DETAILED ACTION
Status of Claims
Applicant has amended claims 1-12 and 15-20. Claims 21 and 22 have been added. Claims 13 and 14 have been canceled. Thus, claims 1-12 and 15-22 remain pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments and amendments filed on 18 December 2025 with respect to:
objection to claims 1-20,
rejections of claims 1, 16, 19 and 20 under U.S.C. § 112(a),
rejections of claims 1-20 under U.S.C. § 112(b),
rejection to claims 1-20 under U.S.C. § 101,
rejections of claims 1-6, 8, 9 and 12-20 under 35 U.S.C. § 102(a)(1) as being anticipated by Garner et al (US Pub. No. 20220358487 A1), and
rejections of claims 7, 10 and 11 under 35 U.S.C. § 103 as being unpatentable over Garner in view of Gantert et al (US Pub. No. 20170116635 A1)
have been fully considered. Amendments to claims have been entered.
As an initial note: Claim amendments and remarks were sent to Examiner via email on 20 February 2026 as requested by Examiner in order to better read the claim amendments.
Examiner acknowledges amendments to claims to overcome claim objections and 35 U.S.C. § 112(a) and 35 U.S.C. § 112(b) rejections and, in turn, withdraws objections and rejections. However, new rejections under 35 U.S.C. § 112(a) have been found.
Examiner acknowledges amendments to, and arguments regarding claims to overcome 35 U.S.C. § 101 rejection. However, arguments are not persuasive.
Applicant argues subject matter eligibility in that, inter alia, the claims no longer recite the prior-recited element “query one or more databases storing stored object data related to a plurality of virtual objects, the one or more resources being associated with one of the plurality of virtual objects”, and more generally no longer recite, explicitly or implicitly, any querying of a database per se [remarks page 13]. Examiner notes that, although these limitations are no longer recited, rejections have been revised as discussed herein.
Applicant argues subject matter eligibility in that the claims provide at least improvements to digital wallet technology used in digital payment transactions that are performed in near-instantaneous fashion [remarks page 13]. Examiner respectfully disagrees.
Regarding increased speed, Examiner cites MPEP 2106.05(a) which notes that accelerating an analyzing process, where the increased speed comes solely from the capabilities of a general purpose computer, has been found to be insufficient to show an improvement in computer-functionality.
Rejections have been clarified herein in view of the claim amendments and the January 2019 Patent Subject Matter Eligibility Guidance – 2019 PEG.
Applicant's arguments filed with respect to claims regarding the 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103 rejections have been fully considered but they are moot in view of new grounds of rejection.
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
Priority
This application was filed on 24 June 2024 and is given priority from this date.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 19 and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Citing the representative limitation:
determine that an operation to select a payment method is being initiated based on a user accessing a digital wallet for payment to a merchant as part of a transaction between the merchant and the digital wallet, the digital wallet having a plurality of digital payment cards available;
Examiner finds no evidence of “digital payment cards” as such, in the Applicant’s specification. To overcome this rejection, Applicant should identify where in the specification digital payment cards is disclosed, or otherwise, cancel such matter from the claims.
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 1-12 and 15-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 1-12, 15-18, 21 and 22 are directed to a “system” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of making a financial transaction which is grouped under a method of organizing human activity.
in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p.p. 50-57 (Jan. 7, 2019))). Claims recite:
determine that an operation to select a payment method is being initiated … for payment to a merchant as part of a transaction between the merchant and the “digital” wallet, the digital wallet having a plurality of digital payment cards available;
receive item data associated with at least one item to be exchanged for payment to the merchant as part of the transaction, the item data identifying at least the merchant or a merchant category;
automatically select based on the item data and stored payment card data related to the plurality of digital payment cards of the “digital” wallet, a selected digital payment card, of the plurality of digital payment cards of the “digital” wallet, to use for the payment to the merchant as part of the transaction between the merchant and the digital wallet; and
complete the payment to the merchant using the selected digital payment card.
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as:
at least one processor;
a communication interface communicatively coupled to the at least one processor; and
a memory device storing executable code
initiated based on a user accessing a digital wallet
represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) the acts of “collecting information, analyzing the information and completing a payment”.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of making a financial transaction using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 2-12, 15-18, 21 and 22 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 4-8,10, 12, 15, 17, 18, 21 and 22 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of querying a data base of stored object data structures.
In claims 2, 3, 9, 11, and 16, the features:
a user device ,
a digital wallet,
access geolocation data of a current geolocation of the user device;
dynamic updates;
train, deploy and apply an artificial intelligence engine
add technology to the abstract idea of the independent claim. However, each of these is a generic technological component, and each is used in its normal, expected, and routine manner. The components are recited at a high level of generality which do not improve another technology or technical field nor the functioning of the computer itself.
Accordingly, none of the dependent claims add a technological solution to the method of organizing human activity in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claim 19 otherwise styled as a method, and claim 20 styled as a computer readable medium would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5, 8, 9, 12 and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Garner et al (US Pub. No. 20220358487 A1) in view of Gaddam doe et al (US Pub. No. 20150058146 A1)
Regarding claims 1, 19 and 20, Garner teaches real-time or near real-time systems and methods for payment option curation [0003]. Payment option curation in various embodiments can include determining and selecting a payment option (e.g., payment card, payment account, etc.) based on a purchase context (e.g., merchant, transaction amount, etc.) to optimize rewards by utilizing, e.g., a payment option curation account, transfer merchant codes, and the like [Id.]. He teaches:
at least one processor – [0010];
a communication interface communicatively coupled to the at least one processor - [0061], [0075] and [0081]; and
a memory device storing executable code – [0005] and [0006],that, when executed, causes the processor to:
determine that an operation to select a payment method is being initiated based on a user accessing a digital wallet for payment to a merchant as part of a transaction between the merchant and the digital wallet… – [0004] “The identifier may be associated with at least one other payment option associated with the payment network processor …A payment option can be selected by using a payment optimization algorithm and the merchant code”, [0012], [0020], [0021] and [0025] ;
receive item data associated with at least one item to be exchanged for payment to the merchant as part of the transaction, the item data identifying at least the merchant or a merchant category – [0064];
automatically select based on the item data and stored payment card data related to the plurality of “digital payment cards” of the digital wallet, a selected “digital payment card”, of the plurality of “digital payment cards” of the digital wallet, to use for the payment to the merchant as part of the transaction between the merchant and the digital wallet – [0022], [0026], [0032] “systems that may be integrated within digital wallets that automatically selects the optimal payment card for transactions”, and [0043]; and
complete the payment to the merchant using the selected “digital payment card” –[0004], [0005], [0010], [0026] and [0071].
Garner does not explicitly disclose a “digital payment card” nor a plurality of digital payment cards, as such. Nor does Garner explicitly disclose:
determine that an operation to select a payment method is being initiated based on a user accessing a digital wallet for payment to a merchant as part of a transaction between the merchant and the digital wallet, the digital wallet having a plurality of digital payment cards available;
However, Gaddam teaches providing a way to provision a mobile device with multiple pre-generated payment cards (real or virtual) with different credit limits [0005]. The mobile device may automatically select one of the multiple payment cards based on a transaction value of a transaction that is being conducted. In some embodiments, the different payment cards may be provisioned in a chip-and-pin based smart credit card or mobile wallet [Id.]. He teaches an "electronic wallet" or "digital wallet" which can store user profile information, payment information [0027]. In some embodiments, if the payment device received additional information about the transaction, the payment device may query a data store for predetermined selection criteria or merchant information [0065]. The payment device may select one of the plurality of the payment cards (Applicant’s digital payment cards) to be used for the transaction based on the merchant rating in addition to the transaction value [Id.].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Garner’s disclosure to include selecting one of the plurality of the payment cards to be used for a transaction based on a merchant rating as taught by Gaddam in order to reduce exposure to available credit thus reducing exposure to potential fraudulent use - Gaddam [0002].
Regarding claim 2, Garner teaches the determining as being at least partially triggered by a user accessing the digital wallet via a user device – [0012], [0021], [0043] and [0063].
Regarding claim 3, Garner teaches:
accessing geolocation data of a current geolocation of the user device – [0103];
evaluate the geolocation data as part of the operation – [0028], [0107] and [0131],determine that the user is purchasing the at least one item at an in-person location, and identify the in-person location, wherein the automatic selection of the selected digital payment card from the plurality of digital payment cards predicts that the selected digital payment card provides a greatest value at the in-person location – [0028], [0067], [0107] and [0111].
Regarding claim 4, Garner teaches the stored payment card data as indicating, for the plurality of digital payment cards, a travel-related advantage – [0007], [0049] and [0099].
Regarding claim 5, Garner teaches the at least one item as including a product or service and the merchant being an online source – [0046].
Regarding claim 8, Garner teaches the completing the payment being in response to a manual input received via a user device – [0051] and [0058].
Regarding claim 9, Garner teaches completing the payment being automatic based on a selected default setting - [0069], being modified in accordance with dynamic updates to the stored payment card data – [0053].
Regarding claim 12, Garner teaches the stored payment card data as including travel-related advantage data– [0007], [0049] and [0099].
Regarding claim 15, Garner teaches the automatic selection evaluates aspects of the stored payment card data that include past usage patterns of each of the plurality of digital payment cards [0105],
the past usage patterns including seasonality fluctuations – not further limiting based on design choice.
Regarding claim 16, Garner teaches:
accessing geolocation data of a current geolocation of a user device – [0024], [0028], [0051], [0067] and [0087];
evaluate the geolocation data as part of the operation – [0067],and determine local rewards or currency benefits associated with the plurality of digital payment cards prior to selecting the selected digital payment card – [0053].
Regarding claim 17, Garner teaches the determining being based on a user setting authorizing the operation, wherein the user setting is configurable to initiate the operation for a user-defined subset of operations – [0022] and [0026].
Regarding claim 18, Garner teaches the plurality of digital payment cards available being selectable such that certain other one or more digital payment cards of the digital wallet are excluded from the plurality of digital payment cards available.- [0010], [0026], [0043] and [0125] “selected payment option based on the transaction amount, the transfer merchant code, and/or other factors”.
Regarding claim 21, Garner teaches the item data as identifying the merchant category – [0052], and wherein the automatic selection selects the selected digital payment card, from the plurality of digital payment cards, based on considering, for each of the plurality of
digital payment cards, respective benefits identified for the merchant category as indicated by the stored payment card data – [0043], [0049] and [0053].
Regarding claim 22, Garner teaches the item data as further identifying the merchant – [0052], and wherein the automatic selection selects the selected digital payment card based further on considering, for each of the plurality of digital payment cards, respective benefits identified for the merchant as indicated by the stored payment card data – [0049] and [0052].
Claims 6, 7, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Garner in view of Gaddam, in further view of Gantert et al (US Pub. No. 20170116635 A1).
Regarding claim 6, neither Garner nor Gaddam explicitly discloses:
wherein the plurality of digital payment cards includes a default digital payment card for use when the at least one item is obtained from an online source as the merchant, as indicated by the stored object data, and wherein the automatic selection selects the default digital payment card as the selected digital payment card based on a weight assigned to an item attribute indicating that the user is purchasing the at least one item online.
However, Gantert teaches methods and systems for processing a transaction initiated by a user at, for example, a point-of-sale terminal in a third-party store, wherein a user may provide a single payment method connected to more than one attribute package [0019]. A transactional system may determine and provide as a recommendation to the user, which of the user's multiple attribute packages would provide the greatest value to the user (e.g., in cash-back or rewards points) if used to process the transaction. The determination of the recommended payment attribute package may be based on location information of a transaction [Id.]. He teaches a transactional system identifying a first attribute package of a plurality of attribute packages of the user based on one or more customized rules associated with the user [0032]. A customized rule based on a comparison of the price of a product at a store at which the user is currently located to the price of the product at a different store (e.g., at another brick-and mortar store or at an online retailer) [Id.]. The transactional system uses customized rules for ranking (attribute packages) based on user preferences (e.g., a default set of customized rules may be set based on user preferences) [0033]. The transactional system may determine weights to assign to the rules based on the rankings and may apply, as an example, a weighted combination of the rules in order to identify the first attribute package. The transactional system may determine coefficients for weighting using machine-learning algorithms [Id.]. Another transactional system may modify its recommended payment attribute package and payment format (i.e. payment methods) in response to the user, as an example, selecting an alternative choice [0078].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Garner’s disclosure to include determining alternative payment methods based on a weighted combination of the rules as taught by Gantert because it allows users to take advantage of various payment features with little to no user intervention - Gantert [0088].
Regarding claim 7, neither Garner nor Gaddam explicitly discloses::
wherein the automatic selection selects an alternative digital payment card, of the plurality of digital payment cards, as the selected digital payment card instead of the default digital payment card based on a weight assigned to an alternative item attribute that is different from the item attribute indicating the user is purchasing the at least one item online
However, Gantert teaches a customized rule based on a comparison of the price of a product at a store at which the user is currently located to the price of the product at a different store (e.g., at another brick-and mortar store or at an online retailer) [0032].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Garner’s disclosure to include a customized rule based on a comparison of the price of a product at a brick-and mortar store or at an online retailer as taught by Gantert because it allows users to take advantage of various payment features with little to no user intervention - Gantert [0088].
Regarding claim 10, Garner does not explicitly disclose:
receiving one or more user-defined settings for assigning a greater weight to certain attributes of the stored payment card data, at least one setting of the one or more user-defined settings being associated with a duration of applicability of the greater weight.
However, Gantert teaches applying a weighted combination of the rules in order to identify the first attribute package [0033]. He teaches a prompt including a real-time request to confirm the identified first attribute package and first payment format (payment method) or to select a different attribute package or payment format (payment method) with which to process the transaction [0078].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Garner’s disclosure to include applying a weighted combination of the rules in real-time as taught by Gantert because it allows users to take advantage of various payment features with little to no user intervention - Gantert [0088].
Regarding claim 11, Garner does not explicitly disclose:
training an artificial intelligence engine to predict which of the plurality of digital payment cards provides a highest calculated value, the training including iteratively predicting a target variable as part of a training and testing loop and adjusting weights applied to input nodes during each iteration to improve predictability of the target variable;
deploying the trained machine learning model; and
applying the stored payment card data and the item data to an artificial intelligence engine as part of the automatic selection to select the selected digital payment card to use for the payment to the merchant.
However, Gantert teaches the transactional system determining coefficients using machine-learning algorithms [0033] for weight and ranking attribute packages [0032] and [0033], and using an optimization engine which optimizes the identification of an attribute package or payment format [0110].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Garner’s disclosure to include an optimization engine for determining a payment format (method) as taught by Gantert because it allows users to take advantage of various payment features with little to no user intervention - Gantert [0088].
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Noë et al: “System And Method For Providing Transaction Report Data Using A User Device”, (US Pub. No. 20230237464 A1).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692