DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The instant case is a continuation of U.S. Application # 18/380,938. This office action is in response to Applicant’s communication filed December 30, 2024 in which claims 1-20 are pending in the application.
Double Patenting
2. 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.
3. Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,211,016 В2. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claim 1 of the instant application and claim 1 of the 12211016 B2 patent each recite the following: receiving, by a delegation server, image data of invoices associated with a plurality of transactions conducted by a first user; converting, via a character recognition process, the image data to text information; extracting, from the text information, first transaction data comprising line item information associated with a first transaction of the plurality of transactions; generating, by the delegation server, a payment link comprising: a first parameter indicating a portion of a value of the first transaction, and a second parameter indicating a payment token associated with the first transaction; detecting the payment token in a standardized field of a second transaction data associated with a second transaction; extracting, from the payment token, the first transaction data associated with the first transaction; linking, based on the extracted first transaction data, the second transaction to the first transaction; and generating, based on the linking, an expense report for the first user comprising the first transaction associated with the first user and the second transaction associated with a payment, by a second user, of the portion of the value of the first transaction.
Regarding claim 1, the language in this claim can be found within claim 1 of U.S. Patent 12,211,016. Claim 1 of U.S. Patent 12,211,016 teaches limitations omitted from claim 1 of the instant application. Hence, the instant claims are anticipated by the claims of U.S. Patent number 12,211,016.
Claim Rejections - 35 USC § 101
4. 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 an abstract idea without significantly more.
The Examiner has identified independent Claim 12 as the claim that represents the claimed invention for analysis and is similar to independent Claims 1 and 19.
The claims 1-11 are directed to a method, 12-18 are directed to a system and
claims 19-20 are directed to a non-transitory computer readable medium, which is one of the statutory categories of invention (Step 1: YES).
The claim 12 recites : one or more processors; and memory storing instructions that, when executed by the one or more processors, cause the apparatus to: receive image data of invoices associated with a plurality of transactions conducted by a first user; convert, via a character recognition process, the image data to text information; extract, from the text information, first transaction data comprising line item information associated with a first transaction of the plurality of transactions; generate a payment link comprising: a first parameter indicating a portion of a value of the first transaction, and a second parameter indicating a payment token associated with the first transaction; detect the payment token in a standardized field of a second transaction data associated with a second transaction; extract, from the payment token, the first transaction data associated with the first transaction; link, based on the extracted first transaction data, the second transaction to the first transaction; and generate, based on the linking, an expense report for the first user comprising the first transaction associated with the first user and the second transaction associated with a payment, by a second user, of the portion of the value of the first transaction. These limitations (with the exception of italicized portions), under their broadest reasonable interpretation, when considered collectively as an ordered combination, is a process that covers Certain methods of organizing human activity such as Commercial or legal interactions. Linking received delegated payments to an original transaction is a Commercial Interaction. The claim also recites processors, memory and a character recognition process which do not necessarily restrict the claim from reciting an abstract idea. That is, other than, processors, memory and a character recognition process, nothing in the claim precludes the steps from being performed as a method of organizing human activity. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim 12 recites an abstract idea (Step 2A: Prong 1: YES).
This judicial exception is not integrated into a practical application. The additional elements of processors, memory and a character recognition process, result in no more than simply applying the abstract idea using generic computer elements. The specification describes the additional elements of processors, memory and a character recognition process, to be generic computer elements (see Fig. 3, Fig. 4A, [0045]). Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements of processors, memory and a character recognition process, are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). 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. Hence, the claims as a whole are not integrated into a practical application. Therefore, the claim 12 is directed to an abstract idea (Step 2A - Prong 2: NO).
The claim 12 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of processors, memory and a character recognition process are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. The additional elements, when considered separately and as an ordered combination, does 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 elements amount to no more than mere instructions to apply the exception using a generic computer component (MPEP 2106.05(f)). The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Thus, claim 12 is not patent eligible (Step 2B: NO).
Similar arguments can he extended to other independent claims 1 and 19 and hence the claims 1 and 19 are rejected on similar grounds as claim 12. In addition, claim 1 also recites a delegation server, which do not restrict the claim from reciting an abstract idea under Step 2A-Prong 1. The delegation server is recited at a high level of generality that amounts to generic computer implementation ([0020]). Therefore, the recitation of a delegation server do not result in practical application under Step 2A-Prong 2 and does not amount to add significantly more under Step 2B. Thus, claim 1 is directed to an abstract idea.
In addition, claim 19 also recites a non-transitory computer-readable storage medium that amounts to generic computer implementation.
Dependent claims 2-11, 13-18 and 20 are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations only narrow the abstract idea further and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. Dependent claims 2-5, 6, 9 and 13-16 recite new additional elements that are not present in independent claims 1 or 12 or 19 and require further analysis under Prong Two of Step 2A and Step 2B.
Claims 2 and 13 recite the additional element of a first computing device. A first computing device, recited in the claims, is recited at a high level of generality and amounts to generic computer implementation. Hence, it does not integrate the abstract idea into a practical application or provide significantly more than the abstract idea when considered individually and as an ordered combination.
Claims 3-5 and 14-16 recite the additional element of a second computing device. A second computing device, recited in the claims, is recited at a high level of generality and amounts to generic computer implementation. Hence, it does not integrate the abstract idea into a practical application or provide significantly more than the abstract idea when considered individually and as an ordered combination.
Claim 6 recites the additional element of a payment uniform resource locator (URL). A payment uniform resource locator (URL), recited in the claims, is recited at a high level of generality and amounts to generic computer implementation. Hence, it does not integrate the abstract idea into a practical application or provide significantly more than the abstract idea when considered individually and as an ordered combination.
Claim 9 recites the additional element of a payment processing system, an Automated Clearing House (ACH) system and a credit card processing system. A payment processing system, an Automated Clearing House (ACH) system and a credit card processing system, recited in the claims, are recited at a high level of generality and amounts to generic computer implementation. Hence, it does not integrate the abstract idea into a practical application or provide significantly more than the abstract idea when considered individually and as an ordered combination.
Viewing the claim limitations as a combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as a combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-20 are ineligible.
No Prior Art Rejections
5. Based on the prior art search results, the prior art of record fails to anticipate or render obvious the claimed subject matter of claims 1-20. While some individual features of claims 1-20 may be shown in the prior art of record, no known reference, alone or in combination, would provide the invention of claims 1-20. The prior art most closely resembling the applicant’s claimed invention are :
1) Spindel (U.S. Patent Number (10,621,563 B1)) – This invention relates generally to financial transactions involving payment cards, and more particularly, to a technique for apportioning a payment card transaction among multiple payers. In certain embodiments, the technique involves communication between a mobile payment application installed on the consumer's mobile device and a remote payment service system (PSS). The mobile payment application enables the user to specify how many payers there are, who the payers are, and exactly how the transaction amount should be apportioned among the payers. The mobile payment application communicates this information to the PSS, which then executes or triggers reimbursement to carry out the specified apportionment.
2) Coffman, (U.S. Patent Number (10,579,975 B2)) - This invention generally relates to financial service products and systems, and more particularly, to systems, processes, and computer programs for determining the amount to split a bill associated with a receipt and assist a user to distribute the payment for the bill associated with the receipt. The disclosed embodiments may also generate and provide a link to a payment web page to each of the purchasers for collecting the distributed portion of the bill. Accordingly, some embodiments provide mechanisms that allow purchasers to easily distribute the payment of a bill associated with a receipt and enable each of the purchasers to pay the portion of the bill he/she is responsible for.
3) Ellis (U.S. Patent Number (10,380,583 B1)) – The invention relates generally to the field of systems that use mobile devices to transfer funds. More specifically, the disclosure relates to systems and methods for enabling individuals to use their electronic devices to transfer funds and purchase products and services.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BHAVIN D SHAH whose telephone number is (571)272-2981. The examiner can normally be reached on 8:00-5:00 M-F.
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, Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.D.S./Examiner, Art Unit 3694
February 04, 2026
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694