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 .
DETAILED ACTION
The following Non-Final office action is in response to application filed on 01/17/2025.
Priority Date: CON of 4-PATs(12,271,872)-(12,056,673)-(11,232,418)-(10,528,926) >(01-04-2016)
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 1 (exemplary) recites a series of steps for Consumer electronic payment Tender Steering.
[Step-2A]-Prong 1:The claim 1 is then analyzed to determine whether it is directed to a judicial exception:
The claim recites the limitations of:
receiving, at an electronic transaction system of a merchant, a selection of a first electronic payment method for an electronic payment transaction facilitated by a user and initiated at a user …, wherein the electronic payment transaction comprises user information associated with the user, wherein the first electronic payment method comprises account information;
determining, at the electronic transaction system, a first additional electronic payment method of which the user is unaware and which is available to the user for the electronic payment transaction;
determining, using the electronic transaction system, a confirmation by the user to use the first additional electronic payment method for the electronic payment transaction; and
completing, using the electronic transaction system, the electronic payment transaction with the first additional electronic payment method.
The claimed method/system/machine simply describes series of steps for Consumer electronic payment Tender Steering.
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 10, and 18.
Furthermore, the dependent claims 2-9, 11-17 and 19-20 do not resolve the issues raised in the independent claims.
The dependent claims 2-9, 11-17 and 19-20 are directed towards:
Using, wherein the user device is associated with the merchant; wherein the electronic transaction system comprises an application on a web page hosted on a web server; wherein the first additional electronic payment method provides a maximum cost saving benefit to the merchant, and wherein the first additional electronic payment method includes either a line of credit or a credit card associated with the merchant.
These limitations are also part of the abstract idea identified in claim 1, and are similarly rejected under same rationale.
Accordingly, the dependent claims 2-9, 11-17 and 19-20 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 1-9 of US Patent No. 12,271,872.
Although the conflicting claims are not identical, they are not patentably distinct from each other. Both the current invention and ‘872 claims are drawn to a computer-implemented method for electronic transaction steering, the method comprising:
receiving, at an electronic transaction system, an electronic payment transaction facilitated by a user and initiated at a user device associated with a merchant, wherein the electronic payment transaction comprises user information associated with the user;
identifying, using the electronic transaction system and via accessing a consumer profile account, one or more electronic payment methods associated with the user and usable to complete the electronic payment transaction, wherein each of the one or more electronic payment methods comprise account information;
determining, using the electronic transaction system, an automatically selected electronic payment method of the one or more electronic payment methods based on a maximum benefit to the merchant and the account information;
steering, using the electronic transaction system, the user to the automatically selected electronic payment method by pre-populating checkout information with the automatically selected electronic payment method; and
completing, using the electronic transaction system, the electronic payment transaction with the automatically selected electronic payment method based on a user confirmation.
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 ‘872 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 1-9 of US Patent No. 12,271,872, 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 Goodwin et al (US 20140129357-A1).
Ref claim 1, Goodwin discloses a computer-implemented method for processing an electronic transaction, the method comprising:
receiving, at an electronic transaction system of a merchant, a selection of a first electronic payment method for an electronic payment transaction facilitated by a user and initiated at a user device, wherein the electronic payment transaction comprises user information associated with the user, wherein the first electronic payment method comprises account information (para [0025], Fig. 1, via an intelligent payment system 100 is adoptable to work with a user's electronic device for automating a preferred possible payment method/user's interest. The payment method is used for a payment transaction/with a merchant e-payments are made… [0026]; The intelligent payment system 100 comprises a merchant-to-processor module 101, a payment decision engine 102; a local rule set 103; a server rule set 104…and direct user interface 109…The stored data module 108 stores data and information related to the user, payment cards [implied account information]…to the server side logic module 105 for inclusion in payment decisions and analytics…[0040]; The server defined type criteria…the payment type may include credit or debit cards, travel cards, e-vouchers or e-cash etc. … [0164], via an intelligent payment system 100 can receive user input, requests, or quarries or preferences for particular items, products, goods, or services interested in purchasing …user defined criteria….);
determining, at the electronic transaction system, a first additional electronic payment method of which the user is unaware and which is available to the user for the electronic payment transaction ;
determining, using the electronic transaction system, a confirmation by the user to use the first additional electronic payment method for the electronic payment transaction (para [0102]; an ordered payment method list can be presented to the user/ as a subset for the confirmation…that an informed choice can be made…); and
completing, using the electronic transaction system, the electronic payment transaction with the first additional electronic payment method (para [0046]; the payment decision made by the payment decision engine 102/through electronic device as the preferred payment method with merchant to complete the payment transaction…[0047]; …payment requests completed over the Internet website…).
Ref claim 2, Goodwin discloses the method of claim 1, wherein the user device is associated with the merchant (para [0026]; The intelligent payment system 100 comprises a merchant-to-processor module 101, a payment decision engine 102; a local rule set 103; a server rule set 104…and direct user interface 109…The stored data module 108 stores data and information related to the user, payment cards …to the server side logic module 105 for inclusion in payment decisions and analytics …).
Ref claim 3, Goodwin discloses the method of claim 1, wherein the electronic transaction system comprises an application on a web page hosted on a web server (para [0025], Fig. 1. …The payment method is used for a payment transaction initiated by the user with merchant…the [POS] merchant, an online merchant [online stores], an e-retailers, such as a web site ..).
Ref claim 4, Goodwin discloses the method of claim 1, wherein the first additional electronic payment method provides a benefit to the merchant (para [0025], Fig. 1, via an intelligent payment system 100 is adoptable to work with a user's electronic device for automating a preferred possible payment method/user's interest. The payment method is used for a payment transaction/with a merchant e-payments are made…).
Ref claim 5, Goodwin discloses the method of claim 1, wherein the determining the first additional electronic payment method comprises determining, using the electronic transaction system, the first additional electronic payment method and a second additional electronic payment method, wherein each of the first and second additional electronic payment methods provides a benefit to the merchant.
Ref claim 6, Goodwin discloses the method of claim 1, wherein the first additional electronic payment method provides a maximum benefit to the merchant (para [0104]; via a payment method selection interface [GUI]…provides user benefits […greatest level of user benefit ..rewards or bonus scheme…).
Ref claim 7, Goodwin discloses the method of claim 1, wherein the first additional electronic payment method provides a transaction cost saving to the merchant (para [0104]; via a payment method selection interface [GUI]…provides user benefits […greatest level of user benefit ..rewards or bonus scheme]…).
Ref claim 8, Goodwin discloses the method of claim 1, wherein the first additional electronic payment method includes an electronic payment method previously used by the user for another electronic payment transaction with the merchant (para [0040]; The server defined type criteria…the payment type may include credit or debit cards, travel cards, e-vouchers or e-cash etc. … [0164], via an intelligent payment system 100 can receive user input, requests, or quarries or preferences for particular items, products, goods, or services interested in purchasing …user defined criteria…).
Ref claim 9, Goodwin discloses the method of claim 1, wherein the first additional electronic payment method includes either a line of credit or a credit card associated with the merchant (para [0026]; The intelligent payment system 100 comprises a merchant-to-processor module 101, a payment decision engine 102; a local rule set 103; a server rule set 104…and direct user interface 109…The stored data module 108 stores data and information related to the user, payment cards [implied account information]…to the server side logic module 105 for inclusion in payment decisions and analytics…[0040]; The server defined type criteria…the payment type may include credit or debit cards, travel cards, e-vouchers or e-cash etc. …).
Claim 10 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 11-17 are rejected as per the reasons set forth in claims 2-8 respectively.
Claim 18 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 19-20 are rejected as per the reasons set forth in claims 4-5 respectively.
CONCLUSION
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure:
LONG (US-2013/0066748-A1). discloses Architectural Opening Covering Ordering Method and System.
Hodge et al (US 20100082445 A1) discloses Smart menu options.
Bell et al (US-9830587-B1), discloses System, method, and device for customizing online merchant payment forms for mobile devices without merchant integration.
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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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.
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/HATEM M ALI/
Examiner, Art Unit 3691