DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 10/28/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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.
Status of Claims
Claims 1-2, 4-8, 10-14, 16-20, 22-24 are currently pending.
Claims 1-2, 4-8, 10-14, 16-20, 22-24 are rejected as set forth below.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/28/25 has been entered.
Response to Arguments
Claim Rejections - 35 U.S.C. § 101
Applicant’s arguments with respect to claim(s) 1, 7, 13, 19 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
Applicant contends the claims are not directed to an abstract idea because the steps are performed by a payment processing server under Step 2A Prong One. The Examiner respectfully disagrees. First, Applicant fails to address the contention that the claims recite an abstract idea of transferring funds based on a match of transaction ID’s. Second, the payment processing server is addressed in Prong Two, not Prong One.
Applicant contends the claims are directed to an improvement to computer functionality under Step 2A Prong Two. The Examiner respectfully disagrees. First, merely matching transaction ID’s in order to approve a transaction is not a significant computer function that rises to the level of an improvement to computer functionality. See the claims in Enfish and McRO for exmaples of significant computer functions that improve computer functionality. Second, the concept of matching transaction ID’s in order to approve a transaction is a well-established and widely recognized practice in the payment industry, as it appears in multiple aspects of payment processing, reconciliation, fraud detection, and transaction monitoring. Specifically ISO 8583 is an international standard for financial transactions that matches the STAN unique sequence number before approving the transaction1.
Applicant contends Applicant contends the Examiner is required to provide evidence that the claim includes well-understood, routine, or conventional activity. The Examiner respectfully disagrees. As set forth in the 2019 Revised Patent Subject Matter Eligibility Guidance, if an examiner had previously concluded under revised Step 2A that an additional element was insignificant extra-solution activity, they should reevaluate that conclusion in Step 2B. If such reevaluation indicates that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that an inventive concept is present and that the claim is thus eligible. Regarding the instant claims, the additional limitations were not considered to be insignificant extra-solution activity under Step 2A Prong Two and therefore are not required to be evaluated as conventional under Step 2B.
Claim Rejections - 35 U.S.C. § 103
Applicant’s arguments with respect to claims 1-2, 4-8, 10-14, 16-20, 22-24 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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.
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 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11797953 in view of United States Patent Application Publication No. 20080103923 to Rieck and United States Patent Application Publication No. 20080134346 to Cho.
Claims 1-15 of ‘953 substantially teach the claimed invention. ‘953 does not explicitly teach, but Rieck teaches:
sending the transaction information to a payment gateway; ([0047]-[0049], “After they confirm payment, PayPal will communicate 202 through their Instant Payment Network (IPN) protocol 194 to the PayPal Notifier Servlet 196 hosted by the company. This communication 202 is to verify and notify with an IPN message. The IPN message contains the status of the PayPal transaction, and sends the order ID, the reference ID, and the PayPal transaction ID. This servlet 196 then updates 178 CPG webservices 168 and module 170 to change the status of the authorization transaction to "Completed" for this order. When the order is completed, the customer is redirected to the thank-you page 152. Upon reaching the thank-you page 152, the ecommerce system can mark this order as having been authorized for payment.”)
One of ordinary skill in the art would have recognized that applying the known technique of Rieck to the known invention of ‘953 would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such funds transfer features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the step of effecting a transfer of funds so the transaction information is sent to a payment gateway results in an improved invention because applying said technique leverages the advantages of using a payment gateway, i.e. smart routing to the best acquirer by region, therefore improving authorization rates and improving the overall efficiency of the invention.
‘953 as modified does not explicitly teach, but Cho teaches:
the purchaser transaction ID including a unique identifier generated by the communications device, the unique identifier based at least in part on a device identifier of the communications device; ([0021], “The client 140 includes a client information inputting unit 142, a client transactions identifier generating unit 144, and a transactions details inquiring unit 146.”; [0070], “According to the exemplary embodiment, by using the client transactions identifier, which is generated by hashing the client identifier and the client password and client random number which only the client 140 knows the transactions certification institution server 120 cannot identify the client 140 which conducted the transactions.”)
One of ordinary skill in the art would have recognized that applying the known technique of Cho to the known invention of ‘953 as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such transaction ID generation features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the purchaser transaction ID to include a unique identifier generated by the communications device, the unique identifier based at least in part on a device identifier of the communications device, results in an improved invention because applying said technique ensures that the transaction ID is associated with a legitimate transaction performed by the customer, therefore improving the overall security of the invention.
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 1-2, 4-8, 10-14, 16-20, 22-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
As per claims 1-2, 4-8, 10-14, 16-20, 22-24, the claimed invention is directed to an abstract idea without significantly more because:
Claims 1, 7, 13, 19 recites: A method of operating a payment processing server to transfer funds from a purchaser account to a merchant account, the method comprising: receiving a purchaser transaction identification (ID) from a mobile wireless communications device, the purchaser transaction ID including a unique identifier generated by the communications device, the unique identifier based at least in part on a device identifier of the communications device; receiving a merchant transaction ID and transaction information from a merchant server; sending the transaction information to the mobile wireless communications device if the merchant transaction TD matches the purchaser transaction ID; receiving confirmation of the transaction information from the mobile wireless communications device; and effecting a transfer of funds from the purchaser account to the merchant account based upon the confirmation of the transaction information, by sending the transaction information to a payment gateway.
Under Step 1 of the Section 101 analysis, the claim(s) is/are directed to a system and method, which are statutory categories of invention.
Under Step 2A Prong One of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claimed invention as drafted includes language (see underlined language above) that recites an abstract idea of transferring funds based on a match of transaction ID’s (a certain method of organizing human activity such as a commercial or legal interactions, e.g. including agreements in the form of contracts, sales activities/behaviors, business relations) but for the recitation of additional claim elements. That is, other than reciting performing the steps using a payment processing server and receiving/transmitting data with a mobile wireless communications device/a merchant server/a payment gateway, nothing in the claim precludes the language from being considered as a commercial or legal interaction, e.g. transferring funds, based on an agreement, e.g. a match of transaction ID’s.
A similar analysis can be applied to dependent claims 2-6, 8-12, 14-18, 20-24, which further recite the abstract idea of transferring funds based on a match of transaction ID’s.
Under Step 2A Prong Two of the 2019 Revised Patent Subject Matter Eligibility Guidance, the additional claim element(s), considered individually, do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception and in a manner that integrates the exception into a practical application of the exception. The additional claim elements(s) merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. For example, the abstract idea of transferring funds based on a match of transaction ID’s is merely implemented on a payment processing server while receiving/transmitting data with a mobile wireless communications device/a merchant server/a payment gateway.
A similar analysis can be applied to dependent claims 2-4, 8-10, 14-16, 20-22, which include additional claim elements that merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, e.g. receiving/transmitting data with a mobile wireless communications device, a merchant server, and a payment gateway.
Under Step 2A Prong Two, the additional claim element(s), considered in combination, do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception and in a manner that integrates the exception into a practical application of the exception. The combination of elements is no more than the sum of their parts. Unlike the eligible claims in Diehr and Bascom, in which the elements limiting the exception taken together improve a technical field, the instant claim lacks an improvement to the functioning of a computer or to any other technology or technical field.
Under Step 2B, the additional claim element(s), considered individually and in combination, do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself for similar reasons outlined under Step 2A Prong Two.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-2, 4-8, 10-14, 16-20, 22-24 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20070022058 to Labrou in view of United States Patent Application Publication No. 20060202025 to Calabrese, United States Patent Application Publication No. 20080103923 to Rieck, and United States Patent Application Publication No. 20080134346 to Cho.
As per claims 1, 7, 13, 19, Labrou teaches:
A method of operating a payment processing server to transfer funds from a purchaser account to a merchant account, the method comprising: receiving a purchaser transaction identification (ID) from a communications device; receiving a merchant transaction ID and transaction information from a merchant server; sending the transaction information to the communications device in response to the merchant transaction TD matching the purchaser transaction ID; (Fig 3, [0043], [0048], “FIG. 3 shows the internal structure and the generation process of a mobile device POS authenticable transaction view messages 402, 404 (i.e., UPTF SAS authenticable transaction messages among a mobile device 104, a POS 103 and an STS 120). The identifiers used in FIG. 3 are explained below: TID: transaction ID, a unique identification number assigned to an agreement, which is maintained by the STS 120 to identify corresponding UPTF agreement views 402, 404. For example, a purchase transaction identifier uniquely identifying a particular purchase.”; Fig 5, [0107]-[0110], “Then, the merchant sends a UPTF message to the STS 120, called the M-View 404, with the encrypted portion 406 containing the POS ID, transaction ID, the amount, the Time stamp (but may or may not contain the device ID of the mobile POS 104), using its preferred connection. The mobile POS application 109 sends a UPTF message to the STS 120 using a cellular network 211, called the C-View 402. The encrypted portion 406 contains the transaction ID, the account, the time stamp and may or may not contain the POS ID. According to an aspect of the embodiments, the UPTF SAS message 402, 404 agreement data 412 can be explicit transaction information, and/or implicit or abstracted transaction data, such as the transaction identifier (TID) (as the case may be). The STS 120 receives the messages from the merchant 103 and the client 104. The STS 120 decodes the messages and verifies the identity of the parties. The STS authorizes the transaction. The STS 120 sends receipt messages to the merchant using its preferred connection 220 and to the customer over the cellular network 211.”; [0101], “If the MD is used and the message is sent by SMS or MMS, a TID is necessary for the STS to identify which merchant message the customer message matches with.”)
Labrou does not explicitly teach, but Calabrese teaches:
receiving confirmation of the transaction information from the communications device; and effecting a transfer of funds from the purchaser account to the merchant account in response to the confirmation of the transaction information. ([0015]-[0017], “Prior to the customer's signing for the purchase, the merchant terminal 3 connects, through a modem 5, to an acquirer 6. The latter obtains the information from the modem 5 and checks against its data sources whether or not the transaction should be authorized. At the same time, a corresponding customer profile is checked as to the customer's set preferences concerning the notification/authorization options according to the invention. Here, the customer's profile is set to simple "notification," which means that the system only notifies the cardholder by sending a message to his wireless device (e.g., cell phone). The message may be an audible message such as, for example, "% amount % charged on % date % at % merchant name %", or it may be an SMS (short message service) sent to the customer's phone. The confirmation, again, may take any of several forms. For example, a simple "1" in answer to the confirmation request may be a code for authorization and a "2" may be a refusal. Or else, the customer may be prompted to enter a PIN or any set password which is stored in the customer profile.”)
One of ordinary skill in the art would have recognized that applying the known technique of Calabrese to the known invention of Labrou would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such transaction confirmation features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to receive confirmation of the transaction information from the mobile wireless communications device and effect a transfer of funds from the purchaser account to the merchant account based upon the confirmation of the transaction information results in an improved invention because applying said technique provides an additional layer of confirmation for the purchaser, thus ensuring that the transaction details are accurate improving the overall security of the invention.
Labrou as modified does not explicitly teach, but Rieck teaches:
sending the transaction information to a payment gateway; ([0047]-[0049], “After they confirm payment, PayPal will communicate 202 through their Instant Payment Network (IPN) protocol 194 to the PayPal Notifier Servlet 196 hosted by the company. This communication 202 is to verify and notify with an IPN message. The IPN message contains the status of the PayPal transaction, and sends the order ID, the reference ID, and the PayPal transaction ID. This servlet 196 then updates 178 CPG webservices 168 and module 170 to change the status of the authorization transaction to "Completed" for this order. When the order is completed, the customer is redirected to the thank-you page 152. Upon reaching the thank-you page 152, the ecommerce system can mark this order as having been authorized for payment.”)
One of ordinary skill in the art would have recognized that applying the known technique of Rieck to the known invention of Labrou as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such funds transfer features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the step of effecting a transfer of funds so the transaction information is sent to a payment gateway results in an improved invention because applying said technique leverages the advantages of using a payment gateway, i.e. smart routing to the best acquirer by region, therefore improving authorization rates and improving the overall efficiency of the invention.
Labrou as modified does not explicitly teach, but Cho teaches:
the purchaser transaction ID including a unique identifier generated by the communications device, the unique identifier based at least in part on a device identifier of the communications device; ([0021], “The client 140 includes a client information inputting unit 142, a client transactions identifier generating unit 144, and a transactions details inquiring unit 146.”; [0070], “According to the exemplary embodiment, by using the client transactions identifier, which is generated by hashing the client identifier and the client password and client random number which only the client 140 knows the transactions certification institution server 120 cannot identify the client 140 which conducted the transactions.”)
One of ordinary skill in the art would have recognized that applying the known technique of Cho to the known invention of Labrou as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such transaction ID generation features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the purchaser transaction ID to include a unique identifier generated by the communications device, the unique identifier based at least in part on a device identifier of the communications device, results in an improved invention because applying said technique ensures that the transaction ID is associated with a legitimate transaction performed by the customer, therefore improving the overall security of the invention.
As per claims 2, 8, 14, 20, Rieck teaches:
wherein the transaction information is received via the payment gateway; ([0045], “After the user confirms 206 that they wish to order, the ecommerce system asks CPG webservice 162 to authorize for the requested amount of money. A flow for this Authorize Request 160 and Authorize Response 158 is shown in FIG. 3. On click or after user selection, an order goes through export controls and pre-authorization fraud check. On sucessful authorization of payment, the order will be submitted for fullfillment. CPG webservice 162 communicates 166 with a Batch Settlement Refund Control 164. CPG module 170 uses payment service adapters 167 to communicate to corresponding payment services 116.”)
Labrou teaches:
wherein the merchant transaction ID is received; ([0107]-[0110])
As per claims 4, 10, 16, 22, Labrou teaches:
sending completed transaction information, based upon the transfer of funds, to the merchant server and the communications device; ([0110])
As per claims 5, 11, 17, 23, Labrou teaches:
wherein the transaction information comprises a merchant identifier and a transaction amount; ([0108])
As per claims 6, 12, 18, 24, Labrou teaches:
wherein the purchaser account comprises a plurality of user accounts, ([0145], “The mobile user selects an account from the cache of accounts known to the mobile POS application 109. If for some reason the chosen account is not eligible for payment, the default account (or some other alternate account of the consumer) will be used for the payment.”)
Calabrese teaches:
wherein the received confirmation of transaction information comprises account access information for one selected account; ([0015], “If debit is selected, the cardholder enters the PIN associated with the card or with the account.”)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20070078751 to Craig discloses a system for conducting commerce across a distributed network includes a remote consumer computer. A merchant server communicates with the remote consumer computer across an open network to enable purchasing of a product from the remote consumer computer. A financial clearing house server is located within a secured closed network and communicates with the remote consumer computer and the merchant server across the secured closed network. The merchant server creates a merchant ID, receipt ID and transaction total corresponding to a consumer transaction and sends the merchant ID, receipt ID, and transaction ID to the financial clearing house server and the remote consumer computer. The financial clearing house server arranges payment of the transaction in response to a matching merchant ID, receipt ID, and transaction total from the remote consumer computer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached on (571) 270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY HUANG/Primary Examiner, Art Unit 3619
1 https://en.wikipedia.org/wiki/ISO_8583