DETAILED ACTION
This is an office action on the merits in response to the communication filed on 7/23/2024.
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 .
Claims’ Status
Claims 1-18 are pending and are considered in this office action.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter? MPEP 2106.03
Per Step 1, Claim 1 is drawn to a method claim; claim 7 is drawn to a system claim; claim 13 is drawn to a non-transitory physical computer storage claim, which are all within the four statutory categories (i.e., a process).
Independent claim 7 recites: (claims 1 and 13 being similar in scope):
Claim 7:
register a user with a digital wallet service using a unique email address associated with the digital wallet;
register the unique email address with a banking institution to enable electronic funds transfers;
receive a confirmation email from the banking institution at the digital wallet service;
enable end consumers to send funds to the unique email address via the electronic funds transfer system;
receive transaction emails at the digital wallet service, wherein the transaction emails contain details of the funds transfer;
parse the transaction emails to extract transaction details including the amount transferred and any associated notes; and
display the extracted transaction details in a transaction history associated with the digital wallet.
Step 2A Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon? MPEP 2106.04
The limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers 1) commercial transaction; 2) Managing personal interactions, under the Certain methods of organizing human activity, but for the recitation of generic computer components. The abstract idea, recited above, includes: receive a confirmation email from the banking institution at the digital wallet service; enable end consumers to send funds to the unique email address via the electronic funds transfer system; receive transaction emails at the digital wallet service; display the extracted transaction details in a transaction history associated with the digital wallet. If a claim limitation, under its broadest reasonable interpretation, covers performance of limitations 1) commercial transaction; 2) Managing personal interactions, but for the recitation of generic computer components, it falls within the Certain Methods of Organizing Human Activity – 1) commercial transaction; 2) Managing personal interactions; grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04.
The recited computing elements (claim 7 “one or more processors; and one or more memories”) are recited at a high-level of generality, i.e. as generic computing element performing generic computer functions such that it amounts to no more than mere instructions to apply the exception using generic computer components (see MPEP 2106.05(f)). Simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more, since it amounts to no more than a recitation of the words "apply it" (or an equivalent) to implement an abstract idea or other exception on a computer, as set forth in MPEP 2106.05(f).
The other additional positive elements: “register a user with a digital wallet service using a unique email address associated with the digital wallet; register the unique email address with a banking institution to enable electronic funds transfers; parse the transaction emails to extract transaction details including the amount transferred and any associated notes” in claim 7, which amounts to linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) or simply “applying 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 an abstract idea - see MPEP 2106.05(f)
Accordingly, these additional claim elements, alone and in combination do not integrate the abstract idea into a practical application, because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05(a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05(b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05(e) and the Vanda memo). Therefore, per Step 2A, Prong Two, the claim is directed to an abstract idea not integrated into a practical application.
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B of the eligibility analysis concludes that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Examiner carries over the analysis from Step 2A related to the generic computing elements being no more than a recitation of the words "apply it" (or an equivalent) to implement an abstract idea or other exception on a computer (MPEP 2106.05(f)). The additional claim elements are simply linking the use of the judicial exception to a particular technological environment or field of use” are mere instructions to implement an abstract idea on a computer, are carried over for further analysis in Step 2B.
When the independent claims are considered as a whole, as a combination, the claim elements noted above do not amount to any more than they amount to individually. The operations appear to merely apply the abstract concept to a technical environment in a very general sense, i.e. modules. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. Therefore, it is concluded that the elements of the independent claims are directed to one or more abstract ideas and do not amount to significantly more. (MPEP 2106.05)
Further, Step 2B of the analysis takes into consideration all dependent claims as well, both individually and as a whole, as a combination:
Claims 8-12 are further directed to additional abstract ideas because the steps performed are simply narrowing the scope of the abstract idea of claim 7 since their individual and combined significance is still not significantly more than the abstract concept at the core of the claimed invention. For example, claim 8 further describes the step of forwarding the transaction email; claim 9 further describes forwarding the transaction email to one or more secondary email addresses; claim 10 describes what the unique email address entails; claim 11 describes parsing additional information from the transaction emails; claim 12 on automatically updates the transaction history in real-time; etc, which all of the limitation are narrowing the steps performed in claim 7.
Moreover, the claims in the instant application do not constitute significantly more also because the claims or claim elements only serve to implement the abstract idea using computer components to perform computing functions (Enfish, see MPEP 2106.05(a)). The other dependent claims, claim 2-6 and 14-18 are similar in scope to the claim 8-12, are also rejected for the same reasons provided above.
The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the associated computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. In sum, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention. Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more either. (see MPEP 2106.05)
In sum, claims 1-18 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Regarding claim 5, 11, and 17, the phrase "such as" in limitation “such as invoice numbers or other relevant data included in the notes field of the transaction email” renders the claim indefinite because it lacks certainty. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Castinado et al. (US20170132615A1) in view of Moore et al. (US20200219095A1), and further in view of Brady et al. (US20150235301A1).
With respect to claim 1, 7, and 13
Castinado discloses:
registering a user with a digital wallet service using a unique email address associated with the digital wallet ([0055], a customer 201 who is signed up for the P2P payment service has the option to initiate P2P payments from a DDA, savings, line of credit, and/or credit card account 203 of the financial entity (and/or from a P2P-specific account 205 with the financial entity) through the financial entity's mobile banking website 209 or a mobile banking handset application 207 by providing any of the above-described alias information, e.g., phone number, email address, social networking ID, and/or other alias, along with a payment amount; [0052], As further illustrated in FIG. 1, the alias 117 may be an email address 121 and, as such, payment may be made by the customer 101 providing an email address 121 (the email address 121 being an email address of the intended payment recipient 125) along with an associated payment amount.)
registering the unique email address with a banking institution to enable electronic funds transfers ([0129], As shown in FIG. 8E, if the second user registers the new financial institution account in block 894 for mobile P2P transfers, then the mobile banking system 600, in block 896, uses the new registered financial institution account to initiate an ACH transfer or other type of transfer. The process then moves to block 897 where the mobile banking system 600 sends the alias and the new registered account information to the alias data repository 700. The process then moves to block 898 of FIG. 8E where the alias data repository 700 stores recipient's alias in alias datastore along with recipient's (second user's) new registered financial institution account; [0052], As further illustrated in FIG. 1, the alias 117 may be an email address 121 and, as such, payment may be made by the customer 101 providing an email address 121 (the email address 121 being an email address of the intended payment recipient 125) along with an associated payment amount.);
receiving a confirmation email from the banking institution at the digital wallet service ([0045], The information provided by the customer 101 during registration of an alias may be verified to confirm that the customer 101 does have access to the mobile number 119, email address 121, social networking ID 123, or other alias 117 provided. For example, as described in greater detail below, the financial institution (or other entity that maintains a database of aliases and associates them with financial institution accounts) may send a communication to the customer 101 using the alias and require the customer 101 confirm access to the alias by responding to the notice in some way. For example, if the alias registered by the customer 101 is a mobile telephone number 119, the financial institution may send a text message to the mobile telephone number 119 with a code and then require that the customer 101 enter the code into a mobile banking or online banking application to confirm that the mobile telephone number is associated with the customer 101.)
enabling end consumers to send funds to the unique email address via the electronic funds transfer system ([0055], A receiver 221 not associated with the financial entity 221 may receive funds at the receiver's financial institution account 219 at another partner financial institution if the account is registered and associated with the alias and/or the receiver 221 may be prompted to register for the service and/or open an account with the financial institution in order to receive the payment from the sender 201.);
Castinado doesn’t explicitly disclose, but Moore teaches:
receiving transaction emails at the digital wallet service, wherein the transaction emails contain details of the funds transfer (see claim 1, receiving, via the temporary email address, transaction data corresponding to the transaction from the third party device via the one or more communication networks.);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Castinado with the teaching of Moore as they relate to a system of managing payment transactions. One of ordinary skill in the art before effective filing date of the claimed invention was made would have modified the system of Castinado of person-to-person payment to include a method of receiving transaction details in a email as taught in Moore for predictable results of facilitating payment transaction based on email-based digital wallet.
Castinado in view of Moore don’t explicitly disclose, but Brady teaches:
parsing the transaction emails to extract transaction details including the amount transferred and any associated notes ([0049], In step 411, the retrieved email message bodies for the identified email messages of interest are parsed to extract the order information and/or shipping information contained therein, Such parsing operation can occur in a variety of known ways; [0052], In this embodiment, context-free grammars (CFGs) are used to parse fields from an identified email message of interest. Of note, however, is that rather than using grammars for parsing natural language (e.g., English) structures the present approach uses defined smaller grammars describing a particular email message format, for example: “(Greetings from merchant) (Details about order) (Details about item 1) (Details about item 2).(Details about item N) (Tax and totals calculation),” etc.); and
displaying the extracted transaction details in a transaction history associated with the digital wallet ([0056], In step 413, the extracted product order and/or shipping information is stored. In one embodiment, if the email message of interest is an order confirmation then a new database record is created by aggregation server 310 in database 300 of FIG. 3 and the relevant information from the email message header and the extracted entities from the order confirmation email message body are added to the database record. Likewise, if the email message of interest is a shipping confirmation for a previously received order confirmation, then the relevant information from the email message header and the extracted entities from the shipping confirmation email message body are added to the previously created database record or is added as another record to the database.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Castinado/ Moore with the teaching of Brady as they relate to a system of managing payment transactions. One of ordinary skill in the art before effective filing date of the claimed invention was made would have modified the combined systems of Castinado/Moore, for example person-to-person payment in Castinado, to include a method of parsing transaction emails to extract transaction details as taught in Brady for predictable results of facilitating payment transaction based on email-based digital wallet.
With respect to claim 2, 8, and 14
The combination of Castinado, Moore, and Brady teaches the limitation of claim 1, 7, and 13 respectively. Moore further teaches: the step of forwarding the transaction email to a primary email address associated with the user registered with the digital wallet service ([0058], As another example, the enterprise may link the temporary email address to the customer email address by automatically forwarding emails received by the temporary email address to the customer email address.)
With respect to claim 4, 10, and 16
The combination of Castinado, Moore, and Brady teaches the limitation of claim 1, 7, and 13 respectively. Castinado further teaches: wherein the unique email address registered with the digital wallet service comprises a phone number, company name, or any other preferred identifier chosen by the user ([0125], In one embodiment, the alias is a phone number or an email address.)
With respect to claim 5, 11, and 17
The combination of Castinado, Moore, and Brady teaches the limitation of claim 1, 7, and 13 respectively. Moore further teaches: wherein the step of parsing the transaction emails further includes extracting additional information such as invoice numbers or other relevant data included in the notes field of the transaction email ([0038], For example, processor 151 may identify transaction receipt 165 from an email sent to temporary email address 142 based on a template, and the identified transaction receipt 165 may be stored in receipts database 152. In some embodiments, processor 151 may parse out data per line item from an email sent to temporary email address 142. For example, processor 151 may parse out a line item for a health care expense from transaction receipt 165 and store that particular health care expense in a sub folder of receipts database 152 that includes health related expenses.)
Claims 3, 9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Castinado et al. (US20170132615A1) in view of Moore et al. (US20200219095A1) in view of Brady et al. (US20150235301A1), and further in view of Lu (US20150358268A1).
With respect to claim 3, 9, and 15
The combination of Castinado, Moore, and Brady teaches the limitation of claim 1, 7, and 13 respectively. The combination doesn’t explicitly disclose, but Lu teaches: the step of forwarding the transaction email to one or more secondary email addresses designated by the user, including email addresses of supervisors or accounting personnel ([0024], Forwarding an approved electronic message to the intended recipient (step 230) generally includes automatically routing the electronic message to the intended recipient if the message is deemed acceptable for forwarding (in step 220); see also [0006], In some implementations, a supervisory recipient may be designated for an intended recipient; [0004], Routed electronic messages may include email, instant or chat room messages.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Castinado/ Moore/Brady with the teaching of Lu as they relate to a system of managing electronic message. One of ordinary skill in the art before effective filing date of the claimed invention was made would have modified the combined systems of Castinado/ Moore/Brady, for example person-to-person payment in Castinado, to include a method of forwarding message to a supervisor’s email address as taught in Lu for predictable results of facilitating payment transaction based on email-based digital wallet.
Claims 6, 12, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Castinado et al. (US20170132615A1) in view of Moore et al. (US20200219095A1) in view of Brady et al. (US20150235301A1), and further in view of Tucker et al. (US20210150624A1).
With respect to claim 6, 12, and 18
The combination of Castinado, Moore, and Brady teaches the limitation of claim 1, 7, and 13 respectively. The combination doesn’t explicitly disclose, but Tucker teaches: wherein the digital wallet service automatically updates the transaction history in real-time upon receipt of the transaction email, providing immediate visibility of the transaction to the user ([0052], User interface 2000 may display data through an application data display, which displays and updates application data to a user based on incoming data from a service provider, such as transaction processor 130. In this regard, user interface 2000 includes a transaction display 2002 that may display and update (e.g., in real-time) data for a transaction history of a user, including transactions within the history (e.g., previously processed and paid for) that qualify for conversion into an installment loan. Transaction display 2002 includes a transaction 2004 that may correspond to a previous transaction, such as an outgoing payment by the user to another user, merchant, or other entity, including purchases, transfers, and the like. Transaction 2004 includes transaction data 2006 that describes the transaction, such as an amount, payee or payor (e.g., for incoming payments), items or services purchased, a time, a description, or other information (including Level 2 and/or Level 3 card data that more granularly describes the transaction made using a payment card).)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Castinado/ Moore/Brady with the teaching of Tucker as they relate to a system of managing payment transaction. One of ordinary skill in the art before effective filing date of the claimed invention was made would have modified the combined systems of Castinado/ Moore/Brady, for example person-to-person payment in Castinado, to include a method of automatically updating the transaction history in real-time as taught in Tucker for predictable results of facilitating payment transaction based on email-based digital wallet.
Conclusion
THIS ACTION IS MADE Non-FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YIN Y CHOI whose telephone number is (571)272-1094 or yin.choi@uspto.gov. The examiner can normally be reached on M-F 7:30 - 5:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YIN Y CHOI/Examiner, Art Unit 3699
5/2/2026
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