DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/28/2026 has been entered.
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.
3. Claims 11-19 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more.
Using the language in claim(s) 11 to illustrate, the limitations of: determine, that the transaction data corresponds to a transaction initiated at a merchant location; based on the determination, automatically prepare, a prompt to complete a transaction corresponding to the transaction data; transmit the prompt to the consumer; automatically identify resolution of a state of communication network disruption following receipt of the transmission indicating acceptance by the consumer of the transaction; and based on the identification of resolution, automatically update an inventory record to reflect completion of the transaction, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, commercial or legal interaction but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity.
The claimed invention allows for enabling a merchant to reduce the risk of fraud or unsuccessful transaction while continuing to make POS terminal initiated financial transactions and update inventory records during communication interruptions which is a commercial interaction. The mere nominal recitation of a non-transitory computer-readable media having computer executable instructions stored thereon wherein when executed by the at least one processors cause processor to perform the claimed steps, a consumer mobile device, a merchant point-or-sale (POS) terminal, and merchant server do not take the claim out of the methods of organizing human activity grouping. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. The claim recites the additional elements: transmit, transaction data for a payment transaction to a consumer mobile device, the transaction data identifying a product for purchase and an amount; receive, from the consumer mobile device, the transaction data at a merchant server; receive, at the merchant point-of-sale terminal and from the consumer mobile device, a transmission indicating acceptance by the consumer of the transaction. The receiving and transmitting steps/functions are recited at a high level of generality (i.e., as a general means of receiving and transmitting data over a network). Receiving and transmitting data over a network are forms of insignificant extra-solution activity –see MPEP 2106.05(g).
The non-transitory computer readable media, the processor(s), consumer mobile device, a merchant point-or-sale (POS) terminal, and merchant server are also recited at a high level of generality and merely automates the determining, automatically preparing , transmitting, automatically identify, and automatically update steps. Each of the additional limitations is no more than mere instructions to apply the exception using generic computer components (the processor, consumer mobile device, merchant POS and merchant server). The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/do 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 in the claims amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, under Step 2B, the additional elements found to be insignificant extra-solution activities under step 2A prong two, are re-evaluated to determine if the elements are more than what is well-understood, routine and conventional activity in the field. Here, the Specification does not provide any indication that the non-transitory computer readable storage media having instructions executable by the processor(s), the consumer mobile device, the merchant POS and merchant server are anything other than generic computer components and the Symantec, TLI Communications, OIP Techs, buySafe court decisions cited in MPEP 2106.05[d][ii] indicate that the mere receiving or transmitting data over a network are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (as they are here). Accordingly, a conclusion that the receiving and transmitting data limitations are well understood, routine, and conventional activities is supported under Berkheimer Option 2. For these reasons, there is no inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 12-19 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 11-19 is/are ineligible.
Allowable Subject Matter
4. Claims 1-5, 7, 10 are allowed.
Response to Arguments
5. In response to the amendment of claim 1, the Examiner withdraws the 35 U.S.C. § 103 rejections.
In response to the amendment of claim 1, the Examiner withdraws the 35 USC 101 rejection of claims 1-5, 7, 10.
On page 15, Applicants argue that under Step 2A, Prong One, claim 11 is not "directed to" an abstract idea. The argument is not convincing.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., a non-transitory computer readable media having instructions thereon that when executed by at least one processor cause the processor to perform the claimed steps, at a consumer mobile device, a merchant POS terminal, and a merchant server, claim 11 recites abstract ideas in the category of “methods of organizing human activity.”
In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 11—i.e., the “determining,” “automatically preparing, transmitting the prompt, automatically identifying, and automatically updating—and explains that they describe the concept of electronic commerce and updating inventory records, that is, a commercial interaction (Method of organizing human activity). The Examiner’s approach here is consistent with USPTO guidance.
Regarding the argument that the focus of claim 11 is an improvement in operation of the transaction /inventory system rather than invocation of computer as a mere tool and that the claims of the instant invention are similar to the features recited in the claims at issue in Enfish. The Examiner respectfully disagrees.
The claims in Enfish were not simply adding conventional computer components to well-known business practices; mathematical formulas performed on any general purpose computer; or generalized steps performed on a computer using conventional computer activity. The patent claims here are not directed to a specific implementation to a solution to a problem in the software arts of improving the way a computer stores and retrieves data in memory through use of a specific data structure. In Enfish, the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computer could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
Regarding the argument that the claims at issue are analogous to those found in Amdocs, the claims in Amdocs were not simply adding conventional computer components to well-known business practices; mathematical formulas performed on any general purpose computer; or generalized steps performed on a computer using conventional computer activity. The patent claims here are not directed to a specific implementation to a solution to a problem involving a “distributed network” that was not a conventional or routine use of computer technology at the time the invention was made. The patent claims in Amdocs were directed to improvements to “distributed architecture” therefore Amdocs has no applicability.
The applicant argues that the claimed invention is similar to the claims found in Bascom. The Examiner respectfully disagrees. In Bascom, the court found that the claims were directed to an abstract idea under step one. Id. at 1347-49. Under step two, the court found that the limitation of the claims, taken individually, recited a generic computer, network, and Internet components which were not inventive themselves. Id. at 1349-52. However, the court found that the ordered combination of these limitations provided the requisite inventive concept. Id. The claimed and described inventive concept was the “installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” Id. at 1350. The design permitted the filtering tool to have “both the benefits of a filter on a local computer and the benefits of a filter on the [Internet Service Provider] server.” Id. This was not customary or generic, and the claims did not preempt all ways of filtering content on the Internet—instead, the patent claimed and explained how a particular arrangement of elements was a “technical improvement over prior art ways of filtering such content.” Id. The court thus distinguished ineligible “abstract-idea-based solutions[s] implemented with generic technical components in a conventional way” from the eligible “technology-based solution” and software based invention[] that improve[s] the performance of the computer system itself.”” Id. at 1351 (citation omitted).
The claims in the instant application do not require an arguably inventive distribution of functionality within a network. The claims in this application specify transmitting transactions data from a POS to a consumer mobile device, receiving transaction data from a merchant server, determining at the server, that the transaction data corresponds to transaction initiated at merchant location, based on the determination, automatically prepare, at the merchant server a prompt, transmitting the prompt, receiving an acceptance of transactions, automatically identify resolution of state of communication network, automatically update inventory record, but they do not include any requirement for performing the claimed functions by use of anything but entirely conventional, generic technology.
Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The claims are not patent eligible under 35 USC 101.
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN 1928907-A cited for its reference to electronic payments including offline sales and transaction certificates wherein a payment center signs a transaction voucher with a private key, encodes the payment confirmation code, and sends it to the mobile terminal device which then transmits the payment confirmation code to the sales front-end device. The Sales front end device decodes and decrypts the received data and verifies the validity of the payment certificate and if payment voucher is valid, the transaction is complete.
Dougherty, Robert. “Public vs. Private Key Encryption: A Detailed Explanation.” August 12, 2023.-cited for its reference to private key encryption and payments.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694
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