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 .
Claim Status
Claim 1 is currently pending and are presented for examination on the merits.
Priority
Applicant's claim of priority to US 17796,050, filed on 7/28/2022, under 35 U.S.C. § 120 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/7/2024 was filed before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim objection
Claim 1 is objected to at the limitation “. . . in or as said . . .” which is confusing, please consider changing to using a term such as “comprising” or “including”. Correction/clarification is requested.
Drawing objections
The drawings are objected to at FIG. 3A, please confirm proper margins; at FIG. 10, please indicate (e.g., via a bracket, box, etc.) that the Legends caption is an inclusive part of the figure. Applicant is reminded that all drawings must be made by a process which will give them satisfactory reproduction characteristics. 37 CFR 1.83(a); 37 CFR 1.84(l). MPEP 608.02(d).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 is rejected under 35 U.S.C. § 101, because it recites non-patentable subject matter under MPEP § 2106 (e.g., the 2019 PEG, October update). The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 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. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., apparatus, system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claim 1 recites a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards executing a transaction between a payer and payee within proximity, using first and second intercommunicating devices, in an offline environment that is later settled when online (e.g., when in (long range) communication with the payment source). This is a long-standing commercial practice previously performed by humans (e.g., consumers, merchants, banks, etc.) manually and via generic computing. For examples, individuals have long made payments manually within proximity, without requiring long-range data communication with a remote settlement service, by tendering cash or check. Checks have long been settled subsequently by the payee by taking it to the bank manually, and most recently, payer and payee devices and short-range communication (e.g., NFC) have been used. As such, the inventions include an abstract idea under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—devices, communication protocols, token, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. More particularly, the extraneous limitations are set forth in bold below:
A method for handling a digital payment between a payer and a payee, the method comprising: a payer communication device, used by the payer, and a payee communication device, used by the payee, using short-range data communication when the devices are in proximity of each other to agree upon a digital payment without requiring long-range data communication with a remote digital payment settlement service at that stage; the payer communication device and the payee communication device both buffering digital payment information (DPI) pertaining to the digital payment locally in the respective device; independently of the other device, the payer communication device or the payee communication device subsequently communicating the buffered digital payment information to the remote digital payment settlement service by long-range data communication; and the remote digital payment settlement service causing settlement of the digital payment (DP) as indicated by the digital payment information received by long-range data communication from one of the payer communication device and the payee communication device without having to wait for the digital payment information to be received from the other one of the payer communication device and the payee communication device, wherein the payer communication device and the payee communication device agree upon the digital payment by: the payee communication device transmitting payment details for the digital payment to the payer communication device by short-range data communication, the payer communication device using the payment details and a digital signature of the payer to digitally sign the digital payment and generate a payment token, the payer communication device transmitting the payment token to the payee communication device by short-range data communication, and the payee communication device buffering the received payment token (S) in or as said digital payment information locally in the payee communication device, wherein the payer communication device comprises a secure element, the secure element storing a private cryptographic key of the payer communication device or payer, the payer communication device using the secure element to digitally sign the digital payment by the private cryptographic key and generate the payment token, and wherein the payee communication device uses a public cryptographic key associated with the private cryptographic key of the payer communication device or payer to verify the received payment token as a requisite for accepting the digital payment.
A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software in do what’s been previously done. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the independent and/or dependent claims either further delineate the abstract idea, recite insignificant extra-solution activity, or instruct the artisan to apply it (the abstract idea) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular, technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. § 102 as being anticipated by US 10,366,378 to Han et al.
With respect to Claim 1, Han teaches a method for handling a digital payment between a payer and a payee (Abstract), the method comprising: a payer communication device, used by the payer, and a payee communication device, used by the payee (FIG. 2), using short-range data communication when the devices are in proximity of each other to agree upon a digital payment (col 37, ln 25-32; col 54, ln 40-50) without requiring long-range data communication with a remote digital payment settlement service at that stage (see “offline” throughout); the payer communication device and the payee communication device both buffering digital payment information pertaining to the digital payment locally in the respective device (see “cache” or “caching” data throughout); independently of the other device, the payer communication device or the payee communication device subsequently communicating the buffered digital payment information to the remote digital payment settlement service by long-range data communication (col 1, ln 25-31; col 21, ln 40-50); and the remote digital payment settlement service causing settlement of the digital payment as indicated by the digital payment information received by long-range data communication from one of the payer communication device and the payee communication device (col 1, ln 25-31; col 21, ln 40-50) without having to wait for the digital payment information to be received from the other one of the payer communication device (the term “offline” teaches the transfer of payment information earlier prior to communication to the remote settlement service (at this stage)) and the payee communication device (col 21, ln 40-50, only the POS sends data to PPS), wherein the payer communication device and the payee communication device agree upon the digital payment by:
the payee communication device transmitting payment details for the digital payment to the payer communication device by short-range data communication (col 33, ln 45-47; col 67, ln 52-65),
the payer communication device using the payment details and a digital signature of the payer to digitally sign the digital payment and generate a payment token (col 34, ln 60-col 35, ln 4; col 35, ln 4-8),
the payer communication device transmitting the payment token to the payee communication device by short-range data communication (col 33, ln 45-47), and the payee communication device buffering (col 37, ln 12-14) the received payment token in or as said digital payment information locally in the payee communication device (col 67, ln 52-65), wherein the payer communication device comprises a secure element, the secure element storing a private cryptographic key of the payer communication device or payer (col 35, ln 10-20), the payer communication device using the secure element to digitally sign the digital payment by the private cryptographic key and generate the payment token (col 67, ln 55-65), and wherein the payee communication device uses a public cryptographic key associated with the private cryptographic key of the payer communication device or payer to verify the received payment token as a requisite for accepting the digital payment (col 35, ln 12-20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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/WILLIAM J JACOB/Examiner, Art Unit 3696