Detailed Action
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 17, 2026 has been entered.
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 RCE filed on April 17, 2026.
Claims 2, 6, 10, 14, and 18 are cancelled.
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. 20260502 for references purposes only.
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;
Directing the user to a health retailer website;
Determining if the user has a carded pay third party administrator (TPA);
Determining if card information is available in a private session;
Sending a request for card information and access tokens corresponding to the TPA;
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;
A first server;
A second server;
A third server;
Card info application programming interface;
Transmitting a request for checkout;
Receiving the request for checkout.
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).
They add insignificant extra-solution activity to the judicial exception. Note that “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity can include both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process. An example of post-solution activity is an element that is not integrated into the claim as whole. See MPEP 2106.05(g).
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 elements of “one or more computer processors”, “a first server”, “a second server”, and “a third server” are mere instructions to apply an exception, and do 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 elements of “one or more computer processors”, “a first server”, “a second server”, and “a third server” are re-evaluated to determine whether they constitutes significantly more. Examiner finds that the additional elements of “one or more computer processors”, “a first server”, “a second server”, and “a third server” are simply the use of a computer in its ordinary capacity and do 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).
As discussed with respect to step 2A prong 2 above, the additional elements of “transmitting a request for checkout” and “receiving the request for checkout” are extra solution activity that do 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 insignificant extra solution activity under step 2A should be re-evaluated at step 2B. The limitations “transmitting a request for checkout” and “receiving the request for checkout” are re-evaluated to determine whether they constitute well-understood, routine, and conventional activity in the field. The “transmitting of data” and “receiving of data” are well-understood, routine, and conventional in the field. See Symantec, TLI Communications, and MPEP 2106.05(d). Thus, a conclusion that the limitations “transmitting a request for checkout” and “receiving the request for checkout” are well-understood, routine, and conventional is supported under Berkheimer.
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).
Response to Arguments
101 arguments
Applicant argues that the claimed invention extends beyond operation of a single computer, and as such, cannot be performed by a computer alone.
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 use of multiple computers (e.g. a first server, a second server, a third server) does not automatically confer patentability upon the claims. The use of multiple computers does not integrate the claimed invention into a practical application because the computers are simply a tool to perform the abstract idea.
103 arguments
Applicant argues that the prior art does not teach 1) determining if card information is available in a private session; 2) sending a request for card information and access tokens; 3) receiving a bearer token from the TPA; and 4) receiving encrypted card information; 5) determining if the user has a carded third party administrator; 6) a person having skill in the art would not modify Selwanes with Harrison; and 7) receiving a request for checkout.
Examiner has withdrawn the corresponding 103 rejection in light of the arguments.
Claim Interpretation
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure (see attached form PTO-892).
Qasim (US 2024/0265399) discloses healthcare transaction facilitation platform apparatuses, methods, and systems.
Gagerman et al. (US 2013/0046698) discloses a system and method of creating and authenticating a secure financial instrument.
Conclusion
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
Prosecution Insights