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
Applicant filed an amendment on 12/19/2025. Claims 1-20 were pending in the present application.
Claims 1, 13, and 17 have been amended. Claim 4 is cancelled and claim 21 is newly added. Accordingly, claims 1-3 and 5-21 are currently under consideration. After careful consideration of applicant’s arguments and amendments the examiner finds them be moot in view of new grounds of rejection. This action is a final rejection.
Claim Objections
Claims 1, 5, 13, 16, 17, 20 are objected to because of the following informalities: “without requiring authorization from the second user” is not directly supported in applicant specification. It is also a negative limitation. However, in applicant spec 0050 it appears that limits and controls may be placed by a parent on a child. This is how the examiner interprets the limitation, as opposed to authorization for a transaction generally when making a purchase. Appropriate correction is required.
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, 5-21 are rejected under 35 U.S.C. 101 because they are directed to an abstract idea without more.
Claims 1, 13 and 17 are independent and are ‘method” apparatus and medium type claims which are generally statutory classes of invention.
However, creating a payment hierarchy for a credit card is essentially a fundamental economic practice which is an abstract idea. Applicant is essentially utilizing generic computing equipment to implement the abstract idea.
For example claim 1 contains the following abstract elements;
receiving, at one or more … of a payment service, a request from a first user … associated with a first user to send a payment instrument to a second user … associated with a second user, wherein the payment instrument is associated with a merchant and a first balance; creating, within a data structure of the payment service and by the one or more computing …, a rule for a profile of the second user automatically in response to the request from the first user …, wherein the rule indicates that is based on the payment instrument is to be used for transactions with the merchant, and wherein the profile of the second user is associated with a transaction instrument and at least one account associated with the transaction instrument having a second balance that is spendable using the transaction instrument; receiving, by the one or more computing devices, a transaction indication indicating a request to use the transaction instrument for a transaction, the transaction indication identifying information about the transaction; automatically determining, by the one or more computing … [[,]] and based on the information about the transaction and the rule for the profile of the second user, that the transaction is associated with the merchant and that the rule indicates that the first balance is to be used for the transaction prior to using the second balance; and facilitating, by the one or more computing … and without requiring authorization from the second user, processing of the transaction with the transaction instrument by automatically using the first balance prior to the second balance.
Here the elements are abstract The claims essentially amount to applying an abstract idea to “one or more computing devices” which broadly could be a single device. By amendment, “first user device” and second user device and payment service computing device are more clearly defined. However, these are defined at a high level of generality.
The dependent claims do not improve the analysis of the independent claims.
Here the abstract idea is not integrated into a practical technical application. However, it appears that the applicant specification may contain other technical elements that would further define a practical application of technology.
Applicant inventive concept technically speaking in 0014 of the specification, “speed an efficiency” … in generating accounts or profiles and onboarding multiple cars… by preconfiguring…. Also memory management is also improved… If applicant can claim these technical improvements, the 35 USC 101 could be overcome potentially.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3,5-21 are is/are rejected under 35 U.S.C. 103 as being unpatentable over
US Patent Publication to Rogers 20050192897 in view of US Patent Publication to Mukherjee
As per claim 1, Rogers discloses; A method comprising: receiving, at one or more computing devices of a payment service, a request from a first user device associated with a first user to send a payment instrument to a second user device associated with a second user, wherein the payment instrument is associated with a merchant and a first balance; (payment to a merchant?)
Rogers(0038) creating, within a data structure of the payment service and by the one or more computing devices, a rule for a profile of the second user, automatically in response to request from the first user device wherein the rule indicates that the payment instrument, and wherein the profile of the second user is associated with a transaction … and at least one account associated with the transaction instrument Rogers(0038)having a second balance that is spendable using the transaction …; receiving, by the one or more computing devices, a transaction indication indicating a request to use the transaction instrument for a transaction, the transaction indication identifying information about the transaction;
Rogers(0038) Automatically determining, by the one or more computing devices, and based on the information about the transaction and the rule for the profile of the second user, that the transaction is associated with the merchant and that the rule indicates the first balance is to be used for the transaction prior to using the second balance; Rogers(0038, first 250 debit, then credit)
and facilitating, by the one or more computing devices and without requiring authorization from the second user, processing of the transaction with the transaction … by using the first balance prior to the second balance. Rogers(0055, in regards to without requiring authorization, it appears that applicant is referring to a parent child type feature where some transactions are blocked and some are not 0040, a review of the specification does not support this limitation except for in this limited interpretation, see 0050 of applicant spec.) Here the applicant specification appears to contemplate a cell phone type transaction instrument though technically it could be a credit card too;
Mukherjee teaches a cellphone as a standalone instrument (0063)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the transaction system of Rogers with the standalone instrument teachings of Mukherjee for the motivation of “facilitating user transfers of funds” (0002)
Claims 13 and 17 are similar to claim 1.
As per claims 3, 15 and 19, Rogers discloses; The method of claim 1, wherein facilitating processing of the transaction comprises depleting the first balance and completing the transaction using at least a portion of the second balance.
Rogers(0037 portions of the single transaction treated differently, 0038, as well)
As per claims 5, 16 and 20 Rogers discloses; The method of claim 1, further comprising: receiving, by the one or more computing devices, a second transaction indication indicating a
request to use the transaction instrument for a second transaction associated with a different merchant; determining, by the one or more computing devices, based on the information about the second transaction and the rule for the profile of the second user,
that the transaction is associated with the different merchant and that the second balance is to be used for the transaction; and facilitating, by the one or more computing devices and without requiring authorization from the second user, processing of the second transaction with the transaction instrument using the second balance.
Rogers (0074, 3rd party might provide authorization)
As per claim 6, Rogers discloses; The method of claim 1, further comprising determining, by the one or more computing devices, that the transaction is associated with a location, wherein determining that the transaction is associated with the merchant is based on the location.
Rogers(0036)
As per claim 7 Rogers discloses; The method of claim 1, further comprising determining, by the one or more computing devices, that the transaction involves a transaction type, wherein determining that the transaction is associated with the merchant is based on the transaction type.
Rogers(0038)
As per claim 8 Rogers discloses; The method of claim 1, further comprising determining, by the one or more computing devices, that the transaction involves payment for a product or a service, wherein determining that the transaction is associated with the merchant is based on the product or the service.
Rogers(0049 goods for example, or requires one)
As per claim 9 Rogers discloses; The method of claim 1, further comprising determining, by the one or more computing devices, that the transaction involves a payment using a currency type, wherein determining that the transaction is associated with the merchant is based on the currency type.
Rogers( US dollars or other currencies 0048)
As per claim 12 Rogers discloses; The method of claim 1, further comprising updating, by the one or more computing devices, the profile of the second user to reflect the processing of the transaction by updating a monetary amount associated with at least one of the first balance or the second balance.
Rogers(0038)
As per claim 10 Rogers discloses;
The method of claim 1, wherein the first balance is stored within the profile of the second user as being separate and distinct from the second balance.
Rogers(0038)
As per claims 2, 14 and 18 Rogers discloses; The method of claim 1, wherein facilitating processing of the transaction is performed using the first balance and independent of using the second balance.
Rogers(0038)
As per claim 11, Rogers discloses; The method of claim 1, further comprising causing display, by the one or more computing devices, of the payment instrument and the first balance at a user interface of a device associated with the second user. Rogers(0040)
As per claim 21 Rogers discloses; The method of claim 1, further comprising storing, by the one or more computing devices, a profile relationship of the first user and the second user, wherein the profile relationship specifies that each of the first user and the second user are authorized to access each of the first balance and the second balance (0040 a feature to have a separate child account with special limitations, the child can be the only user or the parent and child can use the same instrument. In regards to access the first and second balance see 0038 where a husband and wife can share balances in various ways)
Response to Arguments
Applicant filed an amendment on 12/19/2025. Claims 1-20 were pending in the present application.
Claims 1, 13, and 17 have been amended. Claim 4 is cancelled and claim 21 is newly added. Accordingly, claims 1-3 and 5-21 are currently under consideration. After careful consideration of applicant’s arguments and amendments the examiner finds them be moot in view of new grounds of rejection. This action is a Final rejection.
REJECTIONS UNDER 35 U.S.C. § 101
Claims 1-20 are rejected under 35 U.S.C. 101 because they are purportedly directed to an abstract idea without more. The Applicant respectfully traverses this rejection.
Regarding Step 2A, Prong One, the claims are not 'directed to' any purported abstract ideas in light of MPEP §2106.04(a) and are therefore patent-eligible.
The claims are patent-eligible for similar reasons as the claims at issue in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) ("McRO"). For instance, the claims at issue in McRO concern "automatically animating lip synchronization and facial expression" based on a "set of rules that define output morph weight," with the "rules [being] applied to [a] timed transcript to determine the morph weight outputs." McRO, 1307. The Federal Circuit found the claims at issue in McRO to be non-abstract and patent-eligible because, "[b]y incorporating the specific features of the rules as claim limitations," the McRO claims are "limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques." Id., 1316.
1 As the undersigned representative's remarks with respect to the Examiner's rejections are sufficient to overcome these rejections, the undersigned representative's silence as to assertions by the Examiner in the Office Action or certain requirements that may be applicable to such rejections (e g , assertions regarding dependent claims, whether a reference constitutes prior art, whether references are legally combinable for obviousness purposes) is not a concession by the undersigned representative that such assertions are accurate or such requirements have been met, and the undersigned representative reserves the right to analyze and dispute such in the future
Here the applicant has made improvements but, unlike McRo which was directed to an improvement to the software technology rather than an improved payment process. Thus applicant is not persuasive.
Independent claim 1 recites, " receiving, at one or more computing devices of a payment service, a request from a first user device associated with a first user to send a payment instrument to a second user device associated with a second user, wherein the payment instrument is associated with a merchant and a first balance; creating, within a data structure of the payment service and by the one or more computing devices, a rule for a profile of the second user automatically in response to the request from the first user device, wherein the rule indicates that the payment instrument is to be used for transactions with the merchant, and wherein the profile of the second user is associated with a transaction instrument and at least one account associated with the transaction instrument having a second balance that is spendable using the transaction instrument; receiving, by the one or more computing devices, a transaction indication indicating a request to use the transaction instrument for a transaction, the transaction indication identifying information about the transaction; automatically determining, by the one or more computing devices and based on the information about the transaction and the rule for the profile of the second user, that the transaction is associated with the merchant and that the rule indicates that the first balance is to be used for the transaction prior to using the second balance; and facilitating, by the one or more computing devices and without requiring authorization from the second user, processing of the transaction with the transaction instrument by automatically using the first balance prior to the second balance."
In rejecting the claims under § 101, the Office action asserts that the claims are directed to a fundamental economic practice.
Office action, at pg. 2. However, the claims involve specific features of the rule to facilitate interactions between user devices and a payment service to automatically determine a balance to be used based on the rule and automatically facilitate the transaction without requiring authorization from the second user. Therefore, the Applicant asserts that these interactions are not limited to a fundamental economic practice.
Accordingly, the claims satisfy Step 2A, Prong One. The Applicant respectfully requests that the 35 U.S.C. § 101 rejection of claims 1-20 be withdrawn.
Here, “fundamental economic practice” is directed to payment authorization. It’s hard to argue that this is not a fundamental practice at some level.
Regarding Step 2A, Prong 2, the Office asserts that the additional elements amount to limitations which do not integrate the abstract idea into a practical application. Office action, at
The Applicant respectfully traverses the rejection and submits that the claims, as a whole, is integrated into a practical application.
According to the MPEP:
The Prong Two analysis considers the claim as a whole. That is, the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception need to be evaluated together to determine whether the claim integrates the judicial exception into a practical application... the way in which the additional elements use or interact with the exception may integrate it into a practical application. Accordingly, the additional limitations should not be evaluated in a vacuum, completely separate from the recited judicial exception.
Instead, the analysis should take into consideration all the claim limitations and how those limitations interact and impact each other when evaluating whether the
exception is integrated into a practical application. MPEP § 2106.04(d)(III).
Furthermore, in Step 2A Prong Two, "examiners should ensure that they give weight to all additional elements, whether or not they are conventional." MPEP § 2106.04(d)(I)).
When the limitations containing the purported judicial exception as well as the additional elements in the claim are evaluated together, the claims integrate any purported abstract ideas into a practical application. For instance, claim 1 recites steps of receiving, by one or more computing devices of a payment service, a request at a first user device to send a payment instrument to a second user device.
Claim 1 further recites that the one or more computing devices of the payment service create a rule automatically in response to the request to indicate a payment instrument to be used.
These recitations go beyond merely using a computer as a tool to carry out an abstract idea. Rather, the claim elements interact with and impact each other such that they integrate any purported abstract ideas into a practical application by increasing processing speed and efficiency over traditional methods. Applicant's Specification, [0014]. As such, the recited claim elements integrate any purported judicial exceptions into a practical application.
Accordingly, the claims satisfies Step 2A, Prong Two. The Applicant respectfully requests that the 35 U.S.C. § 101 rejection of claims 1-20 be withdrawn.
Regarding Step 2B, the Applicant respectfully submits that, even assuming arguendo that the claims can be interpreted as being directed to an abstract idea (which the Applicant does not
concede), the claims contain elements that, when considered in combination, amount to "significantly more" than the alleged judicial exception.
The MPEP is explicit that a claim's limitations "may be enough to qualify as 'significantly more' when recited in a claim with a judicial exception," especially when "improvements to another technology or technical field" are present. MPEP § 2106.07(b). For instance, "even if an element does not amount to significantly more on its own (e.g., because it is merely a generic computer component performing generic computer functions), it can still amount to significantly more when considered in combination with the other elements of the claim." Id. The MPEP discusses "a CPU that performs mathematical calculations or a clock that produces time data" as examples of "generic computer components that individually perform merely generic computer functions" but "are able in combination to perform functions that are not generic computer functions and therefore amount to significantly more than an abstract idea (and are thus eligible)."Id. (emphasis added).
Furthermore, in order to increase efficiency in examination, "a streamlined eligibility analysis can be used for a claim that may or may not recite a judicial exception but, when viewed as a whole, clearly does not seek to tie up any judicial exception such that others cannot practice it." MPEP §2105.06(a). Without conceding the Office's characterization of the claims as including an abstract idea, the Applicant respectfully submits that the claims clearly do not seek to preempt or tie up the purported abstract idea to which the Office asserts the claim is directed. On the contrary, there are numerous ways in which others may perform the purported abstract idea not recited in the claims.
Accordingly, the claims recite "significantly more" than the purported abstract idea. For all of the reasons presented herein, the Applicant respectfully requests that the 35 U.S.C. § 101 rejection of claims
Here “practical application” as argued may not be persuasive. For example “improvements to another technology” or technical field may not be relevant to the claims as presented. Thus applicant may not be persuasive here as well. However, if applicant can show an improvement to the technology like data savings or faster speeds for the computer process, then there type of arguments may be persuasive.
REJECTIONS UNDER 35 U.S.C. § 103
Claims 1-20 are rejected under 35 U.S.C. 103 as being purportedly unpatentable over U.S. Patent Publication 2005/0192897 (hereinafter Rogers) in view of U.S. Patent Publication 2012/0259768 (hereinafter Mukherjee). The Applicant respectfully traverses this rejection.
Independent claim 1 recites, inter alia, "automatically determining, by the one or more computing devices and based on the information about the transaction and the rule for the profile of the second user, that the transaction is associated with the merchant and that the rule indicates that the first balance is to be used for the transaction prior to using the second balance; and facilitating, by the one or more computing devices and without requiring authorization from the second user, processing of the transaction with the transaction instrument by automatically using the first balance prior to the second balance." The Applicant respectfully submits that the asserted combination of Rogers and Mukherjee fails to teach these at least these features.
Rogers merely describes a system and method for enrolling customer with a payment network. Rogers, Abstract. Notably, Rogers does not describe independent and joint usage of a single balance. Mukherjee merely describes a proxy account as a dependent, non-funded subaccount of a master account. Mukherjee, Abstract. Mukherjee further describes that the proxy account is subject to restrictions imposed by the user or owner of the master account. Mukherjee, [0013].
Here the argued elements for example independent and joint usage of a single balance are not claimed and thus this argument would not be pervasive. It appears that applicant may be arguing without requiring authorization which is a negative limitation. Rodgers 0055 discloses being able to identify a user without identification type authorization, by comparing features for example. No official authorization is needed.
The asserted combination of Rogers and Mukherjee is completely silent on facilitating, by the one or more computing devices and without requiring authorization from the second user, processing of the transaction with the transaction instrument by automatically using the first balance prior to the second balance, as recited in independent claim 1. Rather the combination of Rogers and Mukherjee, at best, describes hierarchical management of payment instruments associated with master/proxy type user profiles. Therefore, the asserted combination of Rogers and Mukherj ee does not teach these features of independent claim 1.
Here as argued above, the examiner reviewed the support for “without requiring authorization from the second user. There is no support for this limitation specifically but for 0050 of applicant specification where in some cases purchases of the child are restricted by the parent. So the “without authorization” is merely without parent approval. In Rodgers, the parent can control the child’s purchases which is a similar concept but, without the term authorization. They are also controlling the purchase of the child. Applicant should clarify the without authorization to be specific as to if this is the parent authorizing a child or is it the credit company authorization. Also since this is a negative limitation, the lack of any parental safeguard would be without authorization.
Claims 13 and 17 are argued similar to claim 1.
In its rejection of claim 3, the Office asserts that Rogers teaches "depleting the first balance and completing a portion of the transaction using at least a portion of the second balance. Office action, pg. 6.
The Applicant disagrees with this assertion. Rogers merely recites that the system may allow portions of a single transaction to be treated differently. Rogers, [0037]. Rogers further elaborates that a number of submodules execute different preferences including selecting payment method based on payment levels (e.g. purchases less than $100 are executed by a checking account), splitting transactions among different transaction types (e.g. the first $250 of any transaction is a debit and any amount over is a credit), basing the payment upon characteristics of related profiled (e.g. rules between spouses), and specifying that a stored value card is to be used for the entire transaction. Rogers, [0038]. Therefore, the combination of Rogers and Mukherjee does not teach depleting the first balance and completing apportion of the transaction using at least a portion of the second balance.
Claims 15, 19 are argued similarly to claim 3.
Here claim 3 is directed to a rule, depleting one account and then using a portion of the second balance.
As interpreted Rogers 0037-8 also teaches rules. Rogers contemplates many different variations and thus it appears that using the first 250 as a transaction might deplete the debit account and then the remaining will be credit. A husband and wife can have special instructions… in 0039 other payment preferences are disclosed. Thus the examiner interpreted the various instructions of the consumer to be contemplating a specific one as well such as “deplete the first balance and completing a portion of the transaction using at least a portion of the second balance” 0070 of Rodgers also indicates that credit transactions will be within predetermined credit limits…. Debit transactions for less than the available balance…. So as not to deplete the balance (inferred). Thus the applicant may not be persuasive here.
NEW DEPENDENT CLAIM 21
Claim 21 recites "a profile relationship of the first user and the second user, wherein the profile relationship specifies that each of the first user and the second user are authorized to access each of the first balance and the second balance."
The Applicant respectfully submits that the cited references, independently or in combination, fail to teach at least these features.
Rogers describes a method of enrolling a customer with a payment network but does not describe independent and joint usage of a single balance. Rogers, Abstract. Mukherjee merely describes a proxy account as a dependent, non-funded subaccount of a master account. Mukherjee, Abstract. Mukherjee further describes that the proxy account is subject to restrictions imposed by the user or owner of the master account. Mukherjee, [0013]. Therefore, the combination of Rogers and Mukherjee does not describe that each of the first user and the second user are authorized to access each of the first balance and the second balance. Rather, the combination of Roger and Mukherjee requires approval of a master account for a dependent to access a balance.
Here In regards to both profiles accessing both accounts, see 0038 of Rogers where a husband and wife can have various shared accounts.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pay-Cloak: A Biometric Back Cover for Smartphones, IEEE 2017
A Secure Operational Model for Mobile Payments, PMC 2014
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 concerning this communication or earlier communications from the examiner should be directed to BRUCE I EBERSMAN whose telephone number is (571)270-3442. The examiner can normally be reached 8:00 am - 5:00 pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693
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