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 12/24/2024.
Priority Date: CON of PATs (US 12,217,237)-(US 11,574,296)> Claimed Prov(8-17-2012).
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 method/system/machine, which are a statutory category of invention.
Claim 15 (exemplary) recites a series of steps for Delayed processing of E-Commerce Transactions with Tips.
[Step-2A]-Prong 1:The method claim 15 is then analyzed to determine whether it is directed to a judicial exception:
The claim recites the limitations of:
configuring, by an e-commerce processing system, a graphical user interface (GUI) on a mobile … of a user, wherein the GUI is configured after the e-commerce processing system installs and executes a mobile payment application on the mobile …, the 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 one or more transactions conducted via the e-commerce processing system, the mobile … of the user, and a respective … of a service provider;
storing, by the e-commerce processing system, in a database associated with the e-commerce processing system, the one or more specifications of the tipping process;
receiving, at the e-commerce processing system, a request for processing a cardless payment transaction using the mobile … of the user and the respective … of the service provider, wherein the mobile … of the user and the respective … of the service provider are detected in geographical proximity of each other;
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 Delayed processing of E-Commerce Transactions with Tips.
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 with dependent claims [2-7, 9-14, and 16-20], the tipping process is applicable to cardless payment transactions conducted with at least one additional service provider using the mobile device of the user with one or more specified merchants using the mobile device of the user; the tip is modifiable until a threshold amount of time has passed after the request is received; to determine one or more merchant specific tipping suggestions based on transaction history of the user and the 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; generate a digital receipt for the cardless payment transaction upon receiving the request to process the cardless payment transaction; the tip is expressed as one of a percentage of an amount of the cardless payment transaction or a fixed dollar amount.
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 Rejection
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:
receiving, at a server of an online payment platform and from a first software application associated with the online payment platform and executing on a first mobile device of a customer, a first request to enter into a transaction with a service provider, the transaction having a corresponding transaction amount, each of the customer and the service provider having an account including corresponding identifying information stored in a database associated with the online payment platform, the online payment platform enabling customers and merchants to engage in transactions without an exchange of financial information between the customers and the merchants;
receiving, at the server and from a second software application associated with the online payment platform and executing on a second mobile device of the service provider, a second request to process a cardless payment for the transaction using payment information of the customer, wherein the second request serves as an indication that the transaction between the service provider and the customer is complete, wherein each of the first mobile device and the second mobile device send a respective request to the server to download and install a corresponding one of the first software application and the second software application, and wherein the first mobile device and the second mobile device are in geographical proximity of each other at a time of receiving the first request;
determining, at the server and for the transaction, a tipping process, the tipping process being one of an automatic tipping process for the transaction whereby a first tip amount is automatically determined by the server to be added to the transaction amount, or a manual tipping process whereby a second tip amount to be added to the transaction amount is provided via the first software application;
after receiving the second request to process the cardless payment, applying one of the first tip amount or the second tip amount to the transaction amount based on the determined;
delaying, by the server and after the transaction between the service provider and the customer is completed, processing of the cardless payment for the transaction until the first tip amount is applied based on the automatic tipping process, or until one of an expiration of a threshold timing or the second tip amount is received via the first software application based on the manual tipping process;
processing, by the server, the cardless payment for the transaction based at least on the transaction amount and one of the first tip amount or the second tip amount using the payment information of the customer; and
communicating, by the server and to each of the first software application and the second software application, an electronic message confirming the transaction.
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 § 103
The following is a quotation of AIA 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Itwaru et al (US 2013/0124413-A1) in view of Matte (US 2010/0191589 A1), and Grossi et al (US 9,846,863-B1).
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 (para [0025], Referring Figs. 1 and 9 …), to:
configure a graphical user interface (GUI) on a mobile device of a user, wherein the GUI is configured after the e-commerce payment platform installs and executes a mobile payment application on the mobile device, the user having an account including corresponding payment information stored in a database associated with the e-commerce payment platform (para [0026]; Consumer Code data…[0029], Fig. 1; a Mobile Image Payment System 10 for mobile commerce enables a consumer 18 to use a mobile device i2 to make payments for online POS Transactions 5 and the like. The Consumer 18 scan an encoded, mobile device scannable image [e.g. OMRI] that is displayed by a merchant 16...to initiate the transaction 5 [ implied receiving in a server]... by Mobile Payment Client application 113, residing on the Consumer's mobile device 12/interface 15 on a transaction server 6 [of the transaction service 20] and optionally a Mobile Payment Application or interface 8 residing on a merchant's device or POS terminal 17...[0081], Figs. 2 and 4; via the payment request of the transaction 5 used by the consumer 16 and the merchant 16 to define what has been purchased...);
[[ receive, via the GUI, one or more specifications regarding a tipping process for providing tips to one or more transactions conducted via the e-commerce payment platform,]] the mobile device of the user, and a respective device of a service provider; store in a database at the e-commerce payment platform, the one or more specifications of the tipping process (para [0077), Fig. 2; displayed on the user interlace104 on how to enter a tip amount [various tip options such as % tip, $ tip, etc.)…[0097]: via a mobile application 113 OMRI 200 the Merchant Transaction Server transaction options /based on the merchant type prompt for a tip merchant as a restaurant );
receive a request for processing a cardless payment transaction using the mobile device of the user and the respective device of the service provider, wherein the mobile device of the user and the respective device of the service provider are detected in geographical proximity of each other (para [0188], Fig.9, the merchant interface 8…of the POS system/n-communication with a local area network – a physical POS terminal in physical proximity to the consumer 18 at the time of product order and purchase [implied at restaurant both mobile phones are near]…);
[[ 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 [0045]; Figs.2 and 3; via electronic network messages 54, containing an image of the OMRI 200 … [0135], Step 21-the transaction interface 15, Transaction completion by transmitting the Transaction information in a confirmation message …).
Itwaru does not explicitly disclose the step to: receive, via the GUI, one or more specifications regarding a tipping process for providing tips to one or more transactions conducted via the e-commerce payment platform.
However, Matte being in the same field of invention discloses the step to: receive, via the GUI, one or more specifications regarding a tipping process for providing tips to one or more transactions conducted via the e-commerce payment platform (para [0010], Fig. 1, a system for providing a business growth incentive program…[0030], Fig.1, the reward system 100 provide a website 120…the reward system 100…[0037], a module for receiving and filing new business leads…[0040], reward program, define rewards 170 [include tips 172]…[0096],Computer 400/414 may execute one or more software applications…The processing may provide and support webpages and other graphical user interfaces [GUIs]…on a display device… )
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the features mentioned by Itwaru to include the disclosures as taught by Matte to facilitate tipping process with GUIs.
Itwaru does not explicitly disclose the step to: 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.
However, Grossi being in the same field of invention discloses the step to: 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 (Col. 2, Lines 30-40; Fig. 1; a method 100 [hereinafter “mobile transaction service”] for an automated transaction programmed to process the mobile transaction service operates over a network [wired or wireless]…[Col.2, Lines 58-67]; via the techniques provide/enables consumer to pay transaction-cardless to POS terminal payment of the transaction, via the mobile transaction service…,[Col. 3, Lines 5-15]; via establishes a link between consumer and retailer [merchant POS]-via User Interface [UI] to allow the consumer to leave a tip can also receive his/her receipt...)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the features mentioned by Itwaru to include the disclosures as taught by Grossi to facilitate payment of tips at restaurant with mobile phone [cardless payment]..
Ref claim 2, Itwaru the discloses 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 mobile device of the user (para [0040-43], Figs. 1-3: via the transaction service 20/Transaction & settlement … the transaction application 113 and the merchant interface 8 …[0044], the transaction interface 15, merchant mobile device 7… and the consumer mobile device 12 can interact [via network 11…]…).
Ref claim 3, Itwaru 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 mobile device of the user (para [0040-43], Figs. 1-3: via the transaction service 20/Transaction & settlement … the transaction application 113 and the merchant interface 8 …[0044], the transaction interface 15, merchant mobile device 7… and the consumer mobile device 12 can interact [via network 11…]…).
Ref claim 4, Itwaru 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 [0077), Fig. 2; displayed on the user interlace104 on how to enter a tip amount [various tip options such as % tip, $ tip, etc.)…[0097],via a mobile application 113 OMRI 200 the Merchant Transaction Server transaction options /based on the merchant type prompt for a tip merchant as a restaurant).
Ref claim 5, Itwaru 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 user and the 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 [0097]: via a mobile application 113 OMRI 200 the Merchant Transaction Server transaction options /based on the merchant type prompt for a tip merchant as a restaurant … ).
Ref claim 6, Itwaru 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 [0097]: via a mobile application 113 OMRI 200 the Merchant Transaction Server transaction options /based on the merchant type prompt for a tip merchant as a restaurant … ).
Ref claim 7, Itwaru the e-commerce payment platform of claim 1, wherein the tip is expressed as one of a percentage of an amount of the cardless payment transaction or a fixed dollar amount. (para [0077), Fig. 2; displayed on the user interlace104 on how to enter a tip amount [various tip options such as % tip, $ tip, etc.)…[0097]: via a mobile application 113 OMRI 200 the Merchant Transaction Server transaction options /based on the merchant type prompt for a tip merchant as a restaurant ).
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 16-20 are rejected as per the reasons set forth in claims 2-6 respectively.
CONCLUSION
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure:
Greenwood (US 20110313871 A1) discloses Apparatus, System and Method for Facilitating a Payment.
Nathanel et al (US 2013/0232017 A1) discloses Device System and Method of Electric 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.
Examiner interviews are available via telephone, 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, ABHISHEK VYAS can be reached on (571) 270-1836. 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. 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.
/HATEM M ALI/
Examiner, Art Unit 3691