DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 30, 2026 has been entered.
This is the Non-Final Office Action in response to the Amendment filed on March 30, 2026 for Application No. 18/628,414, filed on April 05, 2024, title: “Payments In Communication Systems”.
Status of the Claims
Claims 21-40 were pending. By the 03/30/2026 Amendment, claims 21, 23, 31, 33, 36, and 38 have been amended, and no claim has been added or cancelled. Claims 1-20 were previously cancelled. Accordingly, claims 21-40 are pending in this application and have been examined.
Priority
This Application was filed on 04/05/2024 and is a CON of US Application No. 17/472,980 filed on 09/13/2021 (Patented No. 11,978,046) which is a CON of US Application No. 16/437,024 filed on 06/11/2019 (Patented No. 11,120,440) which is a CON of US Application No. 15/406,331 filed on 01/13/2017, which is a DIV of US Application No. 13/896,253 filed on 05/16/2013 (Patented No. 9,582,789) and has Provisional Application 61/801,277 filed on 03/15/2013.
For the purpose of examination, the 03/15/2013 is considered to be the effective filing date.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent No. claims 11978046, claims 1-12 of US Patent No. 11120440, and claims 1-21 of US Patent No. 9582789. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present Application recite substantially the same limitations as the 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 Patents are directed to the same invention, have the same inventors, and are commonly owned. Therefore, this rejection is deemed necessary.
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 21-40 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 21-30 recite a method to enable electronic payments via communication systems comprising series of steps, claims 31-35 recite a computing system comprising processors and computer-readable media with stored instructions, and claims 36-40 recite a non-transitory computer readable media with stored instructions. Therefore, the claims recite a process, machine, and manufacture 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 21, A computer-implemented method to enable electronic payments via communication systems, comprising:
initiating, by a computing device, a live communication session over one or more communication channels between a first client computing device and a second client computing device using a communication application, each client computing device transmitting communication data to the other client computing device as part of a live communication session, wherein the live communication session comprises audio and video data;
detecting, by the computing device based on a real-time analysis of the audio and video data, that the communication data includes an indication that at least one participant in the live communication session intends to send a payment to at least one other participant in the live communication session;
in response to detecting the indication that at least one participant in the live communication session intends to send a payment to at least one other participant in the live communication session, updating, by the computing device, a user interface of the communication application used to conduct the live communication session to include a selectable payment interface element;
receiving, by the computing device from the first client computing device, input indicating selection of the selectable payment interface element and payment transaction information;
processing, by the computing device, the payment transaction information concurrent with the live communication session, wherein processing, by the computing device, the payment transaction information concurrent with the live communication session comprise;
transmit a payment request comprising payment transaction information to a payment processing system; and
receiving, by the computing device, payment confirmation from the payment processing system; and
communicating, by the computing device, the payment confirmation of the processed payment transaction information to the second client computing device for display in the user interface of the communication application.
The above limitations (underlined), as drafted, is a process that, under its broadest reasonable interpretation, covers a certain method of organizing human activity for enabling electronic payments via communication systems but for the recitation of generic computer components (e.g., a computing system comprising processors and memories with stored instructions, communication channels, first/second client computing devices). More specifically, the claim recites a fundamental economic practice including performing electronic payments in communication systems (initiating communication channels between first/second client computing devices, detecting communication data to send a payment, updating the payment information on a user interface, receiving payment transaction information from the first client computing device, processing the payment transaction information concurrent with the live communication session, transmitting a payment request to a payment processing system, receiving payment confirmation from the payment processing system, and communicating the payment confirmation for display in the user interface). Thus, the claim recites a method of performing or enabling electronic payments via a communication channel, which is a fundamental economic practice and falls under the “Certain Methods Of Organizing Human Activity” grouping of abstract ideas (i.e., hedging, insurance, mitigating risk).
If a claim limitation, under its broadest reasonable interpretation, covers performance of a fundamental economic practice and/or commercial interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. The mere nominal recitation of a generic computing device does not take the claim out of the certain methods of organizing human activity grouping. Accordingly, the claim recites an abstract idea (See MPEP 2106.04(a)(2)III.C.2.).
The newly added amendments such as “wherein the live communication session comprises audio and video data” and “based on a real-time analysis of the audio and video data” further narrow the scope of the claim, but does not change the analysis because a narrow abstract idea does not make it less abstract. The amended claim still recites an abstract idea.
The previously added amendments via the 12/10/2025 Response such as “wherein processing …”, “transmit a payment request …”, and “receiving …” are additional details for the existing functional steps of the claim which further narrow the scope of the claim, but do not change the 101 analysis. As explained in the December 16, 2014 Interim Eligibility Guidance from the USPTO (in reference to the buySAFE, Inc. v. Google, Inc. decision), further narrowing the details of an abstract idea does not change the 101 analysis since a narrower abstract idea does not make it any less abstract.
Claim 31 recites a computing system comprising processors and memories, and claim 36 recites a computer-readable media with stored executable instructions. These claims recite the same elements and limitations as discussed in claim 21. Mere nominal recitation of computer components (e.g., a computing system comprising processors and memories with stored instructions, communication channels, first/second client computing devices) do not take the claims out of the methods of organizing human activity grouping. Therefore, these claims also recite an abstract idea (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.
The claims (21, 31, and 36) recite the additional elements, such as the computing system comprising processors and memories with stored instructions, communication channels, first/second client computing devices to perform the initiating, detecting, updating, receiving, processing, transmitting, receiving, and communicating 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 supported by the Applicant’s Specification (see at least paragraphs 18-22, 58-67 and Figures 1 and 6 in U.S. Publication No. 2024/0338691):
paragraph [0015] describes that “… each network 115 can include a local area network (“LAN”), a wide area network (“WAN”), an intranet, an Internet, a mobile telephone network, or any combination thereof…”,
paragraph [0020] describes that “… each network device 105, 110, 120, and 130 can include a server, desktop computer, laptop computer, tablet computer, a television with one or more processors embedded therein and/or coupled thereto, smart phone, handheld computer, personal digital assistant (“PDA”), or any other wired or wireless, processor-driven device…”,
paragraph [0058] describes that “…The computing machine 2000 may correspond to any of the various computers, servers, mobile devices, embedded systems, or computing systems presented herein …”,
paragraph [0059] describes that “… The computing machine 2000 may be implemented as a conventional computer system, an embedded controller, a laptop, a server, a mobile device, a smartphone, a set-top box, a kiosk, a vehicular information system, one more processors associated with a television, a customized machine, any other hardware platform, or any combination or multiplicity thereof…”,
paragraph [0060] describes that “… The processor 2010 may be a general purpose processor, a processor core, a multiprocessor, a reconfigurable processor, a microcontroller, a digital signal processor (“DSP”), …”, and
paragraph [0064] describes that “… The I/O interface 2060 may be configured to implement any standard interface,…”
The judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of the computing system comprising processors and memories with stored instructions, communication channels, first/second client computing devices. The computer components are 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. 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, the claims 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 2B 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).
The independent claims (21, 31, and 36) 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 elements of using a computer to perform the initiating, detecting, updating, receiving, processing, transmitting, receiving, and communicating 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. The claims do not add significantly more (i.e., an inventive concept) to the abstract idea. Therefore, the independent claims are not patent eligible.
Dependent claims 22-30, 32-35, and 37-40 depend on claims 21, 31, and 36 and thus include all of the limitations and features of their independent claims. Therefore, the dependent claims also are directed to the same abstract idea as in claims 21, 31, and 36.
Claims 22, 32, and 37 recite additional elements “wherein the live communication session is a video conference.” (Additional detailed instructions for the communication session. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 23, 33, and 38 recite additional elements “wherein detecting, by the computing device based on a real-time analysis of the audio and video data, that the communication data includes an indication that at least one participant in the live communication session intends to send a payment to at least one other participant in the live communication session further comprising: detecting, by the computer device, audio indications in the audio and visual data from a user that the user intends to send a payment.” (Additional detailed instructions for detecting the communication data, and audio indications. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 24, 34, and 39 recite additional elements “wherein the audio indications include a voice command.” (Additional detailed instructions for the audio indications. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 25, 35, and 40 recite additional elements “wherein the selectable payment interface element includes one or more fields for receiving payment transaction information.” (Additional detailed instruction for the selectable payment interface element. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claim 26 recites additional elements “wherein the one or more fields are pre-populated with at least a portion of the payment transaction information.” (Additional detailed instructions for the payment transaction information. This claim individually or in combination with others does not integrate the abstract idea into a practical application or provides an inventive concept to the abstract idea).
Claim 27 recites additional elements “wherein the payment transaction information comprises at least a sender payment account identifier associated with a sender payment account and the payment amount.” (Additional detailed instructions for the payment transaction information. This claim individually or in combination with others does not integrate the abstract idea into a practical application or provides an inventive concept to the abstract idea).
Claim 28 recites additional elements “wherein: in response to receiving the payment transaction information from the one or more computing device, the payment processing system transfers the payment amount from the sender payment account to the recipient payment account.” (Additional detailed instructions for transferring the payment amount from the sender payment account to the recipient payment account. This claim individually or in combination with others does not integrate the abstract idea into a practical application or provides an inventive concept to the abstract idea).
Claim 29 recites additional elements “further comprising: in response to receiving the payment transaction information, providing a payment confirmation interface object to a recipient remote client device.” (Additional detailed instructions for providing the payment confirmation interface object to a recipient remote client device. This claim individually or in combination with others does not integrate the abstract idea into a practical application or provides an inventive concept to the abstract idea).
Claim 30 recites additional elements “wherein the payment confirmation interface object comprising a sender identifier, the payment amount, and a request for a payment acceptance from the recipient.” (Additional detailed instructions for the payment confirmation interface object. This claim individually or in combination with others does not integrate the abstract idea into a practical application or provides an inventive concept to the abstract idea).
The dependent claims do no more than providing additional instructions and administrative requirements for the functional steps already recited in the independent claims. These additional recited limitations further narrow the scope of the abstract idea and are merely insignificant solution activities which only refine the abstract idea further and do not include additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea. The 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 21, 31, and 36 to provide a practical application or significantly more than the judicial exception. Therefore, the dependent claims also are not patent eligible.
The focus of the claims is on a method of enabling electronic payments during a communication session hosted by the communication system in order to transfer payment from a sender account to a recipient account. The focus of the claimed invention is on enabling electronic payments via a communication channel. There is no improvement to the computer hardware, the functioning of the computer itself, or the technical process. The claims are not directed to a new type of computing device, a processor, or memory, nor do they provide a method of enabling electronic payments via communication systems. The focus of the claims is not on improving computer-related technology, but on an independent abstract idea that uses computers as tools. 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 (Step 2B-No, the claims are not significantly more than the abstract idea).
Response to Arguments
Double Patenting
In view of Applicant’s 12/10/2025 Response, the Applicant will file a terminal disclaimer when the pending claims are in condition for allowance. Therefore, the rejection is MAINTAINED.
Claim Rejections - 35 USC § 101
Applicant's arguments filed on 03/30/2026 have been fully considered but they are not persuasive.
Step 2A – Prong One
Per pages 9-10 of the Remarks, Applicant argues that the claims are not directed to “agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations” and thus do not fall within the “commercial or legal interactions” subgrouping of the abstract ideas.
Response:
The Examiner respectfully disagrees. In view of Applicant’s comments, the Examiner has removed the subgrouping of “commercial or legal interactions”. However, upon a further review, the amended claims still recite steps to perform or enable electronic payments via a communication channel which is a fundamental economic practice and falls under the “Certain Methods Of Organizing Human Activity” grouping of abstract ideas. The MPEP states “The courts have used the phrases "fundamental economic practices" or "fundamental economic principles" to describe concepts relating to the economy and commerce.” See MPEP 2106.04(a)(2)(II)(A).
Step 2A – Prong Two
Per pages 10-12 of the Remarks, Applicant cites the McRO case, the amended claim 21 (except the initiating step), and argues that the Specification and the claim are directed to an improvement in computer-related technology by including (1) a teaching in the specification about how the claimed invention improves a computer or other technology” and “(2) a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention, as opposed to merely claiming the idea of a solution or outcome,” as set forth in the McRO decision.
Response:
The Examiner respectfully disagrees. Applicant argues that the claim integrates the process into a practical application by providing a payment object interface on a social network identity page to facilitate electronic payments via social networking systems, the Examiner respectfully disagrees. Although these computer-related limitations are not wholly generic in nature and are specific to electronic social network payments, they are described at a high level in the Specification without any meaningful detail about their structure or configuration. As such, the Examiner does not find the computer-related limitations are sufficient to integrate the judicial exception into a practical application. The Examiner has cited the specific description (in the 101 analysis above) about the communication systems from the Specification and confirmed that the system descriptions are generic, and the claims are recited at a high level of generality. Therefore, the claim as a whole does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Applicant’s claimed invention is basically “a business solution” to “a business problem”, and this is substantiated in paragraph 3 of the Specification (see US Pub. No. 2024/0338691).
[0003] When communicating using synchronous communication systems, such as instant messaging and videoconference, users often discuss details related to payments, including money owed to one another. Ideally, such a discussion during a synchronous communication session would not be interrupted in order to complete a payment. In conventional communication systems, payments can be made only by interrupting the conversation to open a separate browser window to access a payment service and then optionally to use a screen-sharing function to confirm that payment details are correct. Each of these actions interrupts the conversation and moves the focus away from the discussion at hand. Likewise, users are often reminded of money they owe to other individuals when reviewing their own social networking news feeds or viewing the social network identity pages of their contacts within their social network. Currently, a way to initiate an electronic payment during a synchronous communication session or directly from another users social network identity page does not exist.
With respect to the argument of the McRO case, the Examiner respectfully disagrees. The McRO case improves computer animation technology through the use of specific rules, rather than human artists, to set morph weights and transition parameters between phonemes. The pending claims do not lay out a particular set of rules for enabling electronic payments between a sender account and a recipient account using a communication system. Applicant’s claimed invention is basically “a business solution” to “a business problem” using the existing technology (i.e., a communication system).
Step 2B
Per pages 12-13 of the Remarks, Applicant argues that the amended claims recite “real-time analysis of audio and video data, to determine an intent to make a payment, and, in response, displaying the interface tools to enable the payment.” These steps are not “well-understood, routine, or conventional” in the field. Therefore, claim 21 is patentable under 35 U.S.C. 101.
Response:
The Examiner respectfully disagrees. As a reminder, the July 2015 Update: Subject Matter Eligibility explains that courts consider the determination of whether a claim is eligible, which involves identifying whether an exception such as an abstract idea is being claimed, to be a question of law. Accordingly, the courts do not rely on evidence, such as publications, to find that a claimed concept is a judicial exception. The identification of a publication, for instance, that discusses a certain idea would not serve as evidence that the idea would be termed "abstract" by the courts. When identifying abstract ideas, judicial exceptions need not be old or long-prevalent, and that even newly discovered judicial exceptions are still exceptions, despite their novelty. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were ‘“basic tools of scientific and technological work’ that lie beyond the domain of patent protection.” The Supreme Court’s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’” The Federal Circuit has also applied this principle, for example, when holding the concept of using advertising as an exchange or currency abstract in Ultramercial, despite the patentee’s arguments that the concept was “new”. Thus, an argument that the Examiner was unable to raise any prior art to support a 101 rejection is evidence that the elements of the claims are not well-known, routine, and conventional is not persuasive.
Also, as explained in the 101 analysis above, the newly added amendments further narrow the scope of the claims, but do not change the analysis because further narrowing the details of an abstract idea does not change the 101 analysis since a narrower abstract idea does not make it any less abstract.
In conclusion, Applicant’s amendments and arguments are not persuasive and the rejection of claims 21-40 under 35 U.S.C. 101 is MAINITAINED.
Claim Rejections - 35 USC § 102/103
An updated prior art search did not identify any art, individually or in combination with others, that teaches each and every element of the claims at this time.
Conclusion
Claims 21-40 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI TRAN whose telephone number is (571)272-7364. The examiner can normally be reached Monday-Friday, 9-5.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695
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