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
Claims 1-5, 8-12, 15-19, and 21-23, are presented for examination. Applicant filed a request for continued examination on 04/09/2026 amending claims 1, 8, 11, 15-19; canceling claims 6-7, 13-14, and 20; and adding new claims 21-23. In light of Applicant’s amendments, Examiner has withdrawn the previous objections of claims 1, 6, 9, 13, and 15; the previous § 101 rejection of claims 1-5, 8-12, 15-19; and the previous grounds of prior art rejections of claims 1-5, 8-12, 15-19. Examiner has, however, maintained the previous objection of claims 5 and 10, and established new § 101 rejection for claims 1-5, 8-12, 15-19, and 21-23, in the instant Office action.
Examiner’s Remarks
§ 101 Rejection:
Applicant argues in pages 13-14 of Applicant’s Remarks:
Step 2A Prong Two - The claims integrate the purported abstract idea into a practical application that improves the functioning of a computer or any other technology or technical field
The variously claimed embodiments address these and/or other related problems by providing an improved mechanism by which consistent behavior is achieved across all messaging apps, all operating systems, and all devices. (See, e.g., specification at paragraph [0018].) This is achieved, in part, by configuring a link service application as the only app that is registered/mapped to the received paylink. (See specification at paragraph [0035].) The system queries the OS to identify installed apps compatible with the paylink service. The system then presents an application chooser identifying the one or more compatible applications and prompts the user to select, from these, the second app. The system then launches the selected second app using the signed token and the indicator of the selected app.
Step 2B The Variously Claimed Embodiments Amount to Significantly More Than The Alleged Abstract Idea
It is noted that the MPEP §2106.05 acknowledges, "The Supreme Court has described the second part of the test as the 'search for an inventive concept."' (See Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).) In this respect, it is respectfully asserted that the combination of technical features recited in the independent (and also dependent) claims is directly responsible for the improved behavior discussed above, and that these are neither known nor suggested in the prior art of record, thereby satisfying the "significantly more" test under Step 2B. This is discussed further in Applicant's traversal of the rejections under Section 103.
Examiner respectfully disagrees:
Step 2A: Again, Applicant’s claim limitations are recited at high level of generality lacking technological details and specifics regarding how a problem of technology is solved, i.e., how the technology is improved. There is no recitation that integrates an abstract idea into a practical application. Thus, claims 1-5, 8-12, 15-19, and 21-23, are not patent eligible under § 101 in view of Step 2A of the Test.
Step 2B: Novelty under § 102 and unobviousness under § 103 are different from patent eligibility under § 101; claim can be novel under § 102 and unobvious under § 103 but still not patent eligible under § 101. This is the case with instant claims because they fail Step 2B of the Test for being well-understood, routine and conventional (see the analysis below under heading “Claim Rejections - 35 USC § 101.” Therefore, the instant claims 1-5, 8-12, 15-19, and 21-23, are not patentable under § 101 in view of Step 2B of the Test.
Applicant is invited to set up an interview with Examiner to discuss the patent eligibility matter further.
Prior Art under § 102 and § 103:
The closest prior art reference located by Examiner is Oskolkov (US 2013/0060689 A1) disclosing:
A first user can use a first communication device to transfer funds from an account associated with the first user to a second user via a communication address associated with the second user's second communication device even if the second user is not registered with a financial service provider associated with the account of the first user. The funds can be sent from the first communication device using the Internet, mobile communication systems, or other communication technology via a message, an email, a voice mail, etc., to the second user, wherein notification of the funds can be sent to the second communication device. The first user can send funds using an account with the financial service provider or an affiliated account, and the second user can have the funds deposited into a desired account.
However, Oskolkov does not disclose – alone or in combination with other references – the following limitations found in independent claims 1, 8, and 15, as an ordered combination of steps:
after activation of the link at a second user device associated with a second user, cause execution of a link service application or a website associated with the paylink service at the second user device as an initial handler of the link, wherein the second user device is configured such that only the link service application is registered to the link, mapped to the link, or both registered and mapped to the link, wherein automatic execution of applications other than the link service application or website in response to activation of the link is prevented;
query a second operating system of the second user device to identify one or more compatible applications installed on the second user device that are compatible with the paylink service;
present, via an interface of the second user device, an application chooser identifying the one or more compatible applications and provide a prompt to the second user to select a second application;
receive an indicator of the second application selected by the second user in response to the prompt; and
cause the second application to be executed using the signed token and the indicator of the second application, the execution updating a record at a second account associated with a second user on a second server.
Claim Objections
Claims 5 and 10 are objected to because of the following informalities:
cause the second user to scan the QR code, the scanning providing the data to a link service direct-to-consumer (D2C) application;
There should be no article in front of “data” because it has not appeared in the claims previously. Applicant could amend claims 5 and 10 to recite:
cause the second user to scan the QR code, the scanning providing [[the]] data to a link service direct-to-consumer (D2C) application;
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 1-5, 8-12, 15-19, and 21-23, are rejected under 35 USC § 101 because they are directed to non-statutory subject matter. The rationale for this finding is explained below.
The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself or a patent-eligible application of the judicial exception. See Alice Corp., 134 S. Ct. at 2355,110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is referred to as the Mayo test or the Alice/Mayo test (“the test”), is described in detail in Manual of Patent Examining Procedure (”MPEP”) (see MPEP § 2106(III) for further guidance). The step 1 of the test: It need to be determined whether the claims are directed to a patent eligible (i.e., statutory) subject matter under 35 USC § 101. Step 2A of the test: If the claims are found to be directed to a statutory subject matter, the next step is to determine whether the claims are directed to a judicial exception i.e., law of nature, natural phenomenon, and abstract idea (Prong 1). If the claims are found to be directed to an abstract idea, it needs to be determined whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong 2). Step 2B of the test: If the claims are directed to a judicial exception, the next and final step is to determine whether the claims recite additional elements that amount to significantly more than the judicial exception.
Step 1 of the Test:
When considering subject matter eligibility under 35 USC § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. Here, the claimed invention of claims 1-5 and 21 is a system and, thus, one of the statutory categories of invention. Further, the claimed invention of claims 8-12 and 22 is a series of steps, which is method (i.e., a process), which is also one of the statutory categories of invention. Still further, the claimed invention of claims 15-19 and 23 is a non-transitory computer-readable storage medium, which is also one of the statutory categories of invention.
Conclusion of Step 1 Analysis: Therefore, claims 1-5, 8-12, 15-19, and 21-23, are statutory under 35 USC § 101 in view of step 1 of the test.
Step 2A of the Test:
Prong 1: Claims 1-5, 8-12, 15-19, and 21-23, however, recite an abstract idea of updating a record at a second account associated with a second user in response to a record change request from a first account associated with a first user. The creation of updating a record at a second account associated with a second user in response to a record change request from a first account associated with a first user, as recited in the independent claims 1, 8, and 15, belongs to certain methods of organizing human activity (i.e., managing personal behavior) that are found by the courts to be abstract ideas. The limitations in independent claims 1, 8, and 15, which set forth or describe the recited abstract idea, is found in the following step:
“after activation of the link at a second user device associated with a second user, causing execution of a link service application or a website associated with the paylink service at the second user device as an initial handler of the link, wherein the second user device is configured such that only the link service application is registered to the link, mapped to the link, or both registered and mapped to the link, wherein automatic execution of applications other than the link service application or website in response to activation of the link is prevented” (claims 1, 8, and 15);
“querying a second operating system of the second user device to identify one or more compatible applications installed on the second user device that are compatible with the paylink service” (claims 1, 8, and 15);
“presenting, via an interface of the second user device, an application chooser identifying the one or more compatible applications and provide a prompt to the second user to select a second application” (claims 1, 8, and 15);
“causing the second application to be executed using the signed token and the indicator of the second application, the execution updating a record at a second account associated with the second user on a second server” (claims 1, 8, and 15).
Prong 2: In addition to abstract step recited above in Prong 1, independent claims 1, 8, and 15 recite additional elements:
“a processor” (claims 1 and 15);
“a memory comprising computer program code” (claim 1);
“one or more non-transitory computer-readable storage media having computer-executable instructions” (claim 15);
“a first server” (claims 1, 8, and 15); and
“a second server” (claims 1, 8, and 15).
These additional elements are recited at a high level of generality (i.e., as a generic processor performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using a generic computer components. Also, the following additional limitations recite insignificant extra solution activity (for example, data gathering):
“responsive to a first user initiating a record change request, receiving a link from a first application associated with the first user, the link being generated by a paylink service, the link containing identity data associated with the first user including data of a first account, the link being associated with the record change request associated with a first account, the first application being of a first application type and executing on a first operating system (OS)” (claims 1, 8, and 15);
“obtaining, by activating the link, a signed token from the paylink service, wherein the signed token includes the identity data associated with the first user including the data for the first account and the record change request” (claims 1, 8, and 15); and
“receiving an indicator of the second application selected by the second user in response to the prompt” (claims 1, 8, and 15).
These additional elements/limitations do not integrate the abstract idea into a practical application because they do not impose a meaningful limit on the judicial exception. The additional elements/limitations of independent claims 1, 8, and 15, here do not render improvements to the functioning of a computer or to any other technology or technical field (see MPEP § 2106.05(a)), nor do they integrate the abstract idea into a practical application under MPEP § 2106.05(b) (particular machine); MPEP § 2106.05(c) (particular transformations); or MPEP § 2106.05(e) (other meaningful limitations).
Conclusion of Step 2A Analysis: The limitations in independent claims 1, 8, and 15, which set forth or describe the recited abstract idea are not patent eligible either alone or in combination. The additional elements/limitations in independent claims 1, 8, and 15, are not patent eligible either alone or in combination. Further, the combination of these additional elements/limitations and the limitations which set forth or describe the recited abstract idea is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements/limitations and the limitations which set forth or describe the recited abstract idea do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, independent claims 1, 8, and 15, are non-statutory under 35 USC § 101 in view of step 2A of the test.
Step 2B of the Test: The additional elements of independent claims 1, 8, and 15, (see under Step 2A - Prong 2) are individually well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. The Applicant’s Specification describes these additional elements in following terms:
[0102] The present disclosure is operable with a computing apparatus according to an embodiment as a functional block diagram 1200 in FIG. 12. In an example, components of a computing apparatus 1218 are implemented as a part of an electronic device according to one or more embodiments described in this specification. The computing apparatus 1218 comprises one or more processors 1219 which may be microprocessors, controllers, or any other suitable type of processors for processing computer executable instructions to control the operation of the electronic device. Alternatively, or in addition, the processor 1219 is any technology capable of executing logic or instructions, such as a hardcoded machine. In some examples, platform software comprising an operating system 1220 or any other suitable platform software is provided on the apparatus 1218 to enable application software 1221 to be executed on the device. In some examples, enabling peer-to-peer record change requests to be processed and associated record operations to be performed as described herein is accomplished by software, hardware, and/or firmware.
[0103] In some examples, computer executable instructions are provided using any computer-readable media that are accessible by the computing apparatus 1218. Computer-readable media include, for example, computer storage media such as a memory 1222 and communications media. Computer storage media, such as a memory 1222, include volatile and non-volatile, removable, and non-removable media implemented in any method or technology for storage of information such as computer readable instructions, data structures, program modules or the like. Computer storage media include, but are not limited to, Random Access Memory (RAM), Read-Only Memory (ROM), Erasable Programmable Read-Only Memory (EPROM), Electrically Erasable Programmable Read-Only Memory (EEPROM), persistent memory, phase change memory, flash memory or other memory technology, Compact Disk Read-Only Memory (CD-ROM), digital versatile disks (DVD) or other optical storage, magnetic cassettes, magnetic tape, magnetic disk storage, shingled disk storage or other magnetic storage devices, or any other non-transmission medium that can be used to store information for access by a computing apparatus. In contrast, communication media may embody computer readable instructions, data structures, program modules, or the like in a modulated data signal, such as a carrier wave, or other transport mechanism. As defined herein, computer storage media do not include communication media. Therefore, a computer storage medium should not be interpreted to be a propagating signal per se. Propagated signals per se are not examples of computer storage media. Although the computer storage medium (the memory 1222) is shown within the computing apparatus 1218, it will be appreciated by a person skilled in the art, that, in some examples, the storage is distributed or located remotely and accessed via a network or other communication link (e.g., using a communication interface 1223).
This is a description of general-purpose computer. Further, the additional limitations of “receiving” and “obtaining” information amount to no more than mere instructions to apply the exception using generic computer components. For the same reason these limitations are not sufficient to provide an inventive concept. The additional limitations of “receiving” and “obtaining” information were considered insignificant extra-solution activity in Step 2A - Prong 2. Re-evaluating here in Step 2B, they are also determined to be well-understood, routine, and conventional activity in the field. Similarly to OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network), and 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 additional limitations of independent claims 1, 8, and 15, “receive” and “obtain” information over a network in a merely generic manner. The courts have recognized “receiving” and “obtaining” information functions as well-understood, routine and conventional when claimed in a merely generic manner. Therefore, the additional elements/limitations of independent claims 1, 8, and 15, are well-understood, routine, and conventional. Further, taken as combination, the additional elements/limitations add nothing more than what is present when the elements are considered individually. There is no indication that the combination provides any effect regarding the functioning of the computer or any improvement to another technology.
Conclusion of Step 2B Analysis: Therefore, independent claims 1, 8, and 15, are non-statutory under 35 USC § 101 in view of step 2B of the test.
Dependent Claims: Dependent claims 2-5 and 21 depend on independent claim 1; dependent claims 9-12 and 22 depend on independent claim 8; and dependent claims 16-19 and 23 depend on independent claim 15. The elements in dependent claims 2-5, 9-12, 16-19, and 21-23. which set forth or describe the abstract idea, are:
“the link is generated without knowledge of an application to be used to open the link and contains no data of a compatible OS or compatible application to be used for opening the link” (claims 2, 9, and 16: further narrowing the recited abstract idea);
“displaying the link to the first user using an interface of a user device; and receiving an indication from the interface that the link has been activated, wherein obtaining the signed token is based on the link being activated” (claims 3, 10, and 17: where “displaying” is further narrowing the recited abstract idea; and “receiving” is insignificant extra solution activity);
“displaying at least one application that is compatible with the paylink service using an interface of a user device; and prompting the second user to select an application from the (displayed) at least one application, wherein the indicator of the second application is received in response to the prompt” (claims 4, 11, and 18: further narrowing the recited abstract idea);
“receiving the link includes displaying a quick response (QR) code, and the computer program code is configured to, with the processor, further cause the processor to: cause the second user to scan the QR code, the scanning providing [the] data to a link service direct-to-consumer (D2C) application; execute the D2C application, the execution providing a Java Web Token (JWT) signed by the paylink service; prompt the second user to choose an application; and launch the chosen application using the JWT, wherein JWT signature is verified using a public key of the paylink service, and wherein launching the chosen application causes an updating of the record at the second account associated with the second user” (claim 5: further narrowing the recited abstract idea);
“receiving the link includes scanning a QR code that includes data of the link with an optical device of a user device” (claims 12 and 19: further narrowing the recited abstract idea);
“causing the second application selected by the second user to become a default app for handling a custom action” (claims 21-23: further narrowing the recited abstract idea);
Conclusion of Dependent Claims Analysis: Dependent claims 2-5, 9-12, 16-19, and 21-23, do not correct the deficiencies of independent claims 1, 8, and 15, and they are, thus, rejected on the same basis.
Conclusion of the 35 USC § 101 Analysis: Therefore, claims 1-5, 8-12, 15-19, and 21-23, are rejected as directed to an abstract idea without “significantly more” under 35 USC § 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kopezynski (US 2016/0042345 A1) discloses: “The system has a processor and a module which exchanges data for identification of a payer entity (104). The data has an immutable-identifier (immutable-ID) associated with a payee entity (106) and a payer entity. A signed DDO (114) having purchase metadata and a preferred payment provider is generated. The data representing an approved DDO is received. The approved DDO is verified. The data is sent to a payment processor (108). The payment processor is queried for supported payment methods. The approved DDO is submitted to a service of payment provider entry point.”
Mancilla (US 2024/0220962 A1) discloses: “The system performs steps to at least receive a barcode with embedded information linking to a payee account capable of receiving a payment. Based on receiving the barcode a prompt for display on a browser of the user device can be generated, where the prompt requests identification of a financial institution connected to a user of the user device. The prompt can be transmitted to the user device. Identifying information identifying the financial institution can be received in response to the prompt. The financial institution can be accessed based on the response to the prompt. Based on accessing the user financial institution a request for the payment from the user financial institution to the payee account can be made.”
Sun (EP 3467744 A1) discloses: “The method involves obtaining payment information of a first mobile terminal, where the payment information comprises identification information of a second mobile terminal. Payment account of a second mobile terminal is determined corresponding to current running application (APP). The identification information is obtained corresponding to the payment amount of the first mobile terminal. The identification information is transmitted to the second mobile terminal. Payment amount is transferred to the second mobile terminal from the first mobile terminal corresponding to APP account.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRPI H. KANERVO whose telephone number is 571-272-9818. The examiner can normally be reached on Monday – Friday, 10 am – 6 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Abhishek Vyas can be reached on 571-270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIRPI H KANERVO/Primary Examiner, Art Unit 3691
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