DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prosecutorial Standing
2. This communication is in response to the Application filed on 10.17.2024. Claims 1-20 will be subject to further examination and evaluation in due course, and will be presented for examination, as detailed below.
Oath/Declaration
3. The Applicant’s oath/declaration has been reviewed by the Examiner and is found to conform to the requirements prescribed in 37 C.F.R. 1.63.
Information Disclosure Statement
4. As required by M.P.E.P. 609(C), the Applicant’s submission of the Information Disclosure Statement (IDS) dated 10.17.2024 is acknowledged by the Examiner. The cited references have been considered in the examination of the claims. As required by M.P.E.P 609 C (2), a copy of the PTOL-1449 initialed, signed and dated by the Examiner is attached to the instant Office action.
Priority / Filing Date
5. Applicants’ claim for priority of CON of 15/333,900 filed on 10.25.2016 is acknowledged. The Examiner takes the CON date of 10.25.2016 into consideration.
Double Patenting
6. The non-statutory 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 non-statutory 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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
7. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,147,951. Although the claims at issue are not identical, they are not patentably distinct from each other because the clams are directed to the same invention.
The mapping of exemplary claim 1 of the immediate application to exemplary claim 1 of the patent follows:
Immediate Application
Patent No.: 12,147,951
Claim 21: A computer-implemented method of managing electronic payment transactions, the method comprising: determining, by a point-of-sale (POS) terminal associated with a merchant, that a near field communication (NFC)-enabled payment vehicle interacted with the POS terminal; receiving, by the POS terminal, customer data from the NFC-enabled payment vehicle; processing, by the POS terminal, a payment transaction with the received customer data; and transmitting, by the POS terminal, an e-receipt to the NFC-enabled payment vehicle.
Claim 1: A computer-implemented method of managing electronic payment transactions at a merchant location, the method comprising: determining, by a point-of-sale (POS) terminal associated with a merchant, that a near field communication (NFC)-enabled payment vehicle interacted with the POS terminal; receiving, by the POS terminal, customer data from the NFC-enabled payment vehicle; processing, by the POS terminal, the payment transaction with the received customer data; generating, by the POS terminal, an e-receipt comprising one or more customizable features; and transmitting, by the POS terminal to the NFC-enabled payment vehicle, the e-receipt for display on the NFC-enabled payment vehicle.
Claim Rejections - 35 USC § 101
8. 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), an abstract idea without significantly more.
Claims 1-20 are directed to the field of payment transactions and, more particularly, to the generation of electronic receipts at point of sale terminals.
Independent claim 1 has been identified as the claim that represents the claimed invention for analysis. Claim is directed to a statutory category, namely a process, as recited by the preamble. Claim 1 recites managing electronic payment transaction and providing receipts using generic components, comprising the steps of:
determining that a near field communication (NFC)-enabled payment vehicle interacted with the POS terminal;
receiving customer data from the NFC-enabled payment vehicle;
processing a payment transaction with the received customer data; and
transmitting an e-receipt to the NFC-enabled payment vehicle
These limitations collectively describe managing a payment transaction and providing a receipt. This activity falls within the certain methods of organizing human activity grouping of abstract ideas, specifically commercial interaction because the claim involves conducting a financial transaction between a customer and a merchant and issuing a receipt, which is a fundamental economic practice.
According to the MPEP 2106.04(a)(2), claims that are directed to financial transaction processing or intermediated settlement, commercial interactions or business relationships, implemented on a generic computer technology constitute an abstract idea. Clearly, second tap e-receipt option for NFC-enabled payment fall under sales activities or behaviors, therefore it would fall under commercial or business relationships, which falls under certain methods of organizing human activity.
Further, evidence is cited to: Alice Corp. v. CLS Bank, Bilski v. Kappos, and buySafe, Inc. v. Google, Inc. Accordingly, claim 1 recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: a point-of-sale terminal, and NFC-enabled payment vehicle. However, these elements are recited at a high-level of generality and function as generic computer components. These elements are generic computing components performing their well-understood, routine, and conventional functions, such as: detecting device interaction, receiving data, processing a payment transaction, and transmitting information. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are recited at a high level of generality, and do not improve the functioning of a computer or POS system, do not improve the NFC communication technology, do not provide a particular machine configuration, and do not define a particular technical mechanism for managing electronic payment transactions. The additional claimed elements do not integrate the abstract idea into a practical application. Therefore, claim 1 is directed to an abstract idea without a practical application.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered individually and as an ordered combination, they do not add significantly more (also known as “inventive concept”) to the exception. The point-of-sale terminal, and the NFC-enabled payment vehicle are generic computer components performing well-understood, routine, and conventional functions (e.g., determining interaction, receiving data, processing transaction, and transmitting information). Mere instructions to apply an exception using a generic computer component cannot integrate into a practical application nor provide an inventive concept. The claim merely uses a generic computer as a tool to implement the abstract idea of managing electronic payment transactions, which fails to add an inventive concept sufficient to transform the abstract idea into patent eligible subject matter. Accordingly, these additional elements, do not change the outcome of the analysis, when considered individually and as an ordered combination as there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. Therefore, claim 1 is directed to an abstract idea (e.g., second tap e-receipt option for NFC-enabled payment vehicles) without significantly more. Accordingly, claim 1 is not patent eligible.
Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claim integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself. Therefore, the claim is rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter (see Alice Corp v CLS).
Furthermore, claims 2-8, 10-16, and 18-20 define the same that is present in their respective independent claims 1, 9, and 17, are considered to be part of the abstract idea above and merely act to further limit it. In the dependent claims, the additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than: mere instructions to implement the idea on a computer functioning in a standard mode of operation or matters that are routine and conventional in the field. Therefore, they are considered patent ineligible for the reasons given above.
Additionally, claims 2-8, 10-16, and 18-20 do not pertain to a technological problem being solved in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, and/or the limitations fail to achieve an actual improvement in computer functionality or improvement in specific technology other than using the computer as a tool to perform the abstract idea. Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter (see Alice Corp v CLS).
Claim Rejections - 35 USC § 102
9. 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.
10. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
11. Claims 1, 2, and 4-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Arthur, Pub. No.: US 2014/0040052.
As per claim 1, Arthur discloses a computer-implemented method of managing electronic payment transactions [see at least ¶0004 (e.g., payment systems supporting use of mobile electronic devices in various types of financial transactions), and also illustrated in FIG. 16 below (e.g., a mobile commerce system for handling payment transactions)], the method comprising:
determining, by a point-of-sale (POS) terminal associated with a merchant [as illsuatted in FIG. 16 below (e.g., POS device 310)], that a near field communication (NFC)-enabled payment vehicle interacted with the POS terminal [as illsuatted in FIG. 16 below (e.g., (NFC) transponder 407];
receiving, by the POS terminal, customer data from the NFC-enabled payment vehicle [as illsuatted in FIG. 16 below (e.g., payments system 425];
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processing, by the POS terminal, a payment transaction with the received customer data [as illustrated in FIG. 3 (e.g., a system for processing transactions utilizing a mobile electronic device)];
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and transmitting, by the POS terminal, an e-receipt to the NFC-enabled payment vehicle [see at least ¶0081 (e.g., the controller 504 is coupled can include an antenna 512 for transmitting and receiving electromagnetic signals and an NFC module 516 that provides instructions for implementing a communications protocol, such as an NFC protocol. The NFC module 516 performs a more active role than the antenna 512, determining what electromagnetic signals to transmit over the antenna 512 and/or interpreting electromagnetic signals that are received by the antenna 512), claim 1 (e.g., transmitting the e-receipt to the point-of-sale device for transmission to the mobile device for storage or use by the mobile wallet application), claim 5 (e.g., transmit, via a wireless communications network, the e-receipt to the mobile wallet application for storage), claim 6 (e.g., transmit the e-receipt to the point of sale device), claim 9 (e.g., transmit the second e-receipt to the mobile wallet application via a near field communication transponder of the point of sale device), as illustrated in FIG. 5, and presented below].
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As per claim 2, Arthur discloses wherein the NFC-enabled payment vehicle is a mobile computing device [see at least ¶0007 (e. g., contactless transaction initiation is often performed with a "smart" card or other device such as a key fob or a mobile device such as a cell phone or Personal Digital Assistant (PDA) containing a memory and a processor), and see FIG. 3 below].
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As per claim 4, Arthur discloses wherein transmitting, by the POS terminal, the e-receipt to the NFC-enabled payment vehicle comprises transmitting, by the POS terminal, the e-receipt to be stored in a mobile wallet of the NFC-enabled payment vehicle [see at least the rejection of claim 1 above. In light of the preceding examination, claim 4 is hereby rejected on grounds substantially similar to those articulated in the rejection of claim 1. As detailed in the prior rejection, the rationale and basis for rejecting claim 1 are applicable to claim 4. For a comprehensive understanding of the rejection grounds, reference is made to the detailed explanation provided in the rejection of claim 1, which is incorporated herein by reference].
As per claim 5, Arthur discloses wherein the e-receipt is transmitted to the NFC-enabled payment vehicle using near field communication (NFC) [see at least the rejection of claim 1 above. In light of the preceding examination, claim 5 is hereby rejected on grounds substantially similar to those articulated in the rejection of claim 1. As detailed in the prior rejection, the rationale and basis for rejecting claim 1 are applicable to claim 5. For a comprehensive understanding of the rejection grounds, reference is made to the detailed explanation provided in the rejection of claim 1, which is incorporated herein by reference].
As per claim 6, Arthur discloses wherein the e-receipt is transmitted wirelessly to the NFC-enabled payment vehicle [see at least the rejection of claim 1 above. In light of the preceding examination, claim 6 is hereby rejected on grounds substantially similar to those articulated in the rejection of claim 1. As detailed in the prior rejection, the rationale and basis for rejecting claim 1 are applicable to claim 6. For a comprehensive understanding of the rejection grounds, reference is made to the detailed explanation provided in the rejection of claim 1, which is incorporated herein by reference].
As per claim 7, Arthur discloses further comprising: generating, by the POS terminal, the e-receipt comprising one or more customizable features, wherein the one or more customizable features include at least one of: a rating feature, a consumer incentive feature, an interactive coupon, or a loyalty reward [see at least the rejection of claim 1 above and ¶0065 (e.g., customized hardware might also be used and/or particular elements might be implemented in hardware, software (including portable software, such as applets), or both)].
As per claim 8, Arthur discloses receiving an indication that a selection area of the e-receipt has been activated, wherein the selection area is associated with the rating feature [see at least ¶0075 (e.g., the mobile wallet 408 of the mobile device 324 can be adapted to present the plurality of financial accounts to a user of the mobile device 324 and receive a selection of a financial account for the transaction. The mobile device 324 can also be adapted to communicate at least a subset of the information related to the selected financial account via the NFC transponder 407 upon initiation of the transaction)]; and displaying the rating feature on one of a user device associated with the NFC-enabled payment vehicle or the POS terminal [see at least ¶0084 (e.g., the mobile wallet 676 can allow storage of multiple payment vehicles and can provide a user interface that can be displayed on a screen or display device 680 and through which the user can select a specific payment vehicle by manipulating a keypad, wheel, touch screen, or other input device 682)].
12. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Arthur in view of Pourfallah, Patent No.: US 9,760,871.
As per claim 3, Arthur in view of Pourfallah discloses wherein the interaction with the POS terminal comprises a tap of the NFC-enabled payment vehicle against the POS terminal [see at least Pourfallah: column 6: lines 20-22 (e.g., just tap on his mobile device 103a), as illustrated in FIG. 1, and presented below].
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Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to incorporate the teaching of Pourfallah in order to provide a business-to-business payment platform which facilitates business to business payment triggered by a user event, and transforms purchase item information inputs or purchase receipt inputs via B2B-PAY components into restricted-use account payment settlement outputs [Pourfallah: abstract].
13. Claims 9-16, which are parallel to claims 1-8 in terms of scope, limitations, and share similar characteristics, as discussed and examined above. Consequently, they are rejected based on the same logical and underlying reasoning, and justification that apply to claims 1-8. The similarity between these claims necessitates the same grounds for rejection, as explained in detail above [note the discussion of claims 1-8].
14. Claims 17-20, which are parallel to claims 1-8 in terms of scope, limitations, and share similar characteristics, as discussed and examined above. Consequently, they are rejected based on the same logical and underlying reasoning, and justification that apply to claims 1-8. The similarity between these claims necessitates the same grounds for rejection, as explained in detail above [note the discussion of claims 1-8].
Conclusion
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The PTO-1449 form has been reviewed and considered.
US 2018/0075446, Yin: discloses a method of data transmission for mobile near-field payment that is performed in a user equipment.
US 8,738,454, Argue: discloses methods and systems for transferring digital receipt data to mobile devices.
US 9,292,867, Patel: discloses method that includes receiving, at a user identification module of an electronic receipt system in electronic communication with a point-of-sale terminal, a user identifier transmitted from a mobile communication device to a near-field communication enabled communication device associated with the point-of-sale terminal.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Garcia Ade whose telephone number is (571)272-5586. The examiner can normally be reached on Monday - Friday.
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, Florian Zeender can be reached on 517-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Garcia Ade/Primary Examiner, Art Unit 3627
GARCIA ADE
Primary Examiner
Art Unit 3687
/GA/Primary Examiner, Art Unit 3627