DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for continued examination of application 18/513,390 (11/17/23) filed on 01/23/26.
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.
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 2 - 11 and 14 - 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 14 of U.S. Patent No. 10706396. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to:
US Pat. App. No. 18/513,390 (as represented by claim 15)
US Pat. No. 10,706,396 (as represented by claim 12)
A method comprising:
A method, comprising:
detecting, by a first device via a motion-detecting device of the first device, a waking spatial gesture;
while in a sleep mode:
responsive to detecting the waking spatial gesture, determining the first device is in a sleep mode, and determining that a second device is within a predetermined proximity of the first device, transitioning, by the first device, the first device from the sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold of detecting that the second device is within the predetermined proximity of the first device, wherein the first device consumes less power in the sleep mode than in the ready mode; and
detecting, by a payor transaction device, a waking spatial gesture via a motion-detecting device of the payor transaction device;
when a first spatial gesture of the one or more predetermined spatial gestures is detected by the first device within the predetermined time threshold, performing an action.
detecting, by the payor transaction device, a proximity signal transmitted from a payee transaction device with a signal sensor of the payor transaction device;
determining, by the payor transaction device and based on a signal strength of the proximity signal, that the payee transaction device is within a predetermined proximity of the payor transaction device;
wherein the sleep mode is configured for detecting the waking spatial gesture and detecting the proximity signal transmitted from the payee transaction device;
responsive to detecting the waking spatial gesture and determining that the payee transaction device is within the predetermined proximity of the payor transaction device, transitioning, by the payor transaction device, the payor transaction device from a sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold;
when none of the one or more predetermined spatial gestures are detected within the predetermined time threshold, returning, by the payor transaction device, to sleep mode;
when a first payor spatial gesture of the one or more predetermined spatial gestures is detected by the payor transaction device within the predetermined time threshold:
initiating, by the payor transaction device, a transfer of funds from the payor financial account to a payee financial account in response to detecting the first payor spatial gesture, wherein the first payer spatial gesture corresponds to an initiate-payment gesture of the one or more predetermined spatial gestures;
generating, by the payor transaction device, a first transaction identifier associated with the transfer of funds in response to detecting the first payor spatial gesture;
detecting, by the payor transaction device, a proximity signal transmitted from a payee transaction device with a signal sensor of the payor transaction device;
determining, by the payor transaction device and based on a signal strength of the proximity signal, that the payee transaction device is within a predetermined proximity of the payor transaction device;
transmitting, by the payor transaction device, the first transaction identifier to the payee transaction device;
detecting, by the payor transaction device, a second payor spatial gesture of the one or more predetermined spatial gestures with the motion-detecting device of the payor transaction device, wherein the second payer spatial gesture corresponds to a conduct-payment gesture of the one or more predetermined spatial gestures, the conduct-payment gesture indicative of a request to conduct the transfer of funds to the payee financial account associated with the payee transaction device in response to determining that the payee transaction device is within the predetermined proximity of the payor transaction device;
receiving, by the payor transaction device at a communication interface of the payor transaction device and from the payee transaction device, payee account information data corresponding to the payee financial account, in response to detecting the second payor spatial gesture; and
transmitting, by the payor transaction device with the communication interface of the payor transaction device, transaction data and the first transaction identifier to a payor computing device associated with the payor transaction device, the transaction data comprising the payee account information data and payor gesture data corresponding to the first payor spatial gesture, wherein the payor computing device is enabled to transmit at least a portion of the transaction data and the first transaction identifier to a financial service provider server.
Claims 2 - 11 and 14 - 23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 16 of U.S. Patent No. 11232419. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to:
US Pat. App. No. 18/513,390 (as represented by claim 15)
US Pat. No. 11,232,419 (as represented by claim 13)
A method comprising:
A method, comprising:
detecting, by a first device via a motion-detecting device of the first device, a waking spatial gesture;
while in a sleep mode:
responsive to detecting the waking spatial gesture, determining the first device is in a sleep mode, and determining that a second device is within a predetermined proximity of the first device, transitioning, by the first device, the first device from the sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold of detecting that the second device is within the predetermined proximity of the first device, wherein the first device consumes less power in the sleep mode than in the ready mode; and
detecting, by a payor transaction device, a waking spatial gesture via a motion- detecting device of the payor transaction device;
when a first spatial gesture of the one or more predetermined spatial gestures is detected by the first device within the predetermined time threshold, performing an action.
detecting, by the payor transaction device, a proximity signal transmitted from a payee transaction device with a signal sensor of the payor transaction device;
determining, by the payor transaction device and based on a signal strength of the proximity signal, that the payee transaction device is within a predetermined proximity of the payor transaction device;
wherein the sleep mode is configured for only detecting the waking spatial gesture and detecting the proximity signal transmitted from the payee transaction device;
responsive to detecting the waking spatial gesture and determining that the payee transaction device is within the predetermined proximity of the payor transaction device, transitioning, by the payor transaction device, the payor transaction device from a sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold;
when a first payor spatial gesture of the one or more predetermined spatial gestures is detected by the payor transaction device within the predetermined time threshold:
initiating, by the payor transaction device, a transfer of funds from the payor financial account to a payee financial account in response to detecting the first payor spatial gesture, wherein the first payer spatial gesture corresponds to an initiate-payment gesture of the one or more predetermined spatial gestures;
generating, by the payor transaction device, a first transaction identifier associated with the transfer of funds in response to detecting the first payor spatial gesture; and
transmitting, by the payor transaction device, the first transaction identifier to the payee transaction device.
Claims 2 - 11 and 14 - 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of U.S. Patent No. 11823146. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to:
US Pat. App. No. 18/513,390 (as represented by claim 15)
US Pat. No. 11,823,146 (as represented by claim 14)
A method comprising:
A method for conducting gesture-based transactions using an associated payor financial account, the method comprising:
detecting, by a first device via a motion-detecting device of the first device, a waking spatial gesture;
detecting, by a payor transaction device via a motion-detecting device of the payor transaction device, a waking spatial gesture;
responsive to detecting the waking spatial gesture, determining the first device is in a sleep mode, and determining that a second device is within a predetermined proximity of the first device, transitioning, by the first device, the first device from the sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold of detecting that the second device is within the predetermined proximity of the first device, wherein the first device consumes less power in the sleep mode than in the ready mode; and
responsive to detecting the waking spatial gesture, determining the payor transaction device is in a sleep mode configured only for detecting the waking spatial gesture, and determining that a payee transaction device is within a predetermined proximity of the payor transaction device, transitioning, by the payor transaction device, the payor transaction device from the sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold;
when a first spatial gesture of the one or more predetermined spatial gestures is detected by the first device within the predetermined time threshold, performing an action.
when a first payor spatial gesture of the one or more predetermined spatial gestures is detected by the payor transaction device within the predetermined time threshold:
initiating, by the payor transaction device, a transfer of funds from a payor financial account to a payee financial account in response to detecting the first payor spatial gesture, wherein the first payer spatial gesture corresponds to an initiate-payment gesture of the one or more predetermined spatial gestures;
generating, by the payor transaction device, a first transaction identifier associated with the transfer of funds in response to detecting the first payor spatial gesture; and
transmitting, by the payor transaction device, the first transaction identifier to the payee transaction device.
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 2 - 11 and 14 - 23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 2 - 11 and 14 - 23 is/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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 15, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention involves detecting a waking spatial gesture; responsive to detecting the waking spatial gesture, determining the first device is in a sleep mode, and determining that a second device is within a predetermined proximity of the first device, transitioning the first device from the sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold of detecting that the second device is within the predetermined proximity of the first device, wherein the first device consumes less power in the sleep mode than in the ready mode; and when a first spatial gesture of the one or more predetermined spatial gestures is detected by the first device within the predetermined time threshold, performing an action, which is a fundamental economic principles or practices (performing an action (e.g., transfer of funds)); commercial or legal interactions (performing an action (e.g., transfer of funds)); and managing personal behavior or relationships or interactions between people (detecting, determining, transitioning, performing, etc.).
The mere nominal recitation of a “first device” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to detecting a waking spatial gesture; responsive to detecting the waking spatial gesture, determining the first device is in a sleep mode, and determining that a second device is within a predetermined proximity of the first device, transitioning the first device from the sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold of detecting that the second device is within the predetermined proximity of the first device, wherein the first device consumes less power in the sleep mode than in the ready mode; and when a first spatial gesture of the one or more predetermined spatial gestures is detected by the first device within the predetermined time threshold, performing an action.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind but for the recitation of generic computer components. That is, other than reciting “first device”, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “first device” language, the claim encompasses the user manually detecting a waking spatial gesture; responsive to detecting the waking spatial gesture, determining the first device is in a sleep mode, and determining that a second device is within a predetermined proximity of the first device, transitioning the first device from the sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold of detecting that the second device is within the predetermined proximity of the first device, wherein the first device consumes less power in the sleep mode than in the ready mode; and when a first spatial gesture of the one or more predetermined spatial gestures is detected by the first device within the predetermined time threshold, performing an action. NOTE: (a) The claim is exclusively from the perspective of a “first device”. (b) Although the claim refers to a “second device”, the claim is not from the perspective of the “second device” and the “second device” does not perform any of the positively recited steps or acts required of the claimed invention. The “second device” merely interacts with the machine (i.e., “first device”) from whose perspective the invention is claimed.
The mere nominal recitation of a “first device” does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea) is not integrated into a practical application.
The claim recites the combination of additional elements of a “first device” performing some of the steps or acts including “a first device via a motion-detecting device of the first device” performing the “detecting” steps and “the first device” performing the “transitioning” step. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer performing the generic computer functions of (a) data processing (e.g., “detecting”, “determining”, “transitioning”, “performing”, etc. step(s) as claimed). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering gesture data), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The “first device” is also recited at a high level of generality, and merely automates the step(s). The “first device” limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 11/17/23 does not provide any indication that the “first device” is anything other than generic, off-the-shelf computer components, see at least Fig. 3, para. [0029] [0052] [0061] [0111]. Furthermore, the prosecution history of the instant application provides Mistry, US Pub. No. 2014/0139454; Houghton, IV, US Pub. No. 2018/0137480; Just, US Pub. No. 2015/0127541; and Schorsch, US Pub. No. 2017/0038847 operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “detecting”, “determining”, “transitioning”, “performing”, etc. step(s) as claimed) are well understood, routine and conventional. See Mistry, abstract, [0078] [0115] [0119] [0120] [0136] [0160] [0161]. See Houghton, IV, abstract, [0013] [0029] [0031] [0034] [0037] [0038] [0039] [0040] [0042]. See Just, abstract, Figs. 3, 5, [0007] [0008] [0021] [0025] [0026] [0031] [0038] [0039] [0040] [0041] [0043] [0051] [0053] [0054] [0055] [0056] [0058] [0064] [0067] [0072] [0073] [0074] [0076] [0078] [0080] [0089] [0092] [0095] [0096] [0098]. See Schorsch, abstract, [0019] [0020] [0030] [0043] [0044] [0047] [0048] [0058] [0059] [0060] [0071] [0077] [0083] [0091]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data processing (e.g., “detecting”, “determining”, “transitioning”, “performing”, etc. step(s) as claimed) are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 16 - 20 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent first device claim 2 and independent first device claim 21 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as method claims. The component(s) (e.g., “processor”, “motion-detecting device”, “memory”) described in independent first device claim 2 and the component(s) (e.g., “processor”, “motion-detecting device”, “memory”) described in independent first device claim 21, add nothing of substance to the underlying abstract idea. At best, the product(s) (first device) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 3 - 11, 14 and 22 - 23 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Response to Arguments
Double Patenting
Applicant's arguments have been fully considered but they are not persuasive. No terminal disclaimer has been filed.
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claim(s) are not directed to a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
Fundamental economic principles or practices relate to the economy and commerce. The claimed invention encompasses fundamental economic principles or practices as it relates to processing of payments (performing an action (e.g., transfer of funds)).
The claimed invention encompasses commercial or legal interactions. The claimed invention relates to processing of payments (performing an action (e.g., transfer of funds)). Processing of payments, in the instant scenario, pertains to agreements in the form of “sales activities or behaviors” and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions (e.g., “detecting”, “determining”, “transitioning”, “performing”, etc.).
The interpretation of the claimed invention is consistent with the prosecution history of the instant application.
For example, see at least claims 2, 3, 15, 16 and 21 as filed 01/23/26:
Claim 15 recites, “when a first spatial gesture of the one or more predetermined spatial gestures is detected by the first device within the predetermined time threshold, performing an action.” NOTE: Although claim 15 is representative, claims 2 and 21 recite analogous features.
Claim 3 recites, “wherein the action comprises: initiate a transfer of funds from a payor financial account to a payee financial account in response to detecting the first spatial gesture, wherein the first spatial gesture corresponds to an initiate-payment gesture of the one or more predetermined spatial gestures; generate a first transaction identifier associated with the transfer of funds in response to detecting the first spatial gesture; and transmit the first transaction identifier to the second device.” NOTE: Although claim 3 is representative, claims 16 recites analogous features.
For example, see at least pg. 16 of applicant’s arguments/ remarks as filed 9/4/25:
….. the claims provide for "systems and methods for initiating and/or facilitating a financial transaction in response to detecting and translating a spatial gesture."
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
The claimed invention is directed to mental processes. The claimed invention encompasses observations, evaluations, judgements and opinions (e.g., “responsive to detecting the waking spatial gesture, determining the first device is in a sleep mode, and determining that a second device is within a predetermined proximity of the first device” and “when a first spatial gesture of the one or more predetermined spatial gestures is detected ….. within the predetermined time threshold, performing an action.”) which are examples of mental processes.
Contrary to applicant’s arguments, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aide. Similarly, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Although claims 2 - 11 and 14 - 23 suggest the steps or acts occur on a computer (i.e., “processor”, “motion-detecting device”, “memory” in first device claims 2 - 11, 14 and 21 - 23) and claims 15 - 20 suggest some of the steps or acts occur on a computer (i.e., “a first device via a motion-detecting device of the first device”/ “first device” in method claims 15 - 20), nothing forecloses applicant’s claimed invention from being performed by a human and thus applicant’s claimed invention is still directed to a mental process.
See also, MPEP §2106.04(a)(2)(III).
(2)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it (a) provides a technical solution to a technical problem; (b) provides improvements in the functioning of a computer, or to any other technology or technical field (e.g, “Applicant submits that the amended claims disclose an improvement to device interfaces used for performing actions, such as conducting transactions. In particular, the claims represent a practical application by saving power of an electronic device by utilizing a sleep mode when not in use for gesture detection”. See pg. 14 of applicant’s arguments/ remarks as filed 01/23/26. “Thus, the claims provide a technical improvement, and therefore recite a practical application, by preserving battery life of the device during times the user does not intend to utilize the gesture detection functionality of the device, while nevertheless providing for easy and quick transitioning of the device to the "ready mode" using the "waking spatial gesture." “ See pgs. 14 - 15 of applicant’s arguments/ remarks as filed 01/23/26); and (c) effecting a transformation or reduction of a particular article to a different state or thing (e.g., “For example, determining that the first device is in a sleep mode and transitioning the first device from a sleep mode to a ready mode are actions that describe and affect a technological state of a computing device and that do not describe fundamental economic practices/commercial interactions/managing personal behavior.” See pg. 12 of applicant’s arguments/ remarks as filed 01/23/26). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention (a) provides a technical solution to a technical problem; and (b) provides improvements in the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
With respect to applicant’s “solution”/ “improvements”. Performing an action (e.g., transfer of funds) is directed to the underlying abstract idea, not the functioning of the computer itself. What applicant is really arguing is the use of a computer as a tool or the benefits of automation itself.
For example, see pg. 15 of applicant’s arguments/ remarks as filed 01/23/26 which states:
Applicant further submits that in addition to reducing the power usage of the device, the claims further enhance the ease-of-use without requiring "one or more of the users to access a user device, find and access a specific application on the user device, configure the transaction (e.g., manually enter payment amount, payment account information, identify payee account information, etc.), and manually input authentication information and/or final approval of the transaction" because the claims provide for "systems and methods for initiating and/or facilitating a financial transaction in response to detecting and translating a spatial gesture." Specification 1 [0003], [0021]. That is, the Applicant's claimed technology provides unconventional improvements by enhancing a user's ability to conduct an action with a mobile device with minimal inputs. This is a clear advancement over prior technologies because prior technologies are "unnecessarily cumbersome and inconvenient," typically requiring significant manual inputs to a device and/or application on a user device by one or more users as previously described above.
Adding the words “apply it” (or an equivalent) with the judicial exception is not
not indicative of integration into a practical application. See also, MPEP § 2106.05(f). Merely using a computer as a tool to perform an abstract idea; and mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application. See also, MPEP §2106.05(f).
With respect to applicant’s arguments regarding “transformation”, applicant appears to argue that the “article” is the “sleep mode” and that is transformed to “ready mode”. This is not the type of “transformation of a particular article to a different state or thing” contemplated however. This is a transformation of an intangible concept such as data processing. See also, MPEP §2106.05(c).
Contrary to applicant’s arguments, features applicant relies upon are “insignificant extra-solution activity”.
For example, they are “insignificant” because they fail to impose meaningful limits on the claim such that it is not nominally or tangentially related to the claimed invention (e.g., “responsive to detecting the waking spatial gesture, determining the first device is in a sleep mode, and determining that a second device is within a predetermined proximity of the first device”; “when a first spatial gesture of the one or more predetermined spatial gestures is detected within the predetermined time threshold”). These are recited as pre-conditions, not positively recited steps or acts required of the claimed invention. Arguably, the only pre-condition actually recited as a positively recited step and that is actually required to be performed by the claimed “first device” is detecting the waking spatial gesture (i.e., “detecting, by a first device via a motion-detecting device of the first device, a waking spatial gesture;”). Extra-solution activity includes both pre-solution and post-solution activity.
For example, they present an “insignificant application” (e.g., “wherein the first device consumes less power in the sleep mode than in the ready mode”.). The “wherein” clause is not a positively recited step or act required of the claimed invention, it is a non-functional descriptor of the intended application (i.e. reduced power consumption) sought by use of the “sleep mode” relative to the “ready mode”. See also, MPEP §2103 I. C. and MPEP §2111.04 “wherein” clause. See also, MPEP §2111.05 “nonfunctional descriptive material”.
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information; analyzing it (e.g., “detecting ….. a waking spatial gesture; responsive to detecting the waking spatial gesture, determining the first device is in a sleep mode, and determining that a second device is within a predetermined proximity of the first device, transitioning ….. the first device from the sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold of detecting that the second device is within the predetermined proximity of the first device, wherein the first device consumes less power in the sleep mode than in the ready mode; and when a first spatial gesture of the one or more predetermined spatial gestures is detected by the first device within the predetermined time threshold, performing an action.”); and displaying certain results of the collection and analysis merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application. See also, MPEP §2106.05 (h).
(3) Applicant argues inventive concept (i.e., The claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)). Applicant argues the claimed invention is not “well-understood, routine and conventional”.
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 11/17/23 does not provide any indication that the “first device” is anything other than generic, off-the-shelf computer components, see at least Fig. 3, para. [0029] [0052] [0061] [0111]. Furthermore, the prosecution history of the instant application provides Mistry, US Pub. No. 2014/0139454; Houghton, IV, US Pub. No. 2018/0137480; Just, US Pub. No. 2015/0127541; and Schorsch, US Pub. No. 2017/0038847 operating in a similar environment, suggesting performing tasks such as (a) data processing (e.g., “detecting”, “determining”, “transitioning”, “performing”, etc. step(s) as claimed) are well understood, routine and conventional. See Mistry, abstract, [0078] [0115] [0119] [0120] [0136] [0160] [0161]. See Houghton, IV, abstract, [0013] [0029] [0031] [0034] [0037] [0038] [0039] [0040] [0042]. See Just, abstract, Figs. 3, 5, [0007] [0008] [0021] [0025] [0026] [0031] [0038] [0039] [0040] [0041] [0043] [0051] [0053] [0054] [0055] [0056] [0058] [0064] [0067] [0072] [0073] [0074] [0076] [0078] [0080] [0089] [0092] [0095] [0096] [0098]. See Schorsch, abstract, [0019] [0020] [0030] [0043] [0044] [0047] [0048] [0058] [0059] [0060] [0071] [0077] [0083] [0091]. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data processing (e.g., “detecting”, “determining”, “transitioning”, “performing”, etc. step(s) as claimed) are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 16 - 20 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims). Therefore, independent first device claim 2 and independent first device claim 21 is/are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as method claims. The component(s) (e.g., “processor”, “motion-detecting device”, “memory”) described in independent first device claim 2 and the component(s) (e.g., “processor”, “motion-detecting device”, “memory”) described in independent first device claim 21, add nothing of substance to the underlying abstract idea. At best, the product(s) (first device) recited in the claim(s) are merely providing an environment to implement the abstract idea.
Dependent claims 3 - 11, 14 and 22 - 23 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
NOTE: Applicant appears to focus on the limitation “wherein the first device consumes less power in the sleep mode than in the ready mode” to suggest the claimed invention is “significantly more” (e.g., “….. significantly more than an abstract idea because it allows for users to execute a transaction using gestures while providing a device mode that preserve battery power during periods that the user is not intending to utilize the gesture detection feature of the device.” See pg. 17 of applicant’s remarks as filed 01/23/26).
The limitation provides an “insignificant application” as noted above under the “integration into a practical application” remarks above. Furthermore, the prosecution history makes clear that the concept is “well-known” and “well-understood, routine and conventional”. See also, MPEP § 2106.05(g) insignificant extra-solution activity. See also, at least Mistry, [0136] [0160] [0161].
(4) Applicant’s argue consideration of claims as “a whole”.
All elements of applicant’s claimed invention were considered and applicant’s claimed invention has been considered as a whole. Analysis of applicant’s broadest independent claim (process (i.e., method) claim 15) and dependents thereof. See at least pgs. 14 - 17 of the Office action above. In particular, the elements directed to the judicial exception (i.e., abstract idea) were considered under PRONG 1. See at least pgs. 14 - 15 of the Office action above. The combination of additional elements were considered under PRONG 2. See at least pg. 15 of the Office action above. NOTE: Applicant’s broadest independent claim (process (i.e., method) claim 15), (a) Does not explicitly recite components such as “a processor” and “memory”; and (b) only positively and explicitly recites performance by the claimed “first device” of two steps (i.e., “detecting, by a first device via a motion-detecting device of the first device, a waking spatial gesture”; and “transitioning, by the first device, the first device from the sleep mode to a ready mode configured for detecting one or more predetermined spatial gestures within a predetermined time threshold of detecting that the second device is within the predetermined proximity of the first device”). See also, MPEP § 2111 broadest reasonable interpretation. Consideration of claims directed other statutory classes (i.e., the “first device” claims found in independent claims 2, independent claim 21 and dependents thereof). See at least pg. 17 of the Office action above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure and relates to translating a gesture to perform an action.
Park T, Lee J, Hwang I, Yoo C, Nachman L, Song J. E-gesture: a collaborative architecture for energy-efficient gesture recognition with hand-worn sensor and mobile devices. In Proceedings of the 9th ACM Conference on Embedded Networked Sensor Systems 2011 Nov 1 (pp. 260-273).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA C HAMILTON whose telephone number is (571)272-1186. The examiner can normally be reached Monday-Thursday, 8-5, EST.
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
Prosecution Insights