DETAILED ACTION
This office action is in response to Applicant’s communication of 11/21/2025. Amendments to claims 1-15 and 19 have been entered. Claims 1-20 are pending and have been examined. The rejection and response to arguments are stated below.
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 11/21/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims do fall within at least one of the four categories of patent eligible subject matter because claim 1 is directed to a process and claim 15 is directed to a system; Step 1-yes.
Under Step 2A, prong 1, representative claim 1 recites a series of steps for authenticating a payer to checkout and an authenticated health-ecommerce retailer for processing a third party payment request which is a commercial or legal interaction and thus grouped as “Certain Methods of Organizing Human Activity”. The claim as a whole and the limitations in combination recite this abstract idea. Specifically, the limitations of representative claim 1, bolded below, recite the abstract idea as follows.
1. (Currently amended) A method for facilitating cardless transaction processing, comprising:
receiving, via one or more computer processors, a request for login from a user;
directing, via the one or more computer processors, an open authentication provider to authenticate an identity of the user;
if the open authentication provider authenticates the identity of the user, directing the open authentication provider to generate and send a temporary access code to a health-ecommerce retailer;
receiving, via the one or more computer processors, a request for checkout from the user;
determining, via the one or more computer processors, if a balance is sufficient;
providing, via the one or more computer processors, a frictionless payment option to the user;
receiving, via the one or more computer processors, a valid access token, wherein the access token is generated at least in part by the temporary access code;
receiving, via the one or more computer processors, a valid bearer token from an application programming interface, the bearer token being an authentication mechanism between the health-ecommerce retailer and the application programming interface;
sending, via the one or more computer processors, a payment request to a third party administrator; and
processing, via the one or more computer processors, the payment request.
The claimed limitations, identified above, recite a process that, under its broadest reasonable interpretation, covers performance of a commercial or legal interaction, but for the recitation of generic computer components. That is, other than the mere nominal recitation of “one or more computer processors”, access “token”, bearer “token”, i.e. digital representation of data and an “application programming interface” in claim 1 and “one or more computer processors; one or more computer readable storage media; program instructions stored on the computer readable storage media for execution by at least one of the one or more computer processors” and an “application programming interface” in claim 15, there is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea grouping. Thus, claims 1 and 15 recite an abstract idea.
Under step 2A, prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed for communicating over a generic network and displaying information, to perform the abstract idea steps. The computer components are recited at a high-level of generality (i.e., as generic processors with memory suitably programmed communicating information over a generic network, see at least FIG.1 and paragraphs [0034-0036], [0039], “API 140 is an application programming interface allowing two or more computer programs to communicate with each other. API 140 is a type of software interface, offering a service to other pieces of software. In an exemplary embodiment, API 140 comprises MULESOFT® integration software” which is a most generic computer element leveraged in a very conventional manner, and [0175-0188] of the specification) such that it amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f). Accordingly, the additional elements claimed do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claims 1 and 15 are directed to an abstract idea.
Under step 2B, 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 using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) Mere instructions to apply an exception using generic computer components interacting in a conventional manner cannot provide an inventive concept. Claims 1 and 15 are not patent eligible.
For instance, in the process of claim 1, the limitation steps, claimed at a high level of generality, recite steps that are considered mere instructions to apply an exception akin to a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd.; Gottschalk and Versata Dev. Group, Inc.; see MPEP 2106.05(f)(2).
Applicant has leveraged generic computing elements to perform the abstract idea of authenticating a payer to checkout and an authenticated health-ecommerce retailer for processing a third party payment request, without significantly more.
Dependent claims 2-14 and 16-20 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
For instance, the limitation of claims 2 and 16 further refines the abstract idea and falls under a commercial or legal interaction. Also, but for the nominal recitation of generic computing elements, this can be completed manually. Claims 3 and 17 further refine the abstract idea and are claimed at a very high level of generality such that they also fall under mental observation and evaluation but for the nominal recitation of generic computing elements. Claims 4 and 18 are further refines the abstract idea and are also claimed at a very high level of generality such that a human being can perform these limitation steps manually and in the mind but for the nominal recitation of generic computing elements. Claims 5, 6, 7, 18, 19 and 20 further refine the abstract idea and are all claimed at a very high level of generality such that there are no technical implementation details as to how these steps occur. A human being can determine if a token has expired, request and issue new tokens and use said tokens but for the nominal recitation of generic computing elements. Claims 8, 9, 10 and 11 further refine the abstract idea and can be completed in the mind but for any nominal recitation of generic computing elements. Claims 12 and 13 further refine the abstract idea and both can be completed manually through mental evaluation but for the nominal recitation of generic computing elements. Claim 14 further refines the abstract idea by defining data/information sent from one party to another but for the nominal recitation of generic computing elements.
Clearly, the additional recited limitations in the dependent claim only refines the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series of steps for authenticating a payer to checkout and an authenticated health-ecommerce retailer for processing a third party payment request) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed and communicating over a network) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. a series of steps for authenticating a payer to checkout and an authenticated health-ecommerce retailer for processing a third party payment request) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself or integrate the judicial exception into a practical application.
Response to Arguments
Applicant’s arguments, see the Remarks filed 11/21/2025, with respect to the claim objection of claim 14 have been fully considered and are persuasive. The claim objection of claim 14 has been withdrawn.
Applicant’s arguments, see the Remarks filed 11/21/2025, with respect to the 35 U.S.C. 102/103 rejection of claims 1-20 have been fully considered and are persuasive. The 35 U.S.C. 102/103 rejection of claims 1-20 has been withdrawn.
Applicant’s arguments filed in the Remarks of 11/21/2025 with respect to the 35 U.S.C. 101 rejection of claims 1-20 have been fully considered but they are not persuasive.
On page 9 of the Remarks, Applicant argues “A. The Recited Limitations Are Not Basic Building Blocks As Required By Alice To Be Considered an Abstract Idea”. On page 11 Applicant argues “Therefore, much like the claims in McRo, amended claims 1 and 15 are directed to a specific series of tasks that are not building blocks of the art and do not stifle basic innovation in any field. Therefore, there is no risk of preemption in the field because the claims only cover one specific method (and apparatus) for facilitating a cardless transaction, and allows, for example, a third party administrator, an open authentication provider, an application programming interface, a health-ecommerce retailer, and/or a user to interact seamlessly such that the transaction is optimized and occurs instantaneously.” On page 12 Applicant argues “B. The Subject Matter Recited in Each of Amended Claims 1 and 15 Does Not Recite Matter That Falls Within The Enumerated Groupings of Abstract Ideas Set Forth By the 2019 Revised Patent Subject Matter Eligibility Guidance”. Examiner respectfully disagrees.
It is clear through a plain reading of Applicants claims and specification that the instant invention is directed to a series of steps to authenticate users in order to determine and process a payment request which is a most fundamental abstract idea which has been present in commerce since the beginning of purchasing products and services.
The Examiner does not see the parallel between the claims of the instant case and those of McRo (McRo, Inc. v. Bandai Namco Games Am., 2015-1080 (Fed. Cir. Sept. 13, 2016)). In McRo the patents relate to “automating part of a preexisting 3-D animation method”, which were to be done manually before the issuance of the patent. The claims were directed to an asserted improvement in computer animation technology such as directed to a patentable technological improvement over the existing, manual 3D animation techniques. In other words, “the claims are limited to rules with specific characteristics” which allow for the improvement realized by the invention. Specifically at McRo *22, “As the specification confirms, the claimed improvement here is allowing computers to produce “accurate and realistic lip synchronization and facial expressions in animated characters” that previously could only be produced by human animators. ’576 patent col. 2 ll. 49–50.” Hence the claims in McRo were patent eligible because they recited significantly more than an abstract idea. However, Applicants’ invention is a business solution to a problem rooted in an abstract idea as stated above. The claimed limitations and the claimed computing functionality does not incorporate a complex set of rules which allow the computer to be improved. In contrast, the claimed functions such as are conventional functions of a computer system that the abstract idea is applied upon. The computer is merely a platform on which the abstract idea is implemented.
Regarding Applicant's arguments alleging that the claims do not wholly preempt the abstract idea, the Supreme Court in Alice Corp. cautioned that merely limiting the use of an abstract idea “to a particular technological environment” or implementing the abstract idea on a “wholly generic computer” is not sufficient as an additional feature to provide “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice Corp., 134 Supreme Court. at 2358 (citations omitted). Also, preemption is not a stand-alone test. Preemption concerns have been addressed by the Examiner through the application of the two-step framework. Applicant’s attempt to show that the recited abstract idea is a very narrow and specific one is not persuasive. A specific abstract idea is still an abstract idea and is not eligible for patent protection without significantly more elements recited in the claim. In the present case, the claimed technology is nothing more than generic computer technology implementing an abstract idea. In Alice the computer system was specifically programmed to execute the specifically claimed steps. It is noted that the issue is whether the claims preempt the abstract idea that is claimed. The abstract idea of the challenged claims is not only “authenticating a payer to checkout and an authenticated health-ecommerce retailer for processing a third party payment request” in general, but also the specific type of “authenticating a payer to checkout and an authenticated health-ecommerce retailer for processing a third party payment request”. That the present claims do not preempt the field of processing a third party payment request do not make them any less abstract. (See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (generating tasks in an insurance organization). The Ultramercial decision makes it clear that Patent Owner’s arguments regarding pre-emption "are not a substitute for the proper two-part test under Alice".
On page 14 of the Remarks, Applicant argues “C. The Subject Matter of Amended Claims 1 and 15 Integrates a Judicial Exception (if any) into a Practical Application”. On page 15, Applicant argues “First, Applicant asserts that the claim limitations (of claim 1 for example) use any judicial exception found therein in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”. On page 16 Applicant argues “Second, Applicant asserts that the claim in question must be read as a whole when evaluating whether the judicial exception is meaningfully limited by integration into a practical application of the exception.” On page 17 Applicant argues “Third, Applicant asserts that the claims recite an additional element that reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field.”. On page 18 Applicant argues “3. Patent Eligible Application of a Judicial Exception (Step 2B, Mayo Test Part 2)” Examiner respectfully disagrees.
The claims only recite using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed for communicating over a generic network and displaying information, to perform the abstract idea steps. The computer components are recited at a high-level of generality (i.e., as generic processors with memory suitably programmed communicating information over a generic network, see at least FIG.1 and paragraphs [0034-0036], [0039], “API 140 is an application programming interface allowing two or more computer programs to communicate with each other. API 140 is a type of software interface, offering a service to other pieces of software. In an exemplary embodiment, API 140 comprises MULESOFT® integration software” which is a most generic computer element leveraged in a very conventional manner, and [0175-0188] of the specification) such that it amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f). Furthermore, the steps of the claims, taken individually or as an ordered combination, have been identified in the rejection as corresponding to abstract ideas. The additional elements in the claims are “one or more computer processors”, an access “token”, a bearer “token”, i.e. digital representation of data ,and an “application programming interface” in claim 1 and “one or more computer processors; one or more computer readable storage media; program instructions stored on the computer readable storage media for execution by at least one of the one or more computer processors” and an “application programming interface” in claim 15 to execute the claimed steps. See at least FIG.1 and paragraphs [0034-0036], [0039], “API 140 is an application programming interface allowing two or more computer programs to communicate with each other. API 140 is a type of software interface, offering a service to other pieces of software. In an exemplary embodiment, API 140 comprises MULESOFT® integration software” which is a most generic computer element leveraged in a very conventional manner, and [0175-0188] of the specification. The claims at issue do not require any nonconventional computer, network, or other components, or even a non-conventional and non-generic arrangement of known, conventional pieces but merely call for performance of the claimed functions on a set of generic computer components. The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone.
In light of the Alice decision and the guidance provided in the 2019 PEG, the features listed in the claims, are not considered an improvement to another technology or technical field, or an improvement to the functioning of the computer itself. At best, these features may be considered to be a business solution, using computers, to a problem of authenticating a payer to checkout and an authenticated health-ecommerce retailer for processing a third party payment request. The alleged benefits that Applicants argue are due to business decisions, using computers, rather than any improvement to another technology or technical field, or an improvement to the functioning of the computer itself. By relying on computing devices to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible (See Alice, 134 S. Ct. at 2359 “use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept). As discussed in the rejection above, the components of the instant system, when taken alone, each execute in a manner conventionally expected of these components. At best, Applicant has claimed features that may improve an abstract idea. However, an improved abstract idea is still abstract, (SAP America v. Investpic *2-3 (‘“We may assume that the techniques claimed are “groundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89-90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”’
There is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. There is nothing, for example, in the pending claims to suggest that the claimed “one or more computer processors”, access “token”, bearer “token”, i.e. digital representation of data and an “application programming interface” in claim 1 and “one or more computer processors; one or more computer readable storage media; program instructions stored on the computer readable storage media for execution by at least one of the one or more computer processors” and an “application programming interface” in claim 15 are somehow made more efficient or that the manner in which these elements carry out their basic functions is otherwise improved in any way. The alleged advantages that Applicants argue do not concern an improvement in computer capabilities but instead relate to an alleged improvement in the abstract idea, for which a computer is used as a tool in its ordinary capacity.
In summary, the computer is merely a platform on which the abstract idea is implemented. Simply executing an abstract concept on a computer does not render a computer “specialized,” nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012). There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. The claimed sequence of steps comprises only “conventional steps, specified at a high level of generality,” which is insufficient to supply an “inventive concept.” Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1297, 1300). Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d_, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). Hence the claims do not recite significantly more than an abstract idea.
For these reasons and those stated in the rejection above, rejection of claims 1-20 under 35 U.S.C. 101 is maintained by the Examiner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure are listed on the enclosed PTO-892.
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER J BRIDGES whose telephone number is (571)270-5451. The examiner can normally be reached 7:00am-3:30pm M-F EDT.
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/CHRISTOPHER BRIDGES/Primary Examiner, Art Unit 3693