Detailed Action
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the Amendment filed on November 22, 2025.
Claims 2, 6, 10, 14, and 18 are cancelled.
Claims 21-23 are new.
Claims 1, 3-5, 7-9, 11-13, 15-17, and 19-23 are pending.
Claims 1, 3-5, 7-9, 11-13, 15-17, and 19-23 are examined.
This Office Action is given Paper No. 20260127 for references purposes only.
Information Disclosure Statement
The Information Disclosure Statement filed on November 21, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
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, 3-5, 7-9, 11-13, 15-17, and 19-23 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.
Step 2A Prong 1: The claims recite an abstract idea of conducting a transaction with a third party administrator (TPA), which is a certain method of organizing human activity (e.g. fundamental economic principles or practices including hedging, insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations; managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions).
Claim 1, representative of claims 9 and 17, includes the following limitations:
Receiving a request for login from a user;
Decrypting the request and directing the user to a health retailer website;
Receiving a request for checkout;
Determining if the user has a carded pay third party administrator (TPA);
If the user has a carded pay TPA, then determining if card information is available in a private session;
If the card information is not available in the private session, then sending a request for card information and access tokens;
Receiving a bearer token from the TPA, which is validated by an open authentication provider;
Receiving encrypted card information from the TPA;
Inputting the encrypted card information into the private session.
Step 2A Prong 2: The claim limitations recite the following additional elements that are beyond the judicial exception:
One or more computer processors;
Card info application programming interface.
These additional elements are not indicative of integration into a practical application because:
They add the words “apply it” (or an equivalent) with the judicial exception, or are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. See MPEP 2106.05(f).
They generally link the use of the judicial exception to a particular technological environment or field of use. See MPEP 2106.05(h).
Step 2B: The claim limitations do not recite additional elements, or an ordered combination of additional elements, that are sufficient to amount to significantly more than the judicial exception.
As discussed with respect to step 2A prong 2 above, the additional element of “one or more computer processors” is mere instructions to apply an exception, and does not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional element of “one or more computer processors” is re-evaluated to determine whether it constitutes significantly more. Examiner finds that the additional element of “one or more computer processors” is simply the use of a computer in its ordinary capacity and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 and MPEP 2106.05(f). For example, the additional element only provides a result-oriented solution and lacks details as to how the computer performs the modifications, which is equivalent to “apply it”. See Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2357 and MPEP 2106.05(f).
As discussed with respect to step 2A prong 2 above, the additional element of a “card info application programming interface” generally links the use of the judicial exception to a particular technological environment or field of use, and does not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional element of a “card info application programming interface” is re-evaluated to determine whether it constitutes significantly more. Examiner finds that the additional element of an “interface” is merely an attempt to limit the use of the abstract idea to a particular technological environment. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h). Additionally, an “interface” merely limits the claims to the computer field. See FairWarning v. Iatric Sys., 839 F.3d 1089, 1094-95 and MPEP 2106.05(h).
Therefore, when considering all the additional claim elements both individually and as an ordered combination, Examiner finds that the claim does not amount to significantly more than the exception.
The dependent claims fail to cure this deficiency and are rejected accordingly.
Claim 3 recites determining if the card information was successfully retrieved, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 4 recites determining the card information was not successfully retrieved and directing the user to an alternative payment method, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 5 recites determining if the card information in the private session expired, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 7 recites determining if split pay is needed and directing the user to a billing page, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 8 recites deleting card information from the private session, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim Rejections - 35 USC § 112b
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-12 and 19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 11 recites “prior to the program instructions of inputting the encrypted card information.” This phrase is vague and indefinite because independent claim 9 does not recite “inputting the encrypted card information.” For purposes of applying the prior art only, Examiner will interpret as “prior to the program instructions to direct the encrypted card information.”
Claim 19 recites “prior to the program instructions of directing inputting the encrypted card information.” This phrase is vague and indefinite because independent claim 17 recites “program instruction to direct the encrypted card information.” For purposes of applying the prior art only, Examiner will interpret as “prior to the program instructions of directing the encrypted card information.”
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 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.
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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-5, 7-9, 11-13, 15-17, and 19-23 are rejected under 35 U.S.C. 103(a) as being unpatentable over Selwanes (US 2017/0329910), in view of Harrison et at. (US 2010/0070409), and further in view of Purves et al. (US 2013/0346302).
Claims 1, 9, 17
Selwanes discloses:
receiving, via the one or more computer processors, a request for checkout (claim are received, see [0218]);
if the user has a carded pay TPA, determining, via the one or more computer processors, if card information (VCN, see [0143]) is available in a private session (with payer’s adjudication system, see [0142]);
if the card information is not available in the private session, sending, via the one or more computer processors, a request for card information (request VCN, see [0143]) and one or more access tokens (token is requested, see [0142]) corresponding to the user to the TPA through a card info application programming interface (from a card management platform, see [0143]);
receiving, via the one or more computer processors, a bearer token (token is provided, see [0145]) from the TPA, wherein the bearer token is validated (cross reference database, see [0128, 0130]) by an open authentication provider;
receiving, via the one or more computer processors, encrypted card information (VCN, see [0143]) from the TPA; and
inputting, via the one or more computer processors, the encrypted card information (VCN, see [0143]) into the private session (with payer’s adjudication system, see [0142]).
Selwanes does not disclose:
determining… administrator (TPA).
Harrison teaches:
determining, via the one or more computer processors, if the user (employee, see [0121]) has a carded pay third party administrator (TPA) (health card, see [0121]).
Selwanes discloses receiving a request for checkout, determining card information, sending a request for card information and access tokens, receiving a bearer token, receiving encrypted card information, and inputting the encrypted card information. Selwanes does not disclose determining if the user has a carded TPA, but Harrison does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the healthcare payment network of Selwanes with the carded TPA of Harrison because 1) a need exists for allowing providers to tie payments to 835 details electronically without specific provider/payer integrations (see Selwanes [0106]); and 2) a need exists for automatically accessing funds held in a consumer-directed healthcare plan (CDHP) at the point of sale (see Harrison [0012]). Having a carded TPA allows for automatically accessing funds at the point of sale.
Selwanes in view of Harrison discloses the limitations above. Selwanes in view of Harrison does not disclose:
Receiving… user;
Directing… request;
If the health… website.
Purves teaches:
receiving, via one or more computer processors, a request for login (user may login, see [0106]) from a user;
directing, via the one or more computer processors, a health-ecommerce retailer to decrypt (decryption, see [0648]) the request;
if the health-ecommerce retailer determines that the decryption of the request was successful, directing, via the one or more computer processors, the user to a health-ecommerce retailer (e.g. prescription purchases, see [0184, 0197]) website (various websites, see [0106]).
Selwanes in view of Harrison discloses receiving a request for checkout, determining if the user has a carded TPA, determining card information, sending a request for card information and access tokens, receiving a bearer token, receiving encrypted card information, and inputting the encrypted card information. Selwanes in view of Harrison does not disclose receiving a request for login, decrypting the request, and directing the user to a retailer website, but Purves does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the healthcare payment network of Selwanes, in view of Harrison, with the receiving a request for login, decrypting the request, and directing the user to a retailer website of Purves because a need exists for a fast and efficient bill payment option to consumers (see Purves [0102]). Receiving a request for login, decrypting the request, and directing the user to a retailer website allows for efficient bill payment to the consumer.
Claims 3, 11, 19
Furthermore, Selwanes discloses:
prior to the step of inputting the encrypted card information into the private session, determining, via the one or more computer processors, if the card information was successfully retrieved (VCN issued, see [0186]).
Claims 4, 12, 20
Furthermore, Harrison teaches:
determining, via the one or more computer processors, that the card information was not successfully retrieved (e.g. partial payment, see [0092]); and
directing, via the one or more computer processors, the user to provide an alternative payment method (line of credit, e.g. credit card, see [0071]).
Claims 5, 13, 21
Furthermore, Selwanes discloses:
if the card information is available in the private session, determining, via the one or more computer processors, if the card information in the private session is expired (expiration date, see figure 7, [0058]).
Claims 7, 15, 22
Furthermore, Selwanes discloses:
determining, via the one or more computer processors, if split pay is needed (split, see [0247]); and
directing, via the one or more computer processors, the user to a billing page (debit payer’s account, see [0250]).
Claims 8, 16, 23
Furthermore, Harrison teaches:
deleting, via the one or more computer processors, the card information (deleting data sets, see [0086]) from the private session.
Response to Arguments
101 arguments
Applicant argues that 1) the recited limitations are not basic building blocks to be considered an abstract idea; 2) the subject matter does not recite any of the abstract idea groupings; 3) the subject matter integrates a judicial exception into a practical application; and 4) the claims recite significantly more than an abstract idea.
Examiner disagrees. The claims recite an abstract idea of conducting a transaction with a third party administrator (TPA), which is a certain method of organizing human activity (e.g. fundamental economic principles). The additional elements do not integrate into a practical application because they merely use a computer as a tool to perform an abstract idea, and generally link the use of the judicial exception to a particular technological environment or field of use. The claims do not recite significantly more because they simply use a computer in its ordinary capacity, and attempt to limit the use of the abstract idea to a particular technological environment.
103 arguments
Applicant argues that the prior art does not teach the amendments. Please see the revised rejection with new art Purves.
Claim Interpretation
For compact prosecution purposes and should Applicant overcome the prior art rejections noted above, Applicant is reminded that optional or conditional elements do not narrow the claims because they can always be omitted. See e.g. MPEP §2106 II C.: "Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. [Emphasis in original.]"; and In re Johnston, 435 F.3d 1381, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006) ("As a matter of linguistic precision, optional elements do not narrow the claim because they can always be omitted.").
Claims 1, 9, and 17 recite “if the health-ecommerce retailer”, “if the user has a carded pay TPA”, and “if the card information is not available.”
Claims 3 and 11 recite “if the card information was successfully retrieved.”
Claims 5 and 13 recite “if the card information is available.”
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 of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal/pair <http://pair-direct.uspto.gov>. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866.217.9197 (toll-free).
/CHRYSTINA E ZELASKIEWICZ/Primary Examiner, Art Unit 3699