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 .
Drawings
The drawings submitted on 11/05/2024 by Applicant are accepted.
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.
9. Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without “significantly more.” Claim(s) 1-20 are directed to a system, method, and computer readable medium for processing group payments, which is considered an abstract idea. Further, the claim(s) as a whole, when examined on a limitation-by-limitation basis and in ordered combination do not include an inventive concept.
Step 1 – Statutory Categories
As indicated in the preamble of the claim, the examiner finds the claim is directed to a process, machine, manufacture or composition of matter.
Step 2A (prongs 1 and 2) - Abstract Idea Analysis
Exemplary claim 1 recites the following abstract concepts that are found to include “abstract idea”:
Limitation 1- receiving a group transaction image associated with a transaction including one or more members of a group for purposes of dividing, amongst the one or more members of the group, a transaction amount associated with the transaction made by the group at a merchant, the group transaction image being a photographic image showing a portion of the one or more members of the group;
Limitation 2- analyzing the group transaction image using computer vision tools to determine an identity of the one or more members of the group associated with the transaction; determining an amount of the transaction attributable to each of the one or more members of the group associated with the transaction based upon input from the one or more members of the group;
Limitation 3- causing a payment submission option to be displayed on a user device associated with the one or more members of the group, the payment submission option corresponding to the amount of the transaction attributable to each of the one or more members of the group associated with the transaction; and
Limitation 4- in response to the payment submission option being selected, initiating a plurality of payment transactions, each payment transaction being between one of the one or more members of the group and the merchant for the attributable amount for the respective member of the one or more members of the group.
The Federal Circuit has repeatedly emphasized that “the key question is ‘whether the focus of the claims is on the specific asserted improvement . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Visual Memory LLC v. Nvidia Corp., No. 2016-2254 (Fed. Cir. Aug. 15, 2017) (referring to Enfish LLC v. Microsoft Corp. et al., Appeal No. 2015-1244 (Fed. Cir. 2016)). “In this regard, [examiners] must articulate with specificity what the claims are directed to.” Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1347 (Fed. Cir. 2017). Moreover, the Federal Circuit has held that “[a]dding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., Ltd., 885 F.3d 1322, 1327 (Fed. Cir. 2017). Importantly, “[w]e [] assume that the techniques claimed are ‘[g]oundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.” SAP Inc. v. InvestPic, LLC, Appeal No. 2017-2081 (Fed. Cir. 2018) citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 *2013).
Furthermore, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). “The fact that an identifier [or utilization of the underlying abstract idea] can be used to make a process more efficient . . . does not necessarily render an abstract idea less abstract.” Secured Mail Solutions, LLC v. Universal Wilde, Inc., Appeal No. 2016-1728 (Fed. Cir. Oct. 16, 2017). Importantly, the CAFC “ha[s] held that speed and accuracy increases stemming from the ordinary capabilities of a general purpose computer ‘do[] not materially alter the patent eligibility of the claimed subject matter.’” Intellectual Ventures I v. Erie Indemnity, Appeal No. 2017-1147 (Fed. Cir. 2017) citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). However, “some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as chip architecture, an LED display, and the like.” Enfish, 822 F.3d at 1355.
Here, the examiner finds the claims are not directed to “an improvement to computer technology," such as found in Enfish, but to the abstract idea itself.1 Examiners have been instructed to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract. Accordingly, the examiner refers to the following cases (and their associated judicial descriptor(s)) that relate to concepts similar to the claimed concepts:
Versata2(precedential—ineligible) – abstract idea found to be using organizational and product group hierarchies to determine a price, where this was found to be a method of organizing human activity;
Downing3 (non-precedential—ineligible) – abstract idea found to be the concept of personal management, resource planning, and forecasting including a “resource planning forecast product” that collects and analyzes “non-business or business information relative to the end user,” where this was found to be a method of organizing human activity; and
SAP Inc. v. InvestPic4 (precedential—ineligible) – abstract idea found to be selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis, where this was found to be a certain method of organizing human activity.
As indicated above, the claims are directed to similar concepts.5 Therefore, the claims are found to be directed to abstract idea. Similar to the case law cited above, the examiner finds the abstract idea to include at least the judicial descriptor(s) of: certain methods of organizing human activity.6
Regarding preemption, the examiner notes that “[w]hile preemption may signal ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this [application], preemption concerns are fully addressed and made moot.” Id.
Step 2B - Significantly More Analysis
“[A]fter determining that a claim is directed to a judicial exception, ‘we then ask, [w]hat else is there in the claims before us?’” MPEP 2106.05 (emphasis in MPEP) citing Mayo, 566 U.S. at 78. “What is needed is an inventive concept in the non-abstract application realm.” SAP Inc. v. InvestPic, LLV, Appeal No. 2017-2081 (Fed. Cir. 2018). For step two, the examiner must “determine whether the claims do significantly more than simply describe [the] abstract method” and thus transform the abstract idea into patent-eligible subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
A primary consideration when determining whether a claim recites “significantly more” than abstract idea is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. See MPEP 2106.05(d). “If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility.” Id.
The Federal Circuit has held that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Bahr, Robert (April 19, 2018). Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) citing Berkheimer at 1369. “As set forth in MPEP 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. This memo[] clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III [of the memo].” Berkheimer Memo at 3 (emphasis in memo).
Generally, “[i]f a patent uses generic computer components to implement an invention, it fails to recite an inventive concept under Alice step two.” West View Research v. Audi, CAFC Appeal Nos. 2016-1947-51 (Fed. Cir. 04/19/2017) citing Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (explaining that “generic computer components such as an ‘interface,’ ‘network,’ and ‘database’ . . . do not satisfy the inventive concept requirement”; but see Bascom (finding that an inventive concept may be found in the non-conventional and non-generic arrangement of the generic computer components, i.e., the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user).
In accordance with the above guidance, the examiner has searched the claim(s) to determine whether there are any “additional elements” in the claims that constitute “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. 2347 (2014). Those “additional features” must be more than “well understood, routine, conventional activity.” See Alice. To note, “under the Mayo/Alice framework, a claim directed to a newly discovered . . . abstract idea[] cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016); Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
As an example, the Federal Circuit has indicated that “inventive concept” can be found where the claims indicate the technological steps that are undertaken to overcome the stated problem(s) identified in Applicant’s originally-filed Specification. See Trading Techs. Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017); but see IV v. Erie Indemnity, No. 2016-1128 (Fed. Cir. March 7, 2017)(“The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in technology of computer databases, as in Enfish.”)(emphasis in original) and IV. v. Capital One, Nos. 2016-1077 (Fed. Cir. March 7, 2017)(“Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more. See Elec. Power Grp., 830 F.3d 1356 (Fed. Cir. 2016) (cautioning against claims ‘so result focused, so functional, as to effectively cover any solution to an identified problem.’)”). Furthermore, “[a]bstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole.” Trading Techs. Int’l, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017) (emphasis added).
In the search for inventive concept, the Berkheimer Memo describes “an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
Accordingly, the examiner refers to the following generically-recited computer elements with their associated functions (and associated factual finding(s)), which are considered, individually and in combination, to be routine, conventional, and well-understood:
Additional Element 1 – a group payment computing device;
Additional Element 2 – computer vision tools;
Additional Element 3 – a user device
In sum, the examiner finds that the claims "are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.” In re TLI Communications LLC, No. 2015-1372 (May 17, 2016). Similar to the claims in SAP v. InvestPic, “[t]he claims here are ineligible because their innovation is an innovation in ineligible subject matter.” Appeal No. 2017-2081 (Fed. Cir. 2018). In other words, “the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” Id. Accordingly, when considered individually and in ordered combination, the examiner finds the claims to be directed to in-eligible subject matter. Claims 2-11 suffer from similar deficiencies as the claim from which they depend, and therefore fails to remedy the deficiency of the independent claims they depend therefrom.
Unless otherwise noted below, the dependent claims are directed to the identified abstract idea above. Similar to the independent claim(s) above, the examiner refers to generically-recited computer elements with their associated functions (and associated factual finding(s)), which are considered, individually and in combination, to be routine, conventional, and well-understood, and therefore fails to remedy the deficiency of the independent claims they depend therefrom.
For the reasons stated, the examiner does not find the claims to recite eligible subject matter under 35 U.S.C. § 101. Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-9 and 10-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Atkins et al (US 2023/0419291).
Regarding claim 1, the prior art discloses a group payment computing system comprising: a group payment computing device including one or more processors in communication with one or more memory devices, the one or more processors programmed to: receive a group transaction image associated with a transaction including one or more members of a group for purposes of dividing, amongst the one or more members of the group, a transaction amount associated with the transaction made by the group at a merchant (see at least paragraph [0034] to Atkins et al), the group transaction image being a photographic image showing a portion of the one or more members of the group (see at least paragraph [0030] to Atkins et al); analyze the group transaction image using computer vision tools to determine an identity of the one or more members of the group associated with the transaction (see at least paragraph [0021] to Atkins et al); determine an amount of the transaction attributable to each of the one or more members of the group associated with the transaction based upon input from the one or more members of the group (see at least paragraph [0031] to Atkins et al); cause a payment submission option to be displayed on a user device associated with the one or more members of the group, the payment submission option corresponding to the amount of the transaction attributable to each of the one or more members of the group associated with the transaction (see at least paragraph [0033] to Atkins et al); and in response to the payment submission option being selected, initiate a plurality of payment transactions, each payment transaction being between one of the one or more members of the group and the merchant for the attributable amount for the respective member of the one or more members of the group (see at least paragraph [0036] to Atkins et al).
Regarding claim 2, the prior art discloses the group payment computing system in accordance with Claim 1, wherein the merchant is a restaurant, the restaurant uses restaurant management software to manage operations of the restaurant, the transaction reflects at least one item sold by the restaurant to the group as part of the transaction, and the one or more processors are further programmed to access the restaurant management software to assist in determining an amount, type, and price of the at least one item sold by the restaurant to the group as part of the transaction (see at least paragraph [0018] to Atkins et al).
Regarding claim 3, the prior art discloses the group payment computing system in accordance with Claim 1, wherein the one or more processors are further programmed to: receive identifying information for each of one or more members of the group; build one or more user identification profiles based on the identifying information; and register (i) at least one of the one or more members of the group as a registered user using a corresponding user identification profile of the one or more user identification profiles, and/or (ii) the user device (see at least paragraph [0022] to Atkins et al).
Regarding claim 4, the prior art discloses the group payment computing system in accordance with Claim 3, wherein the registered user is a first registered user and a second registered user, the user device is a first personal electronic device of the first registered user and a second personal electronic device of the second registered user, the first registered user initiates a group payment session using the first personal electronic device and the second registered user joins the group payment session using the second personal electronic device (see at least paragraph [0025] to Atkins et al), wherein the second registered user joins the group payment session by performing at least one of: (i) accepting an invitation message via the second personal electronic device; (ii) using a group payment application to join the group payment session, the group payment application being accessible on the second personal electronic device; and (iii) transmitting, via the second personal electronic device, credentials to the first personal electronic device over a cellular, internet, or near-field communications protocol (see at least paragraph [0040] to Atkins et al).
Regarding claim 5, the prior art discloses the group payment computing system in accordance with Claim 3, wherein the portion is a head, the identifying information includes one or more facial recognition datapoints of the one or more members of the group, and the computer vision tools are configured to determine an identity match between the at least one of the one or more members of the group present in the photographic image and a user identification profile of the registered user (see at least paragraph [0021] to Atkins et al).
Regarding claim 6, the prior art discloses the group payment computing system in accordance with Claim 5, wherein the photographic image shows at least one item sold by the merchant to the group as part of the transaction, and the computer vision tools are configured to detect the at least one item (see at least paragraph [0023] to Atkins et al).
Regarding claim 7, the prior art discloses the group payment computing system in accordance with Claim 3, wherein the identifying information is at least in part based on data from personal contacts stored in the user device, the user device being a registered device (see at least paragraph [0021] to Atkins et al).
Regarding claim 8, the prior art discloses the group payment computing system in accordance with Claim 7, wherein the identifying information further includes geo-location data of the group, and the geo-location data is associated with the user device (see at least paragraph [0029] to Atkins et al).
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.
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over Atkins et al (US 2023/04192291) in view of Geiman et al (US 2018/0219681).
Regarding claim 9, the prior art discloses the group payment computing system in accordance with Claim 8, but does not explicitly disclose wherein the group further includes one or more non-registered users, the identifying information further includes data from a government database, and the data from the government database is used to authenticate the one or more non-registered users for presenting and processing the payment submission option associated with at least one non-registered user of the one or more non-registered users.
However, Geiman et al discloses a system and method of electronically signing and distributing identification data as a service that provides proof of identity, integrity, validity and origin of data for non-repudiation and ID validation methods, further comprising limitations as recited in the above claim (see at least paragraph [0058] to Geiman et al).
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The examiner submits that the combination of the teaching of the system and method as disclosed by Atkins et al and the system and method as taught by Geiman et al, in order to enable users to automatically split and pay restaurant payments, could have been readily and easily implemented, with a reasonable expectation of success. As such, the aforementioned combination is found to be obvious to try, given the state of the art at the time of filing.
Claims 10-20 each contain recitations substantially similar to those addressed above and, therefore, are likewise rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 PM 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, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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1 See Electric Power Group, LLC. V. Alstom, case no. 2015-1778 (Fed. Cir. August 1, 2016) (“The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independent abstract ideas that use computers as tools.”).
2 793 F.3d 1306 (Fed. Cir. 2015)(The court also stated that “[u]sing organizational and product group hierarchies to determine a price is an abstract idea that has no particular concrete or tangible form or application. It is a building block, a basic conceptual framework for organizing information.”).
3 Appeal No 2018-1795 (Fed. Cir. 2018).
4 Appeal No. 2017-2081 (Fed. Cir. 2018).
5 “[The examiner] need not define the outer limits of ‘abstract idea,’ or at this stage exclude the possibility that any particular inventive means are to be found somewhere in the claims, to conclude that these claims focus on an abstract idea—and hence require stage two analysis under § 101.” Electric Power Group, LLC. V. Alstom, case no. 2015-1778 (Fed. Cir. August 1, 2016).
6 As stated in the July 2015 Update: Subject Matter Eligibility, “These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.”
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