Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
The following Non-Final office action is in response to application filed on 12/20/2024.
Priority Date: CON of Patents (US12,217,237)-(US11,574,296)-Claimed>Prov>(08-17-2012).
Claim Status:
Pending claims : 1-20
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In particular, claims are directed to a judicial exception (Abstract idea) without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, (Step-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. (Step-2A) If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, (Step-2B) it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.
Examples of abstract ideas grouping include: (a) Mental processes; (b) Certain methods of organizing human activities [ i. Fundamental Economic Practice; ii. Commercial or Legal Interaction; iii. Managing Personal behavior or Relations between People]; and (c) Mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
Analysis is based on the 2019 Revised Patent Eligibility Guidance (2019 PEG)-(see MPEP § 2106.04(II) and 2106.04(d). )-[see MPEP § 2106.04(II), and § 2106.04(d) & MPEP § 2106.05(a),(b),(c),(e )…].
[Step-1] The claims are directed to a system/machine/method, which are a statutory category of invention.
Claim 11 (exemplary) recites a series of steps for Online-Payments of Payers to provide Tips to Merchant.
[Step-2A]-Prong 1:The Method claim 11 is then analyzed to determine whether it is directed to a judicial exception:
The Method claim 11 recites the limitations of:
configuring, by an e-commerce processing system, a graphical user interface (GUI) on a first mobile … of a first user, wherein the GUI is configured after the e-commerce processing system installs and executes a mobile payment application on the first mobile …, the first user having an account including corresponding payment information stored in a database associated with the e-commerce processing system;
receiving, by the e-commerce processing system and via the GUI, one or more specifications regarding a tipping process for providing tips to an identified service provider for one or more transactions conducted via the e-commerce processing system, the first mobile … of the first user, and a respective device of the identified service provider;
generating, by the e-commerce processing system, a virtual service provider payment instrument for the identified service provider based on the one or more specifications;
detecting, by the e-commerce processing system, a selection of an interactive element associated with the virtual service provider payment instrument displayed on the first mobile …, the selection indicating a request to share the virtual service provider payment instrument with a second mobile device of a second user;
granting, by the e-commerce processing system, access to use the virtual service provider payment instrument to the second mobile … of the second user;
receiving, by the e-commerce processing system, a request for processing a cardless payment transaction with the identified service provider, wherein the request is received from the first mobile device or the second mobile …, wherein a respective one of the first mobile … and the second mobile device is in geographical proximity of the respective device of the identified service provider at a time of receiving the request;
delaying, by the e-commerce processing system, processing the cardless payment transaction until at least one of:
a tip is applied according to the one or more specifications of the tipping process; or a condition associated with the cardless payment transaction has been met; and
processing, by the e-commerce processing system, the cardless payment transaction after the tip is applied or the condition is met.
The claimed method/system/machine simply describes series of steps for Online payments of Payers to provide Tips to Merchants.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via human commercial or business or transactional activities/interactions, but for the recitation of generic computer components. That is, other than reciting one or more servers/processors, devices and computer network nothing in the claim precludes the limitations from practically being performed by organizing human business activity. For example, without the structure elements language, the claim encompasses the activities that can be performed manually between the users and a third party. These limitations are directed to an abstract idea because they are business interaction/sale activity that falls within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG.
[Step-2A]-Prong 2:
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of using one or more servers/processors, devices and computer network to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
[Step-2B]
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept).
As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
Viewing the limitations as an ordered combination does not add anything further than looking at the 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 itself. Therefore, the claim does not amount to significantly more than the recited abstract idea, and the claim is not patent eligible.
The analysis above applies to all statutory categories of invention including independent claims 1, and 8.
Furthermore, the dependent claims 2-7, 9-14 and 16-20 do not resolve the issues raised in the independent claims.
The dependent claims 2-7, 9-14 and 16-20 are directed towards:
Using, wherein the one or more specifications indicate that the tipping process is applicable to cardless payment transactions conducted with at least one additional service provider using the first mobile device and with one or more specified merchants using the first mobile device; the tip is modifiable until a threshold amount of time has passed after the request is received; the tipping process received are based at least in part on the one or more merchant specific tipping suggestions; generate a digital receipt for the cardless payment transaction upon receiving the request to process the cardless payment transaction; and wherein one or more visual elements of the virtual service provider payment instrument are modifiable.
These limitations are also part of the abstract idea identified in claim 1, and are similarly rejected under same rationale.
Accordingly, the dependent claims 2-7, 9-14 and 16-20 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Double Patenting
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 therefore, subject to the conditions and requirements of this title".
The following 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 time wise 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 conflicting claims 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); 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 non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-17 of US Patent No. 12,217,237.
Although the conflicting claims are not identical, they are not patentably distinct from each other. Both the current invention and ‘237 claims are drawn to a
method and apparatus of:
configuring, by an e-commerce processing system, a graphical user interface (GUI) on a first mobile device of a first user, wherein the GUI is configured after the e-commerce processing system installs and executes a mobile payment application on the first mobile device, the first user having an account including corresponding payment information stored in a database associated with the e-commerce processing system;
receiving, by the e-commerce processing system and via the GUI, one or more specifications regarding a tipping process for providing tips to an identified service provider for one or more transactions conducted via the e-commerce processing system, the first mobile device of the first user, and a respective device of the identified service provider;
generating, by the e-commerce processing system, a virtual service provider payment instrument for the identified service provider based on the one or more specifications;
detecting, by the e-commerce processing system, a selection of an interactive element associated with the virtual service provider payment instrument displayed on the first mobile device, the selection indicating a request to share the virtual service provider payment instrument with a second mobile device of a second user;
granting, by the e-commerce processing system, access to use the virtual service provider payment instrument to the second mobile device of the second user;
receiving, by the e-commerce processing system, a request for processing a cardless payment transaction with the identified service provider, wherein the request is received from the first mobile device or the second mobile device, wherein a respective one of the first mobile device and the second mobile device is in geographical proximity of the respective device of the identified service provider at a time of receiving the request;
delaying, by the e-commerce processing system, processing the cardless payment transaction until at least one of:
a tip is applied according to the one or more specifications of the tipping process; or a condition associated with the cardless payment transaction has been met; and processing, by the e-commerce processing system, the cardless payment transaction after the tip is applied or the condition is met.
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are all directed to methods and apparatus of linking web servers for on-line shopping. The claims from both the present application and ‘237 above are significantly similar and the claimed features seem to be identical with various obvious alternate method.
Furthermore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, the claims of the instant application are not identical to claims 1-17 of US Patent No. 12,217,237, but they are not patently distinct.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Itwaru et al (US 2013/0124413-A1).
Ref claim 1, Itwaru discloses an e-commerce payment platform comprising:
one or more memories having computer-readable instructions stored therein; and one or more processors configured to execute the computer-readable instructions (Abstract; Fig.1, via a mobile image payment System for mobile commerce/the Consumer’s mobile device with a Payment Platform communicates with a Merchant Transaction Server…) to:
configure a graphical user interface (GUI) on a first mobile device of a first user, wherein the GUI is configured after the e-commerce payment platform installs and executes a mobile payment application on the first mobile device, the first user having an account including corresponding payment information stored in a database associated with the e-commerce payment platform (para [0007-8];Fig.2; via, Systems and methods for using mobile device to facilitate a purchase directly from…any type of electronic or print media…, and e-commerce markets….[0162], Fig. 6; via the computer device 12, network interface 102,…and a display device [LCD],…the display screen of the UI 104/ present a graphical user interface[GUI] of transaction application 113 to the user/the OMRI 200 image capture processing…);
receive, via the GUI, one or more specifications regarding a tipping process for providing tips to an identified service provider for one or more transactions conducted via the e-commerce payment platform, the first mobile device of the first user, and a respective device of the identified service provider (para [0033]; Fig.3, the merchant 16 can register with transaction service 20 [implied service provider]… a tip is required etc. …the merchant profile parameters define the transaction 5 with OMRI 200 or product code data3…from transaction service 20 …);
generate a virtual service provider payment instrument for the identified service provider based on the one or more specifications; detect a selection of an interactive element associated with the virtual service provider payment instrument displayed on the first mobile device, the selection indicating a request to share the virtual service provider payment instrument with a second mobile device of a second user; grant access to use the virtual service provider payment instrument to the second mobile device of the second user (para [0036]; Fig. 2, via mobile commerce and e-commerce to make mobile devices web capable [more devices]…providing the consumer 18 to use the transaction service 20 to facilitate the payment …online transaction 5 …);
receive a request for processing a cardless payment transaction with the identified service provider, wherein the request is received from the first mobile device or the second mobile device, wherein a respective one of the first mobile device and the second mobile device is in geographical proximity of the respective device of the identified service provider at a time of receiving the request (para [0005], via development of mobile commerce/on mobile devices, such as cell phone, smart phone and tablet computers/multi-functional devices …[0026]; Figs.1-2, via Consumer Code data 3 …the payment application 113…[0027-32];…, E-wallet, etc. … [0227];via the payment account identifier…phone number, carrier name and geographic location co-ordinates…);
delay processing the cardless payment transaction until at least one of: a tip is applied according to the one or more specifications of the tipping process; or a condition associated with the cardless payment transaction has been met; and process the cardless payment transaction after the tip is applied or the condition is met (para [0032-33]; via the present system enables present the OMRI 200 or the product code data 3 initiate mobile transaction 5…the consumer can select the tip amount [% tip, $ tip, etc.]/transaction service 20… [0077], Fig. 2, the environment 10, a transaction flow… One ex. of output data 217 on transaction type…a set of instructions displayed on the user interface 104 on how to enter a tip amount/confirm total meal cost including tip…payment request/confirmation messages sent to the consumer 18/the merchant 16….[0245]; via payment platform,…E-wallet service providers…and process electronic payment from account holder accounts.).
Ref claim 2, Itwaru discloses the e-commerce payment platform of claim 1, wherein the one or more specifications indicate that the tipping process is applicable to cardless payment transactions conducted with at least one additional service provider using the first mobile device (para [0005], via development of mobile commerce/on mobile devices, such as cell phone, smart phone and tablet computers/multi-functional devices …[0026]; Figs.1-2, via Consumer Code data 3 …the payment application 113…[0027-32];…, E-wallet, etc. …[0032-33]; via the present system enables present the OMRI 200 or the product code data 3 initiate mobile transaction 5…the consumer can select the tip amount [% tip, $ tip, etc.]/transaction service 20… [0077], Fig. 2, the environment 10, a transaction flow… One ex. of output data 217 on transaction type…a set of instructions displayed on the user interface 104 on how to enter a tip amount/confirm total meal cost including tip…payment request/confirmation messages sent to the consumer 18/the merchant 16…)
Ref claim 3, Itwaru discloses the e-commerce payment platform of claim 1, wherein the one or more specifications indicate that the tipping process is applicable to cardless payment transactions conducted with one or more specified merchants using the first mobile device (para [0005], via development of mobile commerce/on mobile devices, such as cell phone, smart phone and tablet computers/multi-functional devices …[0026]; Figs.1-2, via Consumer Code data 3 …the payment application 113…[0027-32];…, E-wallet, etc. …[0032-33]; via the present system enables present the OMRI 200 or the product code data 3 initiate mobile transaction 5…the consumer can select the tip amount [% tip, $ tip, etc.]/transaction service 20… [0077], Fig. 2, the environment 10, a transaction flow… One ex. of output data 217 on transaction type…a set of instructions displayed on the user interface 104 on how to enter a tip amount/confirm total meal cost including tip…payment request/confirmation messages sent to the consumer 18/the merchant 16…)
Ref claim 4, Itwaru discloses the e-commerce payment platform of claim 1, wherein the one or more specifications indicate that the tip is modifiable until a threshold amount of time has passed after the request is received (para [0005], via development of mobile commerce/on mobile devices, such as cell phone, smart phone and tablet computers/multi-functional devices …[0026]; Figs.1-2, via Consumer Code data 3 …the payment application 113…[0027-32];…, E-wallet, etc. … [0032-33]; via the present system enables present the OMRI 200 or the product code data 3 initiate mobile transaction 5…the consumer can select the tip amount [% tip, $ tip, etc.]/transaction service 20… [0077], Fig. 2, the environment 10, a transaction flow… One ex. of output data 217 on transaction type…a set of instructions displayed on the user interface 104 on how to enter a tip amount/confirm total meal cost including tip…payment request/confirmation messages sent to the consumer 18/the merchant 16…)
Ref claim 5, Itwaru discloses the e-commerce payment platform of claim 1, wherein the one or more processors are further configured to execute the computer-readable instructions to: determine one or more merchant specific tipping suggestions based on transaction history of the first user and the identified service provider, wherein the one or more specifications of the tipping process received are based at least in part on the one or more merchant specific tipping suggestions (para [0032-33]; via the present system enables present the OMRI 200 or the product code data 3 initiate mobile transaction 5…the consumer can select the tip amount [% tip, $ tip, etc.]/transaction service 20… [0077], Fig. 2, the environment 10, a transaction flow… One ex. of output data 217 on transaction type…a set of instructions displayed on the user interface 104 on how to enter a tip amount/confirm total meal cost including tip…payment request/confirmation messages sent to the consumer 18/the merchant 16…).
Ref claim 6, Itwaru discloses the e-commerce payment platform of claim 1, wherein the one or more processors are further configured to execute the computer-readable instructions to: generate a digital receipt for the cardless payment transaction upon receiving the request to process the cardless payment transaction (para [0005], via development of mobile commerce/on mobile devices, such as cell phone, smart phone and tablet computers/multi-functional devices …[0026]; Figs.1-2, via Consumer Code data 3 …the payment application 113…[0027-32];…, E-wallet, etc. … [0227];via the payment account identifier…phone number, carrier name and geographic location co-ordinates…).
Ref claim 7, Itwaru discloses the e-commerce payment platform of claim 1, wherein one or more visual elements of the virtual service provider payment instrument are modifiable (para [0245]; via payment platform,…E-wallet service providers…and process electronic payment from account holder accounts…).
Claim 8 recites similar limitations to claim 1 and thus rejected using the same art and rationale in the rejection of claim 1 as set forth above.
Claims 9-14 are rejected as per the reasons set forth in claims 2-7 respectively.
Claim 15 recites similar limitations to claim 1 and thus rejected using the same art and rationale in the rejection of claim 1 as set forth above.
Claims 16-18 are rejected as per the reasons set forth in claims 2-4 respectively.
Claims 19-20 are rejected as per the reasons set forth in claims 6-7 respectively.
CONCLUSION
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure.
Grossi et al (US 9,846,863-B2) discloses Techniques for Automating a Retail Transaction.
Nathanel et al (US 20130232017 A1) discloses Device, System and Method of Electronic Payment.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HATEM M. ALI whose telephone number is (571) 270-3021, E-mail: Hatem.Ali@USPTO.Gov and FAX (571)270-4021. The examiner can normally be reached Monday-Friday from 8:00 AM to 6:00 PM ET.
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/HATEM M ALI/
Examiner, Art Unit 3691