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
Instant application is FOR of IN202311052549. Claims 1-20 are presented for examination. Examiner has established § 101 rejection for claims 1-20 in the instant Office action.
Foreign Priority
Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) based upon Application No. 202311052549 filed in India (IN) on August 4, 2023. The receipt of the certified copy of this foreign application on February 14, 2025, is acknowledged. The priority claim to the foreign priority document in question was timely made in the application data sheet filed August 5, 2024.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 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 1-9 is a series of steps, which is method (i.e., a process) and, thus, one of the statutory categories of invention. Further, the claimed invention of claims 10-18 is a system, which is also one of the statutory categories of invention. However, independent claim 10 is lacking system hardware components - especially a processor and instructions stored in the memory that are executed by the processor. Still further, the claimed invention of claims 19-20 is a non-transitory computer-readable medium, which is also one of the statutory categories of invention.
Conclusion of Step 1 Analysis: Therefore, claims 1-9 and 19-20 are statutory under 35 USC § 101 in view of step 1 of the test. Claims 10-18 ae not statutory, but Examiner will continue the analysis of claims 10-18 as if "a processor" was present to "execute instructions stored in the memory" for the purpose of further examination of instant claims.
Step 2A of the Test:
Prong 1: Claims 1-20, however, recite an abstract idea of conducting a financial deal. The creation of conducting a financial deal, as recited in the independent claims 1, 10, and 19, belongs to certain methods of organizing human activity (i.e., commercial or legal interactions) that are found by the courts to be abstract ideas. The limitations in independent claims 1, 10, and 19, which set forth or describe the recited abstract idea, are found in the following steps:
"triggering, via the indication, an access to a specific bank extension application" (claims 1, 10, and 19); and
"inserting into a text message a service of the specific bank primary application" (claims 1, 10, and 19).
Prong 2: In addition to abstract steps recited above in Prong 1, independent claims 1, 10, and 19, recite additional elements:
"a mobile phone messaging application" (claims 1, 10, and 19);
"a specific bank extension application installed on the mobile phone" (claims 1, 10, and 19);
"a specific bank extension application communicatively coupled on the mobile phone with the messaging application and a specific bank primary application which is also installed on the mobile phone" (claims 1, 10, and 19);
"a plurality of memory components" (claim 10);
"a controller in communication with the plurality of memory components" (claim 10); and
"a non-transitory computer-readable medium storing instructions executed by a processor" (claim 19).
These additional elements are recited at a high level of generality (e.g., 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. Further, the following limitation recites insignificant extra solution activity (e.g., data gathering):
"providing an indication that the financial deal is to be provided as a message" (claims 1, 10, and 19).
These additional limitation does not integrate the abstract idea into a practical application because it does not impose a meaningful limit on the judicial exception. The additional elements/limitation of independent claims 1, 10, and 19, 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). Further, the combination of these additional elements/limitation is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements /limitation do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Conclusion of Step 2A Analysis: Therefore, independent claims 1, 10, and 19, 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, 10, and 19, (see above under Step 2A - Prong 2) are described by Applicant’s Specification in following terms:
[0048] FIG. 1 is a block diagram illustration of a message communications model 100. The model 100 will be understood as being operative on a mobile phone 102 or similar personal communications device, with a computer controller, memory components, a display, and suitable radio frequency (RF) systems for communicating with a mobile phone network, WiFi network, or other network. Suitable application programs (“APK’s”) may be installed on the mobile phone 102, with suitable inter-process communications implemented to enable the present system and method.
[0049] As depicted in FIG. 1, the elements of the communications model 100 include a messaging application 104 installed on the mobile phone 102, conventionally a text-messaging application, but typically with graphics, video, and/or audio capabilities as well. The messaging application 104 may also be referred to as the “host” application, since it is expected to host elements of the banking application, as discussed below.
[0050] A banking mobile application 105, specific to a particular financial institution, such as Specific Bank 106, is also installed on the mobile phone 102. The banking mobile application 105, also referred to as the “container application,” provides multiple services pertinent to customer interactions with the Specific Bank 106, as may be known in the art. Exemplary instances of such services are discussed further below.
[0051] An application extension 108 may also be installed on the mobile phone 102. In one embodiment, the application extension 108 runs entirely in background mode (i.e., the extension itself presents no visible interface or control per se to the user). The application extension 108 running entirely in background mode provides for inter-process communication between the messaging application 104 and the banking mobile application 105.
This is a description of general-purpose computer. Thus, individually, the additional elements of independent claims 1, 10, and 19, are well-understood, routine, and conventional elements that amount to no more than implementing the abstract idea with a computerized system. Further, the additional limitations of "providing" information amounts to no more than mere instructions to apply the exception using generic computer components. For the same reason these additional limitations are not sufficient to provide an inventive concept. The additional limitation of "providing" information was considered as insignificant extra-solution activity in Step 2A - Prong 2. Re-evaluating here in Step 2B, it is 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 limitation of independent claims 1, 10, and 19, "provide" information over a network in a merely generic manner. The courts have recognized "providing" information function as well-understood, routine and conventional when claimed in a merely generic manner. Therefore, the additional limitation of independent claims 1, 10, and 19, are well-understood, routine, and conventional. Further, taken as combination, the additional elements/limitation add nothing more than what is present when the additional elements/limitation 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, 10, and 19, are non-statutory under 35 USC § 101 in view of step 2B of the test.
Dependent Claims: Dependent claims 2-9 depend on independent claim 1; dependent claims 11-18 depend on independent claim 10; and dependent claim 20 depends on independent claim 19. The elements in dependent claims 2-9, 11-18, and 20, which set forth or describe the abstract idea, are:
"the indication is triggered by a user selecting a banking icon displayed within the messaging application" (claims 2, 11, and 20: further narrowing the recited abstract idea);
"the banking icon is part of an icon bar within the messaging application" (claims 3 and 12: further narrowing the recited abstract idea);
"the specific bank extension application runs in background mode and provides inter-process communication between the messaging application and the specific bank primary application" (claims 4 and 13: further narrowing the recited abstract idea);
"the specific bank extension application provides a graphical user interface (GUI) to a user within the messaging application" (claims 5 and 14: further narrowing the recited abstract idea);
"the GUI includes options for making payments, sending offers, and sharing banking information" (claims 6 and 15: further narrowing the recited abstract idea);
"the service of the specific bank primary application includes sending a payment confirmation receipt to a second party" (claims 7 and 16: insignificant extra solution activity);
"the service of the specific bank primary application includes sending a biometric authentication request to a second party" (claims 8 and 17: insignificant extra solution activity); and
"the biometric authentication request includes a facial recognition widget; and the service of the specific bank primary application includes sending a link to a specific bank offer to the second party" (claims 9 and 18: further narrowing the recited abstract idea, except "sending" step is insignificant extra solution activity).
Conclusion of Dependent Claims Analysis: Dependent claims 2-9, 11-18, and 20, do not correct the deficiencies of independent claims 1, 10, and 19, and they are, thus, rejected on the same basis.
Conclusion of the 35 USC § 101 Analysis: Therefore, claims 1-20 are rejected as directed to an abstract idea without “significantly more” under 35 USC § 101.
Examiner's Remarks Regarding Prior Art
The closest prior art reference to the instant claims 1-20 located by Examiner is Gantert US 10,482,449 B1). Gantert discloses:
The invention relates to a computer-implemented system and method for sending a person to person (P2P) payment to a recipient, according to one example. The method may be conducted on a specially programmed computer system comprising one or more computer processors, mobile devices, electronic storage devices, and networks. The method may comprise the steps of: sending to the recipient electronically a notification of the payment from the sender, the notification including an amount of the payment; sending to the recipient electronically an indication of at least two of the following payment options: payment to a deposit account, payment to a transaction card account, payment to a third party P2P system, and payment in the form of a merchant electronic gift certificate; receiving from the recipient electronically a selection as to one of the payment options, including: (a) in the case of a deposit account, a routing number and account number, (b) in the case of a transaction card account, a card number, expiration date, and a card verification value (CVV), (c) in the case of a third party P2P system, an account identifier, or (d) in the case of a merchant electronic gift certificate, the merchant; and sending the payment electronically to the recipient via the recipient's selected payment option without requiring the recipient to open a new account or verify an existing account.
Gantert, however, does not teach - alone or in combination with other references - the following steps found in instant independent claims 1, 10, and 19, as an ordered combination of steps with other steps:
triggering, via the indication, an access via the messaging application to a specific bank extension application installed on the mobile phone, wherein the specific bank extension application is communicatively coupled on the mobile phone with the messaging application and a specific bank primary application which is also installed on the mobile phone; and
via the specific bank extension application, inserting into a text message generated by the messaging application a service of the specific bank primary application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mandia (US 2023/0123628 A1) discloses: "The method allows the user to access various features of the given application after the credentials are authenticated, thus avoiding the need of a username and a password. The method enables the users to log into applications in a simple manner by reducing the number of screens and interfaces a user has to navigate through to log into a given application by simply entering a phone number."
Johnston (US 2021/0182810 A1) discloses: "A cross border payment (CBP) computing device for transmitting cross border data rich payments in real-time is provided. The CBP computing device receives, from an originating bank associated with a payor, a payment request message to transfer funds in real-time. The payment request message includes payment instructions and transaction information associated with a transfer amount. The CBP computing device determines that the payment request message is a cross border payment transfer from a first payment network for processing real-time payments within a first country to a second payment network for processing real-time payments within a second country, and retrieves, from a database, a set of rules based on a payment messaging standard and protocol associated with the second payment network. The CBP computing device reformats the payment request messaged based on the retrieved set of rules, and transmits the reformatted payment message to a receiving bank associated with a payee."
Kheradpir (US 2015/0112862 A1) discloses: "A user is registered for an electronic peer-to-peer payment system by authenticating the user at an automated teller machine (ATM), receiving the user's mobile number and addressing a verification code to the user's mobile number, which the user must enter in order to be registered."
Narendra (US 2013/0073429 A1): "Users perform in-application purchases when logged in to an electronic financial application. User funds are transferred into an intermediate account at the user's financial institution, and merchants are paid from a guaranteed account at a separate financial institution. Non-real-time settlement is performed between the intermediate account and the guaranteed account."
Giancarlo, Hon J. Christopher. "United States House of Representatives Committee on Financial Services Task Force on Financial Technology." (2020).
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