DETAILED ACTION
Amendment received on November 21, 2024 has been acknowledged. Claims 1-20 have been cancelled and claims 1-38 have been added and entered. Therefore, claims 21-38 are pending.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 2, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Allowable Subject Matter
Claims 21-28 recite subject matter allowable over the prior art of record.
Reasons for Allowance
The most remarkable prior arts on record are to Barth et al., U.S. Patent #8,416,329 and Webb et al., U.S. Patent #10,066,597.
Barth et al. is directed to a debit-card withdrawal-fee payment method includes receiving selection of a first account to which withdrawal-fee payments are to be directed, receiving notification of a debit-card transaction withdrawal-fee amount associated with a second account, and making a withdrawal-fee payment to the first account in the withdrawal-fee amount. Barth al., Abstract.
Webb et al., is directed to a method of doing business in a retail environment employs a patronage incentive system incorporating a rounding up saving software program which provides a
customer making a purchase at a point-of-sale terminal of participating retailers with an option to round
up the price of purchase to the nearest dollar (or higher), to credit the difference between the rounded
and the retail price to an account once the purchase is made, and to invest the savings into a single
predetermined mutual fund. The rounding up program establishes a personal account for each
customer, establishes a cumulative account with the single mutual fund, interacts with the customer,
and, upon the request of customer, provides the customer with the information regarding his/her
account current and/or prospective. Webb et al., Abstract.
Barth et al., nor Webb et al., teach the limitations of the claimed invention, monitoring or periodically polling, by a computer system, a consumer transaction initiated through an electronic payment gateway, determining an investment amount by aggregating the third transaction amount with at least a fourth transaction amount, wherein the fourth transaction amount is determined based on a second consumer transaction initiated by the consumer; and electronically communicating, to at least one computing device, the investment amount as an amount of funds to be deposited in an investment account of the consumer as a result of transactions initiated by the consumer that include at least the consumer transaction and the second consumer transaction.
Moreover, none of the prior art of record remedies the deficiencies found in Barth et al., and Webb et al., or could be combined with any other reference to produce the claimed invention.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for Allowance."
Double Patenting
The nonstatutory 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 nonstatutory double patenting rejection is appropriate where the conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,086,883. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed toward depositing a portion of a transaction into an investment account.
As per Claim 21, ‘886 discloses a computer-implemented method comprising:
monitoring or periodically polling, by a computer system, an electronic payment gateway or server for one or more consumer transactions;
during the monitoring or periodic polling, identifying, by the computer system, a consumer transaction initiated by a consumer, the consumer transaction having a first numerical amount to be transferred from an account of the consumer to a payment recipient;
determining, by the computer system, a second transaction amount that is different than the first numerical amount;
determining, by the computer system, a third transaction amount, wherein the third transaction amount is the difference between the first and second transaction amount;
determining an investment amount by aggregating the third transaction amount with at least a fourth transaction amount, wherein the fourth transaction amount is determined based on a second consumer transaction initiated by the consumer; and
electronically communicating, to at least one computing device, the investment amount as an amount of funds to be deposited in an investment account of the consumer as a result of transactions initiated by the consumer that include at least the consumer transaction and the second consumer transaction. (Claim 1)
Claim 21 of the instant application teaches a computer system that can identify a portion of funds from multiple consumer transactions, by polling or monitoring an electronic gateway and depositing said funds into an investment account. Claim 21 of the instant application fails to disclose intercepting a consumer transaction initiated at an electronic payment gateway.
Claim 1 of the issued patent recites an a computer system that can identify a portion of funds from multiple consumer transactions, by intercepting a consumer transaction initiated at an electronic payment gateway and depositing said funds into an investment account, the computer system is capable of identifying which transactions to intercept at an electronic gateway, in contrast to monitoring or periodically polling.
It would have been obvious to one having skill in the art before the effective filing date, to modify the first device recited in claim 21 of the instant application to include the ability to intercept a consumer transaction as taught by the issued patent to improve the system in order to quickly intercept a transaction occurring at an electronic payment gateway.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter with substantially similar claim language.
As per Claim 22, ‘886 discloses the computer-implemented method of Claim 21 further comprising causing display of the third transaction amount by a computing device of the consumer as an amount designated for investment on behalf of the consumer. (Claim 2)
As per Claim 23, ‘886 discloses the computer-implemented method of Claim 21, wherein the electronic payment gateway provides communication between a consumer communications device and a point of sale (POS) terminal in connection with the consumer transaction. (Claim 3)
As per Claim 24, ‘886 discloses the computer-implemented method of Claim 21, wherein the consumer transaction is intercepted by the computer system as a result of listening for transactions associated with the consumer via the electronic payment gateway. (Claim 4)
As per Claim 25, ‘886 discloses the computer-implemented method of Claim 21, wherein the second transaction amount is determined by rounding up the first numerical amount to a next whole dollar value. (Claim 5)
As per Claim 26, ‘886 discloses the computer-implemented method of Claim 21, wherein the computer system is located remotely from a point of sale (POS) terminal that initiated the consumer transaction via the electronic payment gateway. (Claim 6)
As per Claim 27, ‘886 discloses the computer-implemented method of Claim 21, wherein the consumer transaction is identified by the computing system based at least in part on a communication between the server or the electronic payment gateway and the computing system via an application programming interface (API) associated with the electronic payment gateway. (Claim 7)
As per Claim 28, ‘886 discloses the computer-implemented method of Claim 21, wherein the consumer transaction is intercepted as a result of the computer system periodically polling a server of the electronic payment gateway for one or more transactions of the consumer. (Claim 8)
As per Claim 29, ‘886 discloses the computer-implemented method of Claim 21, further comprising initiating transfer of funds of at least the investment transaction amount as a deposit to the investment account of the consumer. (Claim 9)
As per Claim 30, ‘886 discloses a system comprising:
a hardware processor; and
a non-transitory computer-readable medium storing instructions that, when executed by the hardware processor, cause the hardware processor to perform operations comprising at least:
monitoring or periodically polling an electronic payment gateway or server for one or more consumer transactions;
during the monitoring or periodic polling, identifying a consumer transaction initiated by a consumer, the consumer transaction having a first numerical amount to be transferred from an account of the consumer to a payment recipient;
determining a second transaction amount that is different than the first numerical amount;
determining a third transaction amount, wherein the third transaction amount is the difference between the first and second transaction amount;
determining an investment amount by aggregating the third transaction amount with at least a fourth transaction amount, wherein the fourth transaction amount is determined based on a second consumer transaction initiated by the consumer; and
electronically communicating, to at least one computing device, the investment amount as an amount of funds to be deposited in an investment account of the consumer as a result of transactions initiated by the consumer that include at least the consumer transaction and the second consumer transaction. (Claim 10)
As per Claim 31, ‘886 discloses the system of Claim 30, wherein the operations further comprise causing display of the third transaction amount by a computing device of the consumer as an amount designated for investment on behalf of the consumer. (Claim 11)
As per Claim 32, ‘886 discloses the system of Claim 30, wherein the electronic payment gateway provides communication between a consumer communications device and a point of sale (POS) terminal in connection with the consumer transaction. (Claim 12)
As per Claim 33, ‘886 discloses the system of Claim 30, wherein the intercepting the consumer transaction is performed as a result of listening for transactions associated with the consumer via the electronic payment gateway. (Claim 13)
As per Claim 34, ‘886 discloses the system of Claim 30, wherein the second transaction amount is determined by rounding up the first numerical amount to a whole dollar value. (Claim 14)
As per Claim 35, ‘886 discloses the system of Claim 30, wherein the computer system is located remotely from a point of sale (POS) terminal that initiated the consumer transaction via the electronic payment gateway. (Claim 15)
As per Claim 36, ‘886 discloses the system of Claim 30, wherein the consumer transaction is identified by the system based at least in part on a communication between a server of the electronic payment gateway and the system via an application programming interface (API) associated with the electronic payment gateway. (Claim 16)
As per Claim 37, ‘886 discloses the system of Claim 30, wherein the consumer transaction is intercepted as a result of the system periodically polling a server of the electronic payment gateway for one or more transactions of the consumer. (Claim 17)
As per Claim 38, ‘886 discloses the system of Claim 30, wherein the operations further comprise initiating transfer of funds of at least the investment transaction amount as a deposit to the investment account of the consumer. (Claim 18)
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 21-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim(s) recite(s):
monitoring or periodically polling, by a computer system, an electronic payment
gateway or server for one or more consumer transactions;
during the monitoring or periodic polling, identifying, by the computer system, a consumer transaction initiated by a consumer, the consumer transaction having a first numerical amount to be transferred from an account of the consumer to a payment recipient;
determining, by the computer system, a second transaction amount that is different than the first numerical amount;
determining, by the computer system, a third transaction amount, wherein the third transaction amount is the difference between the first and second transaction amount;
determining an investment amount by aggregating the third transaction amount with at least a fourth transaction amount,
wherein the fourth transaction amount is determined based on a second consumer transaction initiated by the consumer; and
electronically communicating, to at least one computing device, the investment amount as an amount of funds to be deposited in an investment account of the consumer as a result of transactions initiated by the consumer that include at least the consumer transaction and the second consumer transaction.
The steps of the method, as drafted, provide a process that, under its broadest reasonable
interpretation, covers a fundamental economic principle or practice by describing investing a portion of funds remaining after a consumer transaction, for example, electronically communicating the investment amount as an amount of funds to be deposited in an investment account of the consumer as a result of transactions initiated by the consumer that include at least the consumer transaction and the second consumer transaction.
If a claim limitation, under its broadest reasonable interpretation, covers a fundamental economic principle, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim does not recite an additional element. As such, there is nothing recited that can be considered a practical application or significantly more than the judicial exception.
To the extent that electronically communicating may be interpreted as an additional element (if interpreted as sending and receiving data over the internet), then this additional element would also fail to integrate the abstract idea into a practical application. If the electronically communicating step is interpreted to include sending and receiving information, then this is recited at a high‐level of generality (i.e., as a generic device performing a generic function of sending and receiving data) such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
Accordingly, this additional element does not integrate the abstract idea into a practical
application because it does not impose any meaningful limits on practicing the abstract idea. Similarly, a
sending and receiving data would not be sufficient to amount to significantly more than the judicial
exception. As discussed above with respect to integration of the abstract idea into a practical
application, the additional element of a sending and receiving data amounts to no more than
mere instructions to apply the exception using a generic computer component. Mere instructions to
apply an exception using a generic computer component cannot provide an inventive concept.
The claim is patent ineligible.
A similar analysis should has been applied to claim 30 which recites essentially the same
abstract idea as in claim 1. Claim 30 includes the additional elements of a hardware processor and non-transitory computer readable medium storing instructions. However, the hardware processor and non-transitory readable medium are recited at a high‐level of generality (i.e., as a generic processors performing a generic computer functions) such that they amount to no more than mere instructions to apply the exception using generic computer components. 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. The claim is directed to an abstract idea.
Similarly, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a hardware processor and non-transitory computer readable medium storing instructions amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception
using a generic computer component cannot provide an inventive concept. When considering the claim
as a whole, the claim is not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Barton U.S. Patent 6,164,533 discusses a point of sale automatic savings program contribution system.
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/ASHFORD S HAYLES/ Primary Examiner, Art Unit 3627