DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgements
Applicant’s response filed November 11, 2025 is acknowledged.
Claims 20-35 are pending in the application.
Claims 20-35 are examined below.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Claim Objections
Claim 20 is objected to because of the following informalities: where applicant recites “a second computer system a second location remote from the first location,” it appears that applicant intends to recite “a second computer system at a second location remote from the first location” or similar.
Claim 24 is objected to because of the following informalities: where applicant recites “response,” it appears that applicant intends to recite “responsive” or similar.
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 20-35 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 20-35, the claimed invention is directed to an abstract idea without significantly more. Representative claim 20 recites establishing a communication channel, receiving transaction information, providing an interface to specify tip distribution, receiving the tip distribution specification, communicating instructions to distribute the tips, receiving second transaction information, providing the interface to specify a second tip distribution, receiving the second tip distribution specification, communicating instructions to distribute the tips or generating a document of the tip distribution specification, which constitutes a certain method of organizing human activity (specifically, a commercial interaction, or managing relationships or interactions between people). This judicial exception is not integrated into a practical application because the additional elements beyond the abstract idea simply link the abstract idea to a particular technological environment (networked computers). Because the abstract idea is not integrated into a practical application, claim 20 is “directed to” an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements identified above represent only well-understood, routine, and conventional technology (or placeholders for such) when compared with the court decisions listed in MPEP § 2106.05(d). Viewing the additional elements as a combination does not add anything further than the individual elements. Therefore, the additional elements in the claim are not sufficient to amount to an inventive concept. Because claim 20 is directed to an abstract idea and fails to recite an inventive concept, it is patent ineligible.
Independent claim 28 contains limitations similar to claim 20 and is therefore rejected using the same rationale.
The dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101. The additional limitations added by these claims fail to either integrate the claims into a practical application or add an inventive concept, because they serve to further narrow the abstract idea without integrating it into a practical application (claims 24, 26, 27, 32, 34, 35), add additional elements that simply further link to a particular technological environment (claims 25, 29-31, 33), and/or fail to further limit the claim (claims 21-23). Viewing the additional elements of the dependent claims as a combination does not add anything further than the individual elements. Therefore, the dependent claims neither practically integrate the abstract idea nor constitute an inventive concept, and these claims are also rejected as patent ineligible.
See the appeal decision sent July 25, 2024 in application 16/940,895 affirming subject matter ineligibility for an application directed to similar abstract ideas.
Claim Rejections - 35 U.S.C. 112(a) or 35 U.S.C. 112, 1st Paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
There does not appear to be a written description of the following claim limitations:
“a second transaction, including a third amount for acquisition of a second set of items by a second person, a fourth amount corresponding to a second tip specified by the second person, and information enabling an identification of a second service person at the first location involved in providing the second set of items to the second person at the first location, wherein at least a portion of the encrypted data is tokenized” (claim 20 and similar in claim 28). The tokenization is only discussed as occurring at the POS, but the POS does not appear to be an element of the claimed system.
“causing at least a first item of sensitive data related to the first service person to be tokenized, wherein the first item of sensitive data is replaced with non- sensitive data so that the first item of sensitive data is not exposed during a first process, wherein the tokenized sensitive data is stored remotely in a token vault” (claim 25 and similar in claim 33).
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
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.
Claims 20-35 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 that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 20, applicant’s recitation “wherein data transmitted by the first computer system via the encrypted communication channel over the network to the second computer system is encrypted using a private key associated with the first computer system and a public key of the second computer system” would have been unclear to a person having ordinary skill in the art at the time of the invention. There is no antecedent basis for “data” and this does not appear to be a positively recited method step; therefore, it is unclear what is required by this limitation. Does this require data to be communicated, or not? For the purpose of comparison with the prior art and determination of patent eligibility, the examiner adopts the interpretation that no data is required to be transmitted in accordance with the broadest reasonable interpretation of the claims.
Further regarding claim 20, applicant’s recitation “encrypting second instructions and communicating the encrypted second instructions with one or more systems … and/or generating a document comprising the specification” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is clear that the step of “generating” is optional, but it is unclear whether both the “encrypting” and “communicating” steps or only the “communicating step” are also optional. On one hand, it seems the most straightforward reading is that the step of “communicating” is optional but the step of “encrypting” is required. On the other hand, it doesn’t make sense to encrypt the instructions without communicating them, which points to these two steps being coupled and together optional vis-à-vis the step of “generating.” For the purpose of comparison with the prior art and determination of patent eligibility, the examiner adopts the interpretation that both “encrypting” and “communicating” are optional in accordance with the broadest reasonable interpretation of the claims.
Claim 28 contains language similar to the recitation in claim 20 discussed in the immediately preceding paragraph, and claim 28 is rejected for reasons similar to those discussed above.
Regarding claim 21, applicant’s recitation “The computer implemented method as defined in Claim 20, wherein at least one system is configured to cause encrypted payment data to be encrypted again using a second layer of encryption via a remote gateway, so that the payment data has two layers of encryption thereby further enhancing payment data security and inhibiting improper interception of the payment data” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear what additional step or additional limitation of a previously-introduced step is required by this recitation. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting this recitation as not further limiting.
Claims 22 and 23 contain language similar to the recitation in claim 21 discussed in the immediately preceding paragraph, and claims 22 and 23 are rejected for reasons similar to those discussed above, and are similarly interpreted.
Regarding claim 27, applicant’s recitation “wherein the third service person is enabled to modify the instruction to distribute at least a specified portion of the tip allocated to the third service person to one or more specified service people and/or groups of service people” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether this recitation requires a step to be performed. It is the examiner’s position that unless an actor is preventing someone from doing something, then under the broadest reasonable interpretation, that actor is enabling that someone to do that something. However, it appears to be applicant's intent that this recitation requires the performance some action. For the purpose of comparison with the prior art, the examiner is interpreting this enabling as an intended use or result and therefore not further limiting.
Claim 35 contains language similar to the recitation in claim 27 discussed in the immediately preceding paragraph, and claim 35 is rejected for reasons similar to those discussed above.
Regarding claim 28, applicant’s recitation “wherein data transmitted by the first computer system via the encrypted communication channel over the network to the computer systems encrypted using a private key associated with the first computer system and a public key of the computer system” would have been unclear to a person having ordinary skill in the art at the time of the invention. The first computer system does not appear to be an element of the claimed invention. Therefore, it is unclear what limitation--if any--this recitation places on the claimed system. For the purposes of comparison with the prior art and determination of patent eligibility, the examiner is interpreting this as an intended use of the system and therefore not further limiting.
Citation of Relevant Prior Art
All references listed on form PTO-892 are cited in their entirety. The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Stepanovich (US 2021/0090110 A1) discloses a system for establishing rules for the distribution of gratuities.
Phillips (US 2014/0365322 A1) discloses a system for monitoring, collecting, distributing, and reporting gratuities.
Grosh (US 2019/0251538 A1) discloses a system for automated tip distribution.
Response to Amendments and Arguments
The examiner expresses his appreciation for applicant’s specific citations to the specification indicating where applicant believes support for the claim amendments can be found. The examiner's search for support for the claim amendments was not limited to these citations.
The denial of priority to prior-filed application 63/107,031 is withdrawn in response to applicant’s argument.
The drawing objection of the previous office action is withdrawn in response to applicant’s amendment.
The claim objections of the previous office action are withdrawn in response to applicant’s amendment. However, note the new objection above.
Regarding the 101 rejection, applicant argues that the claims do not encompass an abstract idea. The examiner respectfully disagrees. The claims include “providing a first user interface enabling the first service person to specify distributions from first tip to a first plurality of specified respective groups of service persons at the first location and/or individual service persons at the first location” and “caus[ing] the distributions from the first tip to individuals in the first plurality of specified respective groups of service persons and/or the individual service persons as specified by the first service person.” This clearly includes the abstract idea of (tip) sharing, which is both a commercial interaction and managing relationships or interactions between people. Applicant further argues that the claims are directed to a specific computer-implemented process, rooted in computer technology, and address a problem that exists only in the context of computer networks. The examiner respectfully disagrees. The security and privacy provided by the claimed method/system are standard elements in conventional computer systems and merely serve to link the abstract idea to the technological environment of networked computers. For these reasons, the 101 rejection of the previous office action is maintained.
The 112(a) and 112(b) rejections of the previous office action are withdrawn in response to applicant’s amendment. Note, however, the new rejections above.
The prior art rejections are withdrawn in response to applicant’s amendment.
Conclusion
Applicant's amendment necessitated the new grounds 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699