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 .
Claim Status
Claims 1-8 are currently pending and are presented for examination on the merits.
Objections
Drawings
The drawings are objected to for failure to show structural limitations recited by the claims (e.g., graphical user interface, etc.), under 37 CFR 1.83(a). See also MPEP 608.02(d).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-8 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. More particularly, the claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 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. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., apparatus, system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-8 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards downloading a payment application and registering a prepaid and postpaid (e.g., credit card) settlement methods (e.g., accounts), and setting an account/method as the default or first settlement payment method, wherein the postpaid accounts act as a second settlement method or reserve/backup to the prepaid account, when registering the first payment method. These are long-standing commercial practices previously performed by humans (e.g., mobile payment platforms, merchants, banks having overdraft protection, etc.) manually and via generic computing. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—a terminal device, non-transitory computer-readable medium, graphical user interface, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-8 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2019/0272525 to Nakamura, in view of US 2018/0208069 to Lin., and further in view of US 2014/0263618 to McCarthy et al.
With respect to Claims 1, and 5, Nakamura teaches a non-transitory storage medium storing a program that causes a terminal device storing an application program ([0034]; FIG. 1) to execute a method (FIG. 5) executed by a terminal device ([0036], terminal device; FIGS. 1,3) storing an application program ([0250]), the method comprising: transmitting a usage application for a postpaid settlement method (FIG. 2;[0014];[0255]); registering the postpaid settlement method issued in response to the usage application in the application program ([0255]) as one of first settlement methods available for electronic settlement ([0006];[0059]).
Nakamura fails to expressly teach but Lin teaches when registering a prepaid settlement method as one of the first settlement methods in the application program, automatically registering, in the application program, the postpaid settlement method as one of second settlement methods for depositing to the prepaid settlement method registered as one of the first settlement methods. ([0035]). Nakamura discusses the desire to enhance security in cash-less and card-less transactions. [0059]. It would have been obvious to one of ordinary skill in the art to modify Nakamura to include registering the postpaid account as a second account for depositing to the prepaid settlement method, in order to enhance security.
McCarthy teaches automatically registering by a device (without requiring user operation), the credit card . . . ([0049]) [and] storing in a memory, information that associates the credit card with the prepaid settlement method ([0008], “The method may additionally include accessing the service account to determine account information associated with the account identified from which to withdraw funds”), and setting a flag ([0062], notification). . .McCarthy discusses several disadvantages including the need to roll out support for new payment methods. [0003-04] It would have been obvious to one of ordinary skill in the art to modify Nakamura to include the added limitations since supporting new forms of payment and curing the listed disadvantages were expressly known at the time.
With respect to Claim 2, Nakamura fails to expressly teach, but Lin teaches wherein the postpaid settlement method is a prepaid card. [0035]
With respect to Claim 3, Nakamura teaches when registering a prepaid settlement method in another application program as one of the first settlement methods, automatically registering, in the other application program, the postpaid settlement method as one of the second settlement methods. [0006];[0033]
With respect to Claim 4, Nakamura teaches when registering the postpaid settlement method in the application program as one of the first settlement methods, displaying on a screen a graphical user interface ([0046], customer terminal teaches a graphical user interface) which accepts user operations for performing usage application for the prepaid settlement method ([0033]); and transmitting the usage application for the prepaid settlement method, in accordance with user operations performed on the graphical user interface ([0046];[0053]).
With respect to Claim 6, the combination would teach a PHOSITA armed with the state of the art at the time of filing, both OAuth or OpenID (along with SAML) Connect, which are the industry standards for authentication protocols. As such, it would have been obvious to try choosing from this finite number of identified, predictable solutions, with a reasonable expectation of success; same in performing the instant invention. See, KSR international Co. v. Teleflex Inc.
With respect to Claim 7, McCarthy teaches wherein the postpaid settlement method is a credit card, and a prepaid card. [0041] Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Nak to include this limitation taught by McCarthy.
With respect to Claim 8, McCarthy teaches wherein the graphical user interface is a registration-completion screen displayed after registering the postpaid settlement method ([0064]; FIG. 3, 9, 10-15) and includes a button to initiate the usage application for the prepaid settlement method. ([0065];[0087], “APP of mobile device 910 may include a button that triggers or initiates the money withdrawal transaction.”) Under the same rationale as Claim 1, it would have been obvious to one of ordinary skill in the art to modify Nak to include this limitation taught by McCarthy.
Response to remarks
Applicant’s remarks submitted on 11/4/2025 have been fully considered but are not persuasive where objections/rejections are maintained. The invention remains drawn to settlement methods for conducing a transaction which is fundamental economic activity. Automatically registering, and switching from prepaid cards and postpaid (e.g., credit card) in a usage application (payment application) is a long-standing commercial practice. The claims fail to recite sufficient extraneous limitation (not necessary to the performance of the abstract idea) that would overcome the § 101 rejection. Much of Applicant’s arguments are not recited in the claims, including the language in bold. As per the prior art rejections, McCarthy has been added to teach a system and method for transferring funds between prepaid and credit accounts using a mobile device comprising a GUI. McCarthy teaches discerning preferred settlement methods at [0036]. Applicant’s remarks directed to the prior combination is moot in light of the new combination. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/Examiner, Art Unit 3696