DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
This is a final office action prepared in response to amended claims and Remarks submitted by Applicant on February 10, 2026 relating to U.S. Patent Application No. 18/056,430 filed on December 5, 2023. This is a Division of U.S. Patent Application No. 18/056,430, filed on November 17, 2022, now U.S. Patent 11,928,669, which is a Division of U.S. Patent Application No. 16/119,426, filed on August 31, 2018, now U.S. Patent 11,544,699, which claims priority to Provisional Application 62/552,506, filed on August 31, 2017. Claims 17, 25, 29, 30 and 34 have been amended. Claims 35-37 have been added. Claims 17-18 and 20-37 are pending and have been examined.
Response to Arguments
The Remarks submitted by Applicant on February 10, 2026 have been fully considered, however, are not persuasive.
With respect to the Claim Objections, Applicant has amended Claims 29 and 34 and to correct the typographical error in each claim. The Claim Objections are withdrawn.
With respect to the Section 101 rejection, Applicant has amended independent Claims 17, 25 and 30 to specify that the value representing the selection of the pay with points option is inserted into a transaction field of a standard payment protocol. (Remarks, p. 9). Applicant asserts that the claims employ the information provided by the alleged judicial exception - the value inserted into the transaction field of a standard payment protocol - to determine that the transaction should be treated as a pay-with-points transaction. The merchant host processes the transaction as a normal transaction and passes the transaction field and payment payload over the payment network to the issuer backend. Only the issuer backend determines that this is a pay with points transaction based on the inclusion of the value in the transaction field and that these elements together recite a meaningful way of using the alleged judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. (Remarks, pp. 10-11). Examiner respectfully disagrees. The additional elements of the claims are recited at a high level of generality and are being used as tools to implement the abstract idea. The claims do provide a technical solution to a technical problem such as an improvement to computer functionality or to technology. They do not integrate the abstract idea into a practical application. (See the Section 101 Rejection below). The Section 101 Rejection is maintained.
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 17-18 and 20-37 are rejected pursuant to 35 USC § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 - Statutory Class
Claims 17-18, 20-24 and 35 are directed to a method. Claims 25-29 and 36 are directed to a system. Claims 30-34 and 37 are directed to a non-transitory computer readable storage medium. Therefore, on its face, each of the claims is directed to a statutory class of invention.
Step 2A, Prong 1 – Abstract Idea
Claim 25 recites: expose a pay with points option associated with a financial instrument; receive a selection of the pay with points option; communicate a request for a payment payload for the financial instrument to the issuer backend; receive a payment payload from the issuer backend; insert a value representing the selection of the pay with points option; and provide the payment payload and the transaction field to the merchant host; wherein the merchant host communicates a transaction comprising the transaction field of a standard payment protocol and the payment payload to the issuer backend over a second communication network to the issuer backend over a payment network; and wherein the issuer backend identifies the selection of the pay with points option for the transaction based on the value in the transaction field and to conduct the transaction as a pay-with -points transaction. The recited abstract idea is conducting a payment transaction with a merchant using a pay with points option associated with a financial instrument which amounts to commercial interactions falling under Certain Methods of Organizing Human Activity pursuant to MPEP 2016. Claims 17 and 30 recite the same abstract idea.
Step 2A, Prong 2 – Practical Application
Claim 25 recites an electronic device, a computer processor and a memory storing a mobile wallet application, an issuer payment application, a merchant host, an issuer backend, an issuer, a first communications network, a payment payload, a transaction field of a standard payment protocol, and a payment network. The additional elements are recited at a high level of generality and are being used as tools to implement the abstract idea. They do not integrate the abstract idea into a practical application. They do not provide improvements to the functioning of a computer or to technology because they only manipulate financial data. The claims do not invoke a particular machine as our guidance is clear that a generic computer is not the particular machine envisioned, they do not transform matter as they only manipulate data which is not matter.
Step 2B – Significantly more
As set forth in the discussion in Step 2A, Prong 2, above, the additional elements are recited at a high level of generality and are being used as tools to implement the abstract idea. They do not provide improvements to the functioning of a computer or to technology. They do not integrate the abstract idea into a practical application or add significantly more to the abstract idea.
Dependent claims
Claim 18 (the value is a hash of a value representing the selection of the pay with points option), Claim 20 (the selection of the pay with points option is selected in the issuer payment application), Claims 21, 28 and 33 (the issuer payment application retrieves the selection of the pay with points option from a customer profile), Claims 22, 29 and 34 (the issuer payment application selects the pay with points option based on a prior selection of the pay with points option in a prior transaction), Claims 23, 26 and 31 (the mobile wallet application decodes the payment payload to present the decoded payment payload optically or by NFC), Claims 24, 27 and 32 (the payment payload comprises a cryptogram) and Claims 35, 36 and 37 (the transaction field comprises a Customer End Data (CED) field) further define and merely add specificity to the abstract idea.
As such, Claims 17-18 and 20-37 are not patent eligible.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE PROIOS whose telephone number is (571)272-4573. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE N. PROIOS/Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694