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 .
Application Status
This Office Action is in response to Applicant’s response received 01/27/2026.
Claims 1-3, 7, 8, 10-12, 16, 17, 19, and 20 have been amended.
Claims 1-20 are pending and have been examined.
This action is Final, necessitated by amendment.
Withdrawn Rejections
The 35 U.S.C. § 112(a) rejections of 2, 3, 11, and 12 are withdrawn in light of the amendments received.
Claim Rejections
Claims 1-20 remain rejected under 35 U.S.C. § 101 for being directed to an abstract idea without significantly more.
Acknowledgement of Issues Raised by Applicant
Applicant’s arguments with respect to the 35 U.S.C. § 101 rejections of claims 1-20 have been fully considered but are not persuasive.
Response to Arguments
35 U.S.C. § 101
With respect to the 35 U.S.C. § 101 rejections, examiner notes Applicant asserts the claims are patent eligible under 35 U.S.C. §101 and Alice/Mayo analysis per the claims not reciting an abstract idea under step 2A Prong I. Additionally, examiner notes Applicant asserts the claims are patent eligible under 35 U.S.C. §101 and Alice/Mayo analysis per the claims providing additional elements that go beyond the judicial exception and either integrate the judicial exception into a practical application or amount to significantly more, as the claims provide a technological solution to a technological problem and include additional elements that are more than what is well-understood, routine and conventional activity. The Examiner respectfully fails to find Applicant arguments persuasive and maintains the claims are not patent eligible under 35 U.S.C. §101 (analysis continues below).
Examiner’s Response to Step 2A Prong I Arguments
Examiner respectfully disagrees with Applicant’s arguments drawn to step 2A Prong I and respectfully maintains the claims recite an abstract idea for the following reasons:
Applicant’s arguments drawn towards mental processes and mathematical concepts are not germane to the Alice/Mayo analysis performed by Examiner in the last office action. The 35 U.S.C. § 101 rejections did not and do not take the position that the abstract idea identified was a mental process (or a mathematical concept), as implied by applicant’s argument. Instead, what was identified at step 2A I of the examiner’s analysis was the claims reciting certain methods of organizing human activity (MPEP § 2106.04(a)(2) II), and more specifically commercial activities of invoice processing. Mental processes and mathematical concepts are different groupings of abstract ideas distinct from ‘Certain Methods of Organizing Human Activity’ – see MPEP § 2106.04(a) for the enumerated groupings. Accordingly, Examiner respectfully notes that the “cannot be performed by the human mind” consideration is an irrelevant/incorrect consideration to apply to the ‘Certain Methods of Organizing Human’ activity grouping.
Regardless of Applicant’s asserted basis for eligibility drawn to the computer components / additional elements, Examiner fails to see how the aforementioned claim are not recitations of commercial interactions under step 2A Prong I. The Examiner does not contend that the claimed system, processors, non-transitory computer-readable media, etc., are abstract. However, the mere inclusion of claim limitations drawn to computer components / additional elements does not necessarily preclude the same aforementioned claims from being considered to recite an abstract idea under step 2A prong I of Alice/Mayo analysis – again, see Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015), emphasis added: ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). This fact is evident in light of the sequence of steps performed during the revised Alice/Mayo test – see MPEP § 2106.04 II A showing a visual summary of revised step 2A of the Alice/Mayo test.
Examiner notes Applicant’s reliance upon the additional elements recited in step2A Prong I are possibly implying a stance that the claims indicate a clear improvement to technology or some computer functionality even at step 2A Prong I, and thus do not need to undergo the full eligibility analysis (see MPEP § 2106.06(b)). However, the examiner notes streamlined analysis is optional and respectfully submits streamlined analysis should not be performed for the instant claims, because there are no claim limitations, either individually or as an ordered combination, which clearly improve technology, or are otherwise self-evidently patent-eligible – see MPEP §2106.06(b): “Only when the claims clearly improve technology or computer functionality, or otherwise have self-evident eligibility, should the streamlined analysis be used”. Accordingly, the Examiner respectfully submits that a full eligibility analysis should be performed, consistent with MPEP § 2106.06(b).
Accordingly, for the reasons provided above, as well as the reasons provided in the 101 rejections further below, Applicant’s arguments drawn to step 2A Prong I are not persuasive. The examiner respectfully maintains the claims recite an abstract idea (Step 2A Prong I: Yes – the claims recite an abstract idea of invoice processing).
Examiner’s Response to Step 2A Prong II and 2B Arguments
Examiner respectfully disagrees with Applicant arguments that the claims are directed to an improvement to the functioning of a computer, or another technology or technical field and integrate the judicial exception into a practical application and/or amount to significantly more for the following reasons:
Applicant’s arguments including mention of “…The user data is then sent from the second service provider to the mobile application of the first service provider, the login page for the second service provider is closed, and the user data is sent from the mobile application to the first service provider without having to provide the credential to the first service provider…” is not persuasive, as they are not commensurate with claims scope. For example, the claims do not require a login page or mobile application.
Applicant’s arguments asserting a technological solution to a technological problem are not persuasive at least in part because aspects of those arguments are drawn to the abstract idea recited (e.g., “…functionality that allows a service provider to receive a first message from a sender and generate customized invoices (second messages) to send to multiple recipients where each recipient can authorize … an amount of funds (particular to that recipient) to pay a sender”), and does not indicate a technological solution to a technological problem – see MPEP 2106.05(a) II: “… it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology … Merely adding generic computer components to perform the method is not sufficient.”
The additional elements “A payment system comprising: one or more processors configured by executable instructions to perform: … ”, “…by the one or more processors…”, “…a sender device of …”, “…by the one or more processors…”, “…electronic … [document]”, and “…wherein the electronic … [document] is configured with a customized resource accessible via an interactive element…wherein the customized resource is customized … by encoding the interactive element with… [data]…”, of claim 1, the additional elements “…by one or more processors of a payment system…”, “…a sender device of a…”, “…electronic…(invoice)”, and “…wherein the electronic … [document] is configured with a customized resource accessible via an interactive element…wherein the customized resource is customized … by encoding the interactive element with… [data]…”, of claim 10, and the additional elements “One or more non-transitory computer-readable media storing instructions executable by one or more processors associated with a payment system to configure the one or more processors to perform…”, “…by the one or more processors”, “…a sender device of…”, “…electronic…[document]”, and “…wherein the electronic … [document] is configured with a customized resource accessible via an interactive element…wherein the customized resource is customized … by encoding the interactive element with… [data]…”, of claim 19 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering each claim’s additional elements both separately and as an ordered combination. Stating an abstract idea while adding the words "apply it" (or an equivalent) is insufficient to impart patent eligibility under Alice. See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”.
The following claim limitations of the independent claims:
…receiving, by the one or more processors, from a sender device … a message…
…generating, by the one or more processors, … electronic …[data]
…sending, by the one or more processors, … electronic …[data]
…wherein the electronic …[data] comprises an interactive element, …
…an interactive element, from which the … recipient is able to … [initiate a computer functionality, (e.g., the “…confirm payment…”)]
are merely describing the generic network-accessible computer being used in a manner conventional to computer technology, including aspects of interactive element customization, and merely attempts to limit the use of the abstract idea to a particular technological environment (network-accessible computers utilizing generic interactive element customization), which is insufficient to impart patentability under Alice (See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "Neither stating an abstract idea "while adding the words 'apply it,' [...], nor limiting the use of an abstract idea "'to a particular technological environment'", [...] is enough for patent eligibility. Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result"). See also Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer").
To further support the stance provided immediately above, Examiner notes the following prior art and/or MPEP cites indicating or otherwise suggesting the following as well-understood routine and conventional activity1:
the following prior art and/or MPEP cites indicating or otherwise suggesting the claim limitations drawn to “… [sending/generating/receiving], by the one or more processors …”, correspond to functionality that is well-understood, routine and conventional activity for computer technology (i.e., not an improvement to computer technology):
MPEP § 2106.05(d): “The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. … i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); …”}
the following prior art and/or MPEP cites indicating or otherwise suggesting the claim limitations drawn to “…wherein the electronic …[data] comprises an interactive element …”, and “…an interactive element, from which the … recipient is able to … [initiate a computer functionality]”, correspond to functionality that is well-understood, routine and conventional activity for computer technology (i.e., not an improvement to computer technology):
United States Patent Application Publication No. US 20140052571 A1 (Raman), disclosing or otherwise suggesting a “pay” button to complete check-out (i.e., payment) is well-understood, routine and conventional to e-commerce (¶2).
United States Patent Application Publication No. US 20100332351 A1 (Stone), disclosing or otherwise suggesting typical online payment flows provide consumers with a payment button or link (i.e., an interactive element) that is selected when consumers are ready for payment (¶4 in further view of ¶5).
United States Patent Publication No. US-7516488-B1 to Kienzle (“Kienzle”), disclosing or otherwise suggesting that enabling a recipient (e.g., second) user device to present an interactive interface element (e.g., Universal Resource Locator – i.e., Link) via sending an electronic message is well-understood, routine, and conventional function when claimed at a high level of generality, (as the case is here).
The following prior art, when read in view of one another, suggests or otherwise indicates to one of ordinary skill in the art that the claim limitation “…a customized resource accessible via an interactive element…wherein the customized resource is customized … by encoding the interactive element with… [data]…” does not provide sufficient details that one of ordinary skill in the art would recognize as providing an improvement to the functioning of a computer or to any other technology or technical field (MPEP §§2106.04(d)(1) & 2106.05(a)):
United States Patent Application Publication No. US 20110320343 A1 (Koh), see Figs. 3A-3F and at least ¶¶9, 19 disclosing a customized URL of a link (i.e., interactive element) in a payment context.
United States Patent Application Publication No. US 7536351 B2 (Leblang), see at least Abstract, Col 2, lines 17-18, Col 10, lines 10-14, and Col 16, lines 19-33 in further view of Fig. 18, where a URL of a link (i.e., interactive element) is customized via parameters for a payment context.
United States Patent Publication No. US 8762272 B1 (Cozens), see at least Column 11, lines 22-29 disclosing a payment object instance “…particular to a receiving recipient…”: “In the recipient email client module 107 the payment object may display information regarding the sender and the payment amount. The payment object may also include additional information. For example, ... the payment object may incorporate a picture of the recipient or a sender, such as a picture associated with the recipient's contact information on the sender device 105 or recipient device 110.”, in further view of Col 14, line 64 – Col 15, line 5 disclosing the payment object itself is “…an interactive element…”: “the email payment module 125 displays the payment object to the recipient within the email message. The payment object indicates the payment amount and any additional information entered by the sender, such as a memo indicating what the payment is for. The payment object will also display a user interface object, such as a button, that will allow the recipient to accept the payment object, reject the payment object, or access their electronic payment account 152 to view additional transaction details.”
Despite the ordered combination of elements arguably being specific, the Examiner respectfully fails to see as to how the ordered combination is indicative of improving a technological environment or technical field (MPEP § 2106.05(a)) or applying the judicial exception in some meaningful way (MPEP § 2106.05(e)). Each of the individual additional elements are used in a manner conventional to their corresponding technological environments, which lends one of ordinary skill in the art to understand the claims are merely limiting the abstract idea to a particular technological environment and merely applied (MPEP §§ 2106.05 (f), (h)). The particular design choices in terms of how the abstract data is obtained, of which is gathered in a conventional, is not indicative of the claims yielding a technical solution to a technical problem, or applying the judicial exception in some meaningful way (MPEP §2106.05(e)). See MPEP §2106.05(a) emphasis added: “Examples that the courts have indicated may not be sufficient to show an improvement to technology include: … iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48; …”. In other words, the additional elements (e.g., system, processor, interactive element, customized resource, etc.,) are claimed at a high degree of generality, are merely used to send / receive / process information drawn to the abstract idea at a high degree of generality, and are merely used as a tool so as to achieve a result rooted in one of the abstract ideas recited (e.g., process an invoice) – See MPEP §§2106.05(f)(1) - 2106.05(f)(3). Accordingly, even when considered as an ordered combination, the additional elements add nothing that is not already present when the steps are considered separately. Therefore, the manner by which the claims’ additional elements are used is indistinguishable from mere addition of general-purpose computers added post-hoc to the abstract idea recited, and the Examiner respectfully maintains the focus of the claims is not on such an improvement in computers as tools, but rather on abstract ideas that use computers as tools. Accordingly, the claims do not integrate the judicial exception into a practical application and do not amount to significantly more than the judicial exception, even when considered as a whole.
The well-understood, routine, and conventional rationale must include involvement of the additional elements / components outside the abstract idea – not just the abstract idea itself. see TLI Communications LLC v. AV Automotive L.L.C. 823 F.3d 607, 613, 118 USPQ2d 1744, 1748, underline and bold emphasis added: “It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Rather, the components must involve more than performance of “wellunderstood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)”. I.e., The details of the abstract idea indicated by Applicant in remarks are an insufficient basis for patent eligibility under the “well-understood, routine, and conventional” rationale – see also the following case law and MPEP cites:
MPEP § 2106 I:
“eligibility should not be evaluated based on whether the claimed invention has utility, because "[u]tility is not the test for patent-eligible subject matter." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1380, 118 USPQ2d 1541, 1548 (Fed. Cir. 2016)”.
Synopsys, 839 F.3d at 1151:
“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty” (emphasis omitted).
BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018):
“It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”.
MPEP § 2106.05, underline emphasis added:
“…An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." … Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).”.
SAP America, Inc. v. Investpic, LLC, No. 17-2081 (Fed. Cir. 2018):
“No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm. An advance of that nature [i.e., where it lies entirely within the realm of abstract ideas,] is ineligible for patenting…Under the principles developed in interpreting §101, patent law does not protect such claims, without more, no matter how groundbreaking the advance.”
Accordingly, for the reasons provided above, as well as in the 101 rejections further below, the Examiner respectfully maintains that the claims do not integrate the judicial exception into a practical application (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application), as the focus of the claims is not an improvement in computers as tools, but rather on an abstract idea of invoice processing that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the claims do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract invoice processing within a particular technological environment, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field.
Accordingly, in view of the above, the examiner respectfully maintains the claims are directed to an abstract idea under step 2A (Step 2A: The claims are directed to an abstract idea of processing invoices) and do not amount to significantly more (Step 2B: The claims do not amount to significantly more). The claims are patent ineligible, when analyzed under the Alice/Mayo test.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
As an initial matter, the relevant test is the Alice/Mayo test2. The following analysis provided in this section results from the instant application’s claims being examined within the scope of the Alice/Mayo test framework.
When analyzed under step 1 of the Alice/Mayo test3, claims 1-9 are directed to “A payment system comprising one or more processors…”, claims 10-18 are direct to “a method…” and claims 19-20 are directed to “One or more non-transitory computer-readable media…”. Therefore, each of the claims are directed to one of the four statutory categories of invention (Step 1 of Alice/Mayo Test: YES).
In light of step 2A Alice/Mayo analysis performed on the instant claims4, claims 1-20 have been determined to be directed to an abstract idea of invoice processing. The rationales for the aforementioned determination are explained further below.
Prior to step 2A Prong I Alice/Mayo analysis, examiner notes they have identified method claim 10 as the claim that represents the claimed invention for analysis under step 2A Prong I, as method claim 10 is analogous to system claim 1 and product claim 19 under step 2A Prong I analysis. I.e., the step 2A Prong I Alice/Mayo rationales applied to claim 10 (below) are similarly applied to claims 1 and 19, mutatis mutandis.
When analyzed under prong I of revised step 2A, claims 1-20 each recite a method of organizing human activity,5 because independent claims 1, 10, and 19 each recite claim limitations drawn to:
“10. A method comprising:
receiving, by … a payment …[provider], from a … a sender, a first message sent to multiple recipients that includes identifiers for the multiple recipients, wherein the first message is associated with a payment between the sender and each of the multiple recipients;
generating, by … payment … [provider], a second message that includes an electronic invoice based on the first message;
sending, by … payment …[provider], using the identifiers, the second message to each of the multiple recipients, wherein the … invoice is … accessible … [and] from which a receiving recipient is able to confirm payment to the sender, and wherein the … [content] is customized to the receiving recipient by … an identifier of the receiving recipient; and
upon receiving confirmation, withdrawing, by … the payment …[provider], funds from accounts of each of the multiple recipients for deposit into an account of the sender, wherein each of the accounts is identifiable based at least in part on the identifiers in the first message.”
Under broadest reasonable interpretation consistent with the specification6, the above claim limitations recite commercial interactions of invoice processing. (Step 2A Prong I of Alice/Mayo Test: Yes, the claims recite an abstract idea).
This judicial exception recited in independent claims 1, 10, and 19 is not integrated into a practical application because, when analyzed under prong II of revised step 2A of the Alice/Mayo test7:
The additional elements “A payment system comprising: one or more processors configured by executable instructions to perform: … ”, “…by the one or more processors…”, “…a sender device of …”, “…by the one or more processors…”, “…electronic … [document]”, and “…wherein the electronic … [document] is configured with a customized resource accessible via an interactive element…wherein the customized resource is customized … by encoding the interactive element with… [data]…”, of claim 1, the additional elements “…by one or more processors of a payment system…”, “…a sender device of a…”, “…electronic…(invoice)”, and “…wherein the electronic … [document] is configured with a customized resource accessible via an interactive element…wherein the customized resource is customized … by encoding the interactive element with… [data]…”, of claim 10, and the additional elements “One or more non-transitory computer-readable media storing instructions executable by one or more processors associated with a payment system to configure the one or more processors to perform…”, “…by the one or more processors”, “…a sender device of…”, “…electronic…[document]”, and “…wherein the electronic … [document] is configured with a customized resource accessible via an interactive element…wherein the customized resource is customized … by encoding the interactive element with… [data]…”, of claim 19 amount to no more than mere instructions to implement the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05 (f), (h)), even when considering each claim’s additional elements both separately and as an ordered combination. Stating an abstract idea while adding the words "apply it" (or an equivalent) is insufficient to impart patent eligibility under Alice. See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "… Stating an abstract idea "while adding the words ‘apply it’ " is not enough for patent eligibility. … Nor is limiting the use of an abstract idea " ‘to a particular technological environment.’ … Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result”.
The judicial exception alone cannot provide the improvement under Alice/Mayo analysis, and an improvement in the abstract idea itself is not a technological solution to a technological problem (MPEP §§ 2106.05 (a), (a) II). See the following:
MPEP 2106.05(a) II: “… it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology … Merely adding generic computer components to perform the method is not sufficient.”
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015): “... our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”
Customedia Techs. V. Dish Network Corp., 951 F.3d 1359, (Fed. Cir. 2020): “We have held that ‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ was insufficient to render the claims patent eligible as an improvement to computer functionality”.
In light of the above rationales provided for step 2A Prong II analysis, the Examiner respectfully submits the focus of the claims is not on an improvement in computers as tools, but rather on an abstract idea that uses computers as tools. Considered both separately and as an ordered combination, the additional elements of the independent claims do not integrate the abstract idea into a practical application, as they do no more than represent computers performing functions that correspond to (,i.e., implement,) the acts of the abstract invoice processing within a particular technological environment, and do not provide details such that one of ordinary skill in the art would recognize the claims as reflecting an improvement to the functioning of a computer or any other technology or technical field. (Step 2A Prong II of Alice/Mayo Test: NO, the additional elements do not integrate the judicial exception into a practical application). Accordingly, claims 1, 10, and 19 are determined to be directed to an abstract idea.
When analyzed under step 2B8, claims 1, 10, and 19 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 1, 10, and 19, each when viewed as a whole, do not include elements amounting to significantly more, as their additional elements, each viewed both individually and as an ordered combination, amount to no more than mere instructions to implement the abstract invoice processing concept within a particular technological environment – see MPEP §§ 2106.05 (f), (h) and Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014). Even though claims 1, 10, and 19 incorporate a payment system, a sender device, and interactive element, the manner by which the claims’ additional elements are used is indistinguishable from mere addition of general-purpose computers added post-hoc to the abstract idea recited. Nothing in the claims indicate specific steps undertaken by the computer elements that are beyond conventional functionality of a generic network-accessible client-server architecture being used at a high degree of generality, excepting the abstract idea it is merely used as a tool for – the claimed computer implementation itself is wholly generic when viewed in light of the technological environment of client-server networks. Accordingly, when considered both separately and as an ordered combination, none of the elements of the independent claims add significantly more to the abstract idea itself (i.e., an inventive concept), as merely employing computers as tools to automate and/or implement the abstract idea cannot provide significantly more than the judicial exception itself – see BSG Tech LLC vs. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018): “It has been clear since Alice that a Claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept”.
Hence, independent claims 1, 10, and 19 are not patent eligible.
In order to further support the aforementioned determinations that the aforementioned additional elements are merely applied and/or do not provide improvements to the functioning of a computer or to any other technology or technical field under steps 2A Prong II and 2B, Examiner notes the following evidentiary support9:
The following claim limitations of the independent claims:
…receiving, by the one or more processors, from a sender device … a message…
…generating, by the one or more processors, … electronic …[data]
…sending, by the one or more processors, … electronic …[data]
…wherein the electronic …[data] comprises an interactive element, …
…an interactive element, from which the … recipient is able to … [initiate a computer functionality, (e.g., the “…confirm payment…”)]
are merely describing the generic network-accessible computer being used in a manner conventional to computer technology, including aspects of interactive element customization, and merely attempts to limit the use of the abstract idea to a particular technological environment (network-accessible computers utilizing generic interactive element customization), which is insufficient to impart patentability under Alice (See Alice Corp. v. CLS Bank International, 573 U.S. 208, 223-24 (2014): "Neither stating an abstract idea "while adding the words 'apply it,' [...], nor limiting the use of an abstract idea "'to a particular technological environment'", [...] is enough for patent eligibility. Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result"). See also Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) ("An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer").
To further support the stance provided immediately above, Examiner notes the following prior art and/or MPEP cites indicating or otherwise suggesting the following as well-understood routine and conventional activity10:
the following prior art and/or MPEP cites indicating or otherwise suggesting the claim limitations drawn to “… [sending/generating/receiving], by the one or more processors …”, correspond to functionality that is well-understood, routine and conventional activity for computer technology (i.e., not an improvement to computer technology):
MPEP § 2106.05(d): “The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. … i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); …”}
the following prior art and/or MPEP cites indicating or otherwise suggesting the claim limitations drawn to “…wherein the electronic …[data] comprises an interactive element …”, and “…an interactive element, from which the … recipient is able to … [initiate a computer functionality]”, correspond to functionality that is well-understood, routine and conventional activity for computer technology (i.e., not an improvement to computer technology):
United States Patent Application Publication No. US 20140052571 A1 (Raman), disclosing or otherwise suggesting a “pay” button to complete check-out (i.e., payment) is well-understood, routine and conventional to e-commerce (¶2).
United States Patent Application Publication No. US 20100332351 A1 (Stone), disclosing or otherwise suggesting typical online payment flows provide consumers with a payment button or link (i.e., an interactive element) that is selected when consumers are ready for payment (¶4 in further view of ¶5).
United States Patent Publication No. US-7516488-B1 to Kienzle (“Kienzle”), disclosing or otherwise suggesting that enabling a recipient (e.g., second) user device to present an interactive interface element (e.g., Universal Resource Locator – i.e., Link) via sending an electronic message is well-understood, routine, and conventional function when claimed at a high level of generality, (as the case is here).
The following prior art, when read in view of one another, suggests or otherwise indicates to one of ordinary skill in the art that the claim limitation “…a customized resource accessible via an interactive element…wherein the customized resource is customized … by encoding the interactive element with… [data]…” does not provide sufficient details that one of ordinary skill in the art would recognize as providing an improvement to the functioning of a computer or to any other technology or technical field (MPEP §§2106.04(d)(1) & 2106.05(a)):
United States Patent Application Publication No. US 20110320343 A1 (Koh), see Figs. 3A-3F and at least ¶¶9, 19 disclosing a customized URL of a link (i.e., interactive element) in a payment context.
United States Patent Application Publication No. US 7536351 B2 (Leblang), see at least Abstract, Col 2, lines 17-18, Col 10, lines 10-14, and Col 16, lines 19-33 in further view of Fig. 18, where a URL of a link (i.e., interactive element) is customized via parameters for a payment context.
United States Patent Publication No. US 8762272 B1 (Cozens), see at least Column 11, lines 22-29 disclosing a payment object instance “…particular to a receiving recipient…”: “In the recipient email client module 107 the payment object may display information regarding the sender and the payment amount. The payment object may also include additional information. For example, ... the payment object may incorporate a picture of the recipient or a sender, such as a picture associated with the recipient's contact information on the sender device 105 or recipient device 110.”, in further view of Col 14, line 64 – Col 15, line 5 disclosing the payment object itself is “…an interactive element…”: “the email payment module 125 displays the payment object to the recipient within the email message. The payment object indicates the payment amount and any additional information entered by the sender, such as a memo indicating what the payment is for. The payment object will also display a user interface object, such as a button, that will allow the recipient to accept the payment object, reject the payment object, or access their electronic payment account 152 to view additional transaction details.”
As evidenced by the above, the additional elements generally corresponding to the computer functionality claimed are not indicative of improvements to the functioning of a computer or to any other technology or technical field under either step 2A Prong II or step 2B, and instead are indicative of the additional elements being merely applied (MPEP § 2106.05(f)) and/or merely limiting the use of the abstract idea to a particular technological environment (MPEP §2106.05(h)).
With respect to the dependent claims, they have each been given the full Alice/Mayo analysis, including analyzing the additional elements both individually and as an ordered combination (if any). The dependent claims are also held patent ineligible under 35 U.S.C. § 101 because of the same reasoning as above, and because the claim limitations of the dependent claims fail to establish that the claims are integrated into a practical application or amount to significantly more. The rationales for the aforementioned determinations are explained further below.
With respect to dependent claims 2 and 12, they recite further details of the abstract invoice processing, per reciting limitations “…wherein the message is … [a] message comprising one of…”. The additional elements, “…electronic…”, and “…an email…”do no more than represent the use of computers as tools to perform the abstract idea and merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, the claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claims 2 and 12 are also not patent eligible.
With respect to dependent claims 3 and 12, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application or amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, and the additional elements “email addresses” and “phone numbers” do no more than represent the use of computers as tools to perform the abstract idea and merely limits the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, in view of the claim failing to establish that the aforementioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, dependent claims 3 and 12 are not patent eligible subject matter.
With respect to dependent claims 4, 5, 13, and 14, the additional limitations, when considered individually and as an ordered combination, do not recite additional elements outside of the abstract idea that integrate the judicial exception into a practical application or amount to significantly more than the abstract idea. The claims fail to establish that the previously mentioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, and the additional element “…electronic…” does no more than limits the use of the abstract idea to a particular technological environment (MPEP § 2106.05(h)). Accordingly, in view of the claims failing to establish that the aforementioned additional elements are successfully integrated / amounting to significantly more, either alone or in combination, dependent claims 4, 5, 13, and 14 are also not patent eligible subject matter.
With respect to dependent claims 6 and 15, they do not provide any further recitation of the abstract invoice processing concept under step 2A Prong I analysis. However, under step 2A Prong II and step 2B analysis, the additional element “…wherein the interactive element includes at least one of a uniform resource locator, a link to a webpage, or a control that causes an application on a recipient device to present a user interface.” does no more than represent the use of computers as tools to perform the abstract idea and/or merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Merely automating the invoice processing to try to make the process faster or more efficient does not integrate the abstract idea into a practical application or amount to significantly more. Accordingly, when considered as a whole, these claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claims 6 and 15 are also not patent eligible.
With respect to dependent claims 7 and 16, they recite further details of the abstract invoice processing, per reciting limitations “…an identifier of the receiving recipient…”. The additional element, “…wherein the interactive element that is customized to the receiving recipient is encoded at least with … [data]” does no more than represent the use of computers as tools to perform the abstract idea and merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, the claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claims 7 and 16 are also not patent eligible.
With respect to dependent claims 8 and 17, they recite further details of the abstract invoice processing, per reciting limitations “…an … identifier corresponding to the sender and an … identifier corresponding to the receiving recipient… identify the account of the sender and the account of the receiving recipient based at least on the … identifier of the sender and the … identifier of the receiving recipient”. The additional element, “…wherein the interactive element that is customized to the receiving recipient includes an encoded identifier … and … [another] encoded identifier” does no more than represent the use of computers as tools to perform the abstract idea and merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, the claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claims 8 and 17 are also not patent eligible.
With respect to dependent claims 9 and 18, they recite further details of the abstract invoice processing, per reciting limitations “…interaction … with the … receiving recipient is interpreted by the payment …[provider] as indicating that the receiving recipient confirms that the payment from the receiving recipient to the sender is authorized”. The additional element, “…wherein interaction with the interactive element … is interpreted by the payment system as indicating …” does no more than represent the use of computers as tools to perform the abstract idea and merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, the claims do not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claims 8 and 17 are also not patent eligible.
With respect to dependent claim 20, it recites further details of the abstract invoice processing, per reciting limitations “…an identifier of the receiving recipient …”. The additional element, “…wherein the interactive element that is customized to the receiving recipient is encoded at least with… [data]” does no more than represent the use of computers as tools to perform the abstract idea and merely limit the use of the abstract idea to a particular technological environment (MPEP §§ 2106.05(f) & 2106.05(h)). Accordingly, when considered as a whole, the claim does not improve the functioning of a computer, or to any other technology or technical field, do not integrate the judicial exception into a practical application, and do not amount to significantly more. Therefore, dependent claim 20 is also not patent eligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/M.A.M./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
1 See MPEP §2106.05(f), emphasis added: “For example, because this [Mere Instructions To Apply An Exception] consideration often overlaps with the improvement consideration (see MPEP § 2106.05(a)), the particular machine and particular transformation considerations (see MPEP § 2106.05(b) and (c), respectively), and the well-understood, routine, conventional consideration (see MPEP § 2106.05(d)), evaluation of those other considerations may assist examiners in making a determination of whether an element (or combination of elements) is more than mere instructions to apply an exception”.
2 See MPEP § 2106 I.
3 See MPEP §§ 2106.03 I, II.
4 See MPEP §§ 2106.04 I, II, (d) I.
5 See MPEP § 2106.04(a)(2) II
6 See MPEP § 2111.
8 See MPEP § 2106.05.
9 MPEP §2106.07, underline emphasis added: “When evaluating a claimed invention for compliance with the substantive law on eligibility, examiners should review the record as a whole (e.g., the specification, claims, the prosecution history, and any relevant case law precedent or prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter.”
10 See MPEP §2106.05(f), emphasis added: “For example, because this [Mere Instructions To Apply An Exception] consideration often overlaps with the improvement consideration (see MPEP § 2106.05(a)), the particular machine and particular transformation considerations (see MPEP § 2106.05(b) and (c), respectively), and the well-understood, routine, conventional consideration (see MPEP § 2106.05(d)), evaluation of those other considerations may assist examiners in making a determination of whether an element (or combination of elements) is more than mere instructions to apply an exception”.
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