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 .
DETAILED ACTION
This communication is in response to the application filed on 05 August 2024. Claims 1-18 have been canceled and claims 19-38 have been added in the preliminary amendment filed 11 February 2025. Claims 19-38 are currently pending. The rejections are as stated below.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted in this application on 05 August 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner. The initialed copies of the1449 are enclosed herewith.
Double Patenting
The non-statutory 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 non-statutory double patenting rejection is appropriate where the claims at issue 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); and 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 a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 19-38 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-12 of Patent No. US 12056675 B1. Although the conflicting claims at issue are not identical, they are not patentably distinct from each other, because the claimed limitations from the present application and US Patents ‘675 above are significantly similar and the claimed features seem to be identical with various obvious alternate steps. The current invention and Patent No. US 12056675 B1 are drawn to a method and system for facilitating a payment transaction between a merchant and a consumer and have overlapping limitations. All limitations of the instant claims are substantially covered in claims 1-12 of Patent No. US 12056675 B1. However, certain language has been removed from the issued Patents. Therefore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, the claims of the instant application are not identical to claims 1-12 of Patent No. US 12056675 B1, but they are not patently distinct.
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 19-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Claim 19 (exemplary) recites a series of steps for managing e-commerce payment transactions by initiating a check-out procedure of a payment transaction between a merchant and a consumer.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception.
Independent method claim 19, recites the limitations of detect whether an EMV browser plugin is added at a web browser, the EMV browser plugin configured to enable an exchange of information between the web browser and the EMV card reader; in response to detecting that the EMV browser plugin is not added at the web browser; display a prompt to enter payment vehicle information for processing the payment transaction; and in response to detecting that the EMV browser plugin is added at the web browser; display of a prompt to present an EMV card to the EMV card reader; collect EMV card data from the EMV card reader; finalize the payment transaction; instruction of the EMV plugin to return a result of the payment transaction; and display, at the web browser, of a payment authorization result of the payment transaction.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via transactional activities/interactions (such as a fundamental economic concept or managing interactions between people), but for the recitation of generic computer components, nothing in the claim precludes the limitations from practically being performed by a method of organizing human activity which includes commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations). These limitations are directed to an abstract idea because they are commercial or legal interactions or sales activities (processing payment transaction between a merchant and a consumer). If a claim limitation covers commercial or legal interactions but for the recitation of generic computer components, then it falls within the "Certain Methods of Organizing Activity" grouping of abstract ideas. See MPEP § 2106.04(a)(2).
Accordingly, independent claim 1 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of a computer communicatively coupled to a Europay International-Mastercard-Visa ("EMV") card reader via a wireless interconnect, a merchant server, a memory, a processor and a web browser to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data (see Applicant’s specification ¶¶ 0022-0025). This generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. 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. See MPEP 2106.04(d). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(f).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 19, 26 and 33. Furthermore, dependent claims 20-24, 26-32 and 34-38 do not add limitations that meaningfully limit the abstract idea.
Dependent claims 20-25, 27-32 and 34-38, recites the additional limitations of send the EMV card data to the merchant web server, processing the EMV card data to complete the payment transaction, sending the payment authorization result to the EMV plugin, detecting insertion of the EMV card, detecting a presence of the EMV card at the EMV card reader via near field communication and instructing the EMV plugin to process the EMV card data. These limitations further define the abstract idea and are rejected under the same rational of claim 19. The claims merely amounts to the application or instructions to apply the abstract idea on a generic processor, and is considered to amount to nothing more than requiring a generic computer to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
The dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer.
Accordingly, claims 19-38 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tak US 20090044268 A1 discloses a method for controlling a chip card reader by a computer system connectable to smartcard reader, comprising the connection of chip card reader to computer system via an interface designed for data communication on the basis of a protocol provided on a standard basis in operating system of computer system; the provision of a control program for controlling the functions of chip card reader, wherein control program is provided as a plug-in; and the controlling of chip card reader by executing control program on computer system. The invention further provides a chip card reader as well as a control program for performing the method.
Hobson et al. US 7873579 B2 disclose "An online card-present transaction system facilitates card-present type transactions with a merchant over a public network. A host system is configured to accept authentication data from a user via an authentication device. The host system, after authenticating a user is configured to retrieve the user's account information from a user database system and translate a user account number into a temporary transaction number. The temporary transaction number is then transmitted directly from the host system to the merchant, thereby eliminating the need for the user to send to the merchant over the internet, the user's transaction account number".
Villaret et al. US 20020038287 A1 disclose “a system and method which provide authentication for electronic transactions by “inputting smart card information from a smart card into a payment enabled device and inputting an identification number into the payment enabled device. The smart card information and the identification number are then authenticated. Payment information is then sent from a server to a desired location after authenticating the smart card information and identification number”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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