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 .
Status of Claims
Claims 1-3 and 5-15 are pending in this application.
Examiner’s Comments Relating to Prior Art
In the office action dated 3/3/26, the examiner rejected claims 1-7, 9-12, and 14-15 under AIA 35 U.S.C. 103 as being unpatentable over Dieter (20240220961) in view of Park (KR20160105279A). Claim 8 was rejected under AIA 35 U.S.C. 103 as being unpatentable over Dieter in view of Park, further in view of and Yu (CN116957731A). In response, the applicant substantially narrowed down the claim scope in the amendments dated 5/27/26.
Specifically, the independent claims 1 and 9 now make clear that the limitations recite
the connection request is received “from a private network router connected to a user device and located at a merchant premises” (emphasis examiner’s);
“the connection request comprising a user identifier of a user, a subscriber identity module (SIM) number associated with the user, and a device identifier of the user device extracted by the private network router” (emphasis examiner’s).
This is in addition to the other disclosed elements for in store customer identification for payment transaction previously disclosed and currently existing in the claim language. The newly added elements – in combination with the other claim elements – overcome the prior art previously found and currently searched. The prior art rejections are withdrawn.
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 1-3 and 5-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-3 and 5-15 are directed to a system or method, which are/is one of the statutory categories of invention. (Step 1: YES”).
The Examiner has identified independent method claim 9 as the claim that represents the claimed invention for analysis and is similar to independent system claim 1. Claim 9 recites the limitations of in store customer identification for payment transaction.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Receiving a connection request from user device; connection request = user ID (=phone #, see claim 2) + subscriber ID module (SIM number) + device ID extracted by the private network router; sending user ID to a user ID management server; receiving a user identity (which can be user ID, SIM, OR device ID) from user ID management server; process shopping; receiving location of user device; based on the location being within checkout area, requesting & receiving payment card info from payment card management system; generating payment request with payment card detail; and receiving payment confirmation, – specifically, the claim recites: “receive… a connection request for user device, the connection request comprising a user identifier of a user, a subscriber identity module (SIM) number associated with the user, and a device identifier of the user device extracted by the private network router; send a user identity generation request… receive a user identity, which is a value based on the user identifier, the SIM number, and/or the device identifier, for the user… process shopping, by the user, at the merchant premises for one or more products; receive… a location of the user device to be within a checkout area within the merchant premises; based on the location of the user device being within the checkout area: request payment card details associated with the user identity… receive payment card details associated with the user identity… generate a payment request for the one or more products, the payment request comprising the payment card details associated with the user identity; and receive payment confirmation in response to the payment request”, recites a fundamental economic practice, directed to mitigating risk.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice or commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The “a user account processing system”, “a processor”, “a data storage device”, “computer program instructions”, “a user device”, “a user identity management server”, “a merchant server”, “a private network router”, and “a payment card management system”, in claim 1, are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claim 9 is also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of: a computer such as a user account processing system, a processor, a merchant server, a user device, a user identity management server, and a payment card management system; a communication device such as a private network router; a storage unit such as a data storage device; and software module and algorithm such as computer program instructions. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claims 1 and 9 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1 and 9 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their respective independent claims 1 and 9 and thus correspond to Certain Methods of Organizing Human Activity, and hence are abstract for the reasons presented above.
Dependent claim 2 discloses the limitation of the user identifier of a user comprises a mobile telephone number associated with the user, which further narrows the abstract idea.
Dependent claim 3 discloses the limitation of the device identifier of the device associated with the user comprises an international mobile equipment identity number of the device associated with the user, which further narrows the abstract idea.
Dependent claim 5 discloses the limitation of the data storage device further stores instructions operable to cause the processor to identify a user merchant account associated with the user from the user identity, which further narrows the abstract idea. Note that the technical elements “the data storage device” and “the processor” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 6 discloses the limitation of the data storage device further stores instructions operable to cause the processor to associate a user merchant account with the user identity, which further narrows the abstract idea. Note that the technical elements “the data storage device” and “the processor” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 7 discloses the limitation of the data storage device further stores instructions operable to cause the processor to associate a user merchant account with the user identity by associating an existing user merchant account with the user identity, which further narrows the abstract idea. Note that the technical elements “the data storage device” and “the processor” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 8 discloses the limitation of the data storage device further stores instructions operable to cause the processor to associate a user merchant account with the user identity by generating a new user merchant account, which further narrows the abstract idea. Note that the technical elements “the data storage device” and “the processor” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 10 discloses the limitation of identifying a user merchant account associated with the user from the user identity, which further narrows the abstract idea.
Dependent claim 11 discloses the limitation of associating a user merchant account with the user identity, which further narrows the abstract idea.
Dependent claim 12 discloses the limitation of receiving, by a user identity management server, the user identity generation request from the merchant server, the user identity generation request comprising the user identifier of the user, the subscriber identity module number associated with the user, and the device identifier of the device associated with the user; generating, by the user identity management server, the user identity for the user as a combination function of the user identifier of the user, the subscriber identity module number associated with the user, and the device identifier of the device associated with the user; and sending the user identity for the user to the merchant server, which further narrows the abstract idea. Note that the technical elements “a user identity management server”, “the device associated with the user”, and “the user identity management server”, are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 13 discloses the limitation of the combination function is a hash function, which further narrows the abstract idea.
Dependent claim 14 discloses the limitation of the user identifier of a user comprises a mobile telephone number associated with the user, which further narrows the abstract idea.
Dependent claim 15 discloses the limitation of the device identifier of the device associated with the user comprises an international mobile equipment identity number of the device associated with the user, which further narrows the abstract idea.
Thus, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, the claims 1-3 and 5-15 are not patent-eligible.
Response to Arguments
Applicant's arguments filed 5/27/26 have been fully considered but they are not persuasive.
The applicant’s 35 USC 103 arguments are moot because the prior art rejections are withdrawn. The examiner is withdrawing the prior art rejections because the amended claims contain new scope narrowing elements which, in combination with the existing elements, sufficiently narrow the claimed scope to overcome the existing prior art and additional art searched. See Examiner Comment Relating to Prior Art above.
In response to applicant's argument that:
“35 U.S.C. § 101… The pending claims, as amended, provide a technical solution to a technical problem by leveraging the specific architecture which locates a private network router in the specific premises to interact with the user device,”
the examiner respectfully disagrees. In comparison to the prior version, the added elements (see underlined) and deleted elements (if any, struck out with a line) are essentially:
(1) “receive, from a private network router connected to a user device and located at a merchant premises, a connection request for user device”;
(2) “a subscriber identity module (SIM) number associated with the user, and a device identifier of the user device extracted by the private network router”;
(3) “receive a user identity, which is a value based on the user identifier, the SIM number, and/or the device identifier”;
(4) “process shopping, by the user, at the merchant premises for one or more products”;
(5) “receive, from the private network router, a location of the user device to be within a checkout area within the merchant premises”;
(6) “based on the location of the user device being within the checkout area: request payment card details associated with the user identity from a payment card management system”; and
(7) “generate a payment request for the one or more products, the payment request”.
These changes are not sufficient to overcome the 35 U.S.C. § 101 rejections because: for 101 analysis purpose, this is just stating (corresponding to the numberings above):
that information is routed via a particular channel (the merchant’s private network router);
that information is extracted by a particular device (the private network router);
that “user identity” is based on user identifier, the SIM number, and/or the device identifier;
that user shopping is processed at some point;
the system receives user’s location;
based on the location determination, a process begins (requesting payment card details); and
payment request is for products.
These are abstract ideas. There is nothing technical about it.
Note that the technical element “private network router” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In response to applicant's argument that:
“As such, the technical solution relies on the specific architecture, mainly, the private network router functionality to connect the user device to an ordered combination of operations to improve user experience through less friction and/or an efficient data flow,”
the examiner respectfully disagrees. There is no specific architecture other than the connection between the user’s device and the merchant device. Similar to a connection between 2 telephones when a call is made.
In response to applicant's argument that:
“For example, in Claim 1, the merchant server receives the location of the user device, from the private network router, and proceeds with the checkout through a payment request, based on that location being within a checkout area of the merchant. This is a practical application of the specific technology, resulting in an improvement to the functionality of the overall architecture recited in the claims,”
the examiner respectfully disagrees. As the “private network router” is the connection between the user’s device and the merchant device (the two parties to the transaction), transaction information would necessarily passed through the router. Examiner notes that the claimed invention is not improving location technology. Neither is it improving router technology. The router (“private network router”) is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In response to applicant's argument that:
“in McRO, therefore, the user experience is achieved, at least in part, using unique sequences of operations. In connection therewith, the pending claims provide for a substantial departure from conventional techniques in checking out from a shopping experience (emphasis original’s),”
the examiner respectfully disagrees. Regarding the applicant’s arguments that the instant application is similar McRO, the rules and preemption issues addressed in McRO are specific to improving the technology. However, in the instant application, the rules are specific to the abstract idea and not a technological improvement. McRO was also more of a technological solution rather than just doing what was done by hand previously. It is the incorporation of the claimed rules, not the use of the computer that “improved” the existing technological process, by allowing the automation of further tasks. When looked at as a whole, claim 1 of McRO is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. 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 “generic computers” as tools.
In response to applicant's argument that:
“This is analogous to claims found patent eligible in cases such as Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), where claims directed to an improvement in how a computer carried out a function were found not to be directed to an abstract idea. Here, the improvement is in how a physical retail payment system performs automated user identification using network-specific device parameters, specifically extracted by the private network router,”
the examiner respectfully disagrees. Enfish does not change the way the Office analyzes claims. The analysis in the Enfish case is specific to the particular facts of that specific application. Enfish has an unambiguous improvement to a technology, however, the instant application is directed to in store customer identification for payment transaction which is an abstract idea. Furthermore, TLI Communications decision ruled that the courts clarified step one of the analysis is to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea. In TLI decision, the claims were not directed towards a specific improvement to computer functionality but rather 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 technical problem. Similarly, the instant application is directed to an abstract idea and not a technical solution.
In response to applicant's argument that:
“Initially, as amended herein, the pending claims recite substantial additional detail as to the additional elements, and in particular, the private network router and the operations associated therewith. The private network router, in combination with the merchant server and the user identity management server, provides the specific network architecture, which operates uniquely to enable the user experience to proceed with substantially less friction than is conventional,”
the examiner respectfully disagrees. Again, the “private network router” is the connection between the user’s device and the merchant device (the two parties to the transaction); similar to a connection between 2 telephones when a call is made. Examiner notes again that the claimed invention is not improving location technology. Neither is it improving router technology. The router (“private network router”) is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In response to applicant's argument that:
“This can be conventionally done without technology, i.e., with the check of a driver's license by the merchant (i.e., some conversation between the user and the merchant). Between that simple example, and what is actually claimed, is substantial technology. The pending claims recite a particular implementation of the private network router, at the merchant premises, in communication with a merchant server… The progress contained within the claims, in terms of technology, over what is conventional, is surely significantly more than the alleged judicial exception. The particular technology and improvement provided thereby is eligible,”
the examiner respectfully disagrees. The examiner is not disputing the premise that computers will generally increase the speed and efficiency in carrying out some repetitive processes. Thus, the applicant’s business process/ideas could very well be carried out faster and more efficiently using generic computers. Neither is the examiner arguing that the claim language lacks such generic electronic devices. Rather, the examiner has determined that such devices amount to nothing more than “generic computers”, used and recited at such a high level that they do not integrate the abstract idea into a practical application.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK H GAW whose telephone number is (571)270-0268. The examiner can normally be reached Mon-Fri: 9am -5pm.
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, Mike Anderson can be reached on 571 270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK H GAW/Examiner, Art Unit 3693
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