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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/31/26 has been entered.
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two-part analysis has to be conducted.
Part 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. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process -- one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity. For instance, the claim language "…, completing the second transaction using the first account linked to the electronic account; in response to receiving the user input corresponding to the first account that is linked to the electronic device; in accordance with a determination that a history preference is enabled, concurrently displaying, via the display: a visual indication of the first account; and the first plurality of completed transactions corresponding to the first account that includes the first transaction…; and in accordance with a determination that the history preference is not enabled, displaying, via the display, the visual indication of the first account without displaying completed transactions corresponding to the first account" is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of
additional elements including "receiving…a first plurality of completed transactions corresponding to a first account that is linked to the electronic device; receiving authorization to proceed with a second transaction; detecting…a contactless transaction terminal; after completing the second transaction, receiving…a user input corresponding to a first account that is linked to the electronic device; memory and one or more processors." These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data and processing data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the electronic device; memory and one or more processors are caused to perform these steps. The electronic device; memory and one or more processors, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitation can be reasonably characterized as insignificant extra-solution activity. For instance, the steps of "receiving…a first plurality of completed transactions corresponding to a first account that is linked to the electronic device; receiving authorization to proceed with a second transaction; detecting…a contactless transaction terminal; after completing the second transaction, receiving…a user input corresponding to a first account that is linked to the electronic device, are mere data gathering steps considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Further, the limitations “wherein the first plurality of completed transactions includes a first transaction completed using an external electronic device; wherein completing the second transaction is based on authorization to proceed with the second transaction and a representation of the second transaction completed using the first account that is linked to the electronic device” are recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 1 is not directed to a specific asserted
improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor- that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited "electronic device; memory and one or more processors." The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0057-0058, 0136. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the
elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the '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)." A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90." Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a "processor" to "perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible." OJP Techs., Inc. V. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent
claims are thus subject to the same analysis as in claim 1 and are rejected using the same
rationale as in claim 1 above. More specifically, dependent claims 2-4, 7-8, 12-14, 17-18, 20-22, 24-26, 28-30 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 5-6, 9, 15-16, 19, 23-24 and 27 recite additional elements, but these additional elements are post- solution activities, outputting data/information.
Response to Arguments
Applicant's arguments filed on 08/31/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the additional elements in the claim integrate the judicial exception into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including "receiving…a first plurality of completed transactions corresponding to a first account that is linked to the electronic device; receiving authorization to proceed with a second transaction; detecting…a contactless transaction terminal; after completing the second transaction, receiving…a user input corresponding to a first account that is linked to the electronic device; memory and one or more processors." These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of inputting data and processing data using a generic computer system. In other words, these additional limitations are recited functionally without technical or technological details on how, i.e., by what algorithm or on what basis/method, the electronic device; memory and one or more processors are caused to perform these steps. The electronic device; memory and one or more processors, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitation can be reasonably characterized as insignificant extra-solution activity. For instance, the steps of "receiving…a first plurality of completed transactions corresponding to a first account that is linked to the electronic device; receiving authorization to proceed with a second transaction; detecting…a contactless transaction terminal; after completing the second transaction, receiving…a user input corresponding to a first account that is linked to the electronic device, are mere data gathering steps considered to be an insignificant extra-solution activity. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Further, the limitations “wherein the first plurality of completed transactions includes a first transaction completed using an external electronic device; wherein completing the second transaction is based on authorization to proceed with the second transaction and a representation of the second transaction completed using the first account that is linked to the electronic device” are recited to further narrow the scope of the abstract idea. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
In response to applicant’s argument that claims 28-30 integrate the alleged abstract idea into a practical application, the examiner disagrees. The examiner contends that the limitations recited in claims 28-30 do not recite additional elements but are merely recited to narrow the scope of the abstract idea.
Applicant's citation of Ex Parte Desjardins is unpersuasive because the claims at issue in Ex Parte Desjardins are readily distinguishable over the instant claims. The claims in Ex Parte Desjardins are directed to a method of training a machine learning algorithm on a series of tasks. The pending claims, however, is not directed to a specific improvement to machine learning technology. Rather the machine learning module is simply being trained by a conventional processor to carry out the claimed abstract steps.
Applicant's citation of McRo is unpersuasive because the claims at issue in McRo are readily distinguishable over the instant claims. The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. Id. at 1313. The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed electronic device with no improved display mechanism. The claims in McRO thus were not abstract in the sense that is dispositive here - they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it. In McRo, the claimed rules transforms a traditionally subjective process performed by humans into a mathematically automated process executed on computers. The human process and computer process in McRO produced a similar result but do so in fundamentally different ways. It is the incorporation of the claimed rules, not the use of the computer that improves the existing technological process by allowing the automation of further tasks. In contrast, the present claims do not provide improved rules and “merely implement an old practice in a new environment.
Applicant's citation of DDR is unpersuasive because the claims at issue in DDR are readily distinguishable over the instant claims. The examiner contends that while the claims in DDR Holdings, as described by the Court, involve conventional computers and the Internet, the claims address the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. “The claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” However, this is just not the case with the claimed subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. 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, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695
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