DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a final office action on the merits in response to the amendment filed 4/29/2026.
Applicant’s amendments to Claims 1 and 10 and addition of Claims 21-30 have been received and are acknowledged. Claims 11-20 were previously cancelled.
The applicant's claim for benefit of provisional application US 63228979 filed 8/3/2021 and as a DIV of US 17587225 filed 1/28/2022 has been received and acknowledged.
Claims 1-10 and 21-30 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 4/29/2026 have been fully considered but they are not persuasive.
With regard to the rejections under 35 USC 101 Applicant argues: (1) Referencing the Specification [3], Applicant argues that the newly amendment claim 1 “…recites a specific technical solution to this problem by providing monetary compensation "directly from the virtual account" and "without establishing a communication connection across an interface with a financial institution associated with the first user account." This is not merely applying an abstract business concept to a computer. …the claims recite a specific technical architecture where funds are maintained and transferred within the online marketplace ecosystem without requiring external network connections to financial institutions….” Further referencing Specification [26], Applicant asserts “concrete technical improvements” which result from the claimed “architecture” and result in “reduced network traffic and enhanced security by eliminating external connection vulnerabilities.” Applicant also analogizes the recited claim language to DDR Holding stating “…a particular technical architecture claims recite a particular technical architecture, i.e., direct virtual account transfers without establishing communication connections with external financial institutions, not merely the idea of using virtual accounts…” (Applicant’s response 9-11). (2) Applicant then argues that presented Office Step 2A Prong 2 analysis is “…conclusory and does not address the specific technical features recited in the claims…the Office's analysis does not address the technical problem identified in the specification, the technical benefits described (reduced network traffic, enhanced security, system flexibility), or how the claimed "directly from the virtual account" transfer mechanism differs from conventional approaches requiring external financial institution connections…supports that the claimed combination represents a specific, non-conventional technical approach rather than a generic implementation of an abstract idea. As the Desjardins decision emphasized, "§§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper scope" (Ex Parte Desjardins, p. 10)…” (Applicant’s response 11-12).
Examiner respectfully disagrees as noted previously and in the rejection below. As recited the newly amended claim language does not recite the ‘architecture’/ the technological implementation of how "without establishing a communication connection across an interface with a financial institution associated with the first user account” is executed. Rather as recited and described in the disclosure, the instant recitation is a condition of how the business challenge (i.e. the settlement of payment/transfer of funds amongst parties) is fulfilled. As such, this is at most an improvement to the abstract idea rather than a improvement to technology. (Applicant’s argument 1). Further, the analysis of the Steps 1, 2A and 2B were labelled in the analysis provided previously and below. As noted below the analysis notes (using a shorthand for the claimed limitations) for steps that do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea) and the additional elements which do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The claimed technological elements are recited at high level of generality (i.e. generic computing elements) which are used to execute the abstract idea. This is “apply it” (See MPEP 2106.05 (f)). As such no technological improvement is claimed. Additionally Applicant’s argument regarding “ the specific, non-conventional technical approach than a generic implementation of an abstract idea” seems to conflate novelty with patent eligibility. A specific abstract idea is still an abstract idea. (Applicant’s argument 2) As such, Applicant’s arguments are not persuasive.
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 1-10 and 21-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, (1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so (2b), it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
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. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
(1) In the instant case, the claims are directed towards a method and the system of using a virtual account in an online marketplace. In the instant case, Claims 1-9 are directed to a process. Claims 10, and 21-27 are directed to a system. Claims 28-30 are directed to a non-transitory computer readable medium.
(2a) Prong 1: Using a virtual account in an online marketplace is categorized in/akin to the abstract idea subject matter grouping of: methods of organizing human activity [organizing human activity (commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)]. As such, the claims include an abstract idea.
The specific limitations of the invention are (a) identified to encompass the abstract idea include:
(Original) A method comprising:
publishing, by an … marketplace, a first listing for a first item to a plurality of client .., the first item listed by a first user account of the …marketplace;
providing, in connection with a second user account purchasing the first item via the first listing, first monetary compensation to the first user account from the second user account by updating a balance of a …account that corresponds to the first user account to include the first monetary compensation;
publishing, by the … marketplace, a second listing for a second item to a plurality of client …, the second item listed by a third user account of the …marketplace; and
providing, in connection with the first user account purchasing the second item via the second listing, at least a portion of the balance to the third user account directly from the …account as second monetary compensation, wherein the second monetary compensation is provided without establishing … across an … with a financial institution associated with the first user account.
10. (Original) A … comprising:
… to store a plurality of listings for items listed on an … marketplace, the plurality of listings including at least a first listing for a first item and a second listing for a second item, the first item listed by a first user account of the … marketplace and the second item listed by a second user account of the … marketplace; and
…. … …. to cause the at least one server device to:
publish the plurality of listings via the … marketplace;
provide, in connection with a third user account purchasing the first item via the first listing, first monetary compensation to the first user account from the third user account by updating a balance of a … account that corresponds to the first user account to include the first monetary compensation; and
provide, in connection with the first user account purchasing the second item via the second listing, at least a portion of the balance to the second user account directly from the …account as second monetary compensation, wherein the second monetary compensation is provided without establishing a… across an … with a financial institution associated with the first user account.
28. (New) A ……… to perform operations comprising:
publishing, … marketplace, a first listing for a first item to a plurality of client …, the first item listed by a first user account of the … marketplace;
providing, in connection with a second user account purchasing the first item via the first listing, first monetary compensation to the first user account from the second user account by updating a balance of a … account that corresponds to the first user account to include the first monetary compensation;
publishing, by the …marketplace, a second listing for a second item to a plurality of client …, the second item listed by a third user account of the …marketplace; and
providing, in connection with the first user account purchasing the second item via the second listing, at least a portion of the balance to the third user account directly from the virtual account as second monetary compensation, wherein the second monetary compensation is provided without establishing a … across an … with a financial institution associated with the first user account.
As stated above, this abstract idea falls into the (b) subject matter grouping of: methods of organizing human activity .
Prong 2: When considered individually and in combination, the instant claims are do not integrate the exception into a practical application because the steps of publishing…, providing… publishing…, providing… do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea).
The instant recited claims including additional elements (i.e. providing…providing…storing…) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or generally link the use of the judicial exception to a particular technological environment or field of use (: See MPEP 2106.05 (f) and (g))
(2b) In the instant case, Claims 1-9 are directed to a process. Claims 10, and 21-27 are directed to a system. Claims 28-30 are directed to a non-transitory computer readable medium.
Additionally, the claims (independent and dependent) do not include additional elements that individually or in combination are sufficient to amount to significantly more than the judicial exception of abstract idea (i.e. provide an inventive concept). As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of: ( virtual… online…storage device… ) merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d) and (f))
(Specification, Fig. 1 and 2, online marketplace)
The dependent claims have also been examined and do not correct the deficiencies of the independent claims.
It is noted that claim (2-9) introduces the additional elements of clauses that further define claim elements/steps ( balance… (Claim 2) … portion of balance.. . (Claims 3 and 6) ….updating the balance…(Claim 4)… the collectible… (Claim 5) …providing… compensation… (Claim 7)…third monetary compensation…. (Claim 8)… limiting an amount of balance… (Claim 9)…..These elements are not a practical application of the judicial exception because these limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05 (f) and (g)) Further these limitations taken alone or in combination with the abstract do not amount to significantly more than the abstract idea alone because, ).the elements amount to merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d) and (f))
(Specification, Fig. 1 and 2, online marketplace)
Therefore, claims 1-10 and 21-30 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Prior Art
The prior art of US 2015/0248663 A1, Meere et al. hereinafter referred to as Meere generally discloses processing payment for an online market place (See also Meere, Fig. 5-7, payment transaction). US 2010/0082480 A1 Korosec hereinafter referred to as Korosec generally discloses payment with virtual value (See also Korosec, Fig. 1 marketplace, payment processor). US 20140351072 A1 Wieler et al. hereinafter referred to as Wieler (Split Tender in Prepaid Architecture) generally discloses stored value account payment element switch feature of payment splitting. Specifically the limitation which is not taught:
publishing, by the online marketplace, a second listing for a second item to a plurality of client devices, the second item listed by a …. user account of the online marketplace; and
providing, in connection with the first user account purchasing the second item via the second listing, at least a portion of the balance to the ….user account directly from the virtual account as second monetary compensation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ASHA PUTTAIA H/Primary Examiner, Art Unit 3691
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