DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a final office action in response to the application filed 7/29/2025.
Applicant’s amendments to Claims 1,9, and 17 have been received and are acknowledged.
Claims 1-20 have been examined and are pending.
Response to Arguments
Applicant's arguments filed 7/29/2025 have been fully considered but they are not persuasive.
With regard to the rejections under 35 USC 101, Applicant argues: That the independent claims have been amended to include “ claim elements as features within a mobile payment services.. .provide an enhancement to this technology space by suppressing duplicate payment notifications and preventing and preventing inadvertent duplicate payments of a bill that is retrieved by a payment service operating on the electronic device… claims fall squarely within this technology space, …original specification at paragraphs [0013]-[0014], [0016], [0026], [0061], which is a consumer- directed technology that is not an abstract idea…” (Applicant’s response pg. 8)
Examiner respectfully disagrees. As noted below the handling of payment reminders is a business problem. (Specification, [1]) Suppressing duplicate payment notifications and preventing inadvertent duplicate bill payments is at most an improvement to an abstract idea. Using generic computing elements to address a business problem does not render the invention subject eligible subject matter; rather as noted previously and below the claims recite “apply it.” As such, Applicant’s arguments are not persuasive.
With regard to the rejections under 35 USC 103, Applicant argues that the prior art does not teach the newly amended claim language and the specific limitations of:
Subsequently detect a second notification to make a payment
Identify that the second notification corresponds to the first bill that has already been paid…
in response to identifying that the second notification corresponds to the first bill that has already been paid, suppress presentation…
Examiner respectfully disagrees as noted below for the newly amended claim language and (ii) and (iv) which are both rendered obvious by the cited prior art.
Kumar discloses (ii) as cited in the rejection below ((See at least Kumar, [17] bill payment module…. alert module… [22] …interactive set-up link… a listed bill… marking the bill as paid… deleting the bill… obtaining advice …receiving an alert…[99] periodic time schedule… [179] Account alerts module…[185] account alert module… various types of alerts…Alerts module [213] may be pre-configured to provide virtually any type of time or event-sensitive alert that a user may desire…[239] Alerts option… configure automated alerts associated with a line item…) as the alerts are configurable to include periodic. In other words, Kumar discloses configurable alerts which renders obvious multiple alerts (e.g. periodic alerts) for the same ‘line item’. Also, Chang teaches (iv) as cited (See at least Chang, [44] contextual information… determine that a notification scheduled or created by a notification generator should be adjusted. Adjustment … suppression…); in other words, ‘contextual information’ is used to adjust notification schedules/creation including suppression of notifications which renders obvious the recited limitation (iv)
Further is it noted at that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Additionally, the newly amended claim language is addressed as cited in the rejection below. Applicant’s arguments are not commensurate with the scope of the recited claims. As such the arguments are not persuasive.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, (1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so (2b), it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
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. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
(1) In the instant case, the claims are directed towards a method, non-transitory computer readable medium, and the system of handling payment reminders. In the instant case, Claims 9-16 are directed to a process. Claims 1-8 are directed to a system. Claims 17-20 are directed to a non-transitory computer readable medium.
(2a) Prong 1: Payment reminders is categorized in/akin to the abstract idea subject matter grouping of: methods of organizing human activity [fundamental economic practice and organizing human activity (commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)]. As such, the claims include an abstract idea.
The specific limitations of the invention are (a) identified to encompass the abstract idea include:
An … comprising:
…
… for mobile payment services applications and a payment reminder management …;
… instructions of the mobile payment services applications payment reminder management module, which causes the processor to cause the electronic device to provide mobile payment service and to::
receive a first notification corresponding to completion of a payment for a first bill via a….;
subsequently detect a second notification to make payment for the first bill;
identify that the second notification corresponds to the first bill that has already been paid via a…; and
in response to identifying that the second notification corresponds to the first bill that has already been paid, suppress presentation of the second notification on the display as a duplicate bill alert to prevent presentation of an already paid bill.
9. A method comprising:
receiving, … and supporting…. a first notification corresponding to completion of a payment for a first bill; subsequently
detecting a second notification to make payment for the first bill via a first ….e;
identifying that the second notification corresponds to the first bill that has already been paid via the first ….; and
in response to identifying that the second notification corresponds to the first bill that has already been paid, suppressing presentation of the second notification on the display as a duplicate bill alert.
17. A …and supports ……
receiving a first notification corresponding to completion of a payment for a first bill via a first ….;
subsequently detecting a second notification to make payment for the first bill;
identifying that the second notification corresponds to the first bill that has already been paid via a first …; and
in response to identifying that the second notification corresponds to the first bill that has already been paid, suppressing presentation of the second notification on the display as a duplicate bill alert.
As stated above, this abstract idea falls into the (b) subject matter grouping of: methods of organizing human activity .
Prong 2: When considered individually and in combination, the instant claims are do not integrate the exception into a practical application because the steps of detecting… identifying… suppressing….supporting… do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea).
The instant recited claims including additional elements (i.e. receiving….) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions or generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05 (d) and (f))
(2b) In the instant case, Claims 9-16 are directed to a process. Claims 1-8 are directed to a system. Claims 17-20 are directed to a non-transitory computer readable medium.
Additionally, the claims (independent and dependent) do not include additional elements that individually or in combination are sufficient to amount to significantly more than the judicial exception of abstract idea (i.e. provide an inventive concept). As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of: (electronic device, display, memory…instructions, module, processor, computer program product, non-transitory computer readable medium… mobile payment services applications…mobile payment service..) merely uses a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d)and (f)) (Specification,[33] generally electronic device…[63-64] general purpose computer… other programmable data processing apparatus…computer program product ….computer readable storage device… )
The dependent claims have also been examined and do not correct the deficiencies of the independent claims.
It is noted that claim (2-8, 10-16 and 18-20) introduce the additional elements of further defines steps and elements including: identifies… performs the suppressing…. presents (i.e. display)… (Claims 2, 10 and 19) ; … collects… provides… suppresses…(Claims 3, 11, and 19); … providing… surfacing… (Claims 4, 12 and 20) ; …routing…adding… (Claims 5 and 13); … adding… including.. (Claims 6 and 14); …collecting and storing…collecting… comparing… determining… (Claims 7 and 15)….comparing…(Claims 8 and 16). These elements are not a practical application of the judicial exception because the limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions or generally link the use of the judicial exception to a particular technological environment or field of use ( See MPEP 2106.05 (d) and (f)) Further these limitations taken alone or in combination with the abstract do not amount to significantly more than the abstract idea alone because these elements amount to mere use of a computer a as tool to perform an abstract idea or merely uses generic computing elements to perform well known, routine, and conventional functions (See MPEP 2106.05 (d)and (f)) (Specification,[33] generally electronic device…[63-64] general purpose computer… other programmable data processing apparatus…computer program product ….computer readable storage device… )
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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 1, 2, 3, 5, 7, 8, 9, 10, 11, 13, 15, 16, 17, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2001/0032182 Al Kumar et al. hereinafter referred to as Kumar further in view of WO 2020024052 A1, Chan et al. hereinafter referred to as Chan further in view of US 20140253319 A1, Chang hereinafter referred to as Chang.
Claims 1, 9 and 17
Kumar discloses a method, electronic device, computer program product comprising:
receiving, by an electronic device comprising a display and supporting mobile payment services, a first notification corresponding to completion of a payment for a first bill via a first mobile payment service; (See at least Kumar, Fig. 19 Mark as paid, [22] … a listed bill… viewing a full account, paying the bill, marking the bills as paid…[109] applicant configuration module… configure an Internet appliance to communicate and receive summary information… appliance may include palm top PC’s, lap top PC’s, cellular telephones, WEB TV’s and so on… interface … communication protocol..… )
subsequently detecting a second notification to make payment for the first bill; ((See at least Kumar, [17] bill payment module…. alert module… [22] …interactive set-up link… a listed bill… marking the bill as paid… deleting the bill… obtaining advice …receiving an alert…[99] periodic time schedule… [179] Account alerts module…[185] account alert module… various types of alerts…Alerts module [213] may be pre-configured to provide virtually any type of time or event-sensitive alert that a user may desire…[239] Alerts option… configure automated alerts associated with a line item…)
Kumar further teaches configuring alerts and marking a bill as paid and entering the paid mark into the history record. (See at least Kumar, [17] bill payment module…. alert module… [22] …interactive set-up link… a listed bill… marking the bill as paid… deleting the bill… obtaining advice …receiving an alert…[179] Account alerts module…[185] account alert module… various types of alerts…Alerts module 213 may be pre-configured to provide virtually any type of time or event-sensitive alert that a user may desire…[239] Alerts option… configure automated alerts associated with a line item… [247] Mark Paid icon…record of the paid bill is removed… record of payment of the bill … entered into an appropriate history record…)
Kumar does not directly disclose the following, however, Chan teaches:
identifying that the second notification corresponds to the first bill that has already been paid via the first mobile payment service; and (See at least Chan, [52] alert engine determines if the payment request is a duplicate request using historical payment records…[54] token can have a unique identifier… stop duplicate payments… )
Furthermore, the Supreme Court has supported in KSR International Co. Teleflex Inc. (KSR), 550US___, 82 USPQ2d 1385 (2007), that merely applying a known technique to a known method, yield predictable results, render the claimed invention obvious over such combination. In the instant case, Kumar discloses a method and system of interactive bill payment center including notifications of bill payment. Chan teaches a method and system of electronic calendar payments including a duplicate request identification and notification feature determined by comparing records. One of ordinary skill in the art would clearly recognize that this combination would lead to a predictable result (i.e. method and system of interactive bill payment center including notifications of bill payment including a duplicate request identification and notification feature.) As such the claimed invention is obvious over Kumar/Chan.
Kumar does not directly disclose the following; however, Chang teaches:
in response to identifying that the second notification corresponds to the first bill that has already been paid, suppressing presentation of the second notification on the display as a duplicate bill alert… [Claim 1] to prevent presentation of an already paid bill (See at least Chang, [44] contextual information… determine that a notification scheduled or created by a notification generator should be adjusted. Adjustment … suppression…)
Furthermore, the Supreme Court has supported in KSR International Co. Teleflex Inc. (KSR), 550US___, 82 USPQ2d 1385 (2007), that merely applying a known technique to a known method, yield predictable results, render the claimed invention obvious over such combination. In the instant case, Kumar discloses a method and system of interactive bill payment center including notifications of bill payment. Chang teaches a system and method of managing alerts and notifications based on contextual information including a duplicate processing feature. One of ordinary skill in the art would clearly recognize that this combination would lead to a predictable result (i.e. method and system of interactive bill payment center including notifications of bill payment including a duplicate processing feature.) As such the claimed invention is obvious over Kumar/Chang.
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 optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) “adapted to” or “adapted for” clauses,
(C) “wherein” clauses, or
(D) “whereby” clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04
Claims 2, 10 and 18
Kumar, Chan, and Chang disclose the invention as claimed above in Claims 1, 9 and 17.
Kumar does not directly disclose the following; however, Chang teaches:
identifying whether a suppress-duplicate-bill-notification (SDBN) feature is activated on the electronic device; (See at least Chang, [44] contextual information… determine that a notification scheduled or created by a notification generator should be adjusted. Adjustment … suppression…)
performing the suppressing of the presentation of the second notification in response to the SDBN feature being activated; and (See at least Chang, [44] contextual information… determine that a notification scheduled or created by a notification generator should be adjusted. Adjustment … suppression…)
in response to the SDBN feature not being activated, presenting, on the display, an indication that the second notification corresponds to a paid bill. (See at least Chang, [44] contextual information… determine that a notification scheduled or created by a notification generator should be adjusted. Adjustment … suppression…)
Claims 3, 11 and 19
Kumar, Chan, and Chang disclose the invention as claimed above in Claims 2, 10 and 18.
Kumar further discloses:
collecting and storing first payment metadata corresponding to the first bill from the first notification; ( See at least Kumar, Fig. 13, Fig. 18 Bill payment center [144-145] repository … metadata…data gathering… )
Kumar does not directly disclose the following; however, Chang teaches:
providing an option to suppress future notifications for the first bill; and (See at least Chang, [44] contextual information… determine that a notification scheduled or created by a notification generator should be adjusted. Adjustment … suppression…)
in response to detecting that the option to suppress future notifications is activated, suppressing future notifications pertaining to the first bill, based on the first payment metadata matching payment metadata from the future notifications.(See at least Chang, [44] contextual information… determine that a notification scheduled or created by a notification generator should be adjusted. Adjustment … suppression…)
Claims 5 and 13
Kumar, Chan, and Chang disclose the invention as claimed above in Claims 2, 10 and 18.
Kumar discloses various types of automated alerts including emails, pager messages recorded telephone messages. (See at least Kumar [239] FIG. 16, or they may be sent as e-mails, pager messages, recorded telephone messages, Fig. 17…)
Therefore, Kumar further discloses:
….text message… (See at least Kumar [239] FIG. 16, or they may be sent as e-mails, pager messages, recorded telephone messages, Fig. 17…)
adding paid status information to the text message. (See at least Kumar[ 239] FIG. 16, or they may be sent as e-mails, pager messages, recorded telephone messages, …Fig. 17… Fig. 19 Mark as Paid, [245] Mark as Paid)
Kumar does not directly disclose the following; however, Chang teaches:
wherein the second notification is a text message, the method further comprising: routing the text message to a suppressed message folder; and (See at least Chang [20] alerts may be scheduled on a laptop computer and played to a smart phone… may then store or maintain the alert and transmit instructions for playing the alert… [22] taxonomy of alerts…rules may be specified …. such rules may rely upon particular language
Claims 7 and 15
Kumar, Chan, and Chang disclose the invention as claimed above in Claims 1 and 9.
Kumar does not directly disclose the following; however, Chan teaches:
15. The method of claim 9,
wherein identifying that the second notification corresponds to the first bill comprises:
collecting and storing first payment metadata corresponding to the first bill from the first notification; collecting second payment metadata from a subsequently received second notification for payment of a bill; comparing the first payment metadata to the second payment metadata for a match; and determining that the second notification corresponds to the first bill in response to the first payment metadata substantially matching the second payment metadata. (See at least Chan, [19] determine if payment request is a duplicate request using historical payment records and upon determine that the … detected duplicate in the payment confirmation request…[52] duplicate request using history payment records… alert engine can indicate the detected duplicate in the payment confirmation request [80]detect duplicate payment requests or payment confirmations… alert engine can generate a notification message to prompt customer to confirm that they want to process a duplicate payment request…digital fingerprint can have all the payment attributes e.g. due date amount biller name, historical payment info etc. so that it can be used to compare any previous payment done for this particular bill… )
Claims 8 and 16
Kumar, Chang and Chan disclose the invention as claimed above in Claims 7 and 15.
Kumar does not directly disclose the following; however, Chan teaches:
wherein comparing the first payment metadata to the second payment metadata for a match comprises comparing one or more of paid date, amount paid, payee, and payment service/application. (See at least Chan, [80]detect duplicate payment requests or payment confirmations… alert engine can generate a notification message to prompt customer to confirm that they want to process a duplicate payment request…digital fingerprint can have all the payment attributes e.g. due date amount biller name, historical payment info etc. so that it can be used to compare any previous payment done for this particular bill… )
Claims 4, 12, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar in view of Chan further in view of Chang further in view of US 20220138710 A1, Colvin hereinafter referred to as Colvin.
Claims 4, 12 and 20
Kumar, Chan, and Chang disclose the invention as claimed above in Claims 2, 10 and 18.
Kumar does not directly disclose the following; however, Chang teaches:
in response to detecting selection of the option to mark the first bill as unpaid, surfacing future notifications pertaining to the first bill. (See at least Chang, [25-26] … reprocessing of a reminder pertaining to a task that it to be accomplished…[44] contextual information… determine that a notification scheduled or created by a notification generator should be adjusted. Adjustment … suppression…)
Kumar does not directly disclose the following; however, Colvin teaches:
providing an option to mark the first bill as unpaid; and (See at least Colvin, Fig. 25, mark as unpaid, [97] ..may include one or more selectable actions … to modify the bill, close the bill, or mark the bill as unpaid..)
Furthermore, the Supreme Court has supported in KSR International Co. Teleflex Inc. (KSR), 550US___, 82 USPQ2d 1385 (2007), that merely applying a known technique to a known method, yield predictable results, render the claimed invention obvious over such combination. In the instant case, Kumar discloses a method and system of interactive bill payment center including notifications of bill payment. Chan teaches a method and system of electronic calendar payments including a duplicate request identification and notification feature determined by comparing records. Chang teaches a system and method of managing alerts and notifications based on contextual information including a duplicate processing feature. Colvin teaches a mobile payment system which includes a selectable options to process a bill including marking the bill as unpaid. One of ordinary skill in the art would clearly recognize that this combination would lead to a predictable result (i.e. method and system of interactive bill payment center including notifications of bill payment including a duplicate identification, notification and processing feature and an option to mark a bill as unpaid) As such the claimed invention is obvious over Kumar/Chan/Chang/Colvin.
Claims 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar in view of Chan in view of Chang further in view of US 20190034403 A1, Pal et al. hereinafter referred to as Pal.
Claims 6 and 14
Kumar, Chan, and Chang disclose the invention as claimed above in Claims 1 and 9.
Kumar further discloses:
wherein the second notification is an email message, (See at least Kumar [239] FIG. 16, or they may be sent as e-mails, pager messages, recorded telephone messages, …Fig. 17…)
Kumar does not directly disclose the following; however, Pal teaches:
the method further comprising: adding a paid status indication to a subject line of the email message; and including paid status information in a body of the email message. (See at least Pal, Fig 6, Fig. 7)
Furthermore, the Supreme Court has supported in KSR International Co. Teleflex Inc. (KSR), 550US___, 82 USPQ2d 1385 (2007), that merely applying a known technique to a known method, yield predictable results, render the claimed invention obvious over such combination. In the instant case, Kumar discloses a method and system of interactive bill payment center including notifications of bill payment. Chan teaches a method and system of electronic calendar payments including a duplicate request identification and notification feature determined by comparing records. Chang teaches a system and method of managing alerts and notifications based on contextual information including a duplicate processing feature. Pal teaches a method and system of smart templates including invoice reminders. One of ordinary skill in the art would clearly recognize that this combination would lead to a predictable result (i.e. method and system of interactive bill payment center including notifications of bill payment including a duplicate identification, notification and processing feature and a smart template invoice reminder) As such the claimed invention is obvious over Kumar/Chan//Chang/Pal
Conclusion
12. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHA PUTTAIA H whose telephone number is (571)270-1352. The examiner can normally be reached on Monday- Friday 8:00am - 5:00 pm EST.
13. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas, can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
14. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ASHA PUTTAIA H/Primary Examiner, Art Unit 3691