DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
In view of the Appeal Brief filed on January 11, 2017, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/CHRISTINE M Tran/Supervisory Patent Examiner, Art Unit 3695
This is the Non-Final Office Action in response to the Appeal Brief filed on December 23, 2025 for Application No. 18/528,463, filed on December 04, 2023, title: “Systems and Methods For Processing Payments To A Third Party Providing A Product Or Service”. This Office Action includes a new 35 USC 112 rejection.
Status of the Claims
Claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-48 were pending. By the 12/23/2025 Appeal Brief, no claim has been amended, cancelled, or added. Accordingly, claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-48 remain pending in the application and have been examined.
Priority
This Application was filed on 12/04/2023 and is a CON of US Application No. 18/128,856 filed on 03/30/2023, which is a CON of US Application No. 17/351,414 filed on 06/18/2021 (Patented No. 11,829,963), which is a CON of US Application No. 14/721,414 filed on 05/26/2015 (Patented No. 11,068,865), which is a CON of US Application No. 14/243,071 filed 04/02/2014 (abandoned), which is a CON of US Application No. 12/709,810 filed 02/22/2010 (Patent No. 8,732,082), which is a CIP of 12/499,421 filed 07/08/2009 (Patent No. 8,732,080), which claims the benefit of US Provisional Application No. 61/157,097 filed 03/03/2009.
For the purpose of examination, the date 03/03/2009 is considered to be the effective filing date.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 42 recites an Electronic Funds Transfer Network (EFTN 130) to perform all the steps and limitations. However, Applicant’s Specification describes differently. Per paragraph 14 of the Publication No. 2024/0112162, Applicant’s Financial Transfer Network (FTN 100), that links the central system 110 to the Electronic Funds transfer Network 130 (EFTN 130), is the system that triggers the secondary and tertiary transactions from the EFTN to the Central system 110. Also, the central computer (Central system 110) and database is the system that manages the distribution of funds according to customizable business rules.
[0014] The following detailed description outlines possible embodiments of the proposed invention for exemplary purposes. The invention is in no way intended to be limited to any specific combinations of hardware and software. As will be described below, the inventive system and method triggers secondary and tertiary transactions by means of a series of payment instructions from an electronic funds transfer (“EFT”) network to a central computer and database. The central computer and database collectively manage the distribution of funds according to customizable business rules defined by cardholders and merchants.
Paragraph 15 describes the Central system 110 and EFTN 130 are separated systems and that the FTN 100 links the Central system 110 to the EFTN 130 in order to establish the FTN 100 system.
[0015] FIG. 1 illustrates a block diagram of the financial transaction network 100 in accordance with an exemplary embodiment of the present invention. Financial transaction network 100 is a system that links one or more EFT networks, users, merchants and financial institutions towards a common purpose of facilitating an optimal model of consumption, savings and investment. In essence, the inventive system and method establishes a symbiotic relationship among all entities by providing a methodology for habitual savings to the user while integrating merchant loyalty rewards. For avoidance of doubt, it is noted that the term “user” is used interchangeably with the term “cardholder” and/or “consumer” throughout this application.
Per paragraphs 18 of the Publication, the Central system 110 is configured to transmit and receive electronic digital data to and from the EFTN 130, and that the EFTN 130 is provided by the existing credit card providers to route the digital data from the banks or issuers.
[0018] Central system 110 of FIG. 1 is configured to transmit and receive electronic digital data, via a transmission channel, switching service, modem or the like, to and from EFT network 130. EFT network 130 is provided by existing credit card providers to route digital data from banks, acquirers and/or issuers. FIG. 1 further illustrates merchant site 120, acquiring bank 122, acquirer processor 124, merchant bank 126, cardholder 140, card issuing bank 142, issuer processor 144, user-destination accounts 150, and EFT settlement bank 160.
Paragraph 23 further describes that the EFTN 130 automatically triggers the generation of a unique user ID for cardholder and establish a temporary user registration with the central system 110, but not the third payment request for a tertiary transaction and secondary transaction.
[0023] In an alternative embodiment, whenever a primary transaction is routed through an affiliated network, EFT network 130 will automatically trigger the generation of a unique user ID for cardholder 140 and establish a temporary user registration with central system 110. This step would apply for any user that has not yet registered with the system. As will be discussed below, once the temporary account is registered, the user will be contacted and prompted to confirm his or her participation in the inventive program.
Applicant appears to have claimed the steps and functions that are actually performed by the FTN 100 to be performed by the EFTN 130. Per the Specification, the FTN 100 and the EFTN 130 are separate and distinct elements. Therefore, Applicant’s claim contains subject matter which is not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors had possession of the claimed invention.
Moreover, Claim 41 recites an EFTN system with the same elements and limitations as discussed in the method claim 42 above. Therefore, claim 41 is also rejected under the same rationale provided in claim 42.
Dependent claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 43-48 are also rejected because of their dependency on claims 41-42.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-48 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 41-42 recite an EFTN 130 to perform the steps and functions are not definite because Applicant’s Specification describes that the FTN 100 is actually the system that performs the steps and functions. The metes and bounds of the claims cannot be understood because of the lack of definiteness in the claims.
Dependent claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 43-48 are also rejected because of their dependency on claims 41-42.
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 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-48 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over the claims of US Patents No. 11,829,963, 11,068,865, 8,732,082, and 8,732,080. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of the present application recites substantially the same limitations as claims of the patents with minor variations that would have been obvious to one of ordinary skills in the art. Also, both the Application and the patents are directed to the same invention of processing payments to a third party for the third party providing a product or service and commonly owned.
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 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-48 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Under the Step 1 analysis, the claims are reviewed to determine whether they fall within the four statutory categories of patentable subject matter (i.e., process, machine, manufacture, or combination of matter).
Claims 41, 2-6, 8-11, 34-35, 43, 45, and 47 recite an Electronic Funds Transfer Network (EFTN) that automatically generates and transmits a third payment request for a tertiary transaction. Claims 42, 17-23, 25-26, 38-39, 44, 46, and 48 recite a method using an EFTN to automatically generate and transmit a third payment request for a tertiary transaction. Therefore, the claims are directed to a machine and process which fall within the four statutory categories of invention (Step 1-Yes, the claims are statutory).
Step 2A Prong 1:
Under the Step 2A, Prong 1 analysis, the claims are reviewed to determine whether they recite a judicial exception by identifying if the claim limitations fall in one of the enumerated abstract idea groupings (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 42, A method of using an Electronic Funds Transfer Network (EFTN) to automatically generate and transmit a third payment request for a tertiary transaction derived from an electronic digital information of a primary transaction processed by the EFTN and an electronic digital information of a secondary transaction processed by the EFTN, wherein the tertiary transaction involves a third transfer of funds relating to a payment associated with a reward program, from a merchant/business to a third party, subject to a consumer qualifying for a reward of the reward program, where the merchant/business has a first account associated with a terminal of a point-of-sale, and the consumer has first and second accounts held at a financial institution, the method comprising the EFTN:
storing in at least one data store of the EFTN a merchant/business site ID of the merchant/business;
storing in the at least one data store an ID of the first account of the consumer; associating in the at least one data store the merchant/business site ID with the reward program;
associating in the at least one data store the ID of the first account of the consumer with the reward program;
storing in the at least one data store at least one business rule of the reward program;
associating in the at least one data store the at least one business rule of the reward program with the merchant/business site ID and the ID of the first account of the consumer;
associating in the at least one data store the at least one business rule of the reward program with an account of the third party;
further to the consumer executing the primary transaction at the point-of-sale using the first account of the consumer as a source of funds for a purchase of products and/or services from the merchant/business, the primary transaction represented by a first payment request transmitted by the terminal of the point-of-sale, processed through the EFTN and consisting essentially of a first transfer of funds from the first account of the consumer that exactly matches a value of the purchase of the products and/or services at the terminal to the first account of the merchant/business, analyzing the electronic digital information of the primary transaction to determine (i) that the merchant/business site ID matches the merchant/business site ID stored in the at least one data store, (ii) that the ID of the first account of the consumer matches the ID of the first account of the consumer stored in the at least one data store, and (iii) the value of the purchase of the products and/or services;
subject to successful matching of each of (1) the merchant/business site ID in the electronic digital information of the primary transaction with the merchant/business site ID stored in the at least one data store, and (ii) the ID of the first account of the consumer in the electronic digital information of the primary transaction with the ID of the first account of the consumer stored in the at least one data store, applying the at least one business rule of the reward program to the electronic digital information of the primary transaction to at least partially determine eligibility of the first account of the consumer for the payment reward; and
subject to the first account of the consumer being eligible for the payment reward, computing a secondary transaction value for the payment reward, based at least in part on the electronic digital information of the primary transaction and the at least one business rule;
automatically initiating the secondary transaction from a second account of the merchant/business to the second account of the consumer for the secondary transaction value, by using a first transaction processor to initiate the second payment request, containing an electronic digital information of the secondary transaction, and transmitting the second payment request via the EFTN to a financial institution of the second account of the merchant/business, thereby causing the second transfer of funds to be executed;
wherein the secondary transaction is accounted for in a separate transaction from the primary transaction on an account statement of the consumer; and
subject to the first account of the consumer being eligible for the payment reward, computing a tertiary transaction value for the payment, based at least in part on the electronic digital information of the primary transaction, the electronic digital information of the secondary transaction and the at least one business rule; and
automatically initiating the tertiary transaction that includes the payment from the merchant/business to the account of the third party, by using a second transaction processor to initiate the tertiary payment request, containing an electronic digital information of the tertiary transaction, and transmitting the tertiary payment request via the EFTN to a financial institution of the merchant/business, thereby causing the third transfer of funds to be executed;
wherein the tertiary transaction is accounted for in a separate transaction from both the primary transaction and the secondary transaction, on an account statement of the merchant/business.
The above limitations (underlined), as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity but for the recitation of generic computer components (e.g., an EFTN, processors, and data store). More specifically, the claim recites a method of computing a secondary and tertiary transaction values and initiating a secondary and tertiary transactions that include the payment from the merchant/business to the accounts of the consumer and third party by: storing a merchant/business site ID and an ID of the first account of the consumer, associating the merchant/business site ID and the ID of the first account of the consumer, storing the business rule of the reward program, associating the business rule with the merchant/business site ID and the ID of the first account of the consumer, associating the business rule of the reward program with the account of the third party, analyzing the electronic digital information of the primary transaction to determine (i) the merchant/business site ID matches the ID stored in the data store, (ii) the ID of the first account of the consumer matches the ID stored in the data store, and (iii) the value of the purchases, applying the business rule of the reward to partially determine eligibility for the payment reward, computing a secondary transaction value, automatically initiating the secondary transaction, computing a tertiary transaction value, and automatically initiating the tertiary transaction to the account of the third party.
The recited process corresponds to the concepts of a certain method of organizing human activity, specially to a fundamental economic practice to mitigate risk before initiating a secondary transaction and a tertiary transaction (i.e., hedging, insurance, mitigating risk – see steps of “… (i) … matches the merchant/business site ID … (ii) … matches the ID of the first account of the consumer … and (iii) the value of the purchase of the products and/or services”) and commercial interaction (i.e., agreements in the form of contracts; legal obligation; advertising, marketing or sales activities or behaviors; business relations – see steps of “storing …, storing …, associating …, associating …, storing …, associating …, associating …”). See MPEP 2106.04(a)(2)III.C.2.
The claim process being performed on a “computing device” (a central system) via the EFTN limits the idea to a particular technical environment. The claim process, such as storing data, storing data, associating data, associating data, storing data, associating data, associating data, analyzing data, applying data, computing data, initiating data, computing data, and initiating data based on the consumer is qualified for the reward, narrows the abstract idea to a particular type of relationship, but do not make the idea less abstract. The mere nominal recitation of computer components does not take the claim out of the methods of organizing human activity grouping.
If the claim limitations, under their broadest reasonable interpretation, cover performance of a fundamental economic practice and commercial interaction, then they fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, claim 42 recites an abstract idea.
Moreover, although the preamble of the claim recites “A method of using an EFNT to …”, the steps of the body are devoid of any reference to any computer or machine. None of the method steps in the claim are clearly recited as being performed by a computer or device and per the claim scope can be performed by a person with paper and pencil. Thus, under the broadest reasonable interpretation, the claim can be performed within the human mind, which is a mental process (i.e., concepts performed in the human mind including an observation, evaluation, judgement, opinion). Therefore, the claim also recites the abstract idea of a Mental Process. Accordingly, the claim recites an abstract idea.
Claim 41 recites an EFTN along with the comparable elements and limitations as discussed in claim 42. Mere nominal recitation of computer components does not take the claim out of the methods of organizing human activity grouping. Therefore, claim 41 also recites the abstract idea as discussed in claim 42 (Step 2A Prong 1-Yes, the claims recite an abstract idea).
Step 2A Prong 2:
Under the Step 2A, Prong 2 analysis, the claims are reviewed to determine whether the judicial exception (i.e., abstract idea) is integrated into a practical application. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
Claims 41-42 recite the additional elements, such as a central system, an EFTN, merchant/business IDs, consumer IDs, to perform the storing, storing, associating, associating, storing, associating, associating, analyzing, applying, computing, initiating, computing, and initiating steps. The recited additional elements in all steps are recited at a high level of generality and the limitations are done by the generically recited computer system, and this is substantiated by the Applicant’s Specification in paragraphs 16-38 and Figure 1). Mere nominal recitation of computer components do not take the claim out of the methods of organizing human activity grouping.
In addition, the business rules are basically the “administrative criteria” for determining eligibility of the consumer for the reward (see claim step “subject to the matching … applying the business rule of the reward program to determine eligibility of … the consumer for the payment reward), a secondary transaction value (see claim step “determining a secondary transaction value that indicates the rewards … in part on the primary transaction data and the at least one business rule), and controlling the process of the financial transactions and can be set or modified by a user, a merchant, or a government agency, and/or another third party entity (see Specification, paragraphs 6-7). The business rules are no more than to control the electronic payments (secondary and tertiary transactions) to a customer and third party such as a government entity or non-government third party entity (see Specification, paragraph 6). These business rules are customizable by individual, human rules, and are the administration rules or criteria and thus are given very little patentable weight. Thus, while the business rules further narrow the scope of the process, they do not make the claim less abstract.
The judicial exception is not integrated into a practical application. In particular, the claims recites the additional elements of a computer and a database. The computer is recited at a high-level of generality (i.e., as a generic processor performing generic computer functions of receiving/transmitting communications, processing information, querying the database) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The business rules are basically the “administrative criteria” for initiating and controlling the electronic payments to customer(s) and third party. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, claims 41-42 are directed to an abstract idea (Step 2A Prong 2-No, the claims are not integrated into a practical application).
Step 2B:
Under the Step 2A, Prong 2 analysis, the claims are reviewed to determine whether the claims provide 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).
Claims 41-42 do not include additional elements, considered both individually and as an ordered combination, that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the storing, storing, associating, associating, storing, associating, associating, analyzing, applying, computing, initiating, computing, and initiating functions as claimed amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, claims 41-42 are not patent eligible.
Claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 43-48 depend on claims 41-42 and include all the limitations of claims 41-42. Therefore, claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 43-48 recite the same abstract idea of claims 41-42.
Claims 2 and 17 recite additional limitations “wherein the payment comprises at least first and second commissions or first and second fees”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the commissions or fess (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 3 and 18 recite additional limitations “wherein the electronic digital information of the primary transaction includes at least one of: (i) a primary transaction value, (ii) information from the point-of- sale of the merchant/business, (iii) a location associated with providing the products or services; and (iv) at least one of a date and a time of the primary transaction”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the primary transaction (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 4 and 19 recite additional limitations “wherein the tertiary transaction value is based upon the products or services”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the payment value (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 5 and 20 recite additional limitations “wherein the ID of the first account of the consumer comprises a representation of at least one of an account number of a credit or debit card”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the ID of the consumer’s account (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 6 and 21 recite additional limitations “wherein the ID of the first account of the consumer comprises a bank account”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the ID of the consumer account (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 8 and 22 recite additional limitations “wherein the third party controls a timing of the payment associated with the reward program”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the third party (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 9 and 23 recite additional limitations “further comprising the EFTN providing a portal to manage a relationship between the merchant/business and the third party, by at least one of (a) registering the merchant/business, (b) establishing business rules, and (c) designating source and destination accounts”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the central system (MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 10 and 25 recite additional limitations “further comprising the EFTN providing a spending history of the consumer to the merchant/business”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the central system (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 11 and 26 recite additional limitations “further comprising the EFTN providing the merchant/business with a complete consumer view of value, rather than a single card view”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the central system (MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 12 and 27 recite additional limitations “further comprising the EFTN providing the merchant/business with a complete customer view of value, based on an identity of the consumer.”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the central system (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 13 and 29 recite additional limitations “wherein the reward comprises a financial incentive”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the reward (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 14 and 30 recite additional limitations “wherein the reward comprises a non-financial incentive”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the reward (MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 34 and 38 recite additional limitations “wherein the first account of the merchant/business is the same as the second account of the merchant/business”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the first/second accounts of the merchant/business (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 35 and 39 recite additional limitations “wherein the first account of the consumer is the same as the second account of the consumer”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the first/second accounts of the consumer (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 43-44 recite additional limitations “wherein the account number comprises a primary account number of the credit or debit card”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the POS (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 45-46 recite additional limitations “wherein the EFTN is a separate entity from a card issuing bank”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the POS (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
Claims 47-48 recite additional limitations “wherein the first transaction processor is the same as the second transaction processor”. (The limitations amount to well-understood, routine, and conventional functions, e.g., additional details for the POS (see MPEP 2106.05(d)). These claims individually or in combination with others do not integrate the abstract idea into a practical application or add an inventive concept to the abstract idea).
The dependent claims further describe the business relations of the certain method of organizing human activity (abstract idea) and do not include additional elements other than those of claims 41-42 to provide a practical application or significantly more than the judicial exception. The dependent claims do no more than providing additional detailed instructions and administrative requirements for the functional steps already recited in the independent claims. Every recited combination between the recited computing hardware and the recited computing functions has been considered. No inventive concept is found in the claims. Therefore, the claims do not add significantly more (i.e., an inventive concept) to the abstract idea. Therefore, claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 43-48 also are not patent eligible.
The focus of the claims is on a method of computing a secondary transaction value based on the primary transaction data and business rule and tertiary transaction value based on the consumer is qualified for the payment reward and initiating a secondary transaction and a tertiary transaction that include the payment from the merchant/business to the accounts of the consumer and third party. This is “a business solution” to “a business problem” and is supported in paragraphs 5-7 of the specification. The claims are not directed to a new type of processor, a computer network, or a system memory, nor do they provide a method for processing data that improves existing technological processes. The focus of the claims is not on improving computer-related technology, but on an independent abstract idea that uses computers as tools. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use.
The Examiner notes that the present claims include more steps for consumer and merchant/business to register with the reward program (see steps such as storing …, storing …, associating …, associating …, storing …, associating …, associating …) and more steps for automatically generating and transmitting a tertiary transaction (see steps such as subject …, automatically initiating …,). These additional steps and limitations further narrow the scope of the claims, but do not change the analysis because further narrowing the scope of the claims does not make it any less abstract. Automatically generating and transmitting secondary and tertiary transactions further define the scope of the claims, but it does not make the abstract idea less abstract. The secondary transaction is not totally independent from the primary transaction and business rule, it is initiated based on a determination of a secondary transaction value based on primary transaction data and business rule. The tertiary transaction is initiated based on a match between consumer and third party.
Therefore, claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-48 are not patent eligible under 35 USC § 101 (Step 2B-No, the claims are not significantly more than the abstract idea).
Claim Rejections - 35 USC § 102/103
An updated prior art search did not identify any art, individually or in combination with others, that teach each and every element of the claims at this time.
Conclusion
Claims 2-6, 8-11, 17-23, 25-26, 34-35, 38-39, and 41-48 are rejected.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695