DETAILED ACTION
This office action is in response to Applicant’s communication of 11/25/2024. The amendments to the claims have been entered. Claims 1-16 have been cancelled. New claims 17-36 have been entered. Claims 17-36 are pending and are subject to a double patenting rejection as stated below.
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 .
Information Disclosure Statement
The information disclosure statements (IDS)s submitted on 1/13/2025, 2/18/2025, 3/24/2025, 6/23/2025, 8/13/2025 and 10/17/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 17-36 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims do fall within at least one of the four categories of patent eligible subject matter because claims 17 and 28 are directed to a process and claim 36 is directed to a system; Step 1-yes.
Under Step 2A, prong 1, representative claim 17 recites a series of steps for disabling a payment vehicle and declining a transaction which is a commercial or legal interaction, i.e. business/sales activities and thus grouped as “Certain Methods of Organizing Human Activity”. The claim as a whole and the limitations in combination recite this abstract idea. Specifically, the limitations of representative claim 17, in bold below and stripped of all additional elements, recite the abstract idea as follows:
17. (New) A method comprising:
providing, by a computer system, a portal to a computing device over a telecommunications network;
presenting, by the computer device via the portal, a visual interface that:
identifies a payment vehicle, graphically indicates an on status that enables the payment vehicle for electronic payments, and
provides a selectable icon for disabling the payment vehicle;
receiving, by the computer device and via the visual interface, a first selection submitted via the selectable icon to disable the payment vehicle;
disabling, by the computer system, the payment vehicle based on the first selection such that the payment vehicle has an off status that disables the payment vehicle for subsequent electronic payments;
modifying, by the computer device, the visual interface to graphically indicate that the payment vehicle has the off status; and
declining, by the computer system based on the off status, an electronic payment being processed with the payment vehicle.
The claimed limitations, identified above, recite a process that, under its broadest reasonable interpretation, covers performance of a commercial or legal interaction, but for the recitation of generic computer components. That is, other than the mere nominal recitation of a “computer system”, a “portal to a computing device over a telecommunications network” and “a visual interface” in claim 17, (claims 28 and 36 being similar), there is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea grouping. Thus, claims 17, 28 and 36 recite an abstract idea.
Under step 2A, prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed, displaying information and communicating over a generic network, to perform the steps of presenting, receiving, disabling, modifying and declining. The computer components are recited at a high-level of generality (i.e., as generic processors with memory suitably programmed with displays for presenting and communicating information over a generic network, see at least paragraphs [0013], [0017], and [0038] of the specification) such that it amounts no more than 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 the abstract idea, see MPEP 2106.05(f) Accordingly, the additional elements claimed do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claims 17, 28 and 36 are directed to an abstract idea.
Under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than 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 the abstract idea, see MPEP 2106.05(f). Mere instructions to apply an exception using generic computer components interacting in a conventional manner cannot provide an inventive concept. Claims 17, 28 and 36 are not patent eligible.
For instance, in the process of claim 17, the limitation steps, claimed at a high level of generality, recite steps that are considered mere instructions to apply an exception akin to a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd.; Gottschalk and Versata Dev. Group, Inc.; see MPEP 2106.05(f)(2).
Applicant has leveraged generic computing elements to perform the abstract idea of disabling a payment vehicle and declining a transaction, without significantly more.
Dependent claims 18-27 and 29-35 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
For instance, claims 18, 19 and 29 further refine the abstract idea by automating turning another card back on from off status and using said card for a payment. Claims 20 and 21 further refine the abstract idea and are analyzed in the same manner as the independent claims. Claims 22 and 30 recite, at a very high level of generality, receiving and verifying credentials and authorization before displaying the card status or disabling the payment vehicle which is further refining the abstract idea. Claim 23 further refines the abstract idea by merely displaying an account balance. Displaying information is an abstract concept. Claims 24, 25 and 31 further refine the abstract idea by receiving a message, i.e. a text, to disable the payment vehicle. There are no technical implementation details such that this could not be accomplished via a myriad of communication modes. Claims 26 and 34 further refine the abstract idea by presenting a current location on the display with no technical details. Claims 27 and 35 further define the generic device as a mobile device and claims the abstract idea of providing a coupon based on a location. Claims 32 and 33 further define the “portal” as a website accessed from a mobile device application which are an additional elements claimed at a very high level of generality for automating the abstract idea..
Clearly, the additional recited limitations in the dependent claim only refines the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series of steps for disabling a payment vehicle and declining a transaction) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed for displaying information and communicating over a network) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. a series of steps for disabling a payment vehicle and declining a transaction) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that 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 or integrate the judicial exception into a practical application.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1,148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims: 17-25, 28, 30-33 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Feerick et al. (WO 2004/090825)(Feerick hereinafter) in view of Wei et al. (US 7,962,418 Bl)(Wei hereinafter)
Regarding Claims 17 and similarly claims 28 and 36: Feerick discloses a method comprising:
providing, by a computer system, a portal to a computing device over a telecommunications network; (at least “Field of the Invention”, “GUIs (graphical user interfaces on mobile phones and the like))”
presenting, by the computer device via the portal, a visual interface that: identifies a payment vehicle, graphically indicates an on status that enables the payment vehicle for electronic payments, (at least “Field of the Invention”, “GUIs (graphical user interfaces on mobile phones and the like)”, Example 2, “…the user 30 needs to activate the card for one transaction, however this time he does this using a client side GUI on a mobile phone 70, PDA or such handheld device 70 which communicates with the server 14 which in turn is linked to the card verification/authorisation system 16.”) and {……};
receiving, by the computer device and via the visual interface, a first selection submitted {……} to disable the payment vehicle; (last page, “…the authorisation state of which can be controUably enabled and disabled by its authorised user.”
disabling, by the computer system, the payment vehicle based on the first selection such that the payment vehicle has an off status that disables the payment vehicle for subsequent electronic payments; (last page, “De-activated (i.e. card is de-activated…”, “On/off (i.e. Available for use and not available for use respectively)”).
modifying, by the computer device, the visual interface to graphically indicate that the payment vehicle has the off status; (page 2, “Where a GUI is provided in the user part, this can enable a user to selectively enter an identifying code and to selectively control the state of approval indication.”, the GUI displays the indication). and
declining, by the computer system based on the off status, an electronic payment being processed with the payment vehicle, (page 4, “The remaining value in data field 60 sets a limit for further transactions and when a transaction is attempted that exceeds the value in data field 60, such a transaction is declined and a refusal message is sent by control function 54 to interface 50 and on to the entity attempting the transaction.”
Although Feerick discloses the limitations above, it appears that Feerick does not explicitly disclose, however Wei discloses:
provides a selectable icon for disabling the payment vehicle; (at least col.7, lines 48-50, “For example, the customer can toggle an activation/de-activation status of an e-Wallet or other feature…”, reads on selectable icon controlling state of the account).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system of secure transactions of Feerick the ability to toggle an on/off icon to disable/enable an account as disclosed by Wei since the claimed invention is merely a combination of old elements and, in combination, each element would merely have performed the same function as it did separately. One of ordinary skill in the art would have recognized that applying the features disclosed by Wei, to the known invention of Feerick, would have yielded predictable results and resulted in an improved invention. The motivation to combine is that by automating the selection of an icon via a graphical user interfaced displayed on a mobile device is a convenient and efficient manner to enable or disable a payment account..
Regarding Claims 18-21: Feerick in view of Wei further discloses these dependent claims under similar analysis as the independent claims because they recite a plurality of payment vehicles that can be enabled to perform a transaction or disabled to be declined via a transaction request.
Regarding Claims 22 and 30: Feerick further discloses further comprising:
receiving and verifying, by the computer system, login credentials entered into the portal via the computing device before graphically identifying the payment vehicle and graphically indicating the on status of the payment vehicle. (at least page 3, “…a pre-recorded voice message stored in menu 22 requests a numeric identification (ID) and personal identification number (PIN) from the user. In this preferred embodiment, the user 30 provides the LD in response to a request from the menu 22 using a numeric keypad on the telephone 10, and the ID is received at the receiver 24 and provided to the identifier 26.”).
And
verifying, by the computer system, authorization and login timeout status for the portal after receiving the first selection; and disabling, by the computer system, the first payment vehicle in response to verifying the authorization and login timeout status for the portal, (at least page 3, “A further feature may be that the server part comprises a timer settable by the user by means of the communication link, whereby the state of approval indication is settable by the user to an approved state. In this case the server part has means for causing the indication to revert a different state responsive to the timer.” and “…a pre-recorded voice message stored in menu 22 requests a numeric identification (ID) and personal identification number (PIN) from the user. In this preferred embodiment, the user 30 provides the LD in response to a request from the menu 22 using a numeric keypad on the telephone 10, and the ID is received at the receiver 24 and provided to the identifier 26.”).
Regarding Claim 23: Feerick further discloses the method of claim 17, wherein:
the visual interface further graphically presents an account balance of the payment vehicle, (at least “Typically there will also be account status data fields, including account balance, credit limit and a default status indicator to indicate if the account is in arrears and should be blocked against further debits.”).
Regarding Claims 24, 25 and 31: Feerick further discloses, wherein
disabling the payment vehicle comprises transmitting, by the computer system in response to the first selection, a first message to a payment vehicle management system to disable the payment vehicle, (at least claim 12).
wherein the computing device is a mobile computing device, the method further comprising: receiving, by the payment vehicle management system after receiving the first message from the computer system, a first text message from the mobile computing device to disable the payment vehicle; and disabling, by the payment vehicle management system, the payment vehicle in response to the first text message (at least claim 12).
further comprising: receiving, by the computer system after receiving the first selection, a first text message from the mobile computing device to disable the first payment vehicle; and disabling, by the computer system, the first payment vehicle in response to the first text message, (at least claim 12).
Regarding Claim 32: Feerick further discloses the method of claim 28, wherein:
the portal is a website served by the computer system, (at least “Where a GUI is provided in the user part, this can enable a user to selectively enter an identifying code and to selectively control the state of approval indication.”, at least claim 7).
Regarding Claim 33: Feerick further discloses the method of claim 28, wherein:
the portal is accessed using a mobile device application running on the mobile computing device, (at least “Where a GUI is provided in the user part, this can enable a user to selectively enter an identifying code and to selectively control the state of approval indication.”).
Claims:26, 27, 34 and 35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Feerick et al. (WO 2004/090825)(Feerick hereinafter) in view of Wei et al. (US 7,962,418 Bl)(Wei hereinafter) and further in view of Altman et al. (US 8,099,109 B2)(Altman hereinafter)
Although Feerick in view of Wei substantially discloses claims 17 and 28, it appears that Feerick in view of Wei does not explicitly disclose, however Altman discloses:
Regarding Claims 26: the method of claim 17 wherein
the visual interface further graphically presents a GPS awareness icon based on a current location of the computing device, (at least FIG.10, at least col.6, lines 41-43, “…data into pixel data that displays an icon representing the device 160 on a map that is appropriately scaled based on user input.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system of secure transactions of Feerick and the ability to toggle an on/off icon to disable/enable an account as disclosed by Wei the ability to display a location icon on a mobile scree as disclosed by Altman since the claimed invention is merely a combination of old elements and, in combination, each element would merely have performed the same function as it did separately. One of ordinary skill in the art would have recognized that applying the features disclosed by Altman, to the known invention of Feerick and Wei, would have yielded predictable results and resulted in an improved invention. The motivation to combine is that time and location sensitive alerts or coupons may prompt an individual to visit an event or store, see Summary.
Regarding Claims 27: Altman further discloses the method of claim 17, wherein:
the computing device is a mobile computing device, and wherein the portal further provides a coupon based on a current location of the mobile computing device, (at least col.22, lines 40-67, “These can include a map of the nearest sponsor location, any relevant coupons, product or…”, “…to provide location-based coupons. The coupons are delivered to users who have opted-in to receive discounts and promotions via text messages or within the application. The service targets relevant coupons to users based on their location and the time of day. Coupons are delivered as a text message and through the mobile application itself, such as through interstitial displays, menus, banners, and the like. The coupons are delivered in a manner similar to the auto-alert feature of sending an alert when the 60 user or a friend is at or within a defined distance of a particular location.”).
Regarding Claims 34: Altman further discloses the method of claim 28, wherein:
the method further comprises graphically presenting a GPS awareness icon based on a current location of the mobile computing device, (at least col.6, lines 40-43, “This process converts the location data into pixel data that displays an icon representing the device 160 on a map that is appropriately scaled based on user input.”, at least col.8, lines 31-35).
Regarding Claims 35: Altman further discloses the method of claim 34, wherein:
the method further comprises providing a coupon based on the current location of the mobile computing device, (at least col.22, lines 40-67, “These can include a map of the nearest sponsor location, any relevant coupons, product or…”, “…to provide location-based coupons. The coupons are delivered to users who have opted-in to receive discounts and promotions via text messages or within the application. The service targets relevant coupons to users based on their location and the time of day. Coupons are delivered as a text message and through the mobile application itself, such as through interstitial displays, menus, banners, and the like. The coupons are delivered in a manner similar to the auto-alert feature of sending an alert when the 60 user or a friend is at or within a defined distance of a particular location.”).
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 claims at issue 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); and 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 a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim Rejections - Double Patenting (Obviousness-type)
Claims 17-36 of the instant application are rejected on the grounds of non-statutory double patenting as being unpatentable over claims 1-20 of patent US11,100,495. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in and covered by patent US11,100,495 since patent US11,100,495 and the instant application are claiming common subject matter, as follows:
US11,100,495 18/958,724
Claim 1 discloses Claims 17, 18 and 19
Claim 2 discloses Claim 20
Claim 3 discloses Claim 21
Claim 4 discloses Claim 22
Claim 5 discloses Claim 23
Claim 6 discloses Claim 24
Claim 7 discloses Claim 25
Claim 8 discloses Claims 26 and 27
Claim 9 discloses Claims 28 and 29
Claim 11 discloses Claim 30
Claim 13 discloses Claim 31
Claim 14 discloses Claim 32
Claim 15 discloses Claim 33
Claim 16 discloses Claim 34
Claim 17 discloses Claim 35
Claim 18 discloses Claim 36
Conclusion
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/CHRISTOPHER BRIDGES/Primary Examiner, Art Unit 3693