Detailed Action
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the application filed on September 20, 2024.
Claims 1-20 are pending.
Claims 1-20 are examined.
This Office Action is given Paper No. 20251030 for references purposes only.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. The instant application claims the benefit of application 63/539,457.
Drawings
The drawings are objected to because figures 10, 11B, 12A, 12B, and 12C have illegible writing. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 recites “a prompt for a user.” Examiner assumes that Applicant intended “a prompt for the user.” Appropriate correction is required.
Claim 8 is objected to because it recites “a corresponding a spawned payment message.” Examiner assumes that Applicant intended “a corresponding spawned payment message.” Appropriate correction is required.
Claim Rejections - 35 USC § 112b
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.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 11 recites “receiving through the human interface device.” There is lack of antecedent basis for this term. For purposes of applying the prior art only, Examiner will interpret as “receiving through a human interface device.”
Claims 1-10 are vague and indefinite because they include purely functional limitations without corresponding structure. Specifically, the specification does not clearly link or associate structure(s) for these limitations:
“a processor configured to: receive… validate… control… receive… transmit… options” in claim 1.
Please see Claim Interpretation below.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A Prong 1: The claims recite an abstract idea of validating a transaction payment using alternative payment options, which is a certain method of organizing human activity (e.g. fundamental economic principles or practices including hedging, insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations; managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions).
Claim 11, representative of claims 1 and 20, includes the following limitations:
Receiving a payment data message including a payment data cryptogram, which includes a linkage with a third party database for storing alternative payment options;
Validating a confirmed enrollment and availability of the alternative payment options;
Controlling rendering of graphical user interface controls corresponding to the alternative payment options and prompting a user to select either partial or full payment;
Receiving an indication of either partial or full payment.
Step 2A Prong 2: The claim limitations recite the following additional elements that are beyond the judicial exception:
Third party remote database;
Application programming interface;
Electronic display screen;
Human interface device;
Transmitting a redemption data message including a redemption data cryptogram indicating the alternative payment option.
These additional elements are not indicative of integration into a practical application because:
They add the words “apply it” (or an equivalent) with the judicial exception, or are 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).
They add insignificant extra-solution activity to the judicial exception. Note that “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity can include both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process. An example of post-solution activity is an element that is not integrated into the claim as whole. See MPEP 2106.05(g).
They generally link the use of the judicial exception to a particular technological environment or field of use. See MPEP 2106.05(h).
Step 2B: The claim limitations do not recite additional elements, or an ordered combination of additional elements, that are sufficient to amount to significantly more than the judicial exception.
As discussed with respect to step 2A prong 2 above, the additional elements of an “electronic display screen” and a “human interface device” are mere instructions to apply an exception, and do not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional elements of an “electronic display screen” and a “human interface device” are re-evaluated to determine whether they constitute significantly more. Examiner finds that the additional elements of an “electronic display screen” and a “human interface device” are simply the use of a computer in its ordinary capacity and do not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 and MPEP 2106.05(f). For example, the additional elements only provide a result-oriented solution and lack details as to how the computer performs the modifications, which is equivalent to “apply it”. See Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2357 and MPEP 2106.05(f).
As discussed with respect to step 2A prong 2 above, the additional element of “transmitting a redemption data message including a redemption data cryptogram indicating the alternative payment option” is extra solution activity that does not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is insignificant extra solution activity under step 2A should be re-evaluated at step 2B. The limitation “transmitting a redemption data message including a redemption data cryptogram indicating the alternative payment option” is re-evaluated to determine whether it constitutes well-understood, routine, and conventional activity in the field. The “transmitting of data” is well-understood, routine, and conventional in the field. See Symantec, TLI Communications, and MPEP 2106.05(d). Thus, a conclusion that the limitation “transmitting a redemption data message including a redemption data cryptogram indicating the alternative payment option” is well-understood, routine, and conventional is supported under Berkheimer.
As discussed with respect to step 2A prong 2 above, the additional elements of a “third party remote database” and an “application programming interface” generally link the use of the judicial exception to a particular technological environment or field of use, and do not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional elements of a “third party remote database” and an “application programming interface” are re-evaluated to determine whether they constitute significantly more. Examiner finds that the additional elements of a “third party remote database” and an “application programming interface” are merely an attempt to limit the use of the abstract idea to a particular technological environment. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h).
Therefore, when considering all the additional claim elements both individually and as an ordered combination, Examiner finds that the claim does not amount to significantly more than the exception.
The dependent claims fail to cure this deficiency and are rejected accordingly.
Claim 12 recites returning interface style sheets that control visual configurations, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 13 recites using a secure cryptographic handshake, which generally links the use of the judicial exception to a particular technological environment or field of use (e.g. merely an attempt to limit the use of the abstract idea to a particular technological environment). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h).
Claim 14 recites reserving a quantity of payment tokens, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 15 recites the data field includes at least one cryptographic secret, which is merely describing data and further defining the abstract idea.
Claim 16 recites the handshake includes a confirmation of reserving the quantity of payment tokens, which is merely describing data and further defining the abstract idea.
Claim 17 recites the redemption data message includes a cryptographic secret and a data field indicative of an amount of redemption, which is merely describing data and further defining the abstract idea. Claim 17 also recites a processing the redemption data message and releasing a reservation, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 18 recites the redemption data message is generated for asynchronously processing, which generally links the use of the judicial exception to a particular technological environment or field of use (e.g. merely an attempt to limit the use of the abstract idea to a particular technological environment). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h).
Claim 19 recites the redemption data message is transmitted over a separate, lower security communications channel, which generally links the use of the judicial exception to a particular technological environment or field of use (e.g. merely an attempt to limit the use of the abstract idea to a particular technological environment). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Theurer et al. (US 2017/0372301) in view of Pi Farias et al. (US 2020/0402049).
Claims 1, 11, 20
Theurer discloses:
a computer memory (108) (memory, see [0265]);
an electronic display screen (110) (display, see [0281]) displaying the interactive user interface (104);
a human interface device (112) (mobile device, see [0158]) for receiving user interface inputs from a user;
non-transitory computer readable storage media (114) (tangible medium, see [0266]);
a processor (116) (processor, see [0265]) configured to:
the payment token data structure including at least one data field indicative of a linkage with a third party remote database (122) (wallet server, see [0082]) storing one or more data records corresponding to one or more alternative payment options;
validate, through communication of secure messaging with an application programming interface of the third party remote database (122) (wallet server retrieves user record, preferences, and permissions, see [0082]), a confirmed enrollment and an availability of the one or more alternative payment options (payment methods the user has approved, see [0082]) on the one or more data records;
control rendering (renders the received message, see [0083]), on the electronic display screen (110), the one or more interactive graphical user interface controls (106) (display to the user, see [0083]), the one or more interactive graphical user interface controls (106) corresponding to the one or more alternative payment options and providing a prompt for a user to select either a partial payment (partial payment, see [0050]) or a full payment (full payment, see [0050]) using the one or more alternative payment options;
receive, through the human interface device (112), an indication that the user has selected either the partial payment (partial payment, see [0050]) or the full payment (full payment, see [0050]) using the one or more alternative payment options.
Theurer does not disclose:
Receive… structure;
Transmit… options.
Pi Farias teaches:
receive a payment data message (118) including at least a payment data cryptogram (120) (payment cryptogram response input, see [0753]) representing a payment token data structure;
transmit, through the application programming interface of the third party remote database (122), a redemption data message (124) including a redemption data cryptogram (payment cryptogram, see [0760]) indicating the selection of the one or more alternative payment options.
Theurer discloses a memory, a screen, a human interface device, a third party remote database, validating a confirmed enrollment, controlling rendering of a graphical user interface, receiving an indication of partial or full payment. Theurer does not disclose receiving a payment data message and transmitting a redemption cryptogram, but Pi Farias does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the third-party value added wallet features and interfaces of Theurer with the receiving a payment data message and transmitting a redemption cryptogram of Pi Farias because 1) a need exists for frictionless enrollment of a consumer’s payment accounts in a virtual wallet (see Theurer [0044]); and 2) a need exists for protecting against unauthorized access to credit card accounts (see Pi Farias [0010]). Receiving a payment data message and transmitting a redemption cryptogram can help protect against unauthorized access.
Claims 2, 12
Furthermore, Theurer discloses:
the application programming interface of the third party remote database (122) is configured to return one or more user interface style sheets (see figure 12) that control one or more visual configurations of the one or more interactive graphical user interface controls (106).
Claims 3, 13
Furthermore, Theurer discloses:
the secure messaging with the application programming interface of the third party remote database (122) includes establishing a secure channel (secure hypertext transfer protocol, see [0076]) using a secure cryptographic handshake for authenticating an identity of the user.
Claims 4, 14
Furthermore, Pi Farias teaches:
the secure messaging with the application programming interface of the third party remote database (122) further includes using the secure cryptographic handshake for reserving in the one or more data records a quantity of payment tokens (quantity key tokens, see [0414]) corresponding to the full payment for a duration of time.
Claims 5, 15
Furthermore, Theurer discloses:
the at least one data field indicative of the linkage with a third party remote database (122) includes at least one cryptographic secret that enables a limited authentication of the identity of the user (customer ID, see [0080]), and the at least one cryptographic secret (RSA private key, see [0285]) is utilized for securing the secure cryptographic handshake.
Claims 6, 16
Furthermore, Pi Farias teaches:
the secure cryptographic handshake includes a confirmation of the reserving in the one or more data records the quantity of payment tokens (quantity key tokens, see [0414]) corresponding to the full payment (purchase amount, see [0414]) for the duration of time.
Claims 7, 17
Furthermore, Pi Farias teaches:
the redemption data message (124) includes the at least one cryptographic secret and a data field indicative of an amount of redemption (payment amount, see [0658]), wherein a backend computer server, upon receiving the redemption data message (124), processes the redemption data message (124) and releases a reservation corresponding to the reserving in the one or more data records of the quantity of payment tokens corresponding to the full payment for the duration of time.
Claims 8, 18
Furthermore, Pi Farias teaches:
the redemption data message is generated for asynchronously processing (execute asynchronously, see [1594]) relative to processing of a corresponding spawned payment message, the redemption data message (124) being buffered with one or more other redemption data messages for batch processing.
Claims 9, 19
Furthermore, Pi Farias teaches:
the redemption data message is transmitted over a separate, lower security communications channel (multiple communication channels, see [0849]) than the corresponding spawned payment message.
Claim 10
Furthermore, Theurer discloses:
the point of sale computing device (102) is a portable handheld device (mobile device, see [0072]) running a first mobile application configured for interfacing with the application programming interface of the third party remote database (122) and a second mobile application configured for processing the payment data message (118), the first mobile application and the second mobile application virtually segregated (discrete, separate to one another, see [0313]) from one another.
Claim Interpretation
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure (see attached form PTO-892).
Purves et al. (US 10,825,001) discloses a multi-directional wallet connector apparatuses, methods, and systems.
Examiner hereby adopts the following definitions under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), Examiner points to these other sources to support her interpretation of the claims.1 Additionally, these definitions are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
configuration “(1) (A) (software) The arrangement of a computer system or component as defined by the number, nature, and interconnections of its constituent parts.” “(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to hardware configuration or software configuration.” IEEE 100 The Authoritative Dictionary of IEEE Standards Terms, 7th Edition, IEEE, Inc., New York, NY, Dec. 2000.
processor “(2) (software) A computer program that includes the compiling, assembling, translating, and related functions for a specific programming language, for example, Cobol processor, Fortran processor.” IEEE 100 The Authoritative Dictionary of IEEE Standards Terms, 7th Edition, IEEE, Inc., New York, NY, Dec. 2000.
112f analysis
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“a processor configured to: receive… validate… control… receive… transmit… options” in claim 1.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim limitation “a processor configured to: receive… validate… control… receive… transmit… options” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “a processor” coupled with functional language “configured to: receive… validate… control… receive… transmit… options” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The remaining limitations listed above have a similar analysis.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1-10 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitations treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claims so that they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claims recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal/pair <http://pair-direct.uspto.gov>. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866.217.9197 (toll-free).
/CHRYSTINA E ZELASKIEWICZ/Primary Examiner, Art Unit 3699
1 While most definition(s) are cited because these terms are found in the claims, Examiner may have provided additional definition(s) to help interpret words, phrases, or concepts found in the definitions themselves or in the prior art.