to the connected device (as responded to above) [Packtpub, page 1, 2];
tokenizing the integrated session by using one or more controllers (Pandy, Apple Pay transformed the mobile wallet landscape by combining enhanced security features, including a secure element (SE) chip to safely store payment credentials, fingerprints for user authentication, and payment tokenization, incorporated into an NFC-enabled mobile phone) [Pandy, page 4] to perform:
controlling an application performance management tool or an authentication protocol to tokenize the integrated session, thereby resulting in a secure tokenized integrated session; assign the tokenized integrated session to the connected device as a unique session to exchange secure communication and data transfer between the platform, the entity management system, and the connected device;
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[Pandy, page 8]; and
subsequent to establishing the secure tokenized integrated session:
receiving, from the connected device through the secure tokenized integrated session, a request for access to the functionalities and sub-systems of the entity management systems using the one or more features, the functionalities and sub-systems depending on a type of the entity management system (Hammad, the user may provide user input, e.g., checkout input 411, into the client indicating the user's desire to purchase the product. For example, a user in a merchant store may scan a product barcode of the product via a barcode scanner at a point-of-sale terminal. As another example, the user may select a product from a webpage catalog on the merchant's website, and add the product to a virtual shopping cart on the merchant's website. The user may then indicate the user's desire to checkout the items in the (virtual) shopping cart.) [Hammad. 0046];
receiving, from the connected device, an interaction request based on the access of the functionalities and sub-systems of the entity management system (Hammad, as responded to above) [Hammad. 0046];
providing, by the platform to the connected device via the secure tokenized integrated session, a presentment layer including at least an invoice feature configured to display (1) a current state of an invoice associated with the action and (2) a feature providing a plurality of selectable options to pay the invoice (Hammad, in response to obtaining the product data, the merchant server may generate, e.g., 416a, a QR pay code, and/or secure display element according to the security settings of the user ( see, e.g., 358). The merchant server may provide the QR code to the client, so that the client may display the QR code, and the user may capture the QR code using the user's device to obtain merchant and/or product data for generating a purchase transaction processing request.) [Hammad, 0048];
receiving, at a checkout register from the connected device via the secure tokenized integrated session, a selection of an option from the plurality of selectable options, the option being an option to pay the invoice and complete the action (Hammad, the user may provide payment input into the user device, e.g., 419. In various implementations, the user input may include, but not be limited to: a single tap (e.g., a one-tap mobile app purchasing embodiment) of a touchscreen interface, keyboard entry, card swipe, activating a RFID/NFC enabled hardware device ( e.g., electronic card having multiple accounts, smartphone, tablet, etc.) within the user device, mouse clicks, depressing buttons on a joystick/game console, voice commands, single/multi-touch gestures on a touch-sensitive interface, touching user interface elements on a touch-sensitive display, and/or the like.) [Hammad, 0056];
providing an amount of the invoice to a processor via a gateway for authorization (Pandy, To make a Pay wallet purchase at a retail POS, the consumer holds the phone over the NFC-enabled terminal to automatically wake up the wallet (Apple Pay or Android Pay) and initiate the payment process. He then authenticates using a fingerprint or PIN/passcode which allows the payment information to be sent from the phone to the POS terminal.) [Pandy, page 8];
receiving a confirmation of the authorization from the processor via the gateway; providing the confirmation of the authorization to one or more of the management system and the connected device (Hammad, Upon completion of the purchase transaction, the payment network may provide a purchase receipt, e.g., 107 directly to the user device 106, the POS terminal in the store and/or the secure display (for the secure online shopping scenario) as confirmation of completion of transaction processing.) [Hammad, 0023]; and
after completion of the action, closing one or more of the first session and the secure tokenized integrated session, wherein completion of the action occurs based at least in part on the selected option (Hammad, obtaining a notification that the point-of-sale terminal has acquired an image of the payment code image; and terminating display of the payment code image via the display operatively connected to the user device;) [Hammad. 0952-0953].
Regarding claim 22, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the checkout register is a checkout register of a grocery store (Hammad, a user may buy grocery and prescription items from a retailer Acme Supermarket) [Hammad, 0114].
Regarding claim 23, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the checkout register is configured for a first language and the accessibility feature is a configuration for a second language (Hammad, 0149].
Regarding claim 24, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein to provide the presentment layer to the connected device for display to the user includes to: provide, in the form of one or more of a machine-readable code, sound, image or bitmap, to the entity management system for providing to the connected device
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[Hammad, Fig. 1A and associated disclosure].
Regarding claim 25, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method,
wherein to provide the presentment layer to the connected device for display to the user includes to provide a link to the presentment layer (Hammad, The website may include a user interface element that the user may activate to initiate shopping checkout and payment. Upon the user activating the user element, _the client displaying the online shopping website may provide a message to a server of the merchant to initiate secure purchase transaction processing) [Hammad, 0034]; and
wherein to provide the presentment layer to the user includes to automatically display the presentment layer to the user through a user interface of the connected device having the one or more accessibility features upon the receipt of the link (Hammad, Upon the user launching the virtual wallet mobile app on the user device, the user device and the client may establish a secure connection with each other (e.g., via Bluetooth™, Wi-Fi, cellular, etc.) In some implementations, the client and user device may be preconfigured to rapidly establish the secure communication channel with each other) [Hammad, 0034].
Regarding claim 26, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein to provide the presentment layer includes displaying the presentiment layer via a hosted payments page (Hammad, the user device may utilize the product and merchant information extracted from the QR code, and financial payment information from the virtual wallet, to create a purchase transaction request, and submit the request to a payment network (e.g., credit card processing network)) [Hammad, 0021].
Regarding claim 27, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the selected mobile checkout option is a mobile wallet of the connected device (Hammad, The user device may utilize the information extracted from the QR code, along with information on a virtual wallet tied to the user device to initiate a purchase transaction) [Hammad, 0021].
Regarding claim 28, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the identifier is a phone number (Hammad, the QR code and messages sent to/from the QR-code capturing device may include the source ID (e.g., identifier of the device generating the QR code), session ID, merchant ID, item ID (e.g., model number), the charge amount, and/or transacting device ID (e.g., the user's smartphone device)) [Hammad, 0059].
Regarding claim 29, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the one or more accessibility features includes visual accessibility feature
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[Hammad, Fig. 1A and associated disclosure].
Regarding claim 30, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the one or accessibility features includes a voice accessibility feature (Hammad, A user may also use a voice activated shopping mode by saying the name or description of an item to be searched and/or added to the cart into a microphone 813) [Hammad, 0090].
Regarding claim 32, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein providing the presentment layer includes:
providing, by the platform to the connected device via the integrated session, a link to the presentment layer (Hammad, The website may include a user interface element that the user may activate to initiate shopping checkout and payment. Upon the user activating the user element, _the client displaying the online shopping website may provide a message to a server of the merchant to initiate secure purchase transaction processing) [Hammad, 0034].
Regarding claim 33, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the presentment layer provided by the platform to the connected device as a link is: automatically displayed through a user interface of the connected device upon the receipt of the link at the connected device; or displayed through the user interface in response to a selection or a reading of the link (Hammad, The merchant server may provide the QR pay code to the client, e.g., 506. The client may obtain the QR pay code, and display the QR code, e.g., 507 on a display screen associated with the client device.) [Hammad, 0077].
Regarding claim 34, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the link is one or more of an instruction or an address that passes control and parameters, including parameters associated with the management system, to the connected device (Hammad, the user may utilize a user device, e.g., 509, to capture the QR code presented by the client device for payment processing. The client device may decode the QR code to extract the information embedded in the QR code.) [Hammad, 0077].
Regarding claim 35, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the providing the link includes one or more of:
providing, as the link, a hyperlink in an electronic communication that is transmitted to the connected device using an identifier of the connected device received as part of the request, the electronic communication including one or more of an electronic mail message, a text message, and an application message (Hammad, The website may include a user interface element that the user may activate to initiate shopping checkout and payment. Upon the user activating the user element, the client displaying the online shopping website may provide a message to a server of the merchant to initiate secure purchase transaction processing) [Hammad, 0034, also see 0077];
generating, as the link, one of a machine readable code, sound, image or bitmap for provision to the management system for audio or visual output to the connected device, wherein the outputted machine readable code, sound, image or bitmap is read by the connected device, and providing, as the link, a wireless communication from a device executing the management system to the connected device (Hammad, the user may utilize a user device, e.g., 509, to capture the QR code presented by the client device for payment processing. The client device may decode the QR code to extract the information embedded in the QR code. [Hammad, 0077, Fig. 1A and associated disclosure].
Regarding claim 36, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the presentment layer is customized according to an action type of the action, wherein the action type is selected from a group consisting of: a transfer of a structured data object, a sale of an item or a service, a donation, an order of an item or a service, a pre-order of an item or a service, a return of an item, post-purchase funding, a provision of a reward, and a provision of a discount; and wherein the action type is a one-time action, an ongoing action, or a recurring action (Hammad, in response to obtaining the product data, the merchant server may generate, e.g., 416a, a QR pay code, and/or secure display element according to the security settings of the user (see, e.g., 358). The merchant server may provide the QR code to the client, so that the client may display the QR code, and the user may capture the QR code using the user's device to obtain merchant and/or product data for generating a purchase transaction processing request) [Hammad, 0048, fig. 4A and associated disclosure].
Regarding claim 37, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the action type is an ongoing action associated with a sale of one or more items, and the plurality of features include one or more of:
a feature to view a plurality of items available for sale and information associated with the plurality of items, a feature to add one or more of the plurality of items to the action, a feature to request assistance, a feature to view a current state of an invoice associated with the action at one or more of an end of the action and upon each addition of an item from the plurality of items to the action, and a feature to pay the invoice, wherein the feature to pay the invoice includes one or more sub-features including sub-features to input one or more of a tip, a rating, and a dispute, and sub-features to present loyalty offers or points (Hammad, With reference to FIG. lA, in some implementations, a user, e.g., 101a-b, may wish to purchase products at a merchant store, e.g., 103a, or at a merchant website, e.g., 103b. For example, at a merchant store, the user may scan barcodes for a number of products, e.g., 102a, at a point-of-sale ("POS") terminal in the store, e.g., 103a, and then indicate that the user wishes to checkout the scanned items) [Hammad, 0021].
Regarding claim 38, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the method further comprises receiving, at the platform from the connected device, a message associated with the action; and wherein at least one of the plurality of features is a payment feature, and the message is received from the connected device in response to the connected device receiving input associated with the payment feature through a user interface of the connected device (Hammad, the user device may utilize the product and merchant information extracted from the QR code, and financial payment information from the virtual wallet, to create a purchase transaction request, and submit the request to a payment network (e.g., credit card processing network)) [Hammad, 0021].
Regarding claim 39, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein the presentment layer provided by the platform to the connected device enables integration of one or more accessibility features of the connected device within the presentment layer displayed through a user interface of the connected device (Hammad, 0034, Fig. 1A and associated disclosure].
Regarding claim 40, as combined and under the same rationale as above, Hammad in view of Pandy and Packtpub teaches system and method, wherein identifying the connected device of the second party to the action includes one of:
identifying the connected device based on an identifier of the connected device included in the request (Hammad, the QR code and messages sent to/from the QR-code capturing device may include the source ID (e.g., identifier of the device generating the QR code), session ID, merchant ID, item ID (e.g., model number), the charge amount, and/or transacting device ID (e.g., the user's smartphone device)) [Hammad, 0059]; or
generating a link and transmitting the link to the management system for provision to the connected device, wherein the link is one of:
a machine readable code, sound, image or bitmap transmitted to the management system for audible or visual output to the connected device, wherein the connected device is identified in response to the connected device reading the outputted machine readable code, sound, image or bitmap (Hammad, the user may utilize a user device, e.g., 509, to capture the QR code presented by the client device for payment processing. The client device may decode the QR code to extract the information embedded in the QR code. [Hammad, 0077, Fig. 1A and associated disclosure]; or
a wireless communication transmitted to the management system for further transmission to the connected device, wherein the connected device is identified in response to the connected device receiving the wireless communication (Hammad, in response to obtaining the product data, the merchant server may generate, e.g., 416a, a QR pay code, and/or secure display element according to the security settings of the user (see, e.g., 358). The merchant server may provide the QR code to the client, so that the client may display the QR code, and the user may capture the QR code using the user's device to obtain merchant and/or product data for generating a purchase transaction processing request) [Hammad, 0048, fig. 4A and associated disclosure, also see 0077].
Double Patenting
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.
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Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,195,215 B1. Although the claims at issue are not identical, they are not patentably distinct from each other. Each of the ‘215 patent and this instant application are directed towards facilitating transactions between clients using a common platform. This instant application, however, incorporates the limitation of securing the integrated session using (i) a security tool, (ii) a security protocol, or (iii) a combination of (i) and (ii). The ‘215 patent is silent with regard to a security component. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to combine/modify the transaction method of ‘215 patent with the security technique of this instant application because, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Consequently, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). In the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,125,076 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. Each of the ‘076 patent and this instant application are directed towards facilitating transactions between clients using a common platform. This instant application, however, incorporates the limitation of securing the integrated session of processing an activity initiated by a client-user with a merchant-user, generating and presenting an invoice to the client-user, enabling the client user to settle the invoice by using (i) a security tool, (ii) a security protocol, or (iii) a combination of (i) and (ii). The ‘076 patent is silent with regard to generating an invoice by a merchant-user, presenting the invoice to the client-user, settling of the invoice and closing the session after the invoice is settled. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to combine/modify the transaction method of ‘076 patent with the security technique of this instant application because, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Consequently, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). In the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers, and process the financial transaction using secure transaction by implementing cyber-security. Enterprises typically use business planning to make decisions in order to secure their online presence and maximize profits.
Response to Arguments
Applicant's argument that pending claimed amended invention is eligible for patent under 35 USC 101 because the claimed invention recite a practical application of the alleged abstract idea, and the claims recite significantly more and are not merely generic is acknowledged and considered.
However, upon further review of the claimed amended invention, it is deemed that the claimed invention is directed to an abstract idea. Therefore, Rejection under 35 USC 101 is maintained.
Applicant's argument that pending claimed amended invention is eligible for patent because cited prior art does not teach added limitations is acknowledged and considered.
However, during the updated search, a new prior art was found which teaches the added limitation(s). Therefore, applicant’s arguments moot under new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/NARESH VIG/Primary Examiner, Art Unit 3622
March 11, 2026