DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 24 June 2026 has been entered.
Status of Claims
Applicant has amended claims 1, 5, 7-9 and 11. No claims have been added or canceled. Claim 10 was canceled prior to previous office action. Thus, claims 1-9 and 11 remain pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments and amendments filed on 04 June 2026 with respect to:
objections to claims 5, 7 and 8,
rejection of claim 7 under U.S.C. § 112(b),
rejection to claims 1-9 and 11 under U.S.C. § 101,
rejections of claims 1, 3, 4, 9 and 11 under 35 U.S.C. § 103 as being unpatentable over McClure et al (US Pub. No. 20220253345 A1) in view of Prabhune et al (US Pub. No. 20180330353 A1), in further view of Brand et al (US Pub. No. 20150006392 A1)
rejections of claim 2 under 35 U.S.C. § 103 as being unpatentable McClure in view of Prabhune, in further view of Brand, in further view of AAPA.
have been fully considered. Amendments to claims have been entered.
Examiner acknowledges amendments to claims to overcome claim objections and 35 U.S.C. § 112(b) rejections and, in turn, withdraws objections and rejections. However, new rejections under § 112(b) have arisen.
Examiner acknowledges amendments to, and arguments regarding claims to overcome 35 U.S.C. § 101 rejection. However, arguments are not persuasive.
Applicant argues subject matter eligibility under Step 2A – Prong One contending that the claims do not recite a judicial exception [remarks page 14-16]. However, Examiner finds no specific arguments that substantiate the claims are not directed to the abstract idea of authorizing a payment.
Applicant argues subject matter eligibility contending that the claims integrate any alleged abstract idea into a practical application, i.e. Step 2A – Prong Two, by reciting a specific technical data-processing architecture for Raffle Sale Winner selection and bulk payment authorization [remarks page 16]. Applicant makes further arguments pointing out, inter alia:
that Merchants do not have access to payment history information linked to a PAN,
creating consumer profiles by Financial Institutions,
processing payment, transaction, and behavior data linked to the PAN,
outputting specific scores;
creates anonym Consumer Profile packages by adding Database information to an anonym RaffleID, and
providing the created package array to the Financial Institution for Winner selection.
[remarks pages 16 and 17]. Examiner respectfully disagrees in that these are very generalized statements and, as such, are indicative of integration into a practical application.
Applicant argues subject matter eligibility under Step 2A- Prong Two citing the prior art of McClure, Prabhune and Brand from the prior office action [remarks page 17]. However, these arguments are moot in that the prior art cited is in relation to patentability, not subject matter eligibility.
Applicant argues subject matter eligibility under Step 2B contending that the Office has not established that the ordered arrangement was well-understood, routine, and conventional [remarks page 18]. However, Examiner disagrees in that the limitations recite highly generalized method steps including, inter alia, “preparing an array”, “processing a large amount of data” and “assessing whether a payment authorisation can be provided” and “performing a payment authorisation assessment”.
Applicant argues subject matter eligibility under Step 2B citing the prior are of McClure, Prabhune and Brand in the prior office action [remarks page 17]. However, these arguments are moot in that the prior art cited is in relation to patentability, not subject matter eligibility.
As with determining a practical application to an abstract idea, Step 2A - Prong Two, types of limitations indicative of an inventive concept (aka “significantly more”) – subject matter eligibility under Step 2B - include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b),
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c),
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Further, limitations also indicative of an inventive concept include:
Adding a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d).
Examiner maintains that the claimed invention does not contain any of these “types” of aforementioned limitations.
Limitations that are not indicative of an inventive concept include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or 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),
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g),
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h),
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo.
Examiner maintains that the claimed invention merely appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Rejections have been clarified herein in view of the claim amendments and the current MPEP 2106 Patent Subject Matter Eligibility Requirements.
Applicant’s arguments regarding rejections under 35 USC § 103 are moot in that, in view of the detailed method steps, rejections have been withdrawn.
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
Priority
This application, filed on 08 November 2024 claims foreign priority to European Patent Application 23209212.2, filed 10 November 2023. Accordingly, this application is given priority from 10 November 2023.
Claim Rejections - 35 USC § 112
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.
Claims 1-9 and 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claims 1, 9 and 11, in the representative limitation:
processing, by the Database, a large amount of data relating to payments and transactions and behaviour linked to a specific entered PAN,
the term "large", as in “a large amount”, is a relative term which renders the claim indefinite. The term "large" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, the term "large" will be interpreted to be not further limiting. Correction is required.
Moreover, the Examiner finds that because particular claims are rejected as being indefinite under 35 U.S.C. § 112(b), it is impossible to properly construe claim scope at this time (See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) “Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing art rejections even though the claims are indefinite, the claims are construed and the art is applied as much as practically possible.
Claims 2-8 are rejected by way of dependency on a rejected independent claim.
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 1-9 and 11 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.
In the instant case, claims 1-8 are directed to a “method” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of authorizing a payment which is a fundamental business practice grouped under a method of organizing human activity.
in prong one of step 2A (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]). Claims recite:
preparing, … a Merchant, an array of User identifiers (IDs) to be used for payment authorization, wherein each of the User IDs comprises a primary account number (PAN) related to each User's payment card and wherein the array of User IDs comprises a list related to a plurality of PANs, wherein each PAN of the plurality of PAN s relates to a User, wherein the array of User IDs is an array of User IDs of winners of a Raffle Sale processed by a Financial Institution,
receiving, by the Financial Institution, a PAN of a User participating in the Raffle Sale and adding the User to a group of Raffle Sale participants,
adding, by the Financial Institution, an anonym tag to the PAN to obtain an anonym RaffleID linked to the PAN,
sending, by the Financial Institution, the PAN and a query for specific information to a Database operated by the Financial Institution,
processing a large amount of data relating to payments and transactions and behaviour linked to a specific entered PAN,
outputting specific scores relating to transactions and behaviour linked to the specific entered PAN,
adding information from the Database, relating transaction linked to a PAN, to the anonym RaffleID to obtain anonym Consumer Profile packages linked to the PAN,
sending, by the Database, an array of the created Consumer Profile Packages to the Financial Institution,
selecting, by the Financial Institution, Winners using criteria for the selection of Winners and the array of the created Consumer Profile Packages,
sending, by the Financial Institution, the selected Winners as a batch to the Merchant,
sending, by the Merchant, the array of User IDs to the Financial Institution with a request to provide a payment authorisation for each of the User IDs in the array,
receiving, by the Financial Institution, the array of User IDs and the request,
assessing, by the Financial Institution, for each of the User IDs in the array whether a payment authorisation can be provided, wherein the Financial Institution performs a payment authorisation assessment for each requested payment linked to the User IDs, using the server of the Financial Institution,
sending, by the … Merchant, a request to receive the result of the payment authorisation assessment for the related array of User IDs, wherein … the Merchant contacts a transaction confirmation endpoint of the Financial Institution to find out whether the transactions for all User IDs were successful, and
sending, by the Financial Institution, result of the payment authorisation assessment to the Merchant, in an array.
Limitations such as:
wherein each of the User IDs comprises a primary account number (PAN) related to each User's payment card and wherein the array of User IDs comprises a list related to a plurality of PANs, wherein each PAN of the plurality of PAN s relates to a User, wherein the array of User IDs is an array of User IDs of winners of a Raffle Sale processed by a Financial Institution; and
wherein the Financial Institution collects an outcome of the payment authorisation assessment for all User IDs and produces, using electronic means, the outcome of the authorisation assessment in the form of an array and forwards the array to the Merchant using electronic means
are merely a description of data and do not impose any meaningful limit on the computer implementation of the abstract idea.
Accordingly, the claim recites an abstract idea (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04(d) Integration of a Judicial Exception Into A Practical Application [R-07.2022]), the additional elements of the claim such as:
a server of a Financial Institution,
Data “in an electronic format,
preparing, by a sever, and array,
processing, by the Database, and
adding and outputting, sending to/from/by a Database
represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than apply a computerized system to the method steps corresponding to automating the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See MPEP 2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More [R-07.2022]), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Such functions, including preparing “an array” and processing “data” infer, based on the broadest reasonable interpretation, some sort of mathematical calculations. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of authorizing a payment using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 2-8 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 2-6 and 8 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of authorizing a payment.
In claim 7, the feature of an AI-engine adds technology to the abstract idea of the independent claim. However, an AI-engine is a generic technological component, and its use is in its normal, expected, and routine manner. The components are recited at a high level of generality which do not improve another technology or technical field nor the functioning of the computer itself.
Accordingly, none of the dependent claims add a technological solution to the fundamental business practice in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claims 9, otherwise styled as a system, and claim 11, styled as a computer readable medium, would be subject to the same analysis.
In view of the system of claim 9 and the computer readable medium of claim 11:
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a processor and a computer-readable storage medium represent the use of a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) the acts of “collecting information, analyzing the information and providing the results of the analysis”.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Burch et al: “SELF-SERVICE ELECTRONIC FULFILLMENT METHOD FOR LICENSED RAFFLES”, (US Pub. No. 20180060847 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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 Applicant wishes to correspond to the Examiner via email, Applicant needs to file an AUTHORIZATION FOR INTERNET COMMUNICATIONS IN A PATENT APPLICATION form. The form may be downloaded at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692
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