DETAILED ACTION
This Office action is in reply to correspondence filed 3 April 2026 in regard to application no. 18/982,202. Claim 6 has been cancelled. Claims 1-5 and 7-17 are pending and are considered 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 .
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 1-5 and 7-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims lie within statutory categories of invention, as each is directed to a method (process), device (machine), or non-transitory computer readable medium (manufacture). The claim(s) recite(s) sending information to an external device, sending a result to a user, requesting a code, performing service code rendering in no particular manner, sending information to a user, performing payment processing, reading invoice information, and sending data to another entity.
As the whole point of this is to manage payment information, it recites a fundamental business practice and a commercial interaction; merchants have been managing payment information for decades, including before there was any such thing as a computer. Further, in the absence of computers, these are steps that can be performed mentally and/or by the use of paper records.
A merchant can create a service code by simply assigning a number to a particular customer request, can perform whatever service was requested, and can send and receive invoices and payments with identifiers on them. None of this presents any practical difficulty and none requires any technology beyond pen and paper.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer, discussed below, nothing is done beyond what was set forth above, which does not go beyond generally linking the abstract idea to the technological environment of generic, networked computers. See MPEP § 2106.05(h).
As the claims only manipulate data pertaining to invoices, payments and the like, they do not improve the "functioning of a computer" or of "any other technology or technical field". See MPEP § 2106.05(a). They do not apply the abstract idea "with, or by use of a particular machine", MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a "transformation or reduction of a particular article to a different state or thing", MPEP § 2106.05(c). First, such data, being intangible, are not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea "in some other meaningful way beyond generally linking [it] to a particular technological environment", MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claims is SO as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are insufficient to elevate an otherwise-ineligible claim to patent eligibility.
Claim 16, which has the most, includes a processor, memory storing instructions, and implicitly, access to some kind of network. These elements are recited at a high degree of generality and the specification is explicit, ¶ 149, that nothing more than a "general-purpose computer" is required.
It only performs generic computer functions of nondescriptly manipulating data and sharing data with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Steps performed by external, unclaimed elements such as the management platform have no effect on this analysis as they are considered but given no patentable weight. The claim elements when considered in ordered combination - a generic computer performing a chronological sequence of abstract steps - do nothing more than when they are analyzed individually. The other independent claims are simply different embodiments but are likewise directed to a generic computer performing, essentially, the same process.
The dependent claims further do not amount to significantly more than the abstract idea: claims 2 and 3 are simply further descriptive of the type of information being manipulated. Claims 4, 5, 7-9, 12, 14 and 15 simply recite further, abstract manipulation of data. Claims 10 and 13 simply specify storing and/or outputting data; claim 11 simply recites additional input.
The claims are not patent eligible. The Examiner has thoroughly reviewed the originally-filed application, including the specification and drawing sheets, and finds nothing likely sufficient to overcome this rejection.
For further guidance please see MPEP § 2106.03 - 2106.07(c) (formerly referred to as the "2019 Revised Patent Subject Matter Eligibility Guidance", 84 Fed. Reg. 50, 55 (7 January 2019)).
Response to Arguments
Applicant's arguments filed 3 April 2026 have been fully considered but they are not persuasive. First, the fact that there may be additional elements does not have any effect on whether the claims recite an abstract idea; certainly there can be more, and nearly always is, but the “more” is addressed in the second prong of step 2A (integration into a practical application) and step 2B (“significantly more”).
The applicant states in conclusory fashion that the steps cannot be performed mentally or with pen and paper, but does not give any hint as to why there should be any difficulty. The mere fact that computers are used rather than the human mind (or mechanical means such as pen and paper) is of no significance at this step of the analysis.
See MPEP § 2106.04(a)(2)(III), explaining that courts do not distinguish between mental processes performed in the human mind and those same processes performed on a computer, or between mental processes performed with mechanical aids such as pen and paper and those same processes performed on a computer.
To perform payment processing, as the claim provides, sets forth a fundamental business practice and a commercial interaction, so the claims recite certain methods of organizing human activity. As the steps can be performed mentally or with pen and paper, the claims recite human mental activity.
Integration into a practical application requires, non-exhaustively, a showing that the claims improve the function of a computer or other technology, invoke a particular machine, transform matter, or go beyond generally linking abstraction to technology. That a service code is secure is a business and not a technical problem; that invoices may be inappropriately issued is a business and not a technical problem. The applicant has not persuasively shown that the present claims improve computing or any of the other factors identified above.
In regard to step 2B, the consideration is whether the additional, that is, non-abstract claim elements, individually or as an ordered combination, are sufficient to amount to significantly more than the abstract idea, and the Guidance is clear that a generic computer is not, per se, sufficient.
Even if the abstract steps were, themselves, inventive, which is not conceded, the courts have been clear that this plays no role in this step of the eligibility analysis. As the Federal Circuit put it in Ariosa1, “the Supreme Court instructs that “[g]roundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry,” quoting Myriad Genetics2.
The only non-abstract claim elements found in any claim encompass a generic computer, which, as explained above, is insufficient. The claims are not patent eligible and the rejection is maintained.
Conclusion
As no rejection is made herein under 35 U.S.C. § 102 or 103, a brief review of the state of the art at the relevant time is in order. In the previous Office action, claims were rejected under § 103 based on various combinations of the following references: Maibach et al., Jones et al., Fitch et al. and Kurani et al. As the claims have been amended, further search and consideration were conducted.
McDaniel et al. (U.S. Publication No. 2022/0164909) discloses a patron monitoring system [title] that allows a patron to use a “registered payment method” which is “automatically processed” when the “patron leaves [an] establishment”. [abstract] An “external system” is used to determine whether certain conditions are met in which case a “specific staff member” associated with a “staff identifier” is alerted to perform a task. [0024]
But neither McDaniel nor the prior art previously made of record, alone or if combined, teach or suggest every limitation of the present invention, in particular the manner in which specific data are passed from the claimed system to and from other, unclaimed systems in order to provide an invoice, combined with the other presently claimed elements.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
1 Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,1387 (Fed. Cir. 2016)
2 Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 22107,2117 (2013)
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