DETAILED ACTION
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 .
This is the Non-Final Office Action in response to the 01/28/2026 Response for Application No. 18/816,336 filed on August 27, 2024, title: “Bifurcated Digital Wallet Systems And Methods For Processing Transactions Using Information Extracted From Multiple Sources”.
Status of Claims
Claims 1-24 were restricted. By the 01/28/2026 Response, Applicant has elected claims 1-8 without traverse and added new clams 25-40 for prosecution. Claims 9-24 have been cancelled. Accordingly, claims 1-8 and 25-40 are pending in the application and have been examined.
Election/Restrictions
Applicant has elected claims 1-8 and added new claims 25-40 for prosecution, and claims 9-24 have been cancelled without traverse. Claims 9-24 have been cancelled from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/28/2026.
Priority
This application was filed on 08/27/2024 and is a DIV of US Application No. 17/684,401 filed on 03/01/2022 (Patented No. 12,100,000), which is a CON of US Application No. 14/663,840 filed on 03/20/2015 (Patented No. 11,295,304), which has a Provisional Application No. 61/968,038 filed on 03/24/2014.
Note: The Examiner noticed that paragraphs 51-59 of the present Specification and paragraphs 47-55 of the parent Application (17/684,401) contain new materials in which were not presented in the Specification of the grand parent’s Application 14/663,840. Therefore, for the purpose of examination, the 03/01/2022 and 03/20/2014 are considered to be the effective filing dates for the present claims depending on the claim limitations and the supported information.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-8 and 25-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,100,000 and claims 1-17 of U.S. Patent No. 11,295,304. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the Application are generic to all that is recited in the claims of the Patents. That is, the claims of the Patent fall entirely within the scope of the claims of the Application or, in other words, the claims of the Application are anticipated by the claims of the Patents. The examined claims recite substantially the same limitations as the reference claims in the Patents with minor variations that would have been obvious to one of ordinary skill in the art. The Application and the Patents are directed to the same invention of bifurcated digital wallet systems and methods for processing transactions using information extracted from multiple sources, have the same inventors, and are commonly owned. Therefore, this rejection is deemed necessary.
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 1-8 and 25-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Under the 2019 Revised PEG, Step 1 analysis, the claims are reviewed to determine whether they fall within the four statutory categories of patentable subject matter (i.e., process, machine, manufacture, or combination of matter).
Claims 1-8 recite an apparatus comprising processors and memories, claims 25-32 recite a method comprising steps, and claims 33-40 recite a non-transitory computer-readable storage medium comprising program codes. Therefore, the claims recite a machine, process, and manufacture which fall within the four statutory categories of invention (Step 1-Yes, the claims are statutory).
Step 2A, Prong 1:
Under the 2019 Revised PEG, Step 2A, Prong 1, the claims are reviewed to determine whether they recite a judicial exception by identifying if the claim limitations fall in one of the enumerated abstract idea groupings (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 25, A method comprising:
receiving, from a merchant server, a transaction request associated with a requested transaction between a user and a merchant, the transaction request comprising transaction information and information associated with a first user account managed by a first entity, the first entity comprising one of: the merchant, a payment processing entity, or a bank at which the user holds a bank account;
causing a user device associated with the user to display for user review the information associated with the first user account;
receiving, from the user device, in response to the user reviewing the information associated with the first user account, an indication regarding whether the information associated with the first user account is correct;
in an instance in which the indication received from the user device indicates that the information associated with the first user account is correct, sending, to an authentication server, an authentication request comprising the information associated with the first user account;
receiving, from the authentication server, upon successful authentication by the authentication server of the information associated with the first user account, an authentication confirmation comprising a first set of information;
querying one or more second servers, using the first set of information received from the authentication server, for a second set of information related to a second user account associated with the user and managed by a second entity different than the first entity;
receiving, from the one or more second servers, the second set of information related to the second user account associated with the user;
providing, to the user device, a combined set of user information comprising the first set of information and the second set of information;
receiving, from the user device, in response to the user reviewing the combined set of user information at the user device, a further indication regarding whether the combined set of user information is correct; and
in an instance in which the further indication received from the user device indicates that the combined set of user information is correct, providing the transaction information and the combined set of user information to the merchant server to facilitate processing of the transaction between the user and the merchant.
The claim is directed to the judicial exception of an abstract idea. Here, the claim involves a method involving all or most of the following steps/functions of: receiving user unreviewed authentication information and transaction information, instructing a user device to display the user unreviewed authentication information, receiving user reviewed authentication information, transmitting to an authentication server a request to authenticate a portion of the user reviewed authentication information, receiving a first set of information, querying a second set of information regarding a second account associated with the user, combining the first set and second set of information to form a combined set of information, instructing the user device to display the combined set of information for user to review, receiving a user-reviewed combined set of information, and transmitting the transaction information and the user-reviewed combined set of information to the merchant server to facilitate processing the transaction.
The above limitations (underlined), as drafted, is a process that, under its broadest reasonable interpretation, covers a method of organizing human activity but for the recitation of generic computer components (e.g., a merchant server, a user device, a payment processing entity (a bank), an authentication server). More specifically, the claim recites fundamental economic principles or practices including mitigating risk before authentication of transactions. The claimed invention is directed to the abstract idea of conducting a financial transaction between an user and a merchant by transmitting the transaction information and user-reviewed combined set of user information to the merchant server to facilitate processing of the transaction between the user and the merchant. The concept of conducting a financial transaction, as in the concept of hedging (Bilski), is a fundamental economic practice. As in hedging, which has existed for hundreds of years, the concept of conducting a financial transaction has also existed for hundreds of years, including any steps taking within the execution of the transaction to ensure authentication and non-repudiation of the transaction (for example, signing of a contract, and/or presenting some type of identification). The claimed invention is also similar to “collecting, displaying, and manipulating data” (Int. Ventures v. Cap One Financial). In the claimed invention, the transaction related data is collected, manipulated, and this results in data being displayed. Therefore, under the broadest reasonable interpretation, the claim covers the performance of a fundamental economic practice and falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Claim 1 recites an apparatus comprising processors and memories and Claim 33 recites a computer program comprising program codes and have the comparable elements and limitations as discussed in claim 25. Therefore, these claims also recite an abstract idea (Step 2A Prong 1-Yes, the claims recite an abstract idea).
Step 2A, Prong 2:
Under the 2019 Revised PEG, Step 2A, Prong 2, the claims are reviewed to determine whether the judicial exception (i.e., abstract idea) is integrated into a practical application. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception 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.
However, finding the claims to be directed toward abstract ideas is not the end of the inquiry. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297 (2012). Rather, the second step requires determining whether additional substantive limitations narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself. Another way of stating the test is whether the claim language provides “significantly more” than the abstract idea itself.
Applying the test to the claims (1, 25, and 33) of the instant application, the claims include the additional limitation of “an apparatus”, “at least one processor”, “at least one memory storing instructions”, “a user device”, “an authentication server”, “a merchant server”, “a payment processing entity (or a bank)”. However, these limitations do not add significantly more the abstract idea because most, if not all, of these functions are achievable using generic computer functions (see Alice Corp. Pty. Ltd. v. CLS Bank Int’l). For instance, it is common for generic computers be used for receiving, causing, receiving, sending, receiving, querying, receiving, providing, receiving, and providing transaction information and user-reviewed combined set of user information. Even if it could be argued that some of these functions cannot be performed by generic computing devices, these functions are well-known and customarily performed in the art by similar devices. The computer components all are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component, and this is substantiated by the Applicant’s Publication (see US Pub. No. 2024/0420132, paragraphs 24-37 and Figure 1).
The limitations are merely instructions to implement the abstract idea on the computing system over the internet and require no more than a generic computer to perform the generic computer functions. Each and every recited combination between the recited computing hardware and the recited computing functions has been considered. No non-generic or non-conventional arrangement is found. Accordingly, the claims do not include additional elements that integrate the judicial exception into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to the abstract idea without a practical application (Step 2A, Prong 2-No, the claims are not integrated into a practical application).
Step 2B:
Under the 2019 Revised PEG, Step 2A, Prong 2, the claims are reviewed to determine whether the claims provide an inventive concept (i.e., whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As noted in above, the claims as a whole merely describe how to generally “apply” the concept of conducting a financial transaction by transmitting the transaction information and user-reviewed combined set of user information to the merchant server to facilitate processing of the transaction between the user and the merchant server by: receiving user unreviewed authentication information and transaction information, instructing a user device to display the user unreviewed authentication information, receiving user reviewed authentication information, transmitting to an authentication server a request to authenticate a portion of the user reviewed authentication information, receiving a first set of information, querying a second set of information regarding a second account associated with the user, combining the first set and second set of information to form a combined set of information, instructing the user device to display the combined set of information for user to review, receiving a user-reviewed combined set of information, and transmitting the transaction information and the user-reviewed combined set of information to the merchant server to facilitate processing the transaction. All these generic computer functions are well-understood, routine, and conventional activities previously known to the industry similar to those referenced by MPEP 2106.05(d) II. Therefore, the independent claims 1, 25, and 33 are not patent eligible.
Dependent claims 2-8, 26-32, and 34-40 depend on claims 1, 25, and 33 respectively and therefore include all the limitations of claims 1, 25, and 33. Therefore, the dependent claims recite the same abstract idea of conducting a financial transaction between an user and a merchant by transmitting the transaction information and user-reviewed combined set of user information to the merchant server to facilitate processing of the transaction.
Claims 2, 26, and 34 further recite the additional elements “wherein the user review of the user unreviewed authentication information comprises the user modifying the user unreviewed authentication information to generate the user reviewed authentication information and then verifying the user reviewed authentication information.” (Additional detailed instructions about the user unreviewed authentication information. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 3, 27, and 35 further recite the additional elements “wherein the user review of the user unreviewed authentication information comprises the user verifying the user unreviewed authentication information to generate the user reviewed authentication information.” (Additional detailed instructions about the user unreviewed authentication information. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 4, 28, and 36 further recite the additional elements “wherein the second set of information comprises user contact information.” (Additional detailed instructions about the second set of information. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 5, 29, and 37 further recite the additional elements “wherein the second set of information comprises user payment option information.” (Additional detailed instructions about the second set of information. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 6, 30, and 38 further recite the additional elements “wherein the user review of the user unreviewed authentication information comprises an input by the user, at the user device, of user biometric information.” (Additional detailed instructions about the user review of the user unreviewed authentication information. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 7, 31, and 39 further recite the additional elements “wherein the second account associated with the user is a social media account.” (Additional detailed instructions about the second account. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
Claims 8, 33, and 40 further recite the additional elements “further comprising: causing the authentication server to generate a one-time password to send to at least another user device or an email address associated with the user; and causing the authentication server to, in an instance in which the user successfully inputs the one-time password, authenticate the user modified unverified authentication information.” (Additional detailed instructions for the authentication server to generate a one-time password and authenticate the user modified unverified authentication information. These claims individually or in combination with others do not integrate the abstract idea into a practical application or provide an inventive concept to the abstract idea).
The dependent claims further define the abstract idea that is present in their respective independent claims and add further instructions that narrow the scope of the invention. However, none of these details result in significantly more than the abstract idea because further narrowing the scope of the abstract idea does not make it any less abstract. The dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware and/or software amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, the dependent claims also are not patent eligible.
The focus of the claims (1-8 and 25-40) is on conducting a financial transaction by transmitting the transaction information and user-reviewed combined set of information to the merchant server to facilitate processing the transaction. The claims are not directed to a new type of processor, computer network, or system memory, nor do they provide a method for processing data that improves existing technological processes. The focus of the claims is not on improving computer-related technology, but on a certain independent abstract idea that uses computers as tools. The claims do not add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field. Accordingly, when viewed as a whole, the claims do no more than generally linking the use of the judicial exception to a particular technological environment or field of use. No inventive concept is found in the claims. Therefore, the claims do not add significantly more (i.e., an inventive concept) to the abstract idea (Step 2B-No, the claims are not significantly more than the judicial exception).
Note: Applicant’s claimed invention is generally related to digital shopping and more particularly to creating and accessing a bifurcated digital wallet by sourcing information from a plurality of sources, this is “a business solution” for “a business problem” and substantiated by Applicant’s Specification (see paragraph 2 of the Publication No. 2024/0420132).
[0002] The present disclosure relates generally to digital shopping, and more particularly to creating and access a bifurcated digital wallet by sourcing information from a plurality of sources, such as servers.
Also, Applicant claims that the invention is a system and method for creating and accessing a bifurcated digital wallet, the terms “bifurcated digital wallet” is described in various paragraphs of the Specification, but none of the claims recite or even mention the terms “bifurcated digital wallet”.
Claim Rejections - 35 USC § 102/103
Extensive prior art searches have been performed during prosecution of the parent applications (14/663,840 and 17/684,401). An updated prior art search did not identify any art(s) that teaches each and every element of the claims at this time.
Conclusion
Claims 1-8 and 25-40 are rejected.
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HAI TRAN
Primary Examiner
Art Unit 3695
/HAI TRAN/Primary Examiner, Art Unit 3695