DETAILED ACTION
Status of Claims
This Action is in response to application 19/002,506 filed 12/26/2024. Claims 1-20 are currently pending and have been examined.
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 Objections
Claim 20 is objected to because of the following informalities: Claim 20 is currently dependent on claim 1 while being directed towards a non-transitory computer readable media. In the interest of furthering prosecution, claim 20 will be treated as being dependent on the non-transitory computer readable media of claim 19.. Appropriate correction is required.
Double Patenting
The nonstatutory 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 timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory 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 nonstatutory 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,217,283 (hereafter Pat. 283). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are anticipated by the reference claims.
As per claim 1:
A method comprising:
based at least in part on transaction data associated with transactions of a plurality of merchants, identifying, by a payment service, a first merchant and a second merchant of the plurality of merchants as complementary merchants; (See Pat. 283 claim 1, “based at least in part on first transaction data associated with transactions of a plurality of merchants, identifying, by a payment service, a first merchant and a second merchant of the plurality of merchants as complementary merchants;”)
receiving, by the payment service, first transaction data for a first transaction associated with the first merchant and a customer, wherein the first transaction data includes a payment card number of a payment card offered for payment in the first transaction; (See Pat. 283 claim 1, “based at least in part on first transaction data associated with transactions of a plurality of merchants, identifying, by a payment service, a first merchant and a second merchant of the plurality of merchants as complementary merchants;”)
processing a first payment associated with the first transaction; (See Pat. 283 claim 9, “The system as claim 1 recites, the acts operations further comprising: receiving, by the payment service, and from a plurality of merchant computing devices associated with the plurality of merchants, the first transaction data, the plurality of merchant computing devices each executing an instance of a merchant application installed for configuring the plurality of merchant computing devices as point-of-sale (POS) terminals, the instances of the merchant application configuring the POS terminals to communicate the first transaction data over a network.”)
apportioning, by the payment service, the first payment between the first merchant and the second merchant according to an agreement between the first merchant and the second merchant; (See Pat. 283 claim 1, “apportioning, by the payment service, the payment between the first merchant and the second merchant according to an agreement between the first merchant and the second merchant.”)
generating, by the payment service and based at least in part on the payment card number, a receipt user interface for the first transaction that includes: (See Pat. 283 claim 6, “responsive at least in part to receiving, by the payment service, the indication that the first merchant and the second merchant intend to participate in the at least one cross- merchant promotion, facilitating, the payment service, transmission of a notification of the at least one cross-merchant promotion to one or more customers of at least one of the first merchant or the second merchant, wherein the notification comprises at least one of a direct message, an online advertisement, or a digital receipt.”)
a first representation of the first merchant and a second representation of the second merchant; and (See Pat. 283 claim 6, “responsive at least in part to receiving, by the payment service, the indication that the first merchant and the second merchant intend to participate in the at least one cross- merchant promotion, facilitating, the payment service, transmission of a notification of the at least one cross-merchant promotion to one or more customers of at least one of the first merchant or the second merchant, wherein the notification comprises at least one of a direct message, an online advertisement, or a digital receipt.”)
at least one promotion for a second transaction between the customer and the second merchant based on a transaction history of the customer associated with the payment card number; (See Pat. 283 claim 6, “responsive at least in part to receiving, by the payment service, the indication that the first merchant and the second merchant intend to participate in the at least one cross- merchant promotion, facilitating, the payment service, transmission of a notification of the at least one cross-merchant promotion to one or more customers of at least one of the first merchant or the second merchant, wherein the notification comprises at least one of a direct message, an online advertisement, or a digital receipt.”)
receiving, by the payment service, second transaction data for the second transaction between the second merchant and the customer; and (See Pat. 283 claim 1, “receiving, by the payment service, second transaction data associated with a second transaction associated with the first merchant, wherein the second transaction data includes a payment card number of a payment card offered for payment in the second transaction;”)
processing a second payment associated with the second transaction, wherein the second payment is based at least in part on the at least one promotion. (See Pat. 283 claim 1, “processing a payment associated with the second transaction, wherein the payment is based at least in part on the at least one cross-merchant promotion;”)
Non-Obvious Subject Matter
As currently claimed, the invention is directed towards management of transactions and promotions across different merchants. The invention receives transaction information associated with different merchants and determines a complementary match between a first and second merchant. The invention further receives and processes a first transaction at a first merchant including payment card information. The invention then appropriate a portion of the first payment transaction between the first and second merchants based on an agreement between the first and second merchants. The invention further generates and provides a recite for the first transaction including representation of the first and second merchant and a promotion for the second merchant. The invention further receives a second transaction between the consumer with the second merchant and processing the second transaction with the promotion.
The Examiner notes the claims include limitations from Parent Application 18/309,332 which were previously determined to be non-obvious, specifically the apportionment of payment for a first and second merchant for two transactions of a single consumer. Upon further search and consideration, no additional references, alone or in combination, fails to teach/suggest the management of promotions including apportionments by the payment processor as claimed. As such, the Examiner has determined the invention to be non-obvious over the prior art.
Still furthermore, the Examiner has determined the invention to be patent eligible similar to Parent Application 18/309,332. The Examiner notes the claimed invention provides particular advantages/improvement as discussed in paragraphs 0002, 0003, 0016, and 0019 of the originally filed specification. Although the invention is directed towards managing a commercial/legal interaction, the claimed invention is directed towards a particular arrangement and steps between a payment processor and multiple merchants to provide the specific benefit over conventional payment systems similar to Bascom. As such, the Examiner has determined the invention to be Patent Eligible.
Conclusion
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/VINCENT M CAO/Primary Examiner, Art Unit 3622