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 .
Double Patenting
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 non-statutory 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.
Claims 2, 9 and 16 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 8 and 15 of U.S. Patent No. 12147966. Although the claims at issue are not identical, they are not patentably distinct from each other because all the elements of the application claims 2, 9 and 16 are to be found in patent claims 1, 8 and 15. The difference between the application claims and the patent claims lies in the fact that the patent claim includes more elements and is thus more specific. Thus the invention of claims 1, 8 and 15 of the patent is in effect a “species” of the “generic” invention of the application claims 2, 9 and 16. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims 2, 9 and 16 are anticipated by claims 1, 8 and 15 of the patent, it is not patentably distinct from the claims of the patent.
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 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (a judicial exception without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 2-21, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 2 recites a system. Claim 9 recites a method. Claim 16 recites a non-transitory computer-readable medium.
Step 2A, prong 1: Claim 9 recites the abstract idea of managing add-ons for delivery service orders. This idea is described by the following steps:
receiving an indication that a request to conduct a transaction has been made by a user;
determining context data associated with the request;
determining a plurality of mechanisms usable by the user to conduct the transaction;
determining, based on the context data and a set of criteria, a first one of the plurality of mechanisms to prioritize over a second one of the plurality of mechanisms; and
displaying the first one of the plurality of mechanisms differently than the second one of the plurality of mechanisms.
Claims 2 and 16 recite equivalent limitations.
This idea falls into the certain methods of organizing human activity grouping of abstract ideas as it is directed towards commercial interactions including advertising, marketing or sales activities or behaviors (i.e., facilitating transactions using one of the plurality of payment instruments).
Step 2A, prong 2: Claims 2, 9 and 16 recite additional elements that fail to integrate the abstract idea into practical application.
Claims 2, 9 and 16 recite one or more processors; a computer system and a non-transitory, computer-readable medium storing instructions that are executable by the one or more processors to cause the computing system to perform operations. However, these elements are generic computing components (see at least paragraph 071) that are simply used to perform operations that would otherwise be abstract (see MPEP2106.05(f)).
Claims 2, 9 and 16 also recites the limitations “causing a first graphical element representing the first one of the plurality of mechanisms to be displayed on a user interface of the user device differently than a second graphical element representing the second one of the plurality of mechanisms, wherein the first and second graphical elements are selectable by the user on the user device to conduct the transaction”.
However, these limitations are considered insignificant extra solution activity as they amount to necessary data gathering and outputting, wherein all uses of the recited abstract idea require such data gathering (i.e. receiving user selection of a merchant) and data output (i.e. displaying one of the plurality mechanisms) (see2106.05(g)). Note how the abstract idea above includes the offer and menu communicating aspects of the claimed modifying steps.
Step 2B: Claims 2, 9 and 16 fail to recite additional elements that amount to an inventive concept.
For the reasons identified with respect to Step 2A, prong 2, claims 2, 9 and 16 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)).
With respect to the limitations determined to be insignificant extra solution activity, these elements are similar to at least the following concepts determined by the courts to be insignificant extra solution activity that does not amount to significantly more than the abstract idea:
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information). For example, at least paragraph 036 describes a network system that facilitates financial transactions between a user, and one or more merchants.
Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93. For example, at least paragraph 070 describes presenting an output component, such as a display including displaying multiple mechanisms/wallets.
Dependent Claims Step 2A:
The limitations of the dependent claims merely set forth further refinements of the abstract idea identified at step 2A—Prong One, without changing the analysis already presented. Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims identified at step 2A—Prong Two.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. These do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above.
Thus, when considering the combination of elements and the claimed invention as a whole, the claims are not patent eligible.
Allowable Subject Matter
Claims 2-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office action and upon approval of a Terminal Disclaimer to overcome the double patenting rejection above.
REASONS FOR ALLOWANCE
The following is an examiner’s statement of reasons for allowance:
The prior art of record neither anticipates nor renders obvious the combination of:
receiving, by a computer system, an indication that a request to conduct a transaction has been made by a user via a user device; determining, by the computer system, context data associated with the request; determining, by the computer system, a plurality of mechanisms usable by the user to conduct the transaction via the user device; determining, by the computer system and based on the context data and a set of criteria, a first one of the plurality of mechanisms to prioritize over a second one of the plurality of mechanisms; and causing a first graphical element representing the first one of the plurality of mechanisms to be displayed on a user interface of the user device differently than a second graphical element representing the second one of the plurality of mechanisms, wherein the first and second graphical elements are selectable by the user on the user device to conduct the transaction.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20130282459 to Smets et al. discloses a contactless payment process.
A secure website may provide the payment card account owner with a graphical user interface (GUI) for use in designating payment card accounts for activation by the users' mobile device, wherein the GUI includes menus, sub-menus, text and icons similar to those presented and/or displayed by the mobile device for the same purpose. In such an implementation, the payment card selector application 504 is configured to utilize the data from the website to enable the proximity payment device to automatically activate a card account of the user and to change its priority for a purchase transaction whenever the predefined criteria and/or conditions are satisfied. For example, a particular payment card account may be automatically selected based on the types of goods or services being purchased, such as electronic devices. Accordingly, a particular payment card account could be prioritized by the payment-enabled mobile device whenever a payment transaction involving one or more of the preselected criteria occurs.
US 20120265685 to Brindnicki et al. discloses a system for automatically selecting a credential among a plurality of credentials for use in an electronic wallet transactions. When a wallet user interface needs to interact with the payment subsystem it does so by passing a digital identifier (such as its Issuer ID or App ID), a digital token the desired action, and any associated arguments needed for the action to the card services module. Card services module verifies the digital identifier-digital token pair matches trusted application data in the secure data table (FIG. 6), and then would issue the one or more commands necessary to execute the desired action.
US 20130268413 to Burr et al. discloses methods and systems for exchanging stored value for shopping at a vendor. The user may be prompted by the mobile application to prioritize a user-preferred order of stored value exchange. In a preferred vendor aspect of embodiments of the invention, in response to a prompt by the mobile application, the user enters an identification of one or more of the user's preferred vendors for shopping. Thus, the user's preferred gift cards for shopping are displayed by the mobile application first when the user is checking out and paying for purchases. As previously noted, a global positioning system (GPS) aspect of embodiments of the invention employs a GPS functionality of the user's mobile device to identify a particular vendor in whose store the user is presumably shopping. Thus, using the GPS function to determine the user's location in a particular vendor's store, the mobile application for embodiments of the invention may display the user's gift card or cards from the particular vendor.
US 8423463 to Matthews discloses a method for managing the user of a gift card with a personal management application. Fig. 3, the Financial Manager allows the user to aggregate all her gift card accounts and to set savings goals while the gift card feature further allows the user to associate the selected gift card with a specific savings goal. The action button allows the user to link the selected card to the savings goal for the radio.
US 7930249 to Roberts discloses automatically selecting a payment instrument (col. 14, lines 18-67; col. 15, lines 1-67).
US 20090037326 to Chitti et al. discloses a virtual card selector for portable electronic device. Figs. 2-7, Fig. 8 (item 802) – “Assign Top of Wallet Priority”, [0050].
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey A. Smith can be reached at (571) 272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MILA AIRAPETIAN/ Primary Examiner, Art Unit 3688